DCT

1:22-cv-01378

Apple Inc v. Masimo Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01378, D. Del., 10/20/2022
  • Venue Allegations: Venue is asserted in the District of Delaware on the basis that both Defendants are Delaware entities and therefore reside in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Masimo W1 smartwatch infringes six patents related to the design, biometric sensing technology, and user interface of wearable electronic devices.
  • Technical Context: The technology at issue involves the integration of complex functionalities, such as electrocardiogram (ECG) sensors, optical heart rate monitors, and wireless charging, into the compact form factor of a consumer smartwatch.
  • Key Procedural History: The complaint extensively details prior litigation between the parties, including a patent infringement lawsuit and an International Trade Commission (ITC) investigation initiated by Masimo against Apple. Apple alleges that Masimo developed the accused W1 watch after gaining access to Apple's confidential information and source code during discovery in that prior litigation.

Case Timeline

Date Event
2008-11-05 Earliest Priority Date (’257 Patent)
2014-09-02 Earliest Priority Date (’783, ’491, ’483 Patents)
2015-04-01 Apple Watch First-Generation Launch
2017-05-16 Earliest Priority Date (’352 Patent)
2017-09-05 Earliest Priority Date (’054 Patent)
2018-09-18 ’257 Patent Issued
2020-01-01 Masimo files patent lawsuit against Apple
2020-04-21 ’783 Patent Issued
2021-03-09 ’491 Patent Issued
2021-04-27 ’054 Patent Issued
2021-06-01 Masimo files ITC complaint against Apple
2021-08-31 ’352 Patent Issued
2022-01-01 Masimo W1 Unveiled
2022-08-31 Masimo W1 Public Release
2022-10-18 ’483 Patent Issued
2022-10-20 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,076,257 - “Seamlessly Embedded Heart Rate Monitor” (Issued Sep. 18, 2018)

The Invention Explained

  • Problem Addressed: The patent’s background describes prior biometric sensors on electronic devices as being aesthetically unpleasing or requiring cumbersome user actions, such as placing a finger on exposed leads, which could discourage use. (’257 Patent, col. 1:50-64).
  • The Patented Solution: The invention proposes an electronic device with a cardiac sensor where the leads are "seamlessly integrated" by being positioned underneath the exterior surface of the device enclosure. (’257 Patent, col. 2:7-13). This configuration allows the user's electrical signals to be transmitted through the device housing to the internal leads, enabling cardiac monitoring without visibly or haptically distinct sensors on the device exterior. (’257 Patent, col. 2:63-67).
  • Technical Importance: This design philosophy allows for the integration of sophisticated biometric sensors into consumer electronics without compromising the device's industrial design or user experience. (’257 Patent, col. 1:12-14).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶45).
  • The essential elements of Claim 1 include:
    • An electronic device for detecting a user's cardiac signal, comprising an enclosure.
    • A heart sensor with a first lead comprising a first pad that is embedded in a first portion of the enclosure.
    • The first pad is positioned underneath the exterior surface of that first portion.
    • The first pad is configured to detect a first electrical signal via the user's skin contacting the exterior surface of that first portion.
    • A second lead with a second pad, also embedded in a second portion of the enclosure, to detect a second electrical signal.
    • A processor coupled to the sensor to receive and process the signals via connectors from the first and second pads.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,627,783 - “Wearable Electronic Device” (Issued Apr. 21, 2020)

The Invention Explained

  • Problem Addressed: The patent background notes that traditional wearable electronic devices often have limited or specialized functionality and aims to provide a device with a wider, integrated feature set in a compact form. (’783 Patent, col. 1:30-43).
  • The Patented Solution: The invention describes a specific construction for a wearable electronic device that integrates a biosensor module and a wireless charging coil into the back of the device. A single "cover" is disposed over both the biosensor module and the charging coil, and this cover is configured to simultaneously pass optical signals (for the sensor) and wireless power (for the coil). (’783 Patent, Claim 9, col. 59:5-24). This dual-pass-through capability allows for a sealed, multi-function device back.
  • Technical Importance: This integrated design enables a compact, water-resistant wearable device that can perform both health monitoring and wireless charging through a single, continuous rear surface, which is a significant design challenge. (’783 Patent, col. 2:44-56).

