U.S. Customs and Border Protection has determined that Apple can use a redesign to bypass the Apple Watch ban over a patent dispute, according to a court filing on Monday.
The redesigned Apple Watch would not contain a pulse oximeter function, a medical scanner that detects blood-oxygen levels.
The Apple Watch Series 9 and Ultra 2 were both temporarily banned in the United States after the International Trade Commission (ITC) ruled that the blood oxygen sensors in both devices infringed on patents from Masimo, the medical-monitoring technology company.
The ban initially went into effect on Dec. 26., but Apple convinced the U.S. Court of Appeals for the Federal Circuit to pause the ban the next day, and has since resumed selling the watches as it contests the import ruling.
Apple had argued that a proposed redesign would allow it to circumvent 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 on Monday with the Federal Circuit, Apple told the U.S. Customs agency that its redesigned watches “definitively do not contain pulse oximetry functionality.” Apple’s filings with U.S. Customs and the agency’s decision, issued Friday, have not been released publicly.
“Apple’s claim that its redesigned watch does not contain pulse oximetry is a positive step toward accountability,” a Masimo spokesperson said on Monday.
Apple said on Monday that Series 9 and Ultra 2 watches with blood-oxygen reading capabilities are still available.
The Irvine, California-based Masimo accused Apple of hiring away its employees to build the pulse oximetry sensor, which was first featured in the 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, claiming that Masimo was trying to use the federal authority to make way for its own competing smartwatch that allegedly “copies Apple.” Masimo released its W1 watch, which tracks blood-oxygen levels and other health indicators, in 2022.
Masimo asked the ITC in 2021 to bar Apple’s imports and sales of Apple Watches that allegedly infringed its patents. The ITC ultimately sided with Masimo after an investigation that began in August 2021 and the ban went into effect in December.
Apple said on Monday that the appeal would likely take at least a year, and that it expects a decision on its request to keep the ban paused during that time as early as Tuesday.
The Federal Circuit is still considering whether to continue the pause or reinstate the ban, which would apply to Series 9 and Ultra 2 Apple Watches with pulse oximetry technology that do not have the redesign.
Apple has argued that it is likely to win the appeal and that allowing the ban to stay in effect would cause significant harm to the company, its suppliers, and the public.
Masimo has said that maintaining the pause would hurt its business and reputation and “demoralize” its scientists and engineers. It also said in its Monday filing that the Customs decision undermines Apple’s argument that reinstating the ban would cause the tech giant irreparable harm.
The customs agency’s decision could be overruled if the ITC disagrees with it.
