Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 1 of 32 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`APPLE INC.,
`
`
`
`
`v.
`
`Plaintiff,
`
`
`MASIMO CORPORATION and
`SOUND UNITED, LLC,
`
`
`
`
`Defendants.
`
`
`
`
`
`
`Civil Action No.
`
`JURY TRIAL DEMANDED
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Apple Inc. (“Apple”), for its complaint against Defendants Masimo Corporation
`
`(“Masimo”) and Sound United, LLC (“Sound United”) (together, “Defendants”), alleges as
`
`follows:
`
`INTRODUCTION
`
`1.
`
`Apple is world-renowned for creating innovative products that people love. Apple
`
`produces those innovative products through its significant investment in research and development
`
`in technology and product design. Apple’s innovations have been recognized with thousands of
`
`patents globally.
`
`2.
`
`In 2015, Apple released Apple Watch, a revolutionary consumer wearable device.
`
`Apple Watch pairs cutting-edge technology with a beautiful design and is made from the highest
`
`quality materials. As a result of Apple’s investments and advances in consumer wearables, Apple
`
`Watch is the best-selling smart watch of all time. Apple protects these investments and advances
`
`through its intellectual property (IP) rights, including patents.
`
`
`
`
`
`1
`
`

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`3.
`
`Masimo is a hospital equipment manufacturer that has never been in the consumer
`
`wearables business.1 But recently, Masimo released its first watch, direct to consumers, called the
`
`Masimo W1. Rather than innovating and developing a product independently, Masimo copied
`
`Apple while filing lawsuits to try to prevent sales of Apple Watch.
`
`4.
`
`
`Masimo’s copying violates Apple’s patent rights. Apple brings this action to stop
`
`Masimo’s infringement.
`
`1
`MASIMO
`Masimo,
`About
`Evolution:
`Company
`See
`https://www.masimo.com/company/masimo/evolution/ (last visited Oct. 13, 2022).
`
`
`
`CORP.,
`
`2
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 3 of 32 PageID #: 3
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`THE PARTIES
`
`5.
`
`Plaintiff Apple is a California corporation with its principal place of business at
`
`One Apple Park Way, Cupertino, California 95014.
`
`6.
`
`Defendant Masimo is a Delaware corporation with its principal place of business at
`
`52 Discovery, Irvine, California 92618. Masimo has appointed the Corporation Service Company,
`
`251 Little Falls Drive, Wilmington, Delaware 19808 as its registered agent for service of process.
`
`7.
`
`Defendant Sound United is a Delaware limited liability company with its principal
`
`place of business at 5541 Fermi Court, Carlsbad, CA 92008. On information and belief, Sound
`
`United is a wholly owned subsidiary of Masimo. Sound United has appointed the Corporation
`
`Service Company, 251 Little Falls Drive, Wilmington, Delaware 19808 as its registered agent for
`
`service of process.
`
`8.
`
`Joinder of Masimo and Sound United in this action and consolidation for trial is
`
`appropriate under 35 U.S.C. § 299. Apple asserts claims for relief jointly, severally, or in the
`
`alternative against Masimo and its wholly owned subsidiary Sound United arising from the
`
`making, using, importing into the United States, offering for sale, and/or selling of the same
`
`infringing product, the W1. Common questions of fact will arise in this action relating to
`
`Defendants’ infringement and liability.
`
`JURISDICTION AND VENUE
`
`9.
`
`This Court has subject-matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)
`
`because this action arises under the patent laws of the United States, 35 U.S.C. §§ 100 et seq.
`
`10.
`
`This Court has personal jurisdiction over Defendants because Defendants are
`
`entities each organized and existing under the laws of the State of Delaware.
`
`3
`
`