Key Claims at a Glance

  • The complaint asserts at least independent claim 9. (Compl. ¶61).
  • The essential elements of Claim 9 include:
    • A wearable electronic device with a housing comprising a bottom portion defining an opening.
    • A biosensor module aligned with the opening.
    • A wireless charging receive coil positioned within the housing and aligned with the opening.
    • A battery coupled to the wireless charging receive coil.
    • A cover disposed over the biosensor module.
    • The cover is configured to pass optical signals to and from the biosensor module.
    • The cover is also configured to pass wireless power to the wireless charging receive coil.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

Multi-Patent Capsule: U.S. Patent No. 10,942,491

  • Patent Identification: U.S. Patent No. 10,942,491, “Wearable Electronic Device,” issued March 9, 2021.
  • Technology Synopsis: This patent describes a wearable device with a conductive housing that has two openings. The invention specifies a non-conductive back cover positioned over the second opening, which allows a wireless charging coil located below it to inductively couple to an external charger through the non-conductive material. (’491 Patent, Abstract).
  • Asserted Claims: Independent claim 7. (Compl. ¶77).
  • Accused Features: The complaint alleges that the Masimo W1's conductive housing, band, display, non-conductive back cover, biosensor module, and wireless charging receive coil infringe the ’491 Patent. (Compl. ¶¶80-85).

Multi-Patent Capsule: U.S. Patent No. 10,987,054

  • Patent Identification: U.S. Patent No. 10,987,054, “Wearable Electronic Device with Electrodes for Sensing Biological Parameters,” issued April 27, 2021.
  • Technology Synopsis: This patent details a wearable device with a specific arrangement of electrodes for measuring biological parameters like an ECG. It claims a rectangular housing with a circular rear opening, over which a "carrier assembly" is placed. This assembly contains a rear electrode for wrist contact, an optical sensor system, and is paired with a "side electrode" on the housing for finger contact. (’054 Patent, Abstract).
  • Asserted Claims: Independent claim 9. (Compl. ¶94).
  • Accused Features: The complaint alleges infringement by the Masimo W1's rectangular housing, circular rear opening, front cover, display, carrier assembly with rear electrodes, optical sensor system, and a side electrode. (Compl. ¶¶97-103).

Multi-Patent Capsule: U.S. Patent No. 11,106,352

  • Patent Identification: U.S. Patent No. 11,106,352, “Devices, Methods, and Graphical User Interfaces for Accessing Notifications,” issued August 31, 2021.
  • Technology Synopsis: This patent describes a user interface method for a device in a power-saving state. It claims a system where a first input (e.g., a swipe in a first direction) from a "wake screen" displays a "home screen" with application icons, while a second, different input (e.g., a swipe in a second direction) displays a "widget screen" with application content. (’352 Patent, Abstract).
  • Asserted Claims: Independent claim 9. (Compl. ¶112).
  • Accused Features: The W1's user interface is accused of infringement, specifically its alleged behavior of displaying a "main menu" (home screen) upon a left swipe from the watch face (wake screen), and a "watch status screen" (widget screen) upon a downward swipe. (Compl. ¶¶119-120).

Multi-Patent Capsule: U.S. Patent No. 11,474,483

  • Patent Identification: U.S. Patent No. 11,474,483, “Wearable Electronic Device,” issued October 18, 2022.
  • Technology Synopsis: This patent discloses a wearable device configured to measure two different physiological parameters using two different sensor types. It claims a biosensor module that uses an optical sensor to measure a first parameter, and a set of three distinct electrodes (two on the rear, one on the side) to measure a second parameter, such as an ECG. The rear cover has a specific "protruding convex surface" with an optically transparent window. (’483 Patent, Abstract).
  • Asserted Claims: Independent claim 1. (Compl. ¶129).
  • Accused Features: The Masimo W1 is accused of infringing with its housing, display, and biosensor module, which allegedly includes a rear cover with a protruding convex surface and transparent window, an optical sensor for vitals, and a three-electrode system (rear and side) for ECG measurements. (Compl. ¶¶132, 136-141).

