Masimo open to an Apple Watch settlement, if Apple would only call

AppleInsider · December 19, 2023 8:28PM

Masimo CEO Joe Kiani claims the medical device company is open to a settlement discussion over the upcoming U.S. Apple Watch sales ban, but Apple allegedly hasn't made any moves to do so.

Apple Watch with blood oxygen sensing functions

In the face of a sales ban in the United States from an ITC patent infringement dispute that is due to start on Christmas Day, Apple has already taken steps to prepare for it. However, legal opponent Masimo may have hinted at a way out.

In an interview with Bloomberg, Massimo CEO Joe Kiani said the "short answer is yes" when asked if a settlement was a possibility between the two companies. He added that Masimo would certainly "work with them to improve their product" as well.

However, while Kiani didn't reveal a potential amount that would settle proceedings, he also claims Apple hasn't taken steps to even discuss a settlement. "They haven't called," said the CEO. "It takes two to tango."

A settlement would potentially draw to an end the ongoing legal battle between the two companies, as well as halt the inbound sales ban of newer Apple Watch models that infringe Masimo's patents. At this time, it seems that going down that route is not a possibility for Apple.

The ban will officially start on Christmas day, but Apple is ceasing online sales of the Apple Watch Ultra 2 and the Apple Watch Series 9 from December 21, and in Apple Stores from December 24.

For Apple, there is a small chance of a reprieve, as the White House can elect to veto the ban and stop it from happening. Kiani refers to Apple's preparation plans as a "stunt" to try and pressure the Biden Administration into pulling the ban.

Continued theft allegations

"These guys have been caught with their hands in the cookie jar," Kiani continued, speaking about Apple's alleged use of the company's patents for blood oxygen monitoring.

"This is not an accidental infringement -- This is a deliberate taking of our intellectual property," he added. "I am glad the world can now see we are the true innovators and creators of these technologies."

Kiani goes on to claim that Apple hired more than 20 engineers from the company, sometimes by doubling their salary, in order to have them work on similar technologies for use in the Apple Watch.

"Apple could be an example of how to do things right and do things well, and they didn't have to steal our people. We could have worked with them," Kiani asserted.

On the topic of the supposed attempt by Apple to thwart the ban with a software update, Kiani doubted it would work. "It shouldn't, because our patents are not about the software. They are about the hardware with the software."

Kiani added that the ITC import ban could've been avoided if the Apple Watch and its components were manufactured in the United States. He then pointed out that Masimo's technology is made within the country.

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macbootx · December 19, 2023 8:33PM

Looking at the line of sensor related products they sell, Masimo certainly doesn’t appear to be a patent troll. Hopefully Apple will negotiate a fair deal.

michaelx74 · December 19, 2023 8:54PM

Tim Apple: Buy Masimo.

ronn · December 19, 2023 8:59PM

Kiani goes on to claim that Apple hired more than 20 engineers from the company, sometimes by doubling their salary, in order to have them work on similar technologies for use in the Apple Watch.

"Apple could be an example of how to do things right and do things well, and they didn't have to steal our people. We could have worked with them," Kiani asserted.

Apple didn't "steal" people" as workers are free to work for whomever they please. Apple learned the hard way after getting smacked down for their "no poaching" deal with Google and others under Jobs.

phaseangle · December 19, 2023 9:00PM

Yes but look at the patient, more than three leds?, beveled edge?

tht · December 19, 2023 9:24PM

macbootx said:

Looking at the line of sensor related products they sell, Masimo certainly doesn’t appear to be a patent troll. Hopefully Apple will negotiate a fair deal.

They are a patent troll. It's not mutually exclusive to have products while also being a patent troll. It's the way the game is often played as this is the way the USA gov't wants it, so companies play the game. Some are aggressive, some are not. It ebbs and flows.

