Shedding Light on Apple’s Hasty Apple Watch Modifications in Masimo Case

New details in the backstory of Masimo v. Apple involving Apple’s last-minute modifications of its Apple Watch are coming to light, as Dennis Crouch writes in an article for PatentlyO.

Apple and medical device company Masimo and Apple have been at odds over Apple’s alleged infringement of Masimo’s pulse oximetry patents in the Apple Watch.

Apple swiftly modified its Apple Watch to avoid the International Trade Commission’s order that would have blocked importation of the devices for infringing Masimo’s pulse oximetry functionality. The order is on appeal to The Federal Circuit.

In January 2024 an order from U.S. Customs and Border Protection (CPB) determined that Apple’s redesigned watches, which disabled the infringing functionality, were sufficiently modified to fall outside the scope of the ITC’s exclusion.

The permitted redesign disables the pulse oximetry functionality. It includes both a hardware and a software change. According to Crouch, the hardware switch that tells the linked iPhone not to turn on Pulse-Ox readings could re-enable the readings with a simple software update if Apple prevails.

The CBP’s Exclusion Order Enforcement (EOE) Branch notes that the redesign: Prevents pulse oximetry functionality or measurement; prevents the user from re-enabling pulse oximetry functionality including the Blood Oxygen feature; displays a screen that says the Blood Oxygen feature is unavailable.

Crouch said it’s unclear how hard it would be for users to flip the hardware switch on the watches. He mentioned that Masimo was able to “jailbreak” two iPhones in ways that connected to a redesigned Apple Watch and enabled the infringing features, but outdated iPhones with outdated operating systems were used in the process.

The enforcement ruling called the modifications sufficient to ensure that the Apple Watches are not infringing. It included a caution that its decision “is limited to the specific facts set forth herein.” Watches that differ significantly or vary from the stipulated facts won’t be bound by the ruling.

The Enforcement Branch said that jailbreaking the iPhones and installing unauthorized software “clearly constitutes a ‘modification’ of the accused products” under Federal Circuit case law. But because the redesigned watches don’t infringe without such modifications, they are not subject to the ITC’s exclusion order.

Apple’s appeal arguing that the ITC’s infringement and validity findings are incorrect is pending before the Federal Circuit. Apple’s brief is due in spring 2024.