© Reuters. An Apple logo is displayed outside an Apple store in Lille, France, September 13, 2023. REUTERS/Stephanie Lecocq
By Blake Brittain
(Reuters) -A U.S. law enforcement agency has determined that Apple (NASDAQ can use a redesign to circumvent an import ban on newer Apple Watch models stemming from its patent infringement dispute with Masimo (NASDAQ , the technology company medical monitoring, said in a court filing Monday.
The import ban, issued by the US International Trade Commission (ITC), applies to Apple's current Series 9 and Ultra 2 watches and initially took effect on December 26. Apple convinced the US Court of Appeals for the Federal Circuit to stay the ban. the next day and has since resumed selling the watches while challenging the import ruling.
Apple had said a proposed redesign would allow it to sidestep findings that the watches infringe Masimo's blood oxygen reading pulse oximetry patents. Apple has not publicly described the redesign, which could involve an update to the watches' software.
According to Masimo's filing Monday before the Federal Circuit, Apple told the U.S. Customs and Border Protection agency that its redesigned watches “definitely do not contain pulse oximetry functionality.” Apple's filings with US Customs and the agency's decision, issued Friday, have not been made public.
Masimo can ask the ITC to overturn the customs agency's decision.
Representatives for Apple and Masimo did not immediately respond to requests for comment on Monday.
Irvine, California-based Masimo accused Apple of recruiting its employees and stealing its pulse oximetry technology for use in Apple Watches after discussing a possible collaboration.
Apple has included a pulse oximeter feature in smartwatches since its Apple Watch Series 6 in 2020.
Masimo sued Apple in California that year, alleging that Apple stole trade secrets related to technology for reading blood oxygen levels and infringed Masimo patents.
Apple countersued Masimo for patent infringement, calling Masimo's legal actions a “move to clear the way” for a competing smartwatch. Masimo launched its W1 watch, which tracks blood oxygen levels and other health indicators, in 2022.
Masimo asked the ITC in 2021 to ban imports and sales of Apple Watches that allegedly infringed its patents. The ITC ruled in favor of Masimo last year and the ban went into effect in December. Apple briefly halted sales of its latest Series 9 and Ultra 2 watches in the United States before Christmas due to the ITC decision, although they remained available at other US retailers, including Amazon (NASDAQ:), Best Buy (NYSE:), Costco (NASDAQ:) and Walmart (NYSE:). The tech giant resumed selling watches on December 27 after the Federal Circuit said it would stay the ban while it considers whether Apple's appeal should stay the ITC's decision.
The Federal Circuit is still considering whether to continue the pause or reinstate the ban, which would apply to Apple Watch Series 9 and Ultra 2 with pulse oximetry technology that do not have the redesign.
Apple has argued that it is likely to win its appeal and that allowing the ban to remain in effect would cause significant harm to the company, its suppliers and the public.
Masimo has said continuing the pause would damage its business and reputation and “demoralize” its scientists and engineers. He also said in his filing Monday that Customs' decision undermines Apple's argument that reinstating the ban would cause irreparable harm to the tech giant.