The ITC "determined" that Apple violated 2 claims of 1 patent granted 2021, which was the year after Apple introduced the Apple Watch 6. Those claims should be invalidated and I definitely can see why Apple isn't going to settle, for now. But play the game they must.

danox · December 19, 2023 9:24PM

phaseangle said:

Yes but look at the patient, more than three leds?, beveled edge?

And look at Samsung going back to the iPhone look for 2024......

entropys · December 19, 2023 9:26PM

All articles I have read fail to specify exactly what patents Apple is supposed to have infringed. More interested in the controversy I suppose.

From what I can sort of gather, it is a general patent applying to blood oxygen sensors being on the wrist. Which tbh is a joke of a patent. Happy for more details in the next article please.

Masimo is a very large company. Whining about how much more Apple Pay’s its former staff is tragically sad, as Masimo clearly weren’t paying them what they were worth.

BiggieTall · December 19, 2023 9:30PM

There were reported talks within Apple to buy Masimo but they decided not to.

Prior to the Trade Commission ruling, Apple was one vote away in the jury trial from being found not guilty of patent infringement (5-1). This resulted in a mistrial. Apparently during the trial, Apple paraded its development team to the stand and each declared under oath how the Apple watch component was developed NOT using Masimo technology.

Btw Masimo was originally claiming $3B in damages at the trial but the judge threw out a bunch and it was reduced to $1.xB.

InspiredCode · December 19, 2023 9:31PM

Apple probably plans to update their hardware then counter with their patents rather then enter a business relationship. This may be the end of Misamo’s smart watch ambitions if Apple sues it to death.

InspiredCode · December 19, 2023 9:36PM

entropys said:

All articles I have read fail to specify exactly what patents Apple is supposed to have infringed. More interested in the controversy I suppose.

From what I can sort of gather, it is a general patent applying to blood oxygen sensors being on the wrist. Which tbh is a joke of a patent. Happy for more details in the next article please.

Masimo is a very large company. Whining about how much more Apple Pay’s its former staff is tragically sad, as Masimo clearly weren’t paying them what they were worth.

You have the gist of it. The patents describe a sensor attached to a wrist mounted computer and some basic properties of its appearance (much of it cosmetic or unrelated to the workings of the sensor). There is nothing about the algorithm. The actual patents are: 10,945,648 (claims 12, 24, and 30) and 10,912,502 (claims 22 and 28). The other claims were struck down. You can look up at patents.google.com patent search. The claims are at the end of the patent filing (last couple pages usually).

https://www.usitc.gov/system/files/secretary/fed_reg_notices/337/337_1276_notice10262023sgl.pdf

Typical patent system idiocracy in this too. When Apple redesigns their sensor to put it back on the market they won’t be able to chamfer the edge (a really common industrial design technique) because that is a claim specified in isolation that was considered an infringed on design.

bluefire1 · December 19, 2023 9:55PM

Hear ye, hear ye; buy an Apple Watch now while it’s still available.

rob53 · December 19, 2023 10:03PM

“ He added that Masimo would certainly "work with them to improve their product" as well.” makes me wonder whether Apple actually used Masimo’s IP. Sounds like Masimo is trying to get code from Apple to see if they can fix their own code. Otherwise, Masimo is being rude telling Apple they are better than Apple.

InspiredCode · December 19, 2023 10:10PM

rob53 said:

“ He added that Masimo would certainly "work with them to improve their product" as well.” makes me wonder whether Apple actually used Masimo’s IP. Sounds like Masimo is trying to get code from Apple to see if they can fix their own code. Otherwise, Masimo is being rude telling Apple they are better than Apple.

They didn’t. That is largely unpatentable. 50 year old technology with standard statistical analysis techniques on top of it. Experience in the domain helps, but that bridge is burned.

mike1 · December 19, 2023 10:20PM

BiggieTall said:

There were reported talks within Apple to buy Masimo but they decided not to.

Prior to the Trade Commission ruling, Apple was one vote away in the jury trial from being found not guilty of patent infringement (5-1). This resulted in a mistrial. Apparently during the trial, Apple paraded its development team to the stand and each declared under oath how the Apple watch component was developed NOT using Masimo technology.