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`11.
`
`Venue is proper in this Court under 28 U.S.C. § 1400(b) because Defendants are
`
`entities each organized and existing under the laws of the State of Delaware, and therefore each
`
`resides in the District of Delaware.
`
`BACKGROUND
`
`12.
`
`Apple was founded in 1976. Since then, Apple has made countless significant
`
`contributions in a variety of fields, including computers, software, telecommunications, integrated
`
`circuits, user interfaces, and industrial design. Apple’s successful products include not only
`
`wearables, but also smartphones, tablets, desktop and laptop computers, operating systems, music
`
`products, professional-grade audio and video production software, semiconductor chips, and more.
`
`The United States Patent and Trademark Office (“USPTO”) has awarded thousands of patents to
`
`Apple for its contributions to science and the useful arts. Apple’s patents include U.S. Patent Nos.
`
`D735,131; D883,279; D947,842; and D962,936 (the “Patents-in-Suit”).
`
`13.
`
`Defendants’ accused products are one or more products that infringe the Patents-
`
`in-Suit, including the Masimo W1 device (“Device”) and its charger (“Wireless Charger”)
`
`(together, “W1”).2
`
`I.
`
`APPLE REVOLUTIONIZES WEARABLE TECHNOLOGY AND DESIGN
`
`14.
`
`Apple released the first-generation Apple Watch in April 2015, and it quickly
`
`became the best-selling smart watch. Since then, new line ups of Apple Watch have been released
`
`with powerful new technology. In September 2022, Apple announced the newest generation of
`
`Apple Watch products, including Apple Watch Series 8, the latest Apple Watch SE, and the all-
`
`new Apple Watch Ultra.
`
`2
`at
`7,
`at
`Guide
`User’s
`W1
`Masimo
`available
`https://www.masimopersonalhealth.com/pages/masimo-w1-support (last visited Oct. 13, 2022).
`
`
`
`4
`
`

`

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`
`Apple Watch integrates seamlessly with popular Apple products such as the iPhone
`
`
`
`15.
`
`and expands their capabilities. It allows wearers to conveniently and intuitively access many of
`
`their favorite features. For example, users can receive and respond to notifications from their
`
`iPhone, place and answer phone calls, listen to music, download apps, and access features such as
`
`Apple Maps and Siri—all on a device conveniently located on the wearer’s wrist. Apple Watch
`
`also uses this position on the wearer’s wrist to introduce new capabilities, such as advanced fitness
`
`tracking and health metrics including heart health, sleep, women’s health, and mobility. And
`
`features like Fall Detection, Crash Detection, and Emergency SOS can also help users call for help
`
`in the moment they need it. These features and others work in tandem with apps on the wearer’s
`
`iPhone.
`
`5
`
`

`

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`
`
`
`Health App and Apple Watch
`
`16.
`
`Every Apple Watch includes a biosensor module on the back that rests on the
`
`wearer’s wrist. The biosensor module contains LEDs, photodiodes, electrodes, and other
`
`components to enable measurement of health and wellness metrics such as heart rate, blood
`
`oxygen, and even electrocardiogram (ECG). The technology that enables these features is paired
`
`with a unique, eye-pleasing design and made of high-quality materials. Apple has updated the
`
`biosensor module and its design several times.
`
`
`L to R: Apple Watch (first generation), Apple Watch Series 4, and Apple Watch Series 7
`
`
`6
`
`

`

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`
`
`Apple Watch Ultra (2022)
`
`
`
`17.
`
`Apple Watch also contains a receive coil that inductively couples to a transmit coil
`
`in the charging “puck” to wirelessly charge Apple Watch’s battery. The puck contains an internal
`
`permanent magnet that enables the user to connect and disconnect Apple Watch from its charger
`
`easily and effortlessly. Implementing wireless charging allowed Apple to greatly simplify not
`
`only the charging process, but also reduce its footprint.
`
`
`
`Charging an Apple Watch
`
`
`
`Apple Watch Magnetic Charging Cable
`
`
`
`
`
`
`
`
`
`
`7
`
`