III. The Accused Instrumentality

  • Product Identification: The accused products are the Masimo W1 device and its accompanying wireless charger (together, "W1"). (Compl. ¶13).
  • Functionality and Market Context: The Masimo W1 is a consumer smartwatch marketed as a health monitoring device. (Compl. ¶3). The complaint alleges it provides functionalities including electrocardiogram (ECG) measurement, heart rate monitoring, and other health data tracking. (Compl. ¶47, 49). The device features a touch screen user interface and utilizes a set of electrodes on its rear surface and side for taking ECG measurements. (Compl. ¶¶100, 102). It is charged wirelessly using a magnetic puck-style charger. (Compl. ¶66). The complaint frames the W1 as Defendant's first entry into the consumer wearables market and a direct copy of the Apple Watch, released after Defendants initiated litigation against Apple. (Compl. ¶3). A photograph from the Masimo W1 User Manual shows the device enclosure (Compl. ¶48), and another image depicts the device's ECG functionality in action (Compl. ¶47).

IV. Analysis of Infringement Allegations

10,076,257 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An electronic device for detecting a user's cardiac signal, comprising: an enclosure; The Masimo W1 is an electronic device with an enclosure for detecting a user's cardiac signal, such as through its ECG functionality. ¶47, 48 col. 3:47-50
a heart sensor configured to detect the user's cardiac signal... The Masimo W1 includes hardware for measuring a user's ECG, which constitutes a heart sensor for detecting a cardiac signal. ¶49 col. 6:5-12
a first lead comprising a first pad that is embedded in a first portion of the enclosure...wherein the first pad is positioned underneath the exterior surface of the first portion... The W1 has a first lead/pad embedded in a first portion of the enclosure (the top bezel) and positioned underneath its exterior surface, configured to receive an electrical signal from a user's finger. ¶50 col. 12:5-34
a second lead comprising a second pad that is embedded in a second portion of the enclosure...configured to detect a second electrical signal of the user's cardiac signal via the user's skin's contact... The W1 has a second lead/pad embedded in a second portion of the enclosure (the back assembly) configured to receive an electrical signal from the user's wrist. ¶51 col. 12:35-42
a processor coupled to the heart sensor and configured to receive and process the detected cardiac signal, wherein the first lead further comprises a first connector...and wherein the second lead further comprises a second connector... The W1 includes a processor that receives signals from the first and second leads via connectors to measure the user's ECG. ¶52, 55 col. 12:43-51
  • Identified Points of Contention:
    • Scope Questions: A central claim construction issue may be the meaning of "positioned underneath the exterior surface." The complaint alleges the "first pad" (a side or top electrode) is underneath the exterior surface of the bezel. (Compl. ¶50). A key question for the court will be whether an electrode that is accessible for a user to touch on the device's bezel can be considered "underneath" the exterior surface of that bezel, a term the patent uses to describe a "seamless" and non-visible sensor. (’257 Patent, col. 1:50-54).
    • Technical Questions: What evidence does the complaint provide that the internal components identified in FCC teardown photos as the "First Lead / First Pad" are electrically connected and function as the claimed first lead and pad for detecting a signal through the exterior surface of the bezel, as opposed to being part of the bezel itself? (Compl. ¶50).

10,627,783 Patent Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A wearable electronic device, comprising: a housing comprising a bottom portion defining an opening; The Masimo W1 is a wearable electronic device with a housing that has a bottom portion with an opening. ¶63, 64 col. 2:44-56
a biosensor module aligned with the opening; The W1 includes a biosensor module containing optical sensors that is aligned with the opening in the housing. ¶65 col. 33:45-49
a wireless charging receive coil positioned within the housing and aligned with the opening; The W1 includes a wireless charging receive coil inside the housing, aligned with the opening. ¶66 col. 59:12-14
a battery operably coupled to the wireless charging receive coil; The W1 contains a battery that is charged by the wireless charging receive coil. ¶67 col. 59:15-17
a cover disposed over the biosensor module; wherein: the cover is configured to pass optical signals to and from the biosensor module; The W1 includes a rear cover over the biosensor module with transparent portions that pass optical signals (light) to and from the biosensor's LEDs and photodiodes. ¶68 col. 59:18-22
and the cover is configured to pass wireless power to the wireless charging receive coil. The W1's cover passes wireless power from the external charger to the internal receive coil. ¶68, 35 col. 59:23-24
  • Identified Points of Contention:
    • Scope Questions: Does the term "a cover" read on the Masimo W1's rear assembly? The claim requires a single element ("a cover") that performs two functions (passing light and passing power). The complaint’s visual evidence suggests the W1's back assembly has distinct transparent "windows" for optical signals and other areas through which power is transferred. (Compl. ¶68, p.33). The dispute may focus on whether this multi-component assembly constitutes the single "cover" recited in the claim.
    • Technical Questions: What evidence does the complaint provide that the same material portions of the W1's cover are configured to perform both functions? The complaint shows a marketing image labeling "Optical Signals" passing through a central transparent area, while alleging the entire "Cover" passes wireless power, raising the question of whether these are functionally and structurally distinct regions of the same component. (Compl. p.33).

