DCT
1:22-cv-01377
Apple Inc v. Masimo Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Apple Inc. (California)
- Defendant: Masimo Corporation (Delaware) and Sound United, LLC (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Desmarais LLP
- Case Identification: 1:22-cv-01377, D. Del., 10/20/2022
- Venue Allegations: Venue is asserted on the basis that both Defendants are Delaware entities and are therefore deemed to reside in the District of Delaware.
- Core Dispute: Plaintiff alleges that Defendant’s Masimo W1 smartwatch and its associated wireless charger infringe four of Apple's design patents covering the ornamental appearance of the Apple Watch and its charging puck.
- Technical Context: The lawsuit concerns the ornamental design of products in the highly competitive consumer wearable technology market, where aesthetic appeal is a significant driver of consumer choice.
- Key Procedural History: The complaint notes that this lawsuit follows prior litigation initiated by Masimo against Apple, including a January 2020 federal court action and a June 2021 International Trade Commission (ITC) investigation, both targeting the Apple Watch. This history is cited to support allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2014-08-11 | U.S. Patent No. D735,131 Priority Date |
| 2015-04 | Apple releases first-generation Apple Watch |
| 2015-07-28 | U.S. Patent No. D735,131 Issue Date |
| 2018-06-27 | U.S. Patent Nos. D883,279, D947,842, D962,936 Priority Date |
| 2020-01 | Masimo files patent lawsuit against Apple in C.D. Cal. |
| 2020-05-05 | U.S. Patent No. D883,279 Issue Date |
| 2021-06 | Masimo files ITC complaint against Apple |
| 2022-01 | Masimo publicly unveils the W1 device |
| 2022-04-05 | U.S. Patent No. D947,842 Issue Date |
| 2022-04 | Masimo closes acquisition of Sound United |
| 2022-08-31 | Masimo begins public sale of the W1 device |
| 2022-09-06 | U.S. Patent No. D962,936 Issue Date |
| 2022-09 | Apple announces Apple Watch Series 8, SE, and Ultra |
| 2022-10-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D883,279 - "Electronic Device," issued May 5, 2020
The Invention Explained
As a design patent, the '279 Patent does not claim a technical function but rather the specific ornamental appearance of an electronic device.
- Problem Addressed: Design patents address the challenge of creating a new, original, and ornamental design that distinguishes a product's appearance (D’279 Patent, Claim). The complaint alleges that meticulous, eye-pleasing design is important to a product's success in the consumer electronics market (Compl. ¶19).
- The Patented Solution: The patent protects the visual design embodied in its drawings (D’279 Patent, Figs. 1-9). The claimed design features a watch with a soft rectangular housing, rounded corners, a screen that integrates smoothly into the casing, and a specific configuration on the back comprising a central circular sensor array surrounded by text and distinctive grooves for attaching a band (D’279 Patent, Fig. 4).
- Technical Importance: The complaint alleges that aesthetic themes and a consistent design language across products are important to the commercial success of Apple's products, including the Apple Watch (Compl. ¶¶19-20).
Key Claims at a Glance
- Design patents contain a single claim for the ornamental design as shown in the drawings.
- Key visual features of the asserted design include:
- A housing with a rounded rectangular profile and curved edges.
- A circular sensor module on the rear of the device.
- The specific arrangement of concentric circles and other elements within the rear sensor module.
- The placement and form of the digital crown and side button.
U.S. Patent No. D947,842 - "Electronic Device," issued April 5, 2022
The Invention Explained
The '842 Patent protects the ornamental design for an electronic device, which is visually similar to the design in the '279 Patent but represents a distinct, separately patented design.
- Problem Addressed: This patent protects a specific iteration of an ornamental design for a consumer wearable device (D’842 Patent, Claim). The complaint alleges Apple has updated the design of its biosensor module several times over the product's life (Compl. ¶16).
- The Patented Solution: The '842 Patent claims the specific visual appearance shown in its figures (D’842 Patent, Figs. 1-9). While sharing the overall form factor with the '279 Patent, the drawings of the '842 Patent depict a subtly different ornamental configuration of the rear circular sensor array, which forms part of the claimed design (D’842 Patent, Fig. 4).
- Technical Importance: The complaint alleges that Apple's updates to the biosensor module are paired with unique, eye-pleasing designs (Compl. ¶16).
Key Claims at a Glance
- The patent contains a single claim for the ornamental design as shown in the drawings.
- The essential visual features are largely consistent with the '279 Patent, but the claim is distinguished by the specific ornamental pattern of the rear sensor module shown in the '842 Patent's figures.
Multi-Patent Capsule: U.S. Patent No. D962,936 - "Electronic Device," issued September 6, 2022
- Technology Synopsis: This design patent protects the ornamental appearance of an electronic device, specifically a smartwatch. The claimed design is defined by the solid lines in its drawings, which show a device with a rounded rectangular form and a distinct rear-side sensor configuration (D’936 Patent, Figs. 1-9).
- Asserted Claims: The patent’s single claim for the ornamental design as shown and described.
- Accused Features: The overall ornamental design of the Masimo W1 device is alleged to be substantially similar to, and a colorable imitation of, the design claimed in the '936 Patent (Compl. ¶59).
Multi-Patent Capsule: U.S. Patent No. D735,131 - "Charger," issued July 28, 2015
- Technology Synopsis: This patent protects the ornamental design for a charger. The design consists of a circular puck with a concave top surface and a permanently attached cable extending from its side (D’131 Patent, Figs. 1-8). The complaint states this design allows for easy and effortless connection for wireless charging (Compl. ¶17).