Btw Masimo was originally claiming $3B in damages at the trial but the judge threw out a bunch and it was reduced to $1.xB.

Don't think so. Civil trials do NOT need to be unanimous as in a criminal trial. So, Apple actually won that case. It's the ITC that still had a problem.

carnegie · December 19, 2023 10:21PM

entropys said:

All articles I have read fail to specify exactly what patents Apple is supposed to have infringed. More interested in the controversy I suppose.

From what I can sort of gather, it is a general patent applying to blood oxygen sensors being on the wrist. Which tbh is a joke of a patent. Happy for more details in the next article please.

Masimo is a very large company. Whining about how much more Apple Pay’s its former staff is tragically sad, as Masimo clearly weren’t paying them what they were worth.

I'll post the verbiage of the 5 patent claims which the LEO and C&DO are based on. In order to infringe a patent claim, one must employ every element listed in that patent claim. Note that some of these claims are what are referred to as dependent claims. They include all of the elements of a previous numbered claim plus something additional. So, e.g., with the first claim I'll post - 22 of the 10,912,502 patent - there's only an enforceable violation because of the inclusion of the last item.

I'd also note that the original USITC ALJ (administrative law judge) only found enforceable violations as to the last 2 claims (24 and 30 of the 10,945,648 patent). The Commission effectively overruled that ALJ with regard to the first three.

Claim 22 of 10,0912,502

19. A user-worn device configured to non-invasively measure an oxygen saturation of a user, the user-worn device comprising:

a plurality of emitters configured to emit light, each of the emitters comprising at least two light emitting diodes (LEDs);

four photodiodes arranged within the user-worn device and configured to receive light after at least a portion of the light has been attenuated by tissue of the user;

a protrusion comprising a convex surface including separate openings extending through the protrusion and lined with opaque material, each opening positioned over a different one associated with each of the four photodiodes, the opaque material configured to reduce an amount of light reaching the photodiodes without being attenuated by the tissue;

optically transparent material within each of the openings; and

one or more processors configured to receive one or more signals from at least one of the four photodiodes and output measurements responsive to the one or more signals, the measurements indicative of the oxygen saturation of the user.

20. The user-worn device of claim 19 further comprising a thermistor.

21. The user-worn device of claim 20, wherein the one or more processors are further configured to receive a temperature signal from the thermistor and adjust operation of the user-worn device responsive to the temperature signal.

AND...

22. The user-worn device of claim 21, wherein the plurality of emitters comprise at least four emitters, and wherein each of the plurality of emitters comprises a respective set of at least three LEDs.

EDIT: To change "independent claims" to "dependent claims"

carnegie · December 19, 2023 10:23PM

Claim 28 of 10,912,502

28. A user-worn device configured to non-invasively measure an oxygen saturation of a user, the user-worn device comprising:

a first set of light emitting diodes (LEDs), the first set of LEDs comprising at least an LED configured to emit light at a first wavelength and an LED configured to emit light at a second wavelength;

a second set of LEDs spaced apart from the first set of LEDs, the second set of LEDs comprising at least an LED configured to emit light at the first wavelength and an LED configured to emit light at the second wavelength;

four photodiodes arranged in a quadrant configuration on an interior surface of the user-worn device and configured to receive light after at least a portion of the light has been attenuated by tissue of the user;

a thermistor configured to provide a temperature signal;

a protrusion arranged above the interior surface, the protrusion comprising:

a convex surface;

a plurality of openings in the convex surface, extending through the protrusion, and aligned with the four photodiodes, each opening defined by an opaque surface configured to reduce light piping; and

a plurality of transmissive windows, each of the transmissive windows extending across a different one of the openings;

at least one opaque wall extending between the interior surface and the protrusion, wherein at least the interior surface, the opaque wall and the protrusion form cavities, wherein the photodiodes are arranged on the interior surface within the cavities;

one or more processors configured to receive one or more signals from at least one of the photodiodes and calculate an oxygen saturation measurement of the user, the one or more processors further configured to receive the temperature signal;

a network interface configured to wirelessly communicate the oxygen saturation measurement to at least one of a mobile phone or an electronic network;

a user interface comprising a touch-screen display, wherein the user interface is configured to display indicia responsive to the oxygen saturation measurement of the user;

a storage device configured to at least temporarily store at least the measurement; and

a strap configured to position the user-worn device on the user.

