Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 1 of 64 Page ID #:1
`
`
`Joseph R. Re (Bar No. 134479)
`joseph.re@knobbe.com
`Stephen C. Jensen (Bar No. 149894)
`stephen.jensen@knobbe.com
`Perry D. Oldham (Bar No. 216016)
`perry.oldham@knobbe.com
`Stephen W. Larson (Bar No. 240844)
`stephen.larson@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Telephone: (949)-760-0404
`Facsimile: (949)-760-9502
`
`Attorneys for Plaintiff,
`Masimo Corporation
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`SOUTHERN DIVISION
`
`
`
`MASIMO CORPORATION,
`a Delaware corporation; and
`CERCACOR LABORATORIES, INC.,
`a Delaware corporation
`
`
`
`Plaintiffs,
`
`
`v.
`
`APPLE INC., a California corporation
`,
`
`
`
`
`
`Defendant.
`
`Case No. 8:20-cv-00048
`
`COMPLAINT FOR
`(1) PATENT INFRINGEMENT
`(2) TRADE SECRET
`MISAPPROPRIATION AND
`(3) OWNERSHIP OF PATENTS
`
`AND DEMAND FOR JURY TRIAL
`
`
`)))))))))))))))
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 2 of 64 Page ID #:2
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`Plaintiffs MASIMO CORPORATION (“Masimo”) and CERCACOR
`
`LABORATIES, INC. (“Cercacor”) hereby complain of Defendant APPLE INC.
`(“Apple”), and allege as follows:
`I. THE PARTIES
`1.
`Plaintiff Masimo is a Delaware corporation having its principal
`place of business at 52 Discovery, Irvine, California 92618.
`2.
`Plaintiff Cercacor is a Delaware corporation having its principal
`place of business at 15750 Alton Pkwy, Irvine, California 92618.
`3.
`Upon information and belief, Defendant Apple is a California
`corporation having a principal place of business at One Apple Park Way,
`Cupertino, California, 95014.
`II. JURISDICTION AND VENUE
`4.
`This civil action includes claims for patent infringement arising
`under the patent laws of the United States, 35 U.S.C. §§ 100, et seq., more
`particularly, 35 U.S.C. §§ 271 and 281. This Complaint further alleges trade
`secret misappropriation and seeks a declaration of ownership of certain patents
`and patent applications, and, pursuant to 35 U.S.C. § 256, correction of
`inventorship of certain patents.
`5.
`This Court has subject matter jurisdiction pursuant to 28 U.S.C.
`§§ 1331, 1338(a), and 1367(a).
`6.
`Apple has its principal place of business in California. Apple is
`subject to personal jurisdiction in California and has committed the acts
`complained of in this Judicial District.
`7.
`Venue is proper in the Southern Division of the Central District of
`California pursuant to 28 U.S.C. § 1400(b) with respect to patent infringement
`because Defendant has a regular and established place of business in the County
`of Orange within the Central District of California and has committed acts of
`infringement in this Judicial District. Defendant also has committed acts of
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 3 of 64 Page ID #:3
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`misappropriation in this Judicial District. Thus, venue is proper pursuant to 28
`U.S.C. §§ 1391(b) because a substantial part of the events or omissions giving
`rise to the claim occurred in this Judicial District.
`III. STATEMENT OF THE CASE
`8.
`This action seeks relief for the theft of Plaintiffs’ highly
`confidential information and trade secrets, and infringement of Masimo’s
`patents by Defendant, and ownership of patents assigned to or filed by Apple on
`subject matter that belongs to Masimo.
`IV. STATEMENT OF FACTS
`9. Masimo is a medical technology company that revolutionized non-
`invasive monitoring of physiological parameters, such as pulse rate, arterial
`oxygen saturation and many others.