`

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`18.
`
`Apple has patented these and other ornamental designs.
`
`U.S. Patent No. D735,131
`Figure 9
`
`
`
`
`
`
`
`U.S. Patent No. D883,279
`Figure 2
`
`
`
`19.
`
`The success of Apple’s products is attributable not only to Apple’s technological
`
`innovations, but also to Apple’s careful attention to industrial design. Apple Watch is no
`
`exception. Apple’s products, including Apple Watch, are meticulously designed to be eye-
`
`pleasing. Aesthetic themes and cues run through all of Apple’s products, from the iPhone to Apple
`
`Watch.
`
`20.
`
`Apple’s products use the highest quality materials, such as high-grade aluminum,
`
`composites, ceramics, glass, and sapphire. Apple offers Apple Watch in several finishes and offers
`
`a variety of bands, straps, and loops to suit each wearer’s preference. Apple also offers Apple
`
`Watch in collaboration with high-profile brands such as Hermès and Nike. Apple Watch’s
`
`aesthetic appeal to a wide variety of consumer tastes is important to the product’s success.
`
`8
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 9 of 32 PageID #: 9
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`Apple Watch Nike
`
`
`
`
`
`Apple Watch Hermès
`
`
`
`
`
`
`Apple Watch Bands
`
`II. MASIMO TAKES UNFAIR SHORTCUTS FOR ITS WATCH
`Since its founding in 1989, Masimo has been a hospital equipment company.3 Until
`
`21.
`
`
`
`recently, Masimo never disclosed an intent to offer consumer wearables to the general public.4 In
`
`fact, as detailed below, Masimo had never even disclosed its intent to sell a consumer wearable
`
`until after it began its litigation campaign against Apple targeting Apple Watch—which came
`
`many years after Apple Watch revolutionized the consumer watch market.
`
`
`
`3
`MASIMO
`Masimo,
`About
`Evolution:
`Company
`See
`https://www.masimo.com/company/masimo/evolution/ (last visited Oct. 13, 2022).
`4 Id.
`
`CORP.,
`
`9
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 10 of 32 PageID #: 10
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`22.
`
`Teams across Apple worked for years to develop Apple Watch into a successful,
`
`innovative, and appealing product. In contrast, Masimo copied from Apple Watch and is free-
`
`riding on Apple’s hard work. Rather than develop its own innovations to make its W1 attractive
`
`to consumers, Masimo copied Apple Watch and brought carefully timed lawsuits to try to kick
`
`Apple out of the market while Masimo and its recently acquired consumer division, Sound United,
`
`launched the W1.
`
`23. Masimo is and has always been a hospital equipment company. Its product
`
`offerings are primarily directed at medical professionals for use in hospitals or other caregiving
`
`settings, such as the following products:
`
`
`
`
`
`Masimo Rad-87
`(2008)
`
`
`
`
`
`Rad-97
`(2017)
`
`
`
`Masimo Radical
`(2000)
`
`Masimo Rad-9
`(2006)
`
`
`
`
`
`Radical-7
`(2011)
`
`Root
`(2014)
`
`
`10
`
`

