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Apple’s Legal Battles: Navigating Patent Infringement in the Tech Industry

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Apple, a global leader in technology, has been in many recent headlines for several high-profile patent infringement cases. These significant cases, including the controversies surrounding the Apple Watch, demonstrate the continuing tension between innovation and intellectual property (IP) rights within the technology industry. Apple’s litigation battles mirror the complex dynamics of protecting IP rights in a highly competitive market, from internet security patents to health monitoring features. This post will discuss Apple’s legal strategies against companies like VirnetX, Masimo, and AliveCor and what the resulting decisions mean for the broader tech industry.

Overview of Apple’s Patent Disputes

A. VirnetX: Internet Security Patents

VirnetX is a patent-licensing company that has engaged in a grueling 14-year-long legal battle with Apple over internet security patents covering VPN technology used in Apple devices.[1] Spurred by a $502.8 million jury verdict in favor of VirnetX in 2020, Apple aggressively utilized the U.S. Patent Trial and Appeal Board (PTAB) as a mechanism through which the patents held by VirnetX would be invalidated via the inter partes review (IPR) process.[2] The IPR process allows companies to contest the validity of patents they are accused of infringing before the PTAB, rather than in federal court. Companies can only request IPR review on grounds that can be raised under 35 U.S. Code §§ 102 or 103 and are based solely on prior art consisting of patents or printed publications.[3] IPR review is a common tactic used by technology giants, such as Apple, because a PTAB judgment declaring the opposing party’s patent invalid can be used to overturn patent infringement judgments against them brought in federal court.[4]

The PTAB considered both the patents in view of the prior art for secure communication over the Internet, namely an article from 1996 authored by Kiuchi and Kaihara, entitled “C—HTTP – The Development of a Secure, Closed HTTP-based Network on the Internet” (“Kiuchi”).[5] Due to this prior art, PTAB declared the challenged claims of both the VirnetX patents unpatentable.[6] VirnetX appealed to the United States Court of Appeals for the Federal Circuit from the above PTAB order, contending that the prior art established by the Kiuchi article failed to anticipate its claims.[7] The Federal Circuit had earlier remanded the issue for additional fact-finding regarding the meaning of Kiuchi in view of VirnetX’s disclaimer of indirect VPN communication.[8] Thus, the issue in front of the Federal Circuit was whether the Kiuchi prior art was an anticipator of VirnetX’s patent claims.[9] In other words, the court had to decide whether Kiuchi’s system taught a “direct-communication VPN,” as required by VirnetX’s claims, or whether it fell within the scope of VirnetX’s disclaimer, one based upon indirect communication. The court affirmed the decision of the PTAB, holding that the challenged claims of VirnetX’s ‘135 and ‘151 patents were unpatentable because Kiuchi indeed anticipated those claims, and that Kiuchi taught a direct-communication VPN consistent with the limitations of VirnetX’s patents.[10]

The Supreme Court later refused to take up VirnetX’s appeal after the lower court decided to toss out the federal jury verdict following PTAB’s invalidation of VirnetX’s patents.[11] This was a huge victory for Apple and demonstrates how technology giants like Apple can use both legal and administrative paths to weaken the claims of a patent, making it difficult for a patent holder to fight against a technology giant with deep pockets.

B. Masimo: Technology of Blood Oxygen Monitoring

Apple has also found itself in an additional lengthy patent infringement litigation with Masimo, a medical technology and device company. The Apple v. Masimo litigation underlines the critical concerns surrounding patent legislation, corporate competition, and technology innovations. Born from contentions over alleged patent violations by Apple concerning Masimo’s pulse oximetry technology, this has grown into one of the most high-profile intellectual property battles involving the MedTech sector in recent memory.

In 2020, Masimo initiated its legal proceedings against Apple for the infringement of patents on blood oxygen and pulse monitoring technologies related to different light-based physiological measurement technologies utilized by the Apple Watch devices.[12] Masimo’s claims expanded into 2021 when Masimo filed a complaint with the International Trade Commission (ITC) in pursuit of an import ban on Apple Watches utilizing the disputed technology.[13] Because of this, Apple faced significant hurdles the following year.