`10. Most of these parameters are measured using light that is
`transmitted through the body tissue. The received light, that has been attenuated
`by the various components of the body tissue, including the blood, is known in
`the industry as a photoplethysmograph or “PPG.” The transmission and receipt
`of these light signals is typically accomplished through a sensor that is applied
`to a body part such as a finger, arm, toe, forehead or ear.
`11. Before Masimo, these non-invasive measurements from the PPG
`were plagued by unreliability, often when the measurement was needed most,
`due to the person moving or having low peripheral blood flow (known as “low
`perfusion”). The industry had essentially given up on solving these problems,
`concluding they were largely unsolvable. In the medical context, clinicians had
`to live with the results – patient monitors gave excessive false alarms, froze
`their measurements for prolonged periods of time despite potential changes in
`the physiological parameter (e.g., oxygen saturation or pulse rate), delayed
`notification of alarms due to long averaging times of sensor data, produced
`inaccurate measurements, or were unable to obtain data on the most critical
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 4 of 64 Page ID #:4
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`patients and babies who cannot be instructed to stay still. Masimo’s pioneering
`technology, known as Masimo Signal Extraction Technology (“Masimo SET”),
`solved this problem and dramatically improved the reliability of monitoring and
`reporting physiological signals derived from the PPG.
`12. Following its initial success with Masimo SET, Masimo invested
`heavily in developing additional breakthrough measurement technologies, such
`as non-invasively measuring
`total hemoglobin, carboxyhemoglobin, and
`methemoglobin. Masimo has continued to innovate, succeeding where others
`have consistently failed. Masimo was the first, and remains the only, company
`delivering these game-changing technologies to hospitals in the United States.
`Use of Masimo’s technology in the clinical setting has been proven to reduce
`blindness in premature infants, detect congenital heart disease in infants, save
`lives on the general care floor and post-surgery, and improve transfusion
`management, while saving money.
`13. From its inception, Masimo has continuously developed cutting-
`edge noninvasive patient monitoring technologies. Masimo sought and received
`numerous U.S. patents for many of its inventions. Masimo’s revolutionary
`technology was a key to its gaining significant market praise and penetration.
`After introduction into the market, many competitors, much larger than
`Masimo, used Masimo’s technology without a license, resulting in patent
`infringement lawsuits that ultimately confirmed the validity of Masimo’s
`innovations. But, Masimo maintains some technology as trade secrets. Masimo
`also closely guards its future product and market plans. Only select employees
`have knowledge of and access to these guarded secrets.
`14. Masimo’s innovations also include important advances in sensor
`technologies that work together as part of Masimo’s system and algorithms.
`Masimo’s sensors are integral to the success of the revolutionary technologies
`Masimo has developed.
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 5 of 64 Page ID #:5
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`15.
`In 1998, Masimo spun certain technologies off into a new
`company, Masimo Laboratories, Inc. or “Masimo Labs,” to further research and
`develop the technologies. The name of the company was later changed to
`“Cercacor.” Cercacor and Masimo have a cross-license agreement to facilitate
`confidential collaboration between the companies. Cercacor is not owned by
`Masimo.
`16. Like Masimo, Cercacor is an innovator of non-invasive monitoring
`technologies. Cercacor is on the frontline of understanding how measuring,
`tracking, and analyzing physiological parameters can impact pre-diabetic and
`diabetic patients, sports training and performance and overall health and
`wellness principally in the consumer market.
` Cercacor continued the
`development that started at Masimo on non-invasive total hemoglobin (SpHb),
`methemoglobin (SpMet), and carboxyhemoglobin (SpCO®) and other non-
`invasive physiological parameters.
`17. Leading hospitals around the world use Cercacor technology
`licensed to Masimo and sold under the name Masimo rainbow SET. Like
`Masimo, Cercacor also maintains some technology as trade secrets, and
`Cercacor closely guards its future product and market plans. Only select
`employees have knowledge of and access to these guarded secrets.
`18. Masimo and Cercacor carefully guard the secrecy of their
`confidential information and documents. For example, Masimo and Cercacor
`have policies regarding labeling confidential information and documents as
`“CONFIDENTIAL AND PROPRIETARY.”
