Our Patent Case Summaries provide a weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Apple Inc. v. International Trade Commission, et al.
No. 2024-1285 (Fed. Cir. (ITC) Mar. 19, 2026). Opinion by Stark, joined by Lourie and Reyna.
Masimo owns patents that generally relate to user-worn devices that noninvasively measure blood oxygen saturation. Masimo initiated an investigation in the International Trade Commission accusing Apple of violating § 337 of the Tariff Act based on the importation and sale of certain Apple Watch models. The Commission agreed with Masimo and issued a limited exclusion order barring importation of the infringing Apple Watches. Apple appealed.
The Federal Circuit found no error in the Commission’s domestic industry determination, its validity ruling, or its infringement findings, and thus affirmed.
First, addressing the technical prong of the domestic industry requirement, the Federal Circuit rejected Apple’s arguments that the Commission impermissibly relied on a “hypothetical” Masimo Watch rather than an actual article. The Federal Circuit explained that a complainant is not required “to identify, in its complaint, the exact physical article upon which it may ultimately rely throughout a § 337 investigation. It is sufficient for the complaint to identify ‘a representative’ article.” Masimo’s complaint satisfied that requirement.
The Federal Circuit also ruled that a complainant is not required to confine its technical prong analysis “to only those individual devices a complainant physically produces in discovery.” And the court rejected Apple’s suggestion that a complainant may not rely on circumstantial evidence to prove the existence of its patent-practicing article.
The Federal Circuit then addressed whether the Masimo Watches satisfied claim limitations requiring a user-worn device that is capable of measuring blood oxygen. The Federal Circuit ruled that “substantial evidence supports the Commission’s finding that, at the time of the complaint, the Masimo Watch” met these requirements. Thus, Masimo satisfied the technical prong.
The Federal Circuit then turned to Apple’s arguments under the economic prong of the domestic industry requirement, and again upheld the ALJ’s determinations (which the Commission had adopted). The court explained that the ALJ’s conclusions were consistent with § 337(a)(3), “which allows for significant investments in aspects of production other than the patent-practicing article itself to count toward meeting the economic prong.”
The court explained that, “to be sure, not every investment in an earlier generation prototype of a patent-practicing article can necessarily be considered part of the domestic industry analysis.” “Qualifying investments must be ‘specifically tailored’ to the patent-practicing article,” such as “when there is a sufficient nexus between the earlier investment and the protected article, such that the investment can fairly be said to have been made ‘with respect to’ that article.” Applying these concepts, the Federal Circuit upheld the Commission’s finding that Masimo satisfied the economic prong.
Next, the Federal Circuit addressed Apple’s arguments on the Commission’s findings that Apple infringed and failed to prove invalidity of the infringed claims. The Federal Circuit affirmed the Commission’s claim constructions, which resolved the question of Apple’s infringement. The Federal Circuit also ruled that the Commission’s validity findings were supported by substantial evidence.
Lastly, the Federal Circuit rejected Apple’s contention that the Commission erred in concluding that prosecution laches did not render Masimo’s patents unenforceable. Apple argued that there was an unreasonable 12-year delay between Masimo filing the original application and filing the application that led to the patents-at-issue. The ALJ had found that this period “did not constitute delay at all,” crediting “testimony showing continuous prosecution activity in the asserted patents during that time.” The Federal Circuit considered these findings “entirely reasonable” and thus affirmed.
Tianma Microelectronics Co., Ltd. v. LG Display Co., Ltd.
No. IPR2025-01579 (PTAB Mar. 18, 2026) (designated precedential on Mar. 18, 2026). Decision by Squires.
The Director of the USPTO discretionarily denied institution of an IPR, ruling that a foreign government, whether as petitioner or a real party interest (RPI), “is not permitted to seek review of a patent before the Office as a petitioner in AIA proceedings.”
Addressing an issue of first impression, the Director held that the Supreme Court’s decision in Return Mail, Inc. v. United States Postal Service, which held that a U.S. federal agency “is not a ‘person’ who may petition for post-issuance review under the AIA,” applies equally to a foreign government. The Director explained that “applying Return Mail symmetrically to foreign governments places those governments on equal footing with the U.S. Government and avoids institution practice allowing petitions from some government entities and denying petitions from others.” The Director continued: “To decide otherwise would create an unfair, asymmetrical predicament: Foreign governments could challenge U.S. patents, including those owned by the U.S. Government, but the U.S. Government could not challenge patents owned by foreign governments (or anyone else’s patents).”
The Director next determined that, “for the same reasons, Return Mail also bars a petition when a foreign government is an RPI of a petitioner.” “A government cannot evade the Return Mail bar simply by enlisting a ‘person’ to do its IPR bidding.”
Applying that framework here, the Director found that the Patent Owner’s evidence sufficiently put into dispute whether the petition identified all RPIs and whether there is an RPI who is not a “person” eligible to file an IPR. Based on the Patent Owner’s showing, it became the Petitioner’s burden “to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.” The Director ruled that the Petitioner failed to carry that burden, and thus the Petitioner was deemed ineligible to file an IPR. The Director therefore denied the petition.