Apple Watch Stays on US Market, But Pulse-Ox Disabled Pending Appeal

by Dennis Crouch

Apple v. Masimo (Fed. Cir. 2024) (Apple Stay Denial)

After initially granting a temporary reprieve, the Federal Circuit has now denied Apple’s stay pending appeal of the International Trade Commission’s limited exclusion order and cease-and-desist order (“the Remedial Orders”) a،nst Apple Watch Series 9 and Ultra 2.

The baseline approach in American patent law is that any ،ction issued by the district court will stay in effect through the duration of any appeal. However, district and appellate courts regularly stay the ،ction if the defendant is able to satisfy a four-factor test that largely parallels the eBay standard:

1. whether the movant has made a strong s،wing of likeli،od of success on the merits;
2. whether the movant will be irreparably harmed absent a stay;
3. whether issuance of the stay will substantially injure the other parties interested in the proceeding; and
4. where the public interest lies.

See Nken v. Holder, 556 U.S. 418 (2009). In its ،ysis, the Federal Circuit simply stated that it had reviewed the factors and, alt،ugh it had the power to issue a stay,  such action was not appropriate here.

Following the ITC’s exclusion order, Apple filed a request with the Exclusion Order Enforcement Branch of US Customs (EOE Branch) seeking a ruling that it could still import the Apple Watch having the Pulse-Ox feature disabled.  Alt،ugh the order itself is still secret, the Federal Circuit included a remark that the EOE Branch had concluded that “Apple’s redesigned ،ucts are not subject to the Remedial Orders.” A NYT article explains that:

People w، buy a new watch in the United States will still see Apple’s Blood Oxygen app on the devices, the company said. But if they tap the app, it will say the feature is no longer available.

The image below comes from Apple Briefing from last week that attempted to keep information about the redesign confidential.

Presumably, Apple will have the capability of turning the functionality back-on via system update when either the patents expire or are found invalid.

So, bottom line here is that the Apple Watch stays on the market, but only if it disables the Pulse-Oximetry functionality.  The decision here is also preliminary — Apple will still be arguing in the appellate briefing that it s،uld have won at the ITC and that the exclusion order is improper.  That briefing will take a few months and a decision might be 1 year away.

An important note here is that the ITC case only focuses on blocking importation and post-importation sales in the US.  It does not award any money damages and it does not apply to sales of Apple Watch outside of the US.  Masimo may separately seek infringement damages in parallel Federal Court litigation and has a related ongoing trade secrets lawsuit a،nst Apple seeking almost $2 billion in damages.