` They also restrict
`these
`documents and information from disclosure to third parties and employees on a
`need-to-know basis. Masimo and Cercacor also have policies in place regarding
`the use of computers and related equipment that govern how their computer
`systems may be used. Those policies also govern the protection of Masimo’s
`and Cercacor’s confidential information. Both Masimo and Cercacor have
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 6 of 64 Page ID #:6
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`document management systems that restrict access to confidential documents to
`only those employees with proper security credentials and a need for access.
`Masimo and Cercacor also require employees to sign agreements precluding the
`employees from disclosing or making use of any confidential information
`except as authorized by Masimo and Cercacor and as necessary for the
`performance of the employees’ duties. Masimo and Cercacor also require third
`parties, including customers, to execute confidential non-disclosure agreements.
`Masimo and Cercacor implemented such policies and procedures to maintain
`the confidentiality of sensitive information. These policies remain in place
`today.
`19.
`In 2013, Apple contacted Masimo and asked to meet regarding a
`potential collaboration. Apple told Masimo that Apple would like to understand
`more about Masimo’s technology to potentially integrate that technology into
`Apple’s products. Apple and Masimo later entered into a confidentiality
`agreement, and Masimo’s management met with Apple. The meetings included
`confidential discussions of Masimo’s technology. After what seemed to
`Masimo to have been productive meetings, Apple quickly began trying to hire
`Masimo employees, including engineers and key management.
`20. Masimo employed Michael O’Reilly as its Chief Medical Officer
`and Executive Vice President for Medical Affairs beginning in January 2008.
`As part of the Masimo executive team, O’Reilly was privy to extremely
`sensitive information, including information about mobile medical products and
`applications, wellness applications, clinical data gathering and analytics, and
`other technology of Masimo. Upon information and belief, Apple employed
`O’Reilly in July 2013, shortly after the meetings with Masimo, to assist in
`wellness and mobile applications that include non-invasive measurement of
`physiological parameters. Not long after, by December of 2013, O’Reilly was
`already meeting with the FDA on behalf of Apple to discuss medical
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 7 of 64 Page ID #:7
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`applications and discuss medical products that non-invasively measures blood
`constituents.
`21. Apple systematically recruited other key Masimo personnel, such
`as Marcelo Lamego, who was the former Chief Technical Officer of Cercacor
`and a former Research Scientist at Masimo. Lamego had unfettered access to
`Plaintiffs’ highly confidential technical information. He was trained and
`mentored at Masimo by the most skilled engineers and scientists, and was
`taught about the keys to effective non-invasive monitoring, something he was
`not involved in prior to Masimo. He was also exposed to guarded secrets
`regarding mobile medical products, including key technology and advance plans
`for future products.
`22. Given what appeared to be a targeted effort to obtain information
`and expertise from Masimo and Cercacor, Masimo and Cercacor warned Apple
`about respecting their rights.
`23. Shortly after joining Apple in January 2014, Lamego pursued on
`behalf of Apple numerous patent applications on technologies he was intimately
`involved in at Plaintiffs Cercacor and Masimo, and with which he had no prior
`experience or knowledge.
`24. For example, Lamego is named as an inventor on U.S. Provisional
`Patent Application No. 62/043,294, filed Aug. 28, 2014 and titled “Reflective
`Surface Treatments for Optical Sensors.” Related applications that also name
`Lamego as an inventor include U.S Patent Application Nos. 14/740,196 and
`16/114,003, which issued as U.S. Patent Nos. 10,078,052 and 10,247,670.
`25. As another example, Lamego is named as an inventor on U.S.
`Provisional Patent Application No. 62/047,818, filed Sep. 9, 2014, entitled
`“Modulation and Demodulation Techniques for a Health Monitoring System.”
