At the end of last week, Masimo Corporation (Nasdaq: MASI) received some good news in its years-long court battle with Apple Inc. over its alleged infringement of Masimo patents misappropriated for use in Apple Watch models. It has been virtually a nuclear war between the two combatants, taking place in Federal, California, and Delaware courts; at the US International Trade Commission; in the Federal Appeals Court; at the Patent Trial & Appeal Board; and with the U.S. Customs and Border Protection.
Now, a California jury has found in Masimo’s favor in one of those cases and ordered Apple to pay it $634 million in damages. But is this the end of the matter?
Learn more on these latest developments in the legal war between Masimo and Apple…
Earlier this year, Masimo sold off its Sound United division (at times known as the non-healthcare division or Masimo Consumer) to Harman International Industries. Shortly after its exit from consumer electronics was completed, it had been my intention to cease covering Masimo, a professional healthcare technology company that largely does business with hospitals and other medical institutions.
Two New Outcomes, One Immediate and One Pending
However, there was still some unfinished business for me. Long time readers know that I had closely followed the intense legal entanglements between Masimo and Apple. Last week was yet another outcome of a multi-front battle between the two companies. Actually, there were two outcomes on two different fronts…both of which swung in Masimo’s favor. And so, I take this opportunity to update Strata-gee readers here on these latest developments.
For several years now, Masimo and Apple have battled over patent issues, first in multiple actions filed by Masimo against Apple on several patents. Then in response, Apple filed its own actions against Masimo, accusing it of infringing on Apple patents. The battle has been hot and heavy over the last three years or so, and claims of infringement have expanded. Masimo has asserted more than two dozen claims covering several of its patents.
Both Sides Have Won Some…Lost Some
Over the years, both sides have had some wins and losses, and with so many independent actions in multiple arenas, it’s hard to keep an accurate scorecard. But I’m going to give the advantage to Masimo, who in 2023 had a huge win at the ITC that resulted in a ban of certain offending Apple Watch models from being imported and sold in the U.S, a win that was clinched right as the holiday selling season was commencing. Eventually, Apple was able to gain approval to sell those models, once the technologies misappropriated from Masimo were disabled.
The matter decided just last week was actually a relitigation of a trial that originally took place back in 2023 in the U.S. District Court for the Central District of California. That trial, in a surprising twist, ended with a hung jury.
First Attempt Ended in a Mistrial
It was also a trial presided over by the well-known Judge James V. Selna, in which Masimo, based on expert testimony, was seeking $3.1 billion on twelve separate claims of infringement. After all evidence and testimony were completed, and before the matter was turned over for jury deliberation, both sides submitted Rule 50(A) motions, seeking judgment from the court (before jury consideration). In arguing those motions, Apple convinced Judge Selna that no reasonable jury would hold Apple responsible for several of the claims. Consequently, Judge Selna dismissed six of Masimo’s claims, trimming the matter down from a $3.1 billion matter to a $1.8 billion case.
However, the jury was unable to reach a consensus on the six remaining claims, and Judge Selna was forced to declare a mistrial. Believe me, a mistrial is an outcome nobody wants. It was this retrial of that original action that is now concluded.
Take Two: Apple Must Pay Masimo $634 Million
In this case, the jury found that Apple infringed a single Masimo patent that governed the way that Apple Watch’s workout mode and heart rate notification features operated. The jury awarded Masimo damages totalling $634 million.
Masimo celebrated the win…
We are pleased by this outcome, and appreciate the time and attention given to our case by the court and the jury. This is a significant win in our ongoing efforts to protect our innovations and intelletual property, which is crucial to our ability to develop technology that benefits patients. We remain committed to defending our IP rights moving forward.”
Masimo; Statement on California Jury Verdict Finding Patent Infringement by Apple
So, Is This the End of Hostilities?
So is that the end of hostilities between the two parties? Not even close. As I write this, Masimo has five more claims pending against Apple in the U.S. Court of Appeals, and Apple has two more lawsuits pending against Masimo in Delaware courts.
Not only that, but Masimo has an additional ongoing lawsuit pending against Customs and Border Protection challenging its decision to allow the importation of Apple Watches with workarounds to Masimo’s technologies. For its part, Apple has a lawsuit pending in the U.S. Court of Appeals challenging the ITC’s import ban.
So there is a lot more legal wrangling ahead. And then, there’s this…
Over the past six years (Masimo has) sued Apple in multiple courts and asserted over 25 patents, the majority of which have been found to be invalid. The single patent in this case expired in 2022, and is specific to historic patient monitoring technology from decades ago.
Apple Inc. spokesperson to the Reuters News Agency
Total War
The Apple spokesperson went on to tell Reuters that the company disagrees with the verdict and plans to appeal. That is completely consistent with how both sides have conducted themselves in this matter. It is basically Total War.
It has not been a six-year venture, as the Apple spokesperson claimed…more like about half of that. Although as aggressive as the fighting has been in so many different courts and commissions, it might feel like six years. He is correct that Masimo has had some of its patents invalidated. What he fails to mention, however, is that Apple has had some of its patents invalidated, as well. There has definitely been pain for both parties.
Just One More Thing that Masimo Won
In a separate announcement last Friday, the US International Trade Commission announced it would open another investigation to determine if Apple’s new Watches should be banned for patent infringement. Apple says it has worked around the Masimo patents in its latest models, and therefor, they do not infringe. Masimo, as you might suspect, has argued that Apple is still infringing on Masimo’s technologies.
This issue is the subject of a lawsuit between Apple and the USITC in federal court, and Masimo with Customs and Border Protection, which it believes improperly determined that Apple’s reworked Watches were OK to import and sell. Masimo views this investigation as another win, although we’ll have to wait for the final determination to see if the final decision, once again, goes its way.
Apple, on the other hand, is not happy. The massive consumer brand told Reuters that it believes this new investigation is “…a meritless attempt to block its smartwatches’ blood oxygen feature.”
To learn more about Masimo, visit masimo.com.
See more on Apple at apple.com.
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