V. Key Claim Terms for Construction

For the ’257 Patent

  • The Term: "positioned underneath the exterior surface"
  • Context and Importance: This term is the core of the patent's claimed novelty of a "seamless" sensor. The infringement analysis will depend on whether the Masimo W1's electrode, which is designed to be touched by the user's finger on the device bezel, can be considered "underneath" that bezel's exterior surface. Practitioners may focus on this term because it appears to create a factual tension with the accused product's design.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The Abstract notes that in some embodiments, "the leads can be coupled to pads placed on the exterior of the housing." (’257 Patent, Abstract). This language suggests the inventive concept may not strictly require the sensing contact point to be below the surface, but rather the underlying lead component.
    • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the goal of hiding the sensor from view to improve aesthetics, stating the pads should not be "visibly or haptically distinguishable on the device." (’257 Patent, Abstract; col. 2:63-67). This purpose-driven language may support a narrower construction requiring the entire sensor structure, including the point of signal detection, to be physically below the outermost plane of the enclosure.

For the ’783 Patent

  • The Term: "a cover"
  • Context and Importance: Claim 9 recites "a cover" (singular) that is configured to perform two distinct functions: passing optical signals and passing wireless power. The infringement case may turn on whether the Masimo W1's multi-part rear assembly, which appears to have separate transparent windows and other regions, can be construed as a single "cover."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language requires the cover to be "disposed over the biosensor module," not necessarily the charging coil. The patent's summary describes a "rear cover disposed over the biosensor module" that may include an "optically transparent rear cover." (’783 Patent, col. 33:50-54). This could suggest the "cover" is the main structural element, which can contain specialized sub-regions like windows without ceasing to be "a cover."
    • Evidence for a Narrower Interpretation: The patent's figures, such as Fig. 16, depict the rear component (1602) as a single, visually unitary piece that covers the entire back assembly. (’783 Patent, Fig. 16). An argument could be made that this embodiment defines the scope of "a cover" as a single, monolithic component, not a composite assembly of different materials and parts.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges Defendants induce infringement by providing customers with the Masimo W1 and instructions, such as user manuals, on how to use its features (e.g., taking an ECG) in a manner that directly infringes Apple's patents. (Compl. ¶¶54, 70, 87, 105, 122, 143). The complaint also alleges contributory infringement, stating the W1 is a material part of the patented inventions, is known to be especially adapted for infringing use, and is not a staple article of commerce suitable for substantial non-infringing use. (Compl. ¶¶55, 71, 88, 106, 123, 144).
  • Willful Infringement: Willfulness is alleged based on Defendants' pre-suit knowledge of Apple's patent portfolio. (Compl. ¶40). The complaint asserts that Masimo carefully studied Apple's IP for its own litigation campaign against Apple, citing "numerous Apple Watch patents" in its own legal filings, which suggests Masimo knew of or was willfully blind to the patents-in-suit. (Compl. ¶40).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of structural interpretation: can the claim term "positioned underneath the exterior surface" in the ’257 patent, which is described as creating a "seamless" and invisible sensor, be construed to cover the Masimo W1's user-facing electrode on its bezel? Similarly, for several design patents, can a rear assembly with visibly distinct transparent windows and opaque sections be considered the single claimed "cover"?
  • A key evidentiary question will be one of functional mapping: does the complaint provide sufficient technical evidence to demonstrate that the specific internal components shown in FCC teardown photographs perform the exact functions required by the claims? For instance, does the W1's user interface for navigating between screens from a "wake" state perform the specific, criteria-dependent steps required by the asserted claim of the ’352 patent?
  • A central narrative question shaping the litigation will be the impact of the parties' history: to what extent will the court consider Apple's allegations that the accused product is a "copy" developed only after Masimo, as a plaintiff in a prior case, received access to Apple's confidential design documents and source code?