`A related application that names Lamego as the sole inventor includes U.S
`Patent Application No. 14/621,268, which issued as U.S. Patent No. 10,219,754.
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`26. As another example, Lamego is named as an inventor on U.S.
`Provisional Patent Application No. 62/056,299, filed on Sep. 26, 2014, and
`entitled “Electronic Device that Computes Health Data.” Related applications
`that also name Lamego as the sole inventor include U.S Patent Application Nos.
`14/617,422, 15/667,832, and 16/700,710. The ’422 Application issued as U.S.
`Patent No. 9,723,997 and the ’832 Application issued as U.S. Patent No.
`10,524,671.
`27. As another example, Lamego is named as an inventor on U.S.
`Provisional Patent Application No. 62/057,089, filed on Sep. 29, 2014, and
`entitled “Methods and Systems for Modulation and Demodulation of Optical
`Signals.” Related applications that also name Lamego as an inventor include
`U.S Patent Application Nos. 14/618,664 and 15/960,507. The ’664 Application
`issued as U.S. Patent Nos. 9,952,095.
`28. Upon information and belief, Apple announced the first version of
`its watch in September 2014, and began shipping its watch in April 2015. The
`Apple Watch Series 3 was released on September 22, 2017, and upon
`information and belief had significant performance issues with the non-invasive
`physiological measurements. Apple announced The Apple Watch Series 4 on
`September 12, 2018, and upon information and belief, that watch includes
`technology that tracks Masimo’s technology to solve some of the performance
`issues, including technology to which Lamego was exposed at Masimo and also
`technology for which he was an inventor while at Cercacor. The Apple Watch
`Series 5 was announced on September 10, 2019 and released on September 20,
`2019. Upon information and belief, the Apple Watch Series 5 also includes
`Masimo’s technology to solve some of the prior performance issues, including
`technology as to which Lamego was an inventor while at Cercacor.
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 9 of 64 Page ID #:9
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`V. THE PATENTS-IN-SUIT
`29. Masimo is the owner by assignment of U.S. Patent No. 10,258,265
`entitled “Multi-stream data collection system for noninvasive measurement of
`blood constituents” (“the ’265 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on April 16, 2019. A true and
`correct copy of the ’265 patent is attached hereto as Exhibit 1.
`30. Masimo is the owner by assignment of U.S. Patent No. 10,258,266
`entitled “Multi-stream data collection system for noninvasive measurement of
`blood constituents” (“the ’266 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on April 16, 2019. A true and
`correct copy of the ’266 patent is attached hereto as Exhibit 2.
`31. Masimo is the owner by assignment of U.S. Patent No. 10,292,628
`entitled “Multi-stream data collection system for noninvasive measurement of
`blood constituents” (“the ’628 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on May 21, 2019. A true and
`correct copy of the ’628 patent is attached hereto as Exhibit 3.
`32. Masimo is the owner by assignment of U.S. Patent No. 10,299,708
`entitled “Multi-stream data collection system for noninvasive measurement of
`blood constituents” (“the ’708 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on May 21, 2019. A true and
`correct copy of the ’708 patent is attached hereto as Exhibit 4.
`33. Masimo is the owner by assignment of U.S. Patent No. 10,376,190
`entitled “Multi-stream data collection system for noninvasive measurement of
`blood constituents” (“the ’190 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on August 13, 2019. A true and
`correct copy of the ’190 patent is attached hereto as Exhibit 5.
`34. Masimo is the owner by assignment of U.S. Patent No. 10,376,191
`entitled “Multi-stream data collection system for noninvasive measurement of
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`blood constituents” (“the ’191 patent”), which the United States Patent and
`Trademark Office lawfully and duly issued on August 13, 2019. A true and
`correct copy of the ’191 patent is attached hereto as Exhibit 6.
`35. Masimo is the owner by assignment of U.S. Patent No. 10,470,695
`entitled “Advanced pulse oximetry sensor” (“the ’695 patent”), which the
`United States Patent and Trademark Office lawfully and duly issued on
`November 12, 2019. A true and correct copy of the ’695 patent is attached
`hereto as Exhibit 7.
