This post follows up on a prior post regarding the United States International Trade Commission’s (ITC) remedial orders granted in an Investigation brought by Masimo regarding alleged infringement of Masimo’s patents by Apple’s Apple Watch products, styled Certain Light-Based Physiological Measurement Devices and Components Thereof, Inv. No. 337-TA-1276. Apple filed for a stay of the Commission’s remedial orders with the Court of Appeals for the Federal Circuit pending its appeal, as well as a temporary stay of the remedial orders while the Federal Circuit considered Apple’s request for a stay pending appeal. On December 27, 2023, the Federal Circuit granted Apple’s request for an interim stay of the remedial orders, pending the court’s consideration of Apple’s request for a stay pending the appeal thereof.
The parties, including Apple, Masimo, and the Commission, submitted a briefing on Apple’s stay request in mid-January 2024. Furthermore, U.S. Customs and Border Protection, the agency charged with enforcing ITC exclusion orders, issued a determination that Apple’s redesigned Apple Watch products are not subject to the exclusion order because they do not infringe the patent claims that are the subject of the remedial orders.
On January 17, 2024, the Federal Circuit issued an order lifting the interim stay and denying Apple’s request for a stay pending appeal of the ITC’s decision. The exclusion order and cease-and-desist order, therefore, are in full effect, and Apple may not import the Apple Watch products that contain the technology found by the ITC to infringe.
Time will tell whether Apple views the functionality it removed in its redesigned Apple Watch as important enough to justify taking a license from Masimo. The situation seems ripe for a business solution, and the Federal Circuit’s and Customs’ rulings provide the parties procedural certainty that may permit both sides to accurately gauge the value of the technology and come to an agreement.
Paul’s practice focuses on Section 337 litigation before the International Trade Commission. A registered patent attorney, Paul combines technical knowledge with vast experience in Section 337 litigation to give clients the legal advice they need to achieve their goals.
Paul began his career practicing patent litigation at a large law firm. Paul then served as an attorney in the Office of the General Counsel at the U.S. International Trade Commission, where he represented the Commission in multiple appeals of Commission cases before the Court of Appeals for the Federal Circuit and participated in Commission decision-making. After gaining that experience, Paul re-entered private practice by joining an ITC boutique Adduci, Mastriani & Schaumberg, where he focused his practice on patent litigation at the ITC and related matters. Paul founded Bartkowski PLLC in January 2021.
Paul’s intimate understanding of the ITC and its procedures and practices allows him to analyze clients’ options to determine the best legal path to achieve their goals.
