A ban on importing Apple Watches with blood oxygen sensors will be reinstated on Thursday, the U.S. Court of Appeals for the Federal Circuit said.
In a decision handed down Wednesday, the federal appeal court did not rule on Apple’s effort to appeal a U.S. International Trade Commission (ITC) ruling that prevented the company from importing smartwatches involved in a patent dispute. However, it lifted an injunction that had blocked the ITC ruling from taking effect while Apple appealed the underlying import ban.
Wednesday’s decision means that Apple will be barred from importing the Apple Watch Series 9 and Apple Watch Ultra 2 throughout the appeal. Both watches remain unavailable on the company’s website and in stores after being pulled last December, although some can still be found at third-party retailers such as Amazon and AT&T.
Apple did not immediately respond to a request for comment on the latest ruling.
The patent dispute that led to the ITC decision centers around some Apple Watches’ built-in blood oxygen sensors that can read the wearer’s pulse. Masimo, an Irvine, California-based developer of smart wearables, claimed that Masimo’s patented technology for measuring blood oxygen level had been incorporated into those Apple devices.
There remains a potential workaround for Apple. Earlier this month, the company was green-lighted by the U.S. Customs and Border Protection to continue importing a redesigned version of Apple Watches that lacks the blood oxygen feature. The redesigned watches will not have the blood oxygen feature that was at issue in the patent dispute and could potentially return to domestic store shelves.
According to Masimo’s filing with the Federal Circuit on Monday, Apple told the U.S. Customs agency that its redesigned watches “definitively do not contain pulse oximetry functionality.”
“Apple’s claim that its redesigned watch does not contain pulse oximetry is a positive step toward accountability,” a Masimo spokesperson said on Monday.
In its complaint filed with the ITC, Masimo accused Apple of hiring away Masimo employees to build the pulse oximetry sensor, first featured in the Apple Watch Series 6 in 2020.
The ITC ultimately sided with Masimo after an investigation that began in August 2021. A final decision came in last October, ordering Apple to stop importing and selling its smartwatches with the pulse oximetry feature. The ITC order became effective in December, following a 60-day presidential review period that ended with the Biden administration declining to intervene.
Apple Countersues
Apple, which has staunchly denied allegations of patent infringement, filed the motion for a pause immediately after the Biden administration allowed the ban to take effect. It has also countersued Masimo, claiming that Masimo was trying to use the federal authority to make way for its competing smartwatch that allegedly “copies Apple.”“We strongly disagree with the USITC decision and resulting exclusion order, and are taking all measures to return Apple Watch Series 9 and Apple Watch Ultra 2 to customers in the U.S. as soon as possible,” Apple said.
In a statement released shortly after the ITC decision, Masimo founder and chief executive Joe Kiani said the ruling “sends a powerful message that even the world’s largest company is not above the law.”
“This important determination is a strong validation of our efforts to hold Apple accountable for unlawfully misappropriating our patented technology,” he said.
The ITC ban took effect after U.S. Trade Representative Katherine Tai, who is responsible for reviewing and potentially lifting import bans, chose to not intervene.
Presidential overrides of ITC rulings are rare. The latest such occurred in 2013 when then-President Barack Obama used his authority to overturn an import ban on certain iPhones and iPads involved in a patent dispute between Apple and Samsung.
In February 2023, President Joe Biden opted not to veto a similar patent infringement ruling involving Apple and AliveCor, a medical device company headquartered in Mountain View, California.
In that ruling, the ITC determined that the electrocardiogram (ECG) technology built into some Apple Watches infringes on AliveCor’s patented portable ECG devices. The decision came with an order that would stop further imports of ECG-equipped Apple Watches—spanning from 2018’s Series 4 model to the more recently introduced Series 8—into the United States, as well as a $2 bond for each of the devices imported or sold during the 60-day presidential review period.
The penalty actions are still on hold, however, since additional patent litigation exists between the two companies.