`36. Masimo is the owner by assignment of U.S. Patent No. 6,771,994
`entitled “Pulse oximeter probe-off detection system” (“the ’994 patent”), which
`the United States Patent and Trademark Office lawfully and duly issued on
`August 3, 2004. A true and correct copy of the ’994 patent is attached hereto as
`Exhibit 8.
`37. Masimo is the owner by assignment of U.S. Patent No. 8,457,703
`entitled “Low power pulse oximeter” (“the ’703 patent”), which the United
`States Patent and Trademark Office lawfully and duly issued on June 4, 2013.
`A true and correct copy of the ’703 patent is attached hereto as Exhibit 9.
`38. Masimo is the owner by assignment of U.S. Patent No. 10,433,776
`entitled “Low power pulse oximeter” (“the ’776 patent”), which the United
`States Patent and Trademark Office lawfully and duly issued on October 8,
`2019. A true and correct copy of the ’776 patent is attached hereto as
`Exhibit 10.
`
`VI. FIRST CAUSE OF ACTION
`(INFRINGEMENT OF U.S. PATENT NO. 10,258,265)
`39. Plaintiff Masimo hereby realleges and incorporates by reference
`the allegations set forth in paragraphs 1 through 38.
`40. Upon information and belief, Defendant’s products, including at
`least the Apple Watch Series 4 and 5 devices, infringe at least Claims 1-3, 6-11,
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`13, 17, and 17-25 of the ’265 patent under at least 35 U.S.C. § 271(a), (b), and
`(c).
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`41. Upon information and belief, Defendant has directly infringed one
`or more claims of the ’265 patent through manufacture, use, sale, offer for sale,
`and/or importation into the United States of physiological monitors, including
`the Apple Watch Series 4 and 5 devices.
`42. For example, upon information and belief, in operation, the Apple
`Watch Series 4 and 5 devices include all of the limitations of Claim 1 of the
`’265 patent. The Apple Watch Series 4 and 5 devices are adapted to be worn by
`a wearer and provide an indication of a physiological parameter (for example,
`heart rate) of the wearer as shown in the image below found on the Apple
`website at https://www.apple.com/apple-watch-series-4/health/:
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`43. The Apple Watch Series 4 and 5 devices include a plurality of
`emitters of different wavelengths (for example, green and infrared LEDs) and at
`least four detectors (for example, photodiode sensors) spaced apart from each
`other as shown in the image below found on the Apple website at
`https://support.apple.com/en-us/HT204666:
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`44. The detectors output signals responsive to light from the light
`emitters attenuated by body tissue. Upon information and belief, the signals are
`indicative of a physiological parameter (for example, heart rate) of the wearer.
`45. Upon information and belief, at least some of the technology in the
`Apple Watch Series 4 and 5 devices is described in Apple’s U.S. Patent
`Application Publication 2019/0072912 (the ’912 publication). A copy of the
`publication is attached as Exhibit 11. Analysis of the Apple Watch Series 4 and
`5 devices show that the devices include a housing having a surface and a
`circular wall protruding from the surface, and a light permeable cover arranged
`above a portion of the housing and covering the detectors as described, for
`example, in Fig. 4C and the corresponding text of the ’912 publication:
`/ / /
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`46. Upon information and belief, Defendant has knowledge of
`Masimo’s patents, including the ’265 patent, at least based on O’Reilly and
`Lamego’s former positions with Masimo and Cercacor. Masimo filed
`provisional patent applications that led to the ’265 patent in August 2008, while
`O’Reilly and Lamego were with Masimo and/or Cercacor. Lamego is a named
`inventor of the ’265 patent. Defendant had knowledge of the ’265 patent no
`later than the filing of this Complaint.