In 2023, the ITC ruled that Apple infringed upon Section 337 of the Tariff Act of 1930 by importing devices that contained infringing technology.[14] Accordingly, the ITC imposed an import ban on the Apple Watch Series 9 and Ultra 2 models as part of its stringent enforcement, directly impacting the availability of Apple’s products in the U.S.[15] In light of ITC’s decision, Apple decided to temporarily comply with the ITC’s ban by removing the blood oxygen feature from its newest models and concurrently filed several appeals against the decision by the ITC.[16] Additionally, Apple began lobbying efforts to shape ITC regulations to better consider the public interest in its decisions.[17] By removing the infringing feature of the Apple Watch and appealing the decision without abandonment, Apple’s approach was seemingly aimed at reducing immediate commercial impact and improving its longer-term legal and regulatory outcomes.

On October 7, 2024, the District Court of Delaware entered summary judgment in favor of Apple, dismissing Masimo’s inequitable conduct counterclaims.[18] The accusations of inequitable conduct revolved around claims that Apple’s inventors and patent attorney withheld material information from the United States Patent and Trademark Office (PTO) by failing to identify these engineers as co-inventors and failing to disclose functionality aspects of the designs underlying its smartwatch patents.[19] Central to the court’s decision was Masimo’s inability to present clear and convincing evidence showing that Apple’s inventors or its in-house patent attorney purposefully withheld relevant information from the U.S. Patent Office with the express intent of deceiving.[20]

The court emphasized that the testimonies and evidentiary records revealed no knowledge or intent to omit inventors or misdescribe the covered designs’ functional nature.[21] Further, Masimo’s reliance on the functional contributions of the engineers did not support its contention that the engineers were co-inventors of the ornamental design patents.[22] Because Masimo’s antitrust claims were predicated on a showing of inequitable conduct, they suffered the same fate.[23] The court’s judgment thus clarifies the rigorous standard of proof for success in establishing inequitable conduct, and has helped strengthen Apple’s design patents as the litigation continues.

Subsequently, on October 25, 2024 a federal jury in Delaware awarded Apple just $250 in damages after finding that Masimo’s discontinued smartwatches infringed two of Apple’s design patents.[24] Although the jury’s verdict favored Apple, it essentially permits Masimo to continue selling its current generation of smart-watch products.[25] Thus, this decision reflects a central complexity in the litigation of design patents––balancing aesthetics against functionality.[26] With appeals and other pending cases, this judgment indicates significant challenges to enforcing design patents in an evolving technology area where competing products often use similar designs.

Ultimately, the long-winded and ongoing litigation between Apple and Masimo succinctly illustrates how tech companies abide by and appeal decisions while navigating the legal hoops of patent disputes to keep their products on the market during pending litigation.

C. The Case of AliveCor: Antitrust and Patent Claims

AliveCor, a health technology company, filed a patent infringement suit against Apple in December 2020 for their use of ECG technology in the Apple Watch.[27] AliveCor accused Apple of integrating AliveCor’s heart-monitoring technology into the Apple Watch and then blocking the apps that will compete with such technology on the Apple Watch, thereby monopolizing the market.[28] After filing with the federal district court in 2020, AliveCor filed a complaint with the ITC in April 2021 on the same grounds. In its decision, the Commission entered an order temporarily banning the importation of Apple Watches models Series 9 and Ultra 2 due to infringement of AliveCor’s patents beginning in December 2023.[29] This ban, effective to date, on Apple Watch models containing AliveCor’s patented technology shows how powerful an agency like the ITC can be, and the serious consequences ITC decisions can have on Apple’s product lines.[30]

In addition to AliveCor’s patent infringement claims against Apple and those outcomes, AliveCor filed an antitrust suit in the federal district court of California, claiming that Apple illegally monopolized the market for apps monitoring heart rate with its Apple Watch.[31] Apple’s response argued that all its practices were independently developed features that would enhance user safety and make changes to improve health monitoring capability.[32] While the federal court granted Apple’s motion for summary judgment and dismissed the antitrust lawsuit,[33] AliveCor’s fight reflects the overall problem companies are having as they compete with Apple in the growing wearables market—a question of innovation versus competition—and to what degree competitive companies will try to protect their market shares against one of the largest players in the technology sector.

