Two cases being argued in July at the Federal Circuit attracted amicus briefs. One of those cases is Apple Inc. v. International Trade Commission, a patent case. In this case, Apple appeals from a judgment of the International Trade Commission, arguing the Commission erred in concluding that Masimo established an existing domestic industry, in concluding that five patent claims are infringed and not invalid, and in rejecting Apple’s prosecution laches defense. This is our argument preview.
In its opening brief, Apple argued the “Commission exceeded its statutory jurisdiction by holding Masimo satisfied the domestic industry requirement’s economic and technical prongs.” Apple also contended the “Commission . . . erred by holding the five remaining (of 103 original) asserted claims not invalid.” According to Apple, the “Commission also erred in finding infringement, particularly because its ruling depended on improperly construing ordinary words like ‘over,’ ‘above,’ and ‘through.’” Lastly, Apple argued, “Masimo’s suit was barred by prosecution laches” because, “[a]fter a twelve-year delay, Masimo opportunistically acted six days after Watch Series 6 launched.”
Intervenors Masimo Corporation and Cercacor Laboratories filed a brief arguing that Apple’s “‘standard of review’ section omits certain issues and includes some not at issue.” They further contended that the “Court need not review numerous arguments that Apple failed to properly raise before either the ALJ or the Commission because Apple has waived those arguments.”
In its response, the International Trade Commission maintained it properly found that Masimo satisfied both prongs of the domestic industry requirement. It argued “substantial evidence shows that Masimo performed on-wrist testing of the blood oxygen saturation capabilities of these iterative designs prior to the complaint,” and, it says, Masimo’s labor investments were “supported by an explained methodology, corroborated, and found to be a conservative estimate.” Regarding obviousness, the Commission argued “Apple had not shown a reasonable expectation of success or that the prior art was enabling.” Moreover, it said, Apple’s “evidence about what a person of ordinary skill could do did not show by clear and convincing evidence” a reason to modify the prior art. The Commission also found the patents had sufficient written description, claim terms were properly construed and infringed, and that Apple’s “prosecution laches argument is waived.”
In Apple’s reply, it argued “Masimo and the Commission fail to identify a prior instance where the Commission exercised its extraordinary powers to protect a patent-practicing ‘article’ that (1) never existed in the form represented in the Complaint, (2) never existed in any form before the Complaint, and (3) was not clearly the subject of significant employment of domestic labor.” Apple asserted that both “Masimo and the Commission fail to justify imposing an injunction based on a complaint alleging a domestic industry through CAD drawings of a device that was purportedly ‘available on request’—but which actually did not exist.” Moreover, Apple said, “[i]n finding a domestic industry where there was none, the Commission departed from statutory mandate.” According to Apple, the Commission’s argument that “the only rules limiting its behavior are its own (inapposite) procedural regulations” is clearly wrong given “[t]he Supreme Court’s recent decision” overturning Chevron deference. “[A]ffirming the Commission’s decision,” Apple argued, “will ‘open the floodgates’ to abuse by patentees without an actual product or true domestic market.”
The App Association, Chamber of Progress, NetChoice and TechNet filed an amicus brief in support of Apple and reversal.
Oral argument is scheduled to be heard on Monday, July 7 at 10:00 am in Courtroom 203.