`47. Upon information and belief, Defendant has actively induced
`others to infringe the ’265 patent by marketing and selling the above Apple
`Watch Series 4 and 5 devices, knowing and intending that such systems would
`be used by customers and end users in a manner that infringes the ’265 patent.
`To that end, Defendant provides instructions and teachings to its customers and
`end users that such Apple Watch Series 4 and 5 devices be used to infringe the
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`’265 patent. Defendant’s acts constitute infringement of the ’265 patent in
`violation of 35 U.S.C. § 271(b).
`48. Upon information and belief, Defendant actively induces users to
`directly infringe the asserted claims of the ’265 patent. By way of example
`only, upon
`information and belief, Defendant actively
`induces direct
`infringement of the ’265 patent by providing directions, demonstrations, guides,
`manuals, training for use, and/or other materials necessary for the use of the
`Apple Watch Series 4 and 5 devices, including use with Apple iPhones. Upon
`information and belief, Defendant knew or should have known that these
`activities would cause direct infringement.
`49. Upon
`information and belief, Defendant’s acts constitute
`contributory infringement of the ’265 patent in violation of 35 U.S.C. § 271(c).
`Upon information and belief, Defendant contributorily infringes because, among
`other things, Defendant offers to sell and/or sells within the United States,
`and/or imports into the United States, components of the Apple Watch Series 4
`and 5 devices and Apple iPhones that constitute material parts of the invention
`of the asserted claims of the ’265 patent, are not staple articles or commodities
`of commerce suitable for substantial non-infringing use and are known by
`Defendant to be especially made or especially adapted for use in an
`infringement of the ’265 patent.
`50. Defendant’s infringement of the ’265 patent is willful, deliberate,
`and intentional by continuing its acts of infringement after becoming aware of
`the ’265 patent and its infringement thereof, thus acting in reckless disregard of
`Masimo’s patent rights.
`51. Because of Defendant’s infringement of the ’265 patent, Masimo
`has suffered and will continue to suffer irreparable harm and injury, including
`monetary damages in an amount to be determined at trial.
`/ / /
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`52. Upon information and belief, unless enjoined, Defendant, and/or
`others acting on behalf of Defendant, will continue their infringing acts, thereby
`causing additional irreparable injury to Masimo for which there is no adequate
`remedy at law.
`
`VII. SECOND CAUSE OF ACTION
`(INFRINGEMENT OF U.S. PATENT NO. 10,258,266)
`53. Plaintiff Masimo hereby realleges and incorporates by reference
`the allegations set forth in paragraphs 1 through 52.
`54. Upon information and belief, Defendant’s products, including at
`least the Apple Watch Series 4 and 5 devices, infringe at least Claims 1-19 of
`the ’266 patent under at least 35 U.S.C. § 271(a), (b), and (c).
`55. Upon information and belief, Defendant has directly infringed one
`or more claims of the ’266 patent through manufacture, use, sale, offer for sale,
`and/or importation into the United States of physiological monitors, including
`the Apple Watch Series 4 and 5 devices.
`56. For example, upon information and belief, in operation, the Apple
`Watch Series 4 and 5 devices 4 and 5 devices include all of the limitations of
`Claim 1 of the ’266 patent. The Apple Watch Series 4 and 5 devices provides
`an indication of a physiological parameter (for example, heart rate) of the
`wearer as shown in the image below found on the Apple website at
`https://www.apple.com/apple-watch-series-4/health/:
`/ / /
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`57. The Apple Watch Series 4 and 5 devices a plurality of emitters that
`emit light into tissue of a user and a plurality of detectors (for example,
`photodiode sensors) that detect light that has been attenuated by tissue of the
`user as shown in the image below found on the Apple website at
`https://support.apple.com/en-us/HT204666:
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`58. Analysis of the Apple Watch Series 4 and 5 devices show that the
`devices include a housing configured to house the detectors and a lens located
`between the tissue of the user and the detectors as described, for example, in
`Fig. 4C and the corresponding text of the ’912 publication:
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`59. Upon information and belief, the lens has a single outwardly
`protruding convex surface configured to cause tissue of the user to conform to
`the protruding convex surface during operation of the noninvasive optical
`physiological sensor.