- Asserted Claims: The patent’s single claim for the ornamental design as shown and described.
- Accused Features: The Masimo W1 Wireless Charger is alleged to embody a design that is substantially similar to the one claimed in the '131 Patent (Compl. ¶66).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the Masimo W1 device (a smartwatch) and its accompanying Masimo W1 Wireless Charger (Compl. ¶13).
Functionality and Market Context
The complaint identifies the Masimo W1 as Defendant's first direct-to-consumer wearable device, released to the public on August 31, 2022 (Compl. ¶¶3, 39). The complaint alleges that Masimo, historically a hospital equipment manufacturer, pivoted to the consumer market and developed the W1 by "copying Apple Watch" to compete with it (Compl. ¶¶22, 38). The complaint includes a side-by-side photograph comparing the Apple Watch and its charger with the Masimo W1 and its charger to support its copying allegations (Compl. p. 2).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges that the Masimo W1 and its charger are "substantially similar" to Apple's patented designs (Compl. ¶¶45, 52).
The complaint provides a side-by-side comparison of the Masimo W1 device with figures from the D'279 patent, inviting a direct visual assessment of their similarity (Compl. p. 21).
D883,279 Infringement Allegations
| Claim Element (Key Visual Feature) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for an electronic device as a whole, including its soft rectangular shape with rounded corners. | The Masimo W1 device is alleged to have a nearly identical overall shape and profile to the claimed design. | ¶45 | D'279 Patent, Fig. 3 |
| A circular rear module centered on the back of the device housing. | The Masimo W1 device features a prominent circular module on its rear side, in the same position as the claimed design. | ¶45 | D'279 Patent, Fig. 4 |
| The specific ornamental pattern of the rear module, including concentric rings and centrally located elements. | The rear module of the Masimo W1 device allegedly incorporates a visually similar pattern of concentric circles and central elements. | ¶45 | D'279 Patent, Fig. 4 |
D947,842 Infringement Allegations
| Claim Element (Key Visual Feature) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design, defined by the specific visual features shown in the patent's drawings. | The overall look and feel of the Masimo W1 device is alleged to be a colorable imitation of the claimed design. | ¶52 | D'842 Patent, Fig. 3 |
| The particular arrangement of elements within the circular rear sensor module as depicted in the patent figures. | The complaint alleges the design embodied in the Masimo W1 is substantially similar to the design claimed in the '842 Patent. | ¶52 | D'842 Patent, Fig. 4 |
Identified Points of Contention
- Scope Questions: The primary legal question will be whether the overall visual appearance of the Masimo W1 is "substantially the same" as Apple's patented designs in the eyes of an ordinary observer. The defense may argue that differences in the curvature of the housing, the precise details of the sensor array, and the shape of the buttons are significant enough to avoid deception.
- Technical Questions: While not a technical case, a key factual question will be how the minor differences between the products are perceived. For example, does the Masimo W1's sensor array, while circular, contain ornamental details that distinguish it from the specific patterns claimed in the '279 and '842 patents, and would an ordinary observer appreciate those differences? The complaint provides a comparison image showing the back of an Apple Watch Series 4 and the Masimo W1, which invites this detailed visual analysis (Compl. p. 22).
V. Key Claim Terms for Construction
In design patent litigation, the scope of the single claim—"the ornamental design for an [article] as shown and described"—is determined by the patent's drawings as a whole. Traditional construction of specific text-based terms is not the central issue. However, a key aspect of interpreting the claim's scope involves distinguishing between the claimed and unclaimed subject matter.
- The Term: The scope of the claimed design as defined by solid vs. broken lines.
- Context and Importance: The patent specifications state, "The broken lines in the figures show portions of the electronic device and environment that form no part of the claimed design" (D'279 Patent, p. 3). This is a critical distinction. Practitioners may focus on this because the infringement analysis must be based only on the elements shown in solid lines, ignoring those in broken lines (like the watch band). The comparison must be between the accused product and the claimed design, not necessarily between the accused product and the patentee's commercial product (e.g., Apple Watch).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The focus on the "design as a whole" could support infringement if the overall visual impression is the same, even if some individual solid-line features differ slightly.
- Evidence for a Narrower Interpretation: The defense may argue that the claim is limited to the exact ornamental features shown in the solid-line drawings. Any deviation in the accused product from those specific lines, such as different housing contours or sensor patterns, may support a finding of non-infringement.
VI. Other Allegations
Willful Infringement
The complaint alleges that Defendants' infringement was willful for all four asserted patents (Compl. ¶¶46, 53, 60, 67). The allegations are primarily based on Defendants' alleged knowledge of Apple's patent rights, purportedly gained during prior litigation Masimo initiated against Apple (Compl. ¶40). The complaint further argues that the design of the W1 "so closely resembles Apple Watch that the only plausible inference is that Defendants copied Apple Watch" (Compl. ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely focus on a few central issues for the court's determination:
- A core issue will be one of visual similarity: Does the overall ornamental design of the Masimo W1 and its charger create a visual impression so similar to Apple's patented designs that it would deceive an ordinary observer, or are the differences in detail sufficient to distinguish them?
- A second key question will be one of intent and damages: Given the extensive litigation history between the parties, do the facts support the allegation that Masimo copied the designs with knowledge of Apple's patents, which would be central to the claim for willful infringement and the request for disgorgement of profits?
- The case may also raise a question of design distinction: With multiple, similar design patents asserted against the same product, a question arises as to whether the subtle differences between the designs claimed in the '279, '842, and '936 patents are all simultaneously infringed, or if the accused product is closer to one claimed design than another.