carnegie · December 19, 2023 10:26PM

Claim 12 of 10,945,648

8. A user-worn device configured to non-invasively determine measurements of a physiological parameter of a user, the user-worn device comprising:

a first set of light emitting diodes (LEDs), the first set comprising at least an LED configured to emit light at a first wavelength and at least an LED configured to emit light at a second wavelength;

a second set of LEDs spaced apart from the first set of LEDs, the second set of LEDs comprising an LED configured to emit light at the first wavelength and an LED configured to emit light at the second wavelength;

four photodiodes;

a protrusion comprising a convex surface, at least a portion of the protrusion comprising an opaque material;

a plurality of openings provided through the protrusion and the convex surface, the openings aligned with the photodiodes;

a separate optically transparent window extending across each of the openings;

one or more processors configured to receive one or more signals from at least one of the photodiodes and output measurements of a physiological parameter of a user;

a housing; and

a strap configured to position the housing proximate tissue of the user when the device is worn.

AND...

12. The user-worn device of claim 8, wherein the physiological parameter comprises oxygen or oxygen saturation.

carnegie · December 19, 2023 10:28PM

Claim 24 of 10,945,648

20. A user-worn device configured to non-invasively determine measurements of a user's tissue, the user-worn device comprising:

a plurality of light emitting diodes (LEDs);

at least four photodiodes configured to receive light emitted by the LEDs, the four photodiodes being arranged to capture light at different quadrants of tissue of a user;

a protrusion comprising a convex surface and a plurality of through holes, each through hole including a window and arranged over a different one of the at least four photodiodes; and

one or more processors configured to receive one or more signals from at least one of the photodiodes and determine measurements of oxygen saturation of the user.

AND...

24. The user-worn device of claim 20, wherein the protrusion comprises opaque material configured to substantially prevent light piping.

carnegie · December 19, 2023 10:30PM

Claim 30 of 10,945.648

20. A user-worn device configured to non-invasively determine measurements of a user's tissue, the user-worn device comprising:

a plurality of light emitting diodes (LEDs);

at least four photodiodes configured to receive light emitted by the LEDs, the four photodiodes being arranged to capture light at different quadrants of tissue of a user;

a protrusion comprising a convex surface and a plurality of through holes, each through hole including a window and arranged over a different one of the at least four photodiodes; and

one or more processors configured to receive one or more signals from at least one of the photodiodes and determine measurements of oxygen saturation of the user.

AND...

30. The user-worn device of claim 20, wherein the protrusion further comprises one or more chamfered edges.

carnegie · December 19, 2023 10:41PM

mike1 said:

BiggieTall said:

There were reported talks within Apple to buy Masimo but they decided not to.

Prior to the Trade Commission ruling, Apple was one vote away in the jury trial from being found not guilty of patent infringement (5-1). This resulted in a mistrial. Apparently during the trial, Apple paraded its development team to the stand and each declared under oath how the Apple watch component was developed NOT using Masimo technology.

Btw Masimo was originally claiming $3B in damages at the trial but the judge threw out a bunch and it was reduced to $1.xB.

Don't think so. Civil trials do NOT need to be unanimous as in a criminal trial. So, Apple actually won that case. It's the ITC that still had a problem.

In federal court civil jury decisions generally need to be unanimous. The vote in the case being referred to was actually 6-1 and a mistrial was declared.

I'm aware that there has been inaccurate reporting on this point.

Masimo open to an Apple Watch settlement, if Apple would only call

Continued theft allegations

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