`60. Upon information and belief, Defendant has knowledge of
`Masimo’s patents, including the ’266 patent, at least based on O’Reilly and
`Lamego’s former positions with Masimo and Cercacor. Masimo filed
`provisional patent applications that led to the ’266 patent in August 2008, while
`O’Reilly and Lamego were with Masimo and/or Cercacor. Lamego is a named
`inventor of the ’266 patent. Defendant had knowledge of the ’266 patent no
`later than the filing of this Complaint.
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 18 of 64 Page ID #:18
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`61. Upon information and belief, Defendant has actively induced
`others to infringe the ’266 patent by marketing and selling the above Apple
`Watch Series 4 and 5 devices, knowing and intending that such systems would
`be used by customers and end users in a manner that infringes the ’266 patent.
`To that end, Defendant provides instructions and teachings to its customers and
`end users that such Apple Watch Series 4 and 5 devices be used to infringe the
`’266 patent. Defendant’s acts constitute infringement of the ’266 patent in
`violation of 35 U.S.C. § 271(b).
`62. Upon information and belief, Defendant actively induces users to
`directly infringe the asserted claims of the ’266 patent. By way of example
`only, upon
`information and belief, Defendant actively
`induces direct
`infringement of the ’266 patent by providing directions, demonstrations, guides,
`manuals, training for use, and/or other materials necessary for the use of the
`Apple Watch Series 4 and 5 devices. Upon information and belief, Defendant
`knew or should have known that these activities would cause direct
`infringement.
`63. Upon
`information and belief, Defendant’s acts constitute
`contributory infringement of the ’266 patent in violation of 35 U.S.C. § 271(c).
`Upon information and belief, Defendant contributorily infringes because, among
`other things, Defendant offers to sell and/or sells within the United States,
`and/or imports into the United States, components of the Apple Watch Series 4
`and 5 devices that constitute material parts of the invention of the asserted
`claims of the ’266 patent, are not staple articles or commodities of commerce
`suitable for substantial non-infringing use and are known by Defendant to be
`especially made or especially adapted for use in an infringement of the
`’266 patent.
`64. Defendant’s infringement of the ’266 patent is willful, deliberate,
`and intentional by continuing its acts of infringement after becoming aware of
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`Case 8:20-cv-00048-DOC-DFM Document 1 Filed 01/09/20 Page 19 of 64 Page ID #:19
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`the ’266 patent and its infringement thereof, thus acting in reckless disregard of
`Masimo’s patent rights.
`65. Because of Defendant’s infringement of the ’266 patent, Masimo
`has suffered and will continue to suffer irreparable harm and injury, including
`monetary damages in an amount to be determined at trial.
`66. Upon information and belief, unless enjoined, Defendant, and/or
`others acting on behalf of Defendant, will continue their infringing acts, thereby
`causing additional irreparable injury to Masimo for which there is no adequate
`remedy at law.
`
`VIII. THIRD CAUSE OF ACTION
`(INFRINGEMENT OF U.S. PATENT NO. 10,292,628)
`67. Plaintiff Masimo hereby realleges and incorporates by reference
`the allegations set forth in paragraphs 1 through 66.
`68. Upon information and belief, Defendant’s products, including at
`least the Apple Watch Series 4 and 5 devices, infringe at least Claim 1 of the
`’628 patent under at least 35 U.S.C. § 271(a), (b), and (c).
`69. Upon information and belief, Defendant has directly infringed one
`or more claims of the ’628 patent through manufacture, use, sale, offer for sale,
`and/or importation into the United States of physiological monitors, including
`the Apple Watch Series 4 and 5 devices.
`70. For example, upon information and belief, in operation, the Appl