Conclusion

The different patent litigations involving Apple illustrate the multidimensional approach that the company takes to address intellectual property challenges. Apple has used administrative reviews, compliance measures, and intensive lobbying to soften adverse rulings commercially while trying to shape the overall regulatory landscape to its advantage. These cases also highlight the evolving role of the ITC in balancing innovation and intellectual property rights within a rapidly accelerating technology industry.

The results of these battles will not only determine Apple’s future direction but also establish a precedent for other technology companies in similar situations. As the framework surrounding emerging technology and intellectual property continues to develop, with courts and regulators seeking to balance innovation and competition, it is more important than ever that technology companies and relevant stakeholders pay close attention to this evolving legal landscape.

  1. Blake Brittain, US Supreme Court won’t review Apple’s win against $503 million patent verdict, Rueters (Feb, 20, 2024), https://www.reuters.com/legal/us-supreme-court-wont-review-apples-win-against-503-million-patent-verdict-2024-02-20/. ↑
  2. Id. ↑
  3. Inter Partes Disputes, United States Patent and Trademark Office, https://www.uspto.gov/patents/laws/america-invents-act-aia/inter-partes-disputes#:~:text=Inter%20partes%20review%20is%20a,of%20patents%20or%20printed%20publications. ↑
  4. Brittain, US Supreme Court won’t review Apple’s win against $503 million patent verdict, supra. ↑
  5. VirnetX Inc., v. Mangrove Partners Master Fund, LTD., et al., No. 20-2271 at 5 (Fed. Cir. Mar. 30, 2023), chrome-extension://efaidnbmnnnibpcajpcglclefindmkaj/https://fingfx.thomsonreuters.com/gfx/legaldocs/akpeqewjrpr/APPLE%20LAWSUIT%20PATENTS%20opinion.pdf; See also T. Kiuchi and S. Kaihara, C-HTTP-the development of a secure, closed HTTP-based network on the Internet, Proceedings of Internet Society Symposium on Network and Distributed Systems Security, San Diego, CA, USA, 1996, pp. 64-75, doi: 10.1109/NDSS.1996.492414. ↑
  6. VirnetX Inc., v. Mangrove Partners Master Fund, LTD., et al., No. 20-2271 at 5-7 (Fed. Cir. Mar. 30, 2023), chrome-extension://efaidnbmnnnibpcajpcglclefindmkaj/https://fingfx.thomsonreuters.com/gfx/legaldocs/akpeqewjrpr/APPLE%20LAWSUIT%20PATENTS%20opinion.pdf ↑
  7. Id. ↑
  8. Id. ↑
  9. Id. 6-7. ↑
  10. Id. at 14 & 22; See also Brittain, US Supreme Court won’t review Apple’s win against $503 million patent verdict, supra. ↑
  11. Brittain, US Supreme Court won’t review Apple’s win against $503 million patent verdict, supra. ↑
  12. Certain Light-Based Physiological Measurement Devices and Components Thereof, Inv. No. 337-TA-1276, USITC Pub. 17743 (86 FR 46275) (Aug. 18, 2021). ↑
  13. Certain Light-Based Physiological Measurement Devices and Components Thereof, Inv. No. 337-TA-1276, USITC Pub. 17743 (86 FR 46275) (Aug. 18, 2021). ↑
  14. Certain Light-Based Physiological Measurement Devices and Components Thereof, Inv. No. 337-TA-1276, USITC Pub. 17743 (86 FR 46275) (Oct. 26, 2023). ↑
