A federal jury Friday ruled that Masimo’s smartwatches infringed on Apple Watch patents, but awarded Apple just $250 in damages, which is the statuary minimum amount Apple could seek while it pursues a jury trial rather than a court trial over Masimo’s alleged infringements.
Masimo’s discontinued W1 Freedom smartwatch
Masimo’s discontinued W1 Freedom smartwatchAccording to Bloomberg Law, jurors found that the original design for Masimo’s W1 Freedom and health module, plus its charger, willfully infringed on Apple design patents. However, Masimo said that the ruling only applied to a discontinued module and charger. The distinction undermines Apple’s claim of irreparable harm, so while the company won damages, the decision essentially removed Apple’s chance to block Masimo’s current products.
“Apple primarily sought an injunction against Masimo’s current products, and the jury’s verdict is a victory for Masimo on that issue,” a Masimo spokesperson said in a statement.
The trial came about due to Apple’s countersuit in its ongoing legal battle with Masimo, which previously won an import ban on certain Apple Watch models over pulse oximetry patents. The infringement forced Apple to disable blood oxygen monitoring features in Apple Watch Series 9 and Ultra 2 models sold in the US. The feature is also lacking in the US version of the Apple Watch Series 10. The Apple Watches remain fully functional outside of the country.
During the trial, Apple attorney John Desmarais claimed that monetary compensation wasn’t the company’s goal, telling jurors: “We’re not here for the money. We want them to stop copying our design.”
An Apple spokesperson defended the company’s position, saying: “Teams at Apple worked for years to develop Apple Watch,” while “Masimo took shortcuts, launching a device that copies Apple Watch and infringes our intellectual property.
What did the lawyer representing Masimo say?
Brian Horne, a lawyer from Knobbe Martens representing Masimo, said of Apple in his closing argument, “Maybe they’re a little embarrassed” by Masimo’s success with the pulse-oximetry feature. “Maybe they’re trying to throw a little mud.”
Horne told jurors Masimo’s devices don’t infringe Apple’s asserted patents, all but one of which he argued shouldn’t have been issued. He called Apple’s contention that Masimo intentionally infringes its “most outrageous claim.”
“Our whole company has been built” on pulse oximetry, Horne said. Masimo “revolutionized the industry” and “changed the world.”
“We came to the consumer space to bring life-saving technology to the masses,” Horne said. He jabbed at Apple’s focus on making “a pretty product” that looks “like a piece of jewelry.” Masimo, he said, cares only that its products work well. He showed jurors a comment by Joe Kiani, the company’s recently departed CEO, that described Masimo’s watch as “an ugly product.”
“If you bring your common sense to this case, your deliberations should take five minutes,” Desmarais said. He called Masimo’s various contentions “nonsense,” “silly,” “desperate,” and “the stupidest defense I’ve ever heard.”
During the Oct. 11 pretrial conference, in what Hall’s subsequent order called “an exciting turn of events,” Masimo’s counsel handed Apple’s counsel $900 in cash, attempting to “moot” Apple’s damages claim and avoid a jury trial. Apple returned the cash, and the court ruled that the case must proceed to a jury trial.
“But even if he hadn’t,” Hall said, “I still think the case must be tried to a jury. Masimo’s offer to give Apple some of the remedy it seeks does not ‘moot’ the action or even Apple’s claims for patent infringement—Masimo hasn’t admitted liability and hasn’t agreed to stop selling the allegedly infringing products.”
Hall rejected validity challenges to two of the utility patents earlier this month, along with the company’s bid to render Apple’s patents unenforceable. Masimo dropped its validity challenge of US Patent No. D735,131 a week before the trial.
Potter Anderson & Corroon LLP, Desmarais LLP, and Wilmer Cutler Pickering Hale & Dorr LLP represent Apple. Phillips, McLaughlin & Hall PA and Knobbe Martens represent Masimo.
