Lost In The Latest Apple Watch Patent Battle: The ITC Loophole Creates A Mess
from the two-bites-at-the-apple dept
If you follow tech news at all, you likely heard some stuff about the potential for an Apple Watch ban over patent infringement. It was all over the news. Apple had pulled its high end watches from its store last week, following an ITC ruling from earlier this year claiming that Apple’s blood oxygen reading sensor in the watch violated the patents of a company by the name of Masimo. The patent claim here might even have some level of validity, given the history of how Apple ended up developing such tech.
Then, last week, there were claims that the Biden administration could step in and block the the enforcement of the ITC’s ruling. But that always seemed unlikely (even if Obama did step in a decade ago to block a similar enforcement of an ITC ruling saying that Apple infringed on Samsung patents).
You also might have heard the news yesterday that Apple’s watches were going back on sale following an appeals court stepping in to halt the import ban. Of course, many articles about this failed to mention which court stopped the ban, so we’ll help you out on that one. It was the Court of Appeals for the Federal Circuit (CAFC) granting the stay of the ITC’s order in a two page order while it reviews it.
If all of this sounds vaguely familiar, well, it should. Almost exactly a year ago, we wrote about something that sounded nearly identical. The ITC had said it was going to ban the import of Apple watches, after saying that Apple infringed on a patent from a different company, AliveCor, regarding heart rate tracking (as opposed to blood oxygen tracking). In that case, also, the Biden administration chose not to step in and veto the ITC. And, also, in that case, the ITC ban was put on hold while Apple and AliveCor continued to fight things out in court. (One major difference in the AliveCor story is that the Patent Trial and Appeal Board invalidated AliveCor’s patents even before the ITC ruled, which made things… well… weird.)
But, really, what this should be doing is shining a bigger light on the silly ITC loophole through which both of these cases happened. We’ve been writing about the ITC loophole for over 15 years. It basically is a mechanism that gives patent holders two separate chances to file a lawsuit against a company for patent infringement, as the ITC process can happen in parallel with a case in federal court for patent infringement.
While the ITC is limited in the remedies it can issue (it can’t order a company to pay up, it can only block the import of goods from abroad), it leads to these weird situations where the ITC can effectively route around the courts and issue a separate ban order (like these two in the past year or so regarding Apple Watches) regardless of what a court finds (or if the Patent Office admits it made a mistake in issuing the patent).
This whole process is a mess. There is an Article III court process for reviewing if someone infringed a patent or not. There’s no need for another agency, one unrelated to patents, to have the authority to review the case separately. All it does is give patent holders an extra shot at trying to force another company to pay up.
In this case (as with the AliveCor situation), at least, it seems that the CAFC is stepping in to say “hey, let’s wait on the ITC bans until the entire court process has played out,” but that just reinforces the idea that the ITC process is confusing and duplicative.
Let the courts go through their process, including appeals, and if by the end of that process it’s determined that one company infringed on another’s patents, and then is unable to negotiate a license, then open up the ITC process to put in place an import ban. At that point, it’s been thoroughly adjudicated in courts of law, rather than through the administrative ITC process, and avoids situations like this where an import ban threatens to block an entire product before it’s been fully adjudicated in court.
Filed Under: apple watch, import ban, itc, itc loophole, patents, ustr
Companies: alivecor, apple, masimo
Comments on “Lost In The Latest Apple Watch Patent Battle: The ITC Loophole Creates A Mess”
Still don't understand...
I still don’t get it. Blood oxymeters using a light have been around for decades. What special tech could create a patent on that? Is this like patenting “click to buy” or email, which also claimed to be patented?
I would think that what constitutes a novel patentable idea needs to be better defined.
Re:
That’s the problem with software patents, you cannot deposit a patent on an idea but on a implementation (without having to look at the code). So if the behavior is the same as described in patent, it must be the same “way of working”, i.e. the same implementation.
It has no much to do with functionalities, just how close it works like described.
So yes, every piece of software, from right-click to email, could have been patented, in theory.
In practice, many countries refuse software patents since… it’s just a mess.
Re:
My understanding is that this patent covers a specific geometry and set of wavelengths allowing for reflectance rather than the historically use transmissive pulse oximetry. This is very much not a software patent, though it does contain analysis measures.
https://patents.google.com/patent/US10945648B2/en
Is there a paragraph missing at the beginning? Posts don’t usually start with the word “then”.
Re:
Indeed there was. Don’t know how that happened but it’s been returned.
While you're at it.....disband the PTAB as well
OK, so the ITC gives patent owners a second avenue for enforcing a patent. You neglect to note that there is also a second path, in addition to the federal courts, for an accused infringer to challenge validity – the Patent Trial and Appeal Board (PTAB). Should we shut them down also? (By the way, the ITC is most definitely a patent-specialist tribunal, having heard “Section 337” cases for many decades).
Re:
This miscategorizes the PTAB and the IPR process. That is not a wholly separate enforcement process. Rather it is within the purview of the PTO, who issued the original patent, to be notified when it made a mistake and to review the initial granting to see if it should be revoked over a mistake.
That’s not a wholly separate process unrelated to the patent granting or the adjudication.
The Mess Works Well for Big Tech
The net result is that inventors have overcome endless hurdles and expenses in order to stop a big corporation who stole their invention. It takes decades and tens of millions of dollars to get to the end of litigation. Meanwhile, the big tech h infringer has lobbied the Whitehouse and Congress and Supreme Court to change the rules and appoint judges and USPTO officials to take their side. There really isn’t a chance for an inventor to protect their rights against a multi-trillion dollar corporation like Apple.