  15. Id.; See also Kathy Gurchiek, Apple Watch Series 9 and Ultra 2 Face Legal Battle Over Masimo Patent, NPR (Dec. 18, 2023), https://www.npr.org/2023/12/18/1220125508/apple-watch-series-9-ultra-2-masimo-patent. ↑
  16. Mike Isaac, Apple Watch Oximetry Case Heads to International Trade Commission, N.Y. Times (Jan. 17, 2024), https://www.nytimes.com/2024/01/17/technology/apple-watch-oximetry-international-trade-commission.html; See also Apple Inc., How to Use the ECG App on Your Apple Watch, Apple Support (last updated Mar. 28, 2023), https://support.apple.com/en-us/120359. ↑
  17. Mike Isaac, Apple Watch Oximetry Case Heads to International Trade Commission, N.Y. Times (Jan. 17, 2024), https://www.nytimes.com/2024/01/17/technology/apple-watch-oximetry-international-trade-commission.html. ↑
  18. Apple Inc., v. Masimo Corp., et. al., Nos. 1:22-cv-01377 (JLH), 1:22-cv-01378 (JLH) (D. Del. Oct. 7, 2024). ↑
  19. Id. ↑
  20. Id. ↑
  21. Id. ↑
  22. Id. ↑
  23. Id. ↑
  24. Christopher Yasiejko, Apple Wins $250, But Little Else, at Trial on Watch Patents (2), Bloomberg Law, (Oct. 25, 2024), https://news.bloomberglaw.com/ip-law/apple-wins-250-in-mixed-jury-verdict-over-smartwatch-patents; See also Court Dockets, https://www.bloomberglaw.com/public/desktop/document/AppleIncvMasimoCorporationetalDocketNo122cv01378DDelOct202022Cour/10?doc_id=X18G6CJ85HL8RTO7P3PS6M5HKQS; See also Jeff Montgomery and Ryan Davis, Masimo Infringed 2 Apple Watch Patents, Jury Finds, LexisNexis Law360 (Oct. 25, 2024), https://www.law360.com/articles/2251556/masimo-infringed-2-apple-watch-patents-jury-finds ↑
  25. Christopher Yasiejko, Apple Wins $250, But Little Else, at Trial on Watch Patents (2), Bloomberg Law, (Oct. 25, 2024), https://news.bloomberglaw.com/ip-law/apple-wins-250-in-mixed-jury-verdict-over-smartwatch-patents ↑
  26. Id. ↑
  27. AliveCor, Inc. V. Apple, Inc., No. 6:20-cv-01112, https://medcitynews.com/wp-content/uploads/sites/7/2024/03/1.pdf. ↑
  28. Id.; See also Katie Adams, Apple Watch vs. AliveCor Technology: Which Is Better for Cardiology?, MedCity News, Mar. 2024, https://medcitynews.com/2024/03/apple-watch-alivecor-technology-cardiology/. ↑
  29. Victoria Song, Apple Watch Faces Potential ITC Ban Over Patent Dispute, The Verge, Dec. 18, 2023, https://www.theverge.com/24009254/apple-watch-itc-ban-patent-dispute; See also Emma Roth, Apple Watch Ban Set to Include Series 9 and Ultra 2 as ITC Affirms Import Block, The Verge, Dec. 18, 2023, https://www.theverge.com/2023/12/18/24006080/apple-watch-ban-series-9-ultra-2-itc-import. ↑
  30. Megan Farokhmanesh, Apple Watch Faces Possible Ban After ITC Ruling in Patent Dispute, The Verge (Mar. 19, 2024), https://www.theverge.com/24009254/apple-watch-itc-ban-patent-dispute. ↑
  31. Alivecor, Inc. v. Apple, Inc., 21-cv-03958 (N.D. Cal. Jan. 31, 2024). ↑
  32. Chance Miller, Apple Faces Antitrust Lawsuit from AliveCor Over Apple Watch ECG Technology, 9to5Mac (Feb. 6, 2024), https://9to5mac.com/2024/02/06/apple-watch-alivecore-antitrust-lawsuit/. ↑
  33. Alivecor, Inc. v. Apple, Inc., 21-cv-03958-JSW (N.D. Cal. Jan. 31, 2024). ↑
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