Federal customs officials have reportedly approved Apple’s workaround to continue importing Series 9 and Ultra 2 watches if it fails in its appeal of an import ban in its patent dispute with Masimo.
The consumer tech giant has told U.S. Customs and Border Protection that redesigned watches “definitively do not contain pulse oximetry functionality,” according to a Masimo filing with the Federal Circuit that was recounted in media outlets. Masimo said the agency has signed off on Apple’s plan to get around the International Trade Commission import ban, though the decision has not yet been published in the Federal Register.
In a statement shared with MassDevice, Masimo said: “Apple’s claim that its redesigned watch does not contain pulse oximetry is a positive step toward accountability. It is especially important that one of the world’s largest and most powerful companies respects the intellectual property rights of smaller companies and complies with ITC orders when it is caught infringing.”
According to Bloomberg, Apple has already shipped modified watches to U.S. retail locations, telling the stores not to open or sell the watches until told to do so.
Masimo scored an important win last year in its yearslong patent spat, with the ITC finding in Masimo’s favor and banning the import of infringing Apple Watches with light-based pulse oximetry functionality. According to media reports, sales of the smartwatches resumed in late December after the Federal Circuit paused the ban amid an appeal.
Mike Matson, senior research analyst at Needham & Col, wondered in a research report today whether Apple’s latest move is a negotiating tactic to minimize the royalties it will eventually have to pay Masimo to keep the pulse oximetry in the Apple Watch.
BTIG analysts are waiting to see how approval of the workaround will affect the appeals court decision on whether to keep the import ban stay in place.
Masimo isn’t the only health monitoring company challenging Apple Watch patents. AliveCor also has an ongoing patent dispute. Last week, the U.S. Patent Trial and Appeal Board said it would review two Apple-owned electrocardiogram technology patents in AliveCor’s patent infringement case.