`

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`24.
`
`In fact, the entire “Company Evolution” on Masimo’s website is devoted to
`
`showcasing hospital products, and not consumer wearables.5 Masimo portrays its 33-year history
`
`as devoted to hospital products and the patient sensors that go with those products.6
`
`25. Masimo’s business revolves around selling hospital products that use disposable
`
`biometric sensors, and the subsequent sale of additional disposable sensors.7 For this reason,
`
`Masimo touts its “installed base” of hospital equipment in its annual reports.8 Masimo derives the
`
`majority of its revenue from, and is “highly dependent” on, its Masimo SET platform, Masimo
`
`rainbow SET platform and related products, which Masimo describes as its “primary product
`
`offerings.”9
`
`26.
`
`For years, Masimo’s focus was clinical-grade pulse oximetry. Following years of
`
`litigation, Masimo received a steady stream of patent licensing revenue from Nellcor (Medtronic),
`
`
`5
`MASIMO
`Masimo,
`About
`Evolution:
`Company
`https://www.masimo.com/company/masimo/evolution/ (last visited Oct. 13, 2022).
`6 Id.
`7 See, e.g., Masimo (MASI) Q3 2021 Earnings Call Transcript, MOTLEY FOOL TRANSCRIBING (Oct.
`27, 2021), https://www.fool.com/earnings/call-transcripts/2021/10/27/masimo-masi-q3-2021-
`earnings-call-transcript/ (“The year-over-year improvement was primarily driven by a more
`favorable revenue mix as we delivered strong revenue performance from our higher margin sensors
`in combination with the anticipated decline in sales for our lower margin technology boards and
`instruments.”); Kenneth Squire, How Activist Politan Capital May Find An Opportunity to Trim
`Costs, Build Value at Masimo, CNBC (Aug 20, 2022), https://www.cnbc.com/2022/08/20/how-
`activist-politan-capital-may-find-an-opportunity-to-trim-costs-build-value-at-masimo.html.
`(“This is a razor/razor blade business model with the devices using single-use sensors pursuant to
`five-year contracts resulting in 80% recurring revenue for Masimo.”).
`8
`7,
`at
`E.g., Masimo Corporation,
`Report
`available
`2016
`Annual
`https://investor.masimo.com/financials/annual-reports/default.aspx (last visited Oct. 13, 2022).
`9 Masimo Corporation, Fiscal Year 2021 Form 10-K Annual Report, at 38, available at
`https://investor.masimo.com/financials/sec-filings/sec-filings-
`details/default.aspx?FilingId=15576856
`(last
`visited Oct.
`“Masimo F.Y. 2021 10-K”].
`
`13,
`
`2022)
`
`11
`
`CORP.,
`
`at
`
`[hereinafter
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 12 of 32 PageID #: 12
`
`its only major competitor, and other companies.10 But around 2019, Masimo’s patents and license
`
`agreements began to expire, and the royalty revenue dried up.11
`
`
`
`27.
`
`As Masimo told investors in its most recent Form 10-K, “[c]ertain of our patents
`
`related to our technologies have begun to expire. Upon the expiration of our issued or licensed
`
`patents, we generally lose some of our rights to exclude competitors from making, using, selling
`
`
`
`
`10 See, e.g., Court Upholds $134.5 Million Verdict Against Nellcor for Infringement of Masimo's
`Patents, MASIMO CORP. (July 16, 2004), https://www.masimo.com/company/news/news-
`media/2004/#news-2f5e00c6-d7af-4d79-92bb-a3345ea49465; Masimo and Nellcor Announce
`CORP.
`(Jan.
`23,
`2006),
`Litigation, MASIMO
`Settlement
`of
`Patent
`https://www.masimo.com/company/news/news-media/2006#news-76f2c84e-7857-4cff-a364-
`8a7af3b2221e ($330 million payments and ongoing royalty); Masimo and Dolphin Announce
`Dispute, MASIMO
`CORP.
`(April
`27,
`2006),
`Settlement
`of
`Patent
`https://www.masimo.com/company/news/news-media/2006#news-ce7f5903-c045-4afa-8c90-
`4e81ca557fb5; Masimo and Respironics Announce an Expanded Relationship, the Adoption of
`Masimo Rainbow SET Pulse CO-Oximetry, and Settlement of Patent Dispute, MASIMO CORP.
`(August 1, 2006), https://www.masimo.com/company/news/news-media/2006#news-0cac0538-
`250f-4c11-b412-217e20006e5e; Court Upholds Award of $467 Million to Masimo for Philips'
`Infringement,
`MASIMO
`CORP.
`(May
`19,
`2015),
`Patent
`https://www.masimo.com/company/news/news-media/2015/#news-3497b147-8519-44ce-8b05-
`c7c14db3d95d; Masimo Announces Amendment to Nellcor Royalty Agreement, MASIMO CORP.
`(Sept. 2, 2016), https://www.masimo.com/company/news/news-media/2016/#news-0f61fb9f-
`0af5-4245-b4e2-a329ad0562a6 (“Medtronic will continue to pay Masimo a royalty of 7.75% for
`its current pulse oximetry products sold in the United States through October 6, 2018. . .”); Philips
`and Masimo Sign Multi-Year Business Partnership Agreement in Patient Monitoring and Select
`CORP.
`(Nov.
`7,
`2016),
`Solutions,
`MASIMO
`Therapy
`https://www.masimo.com/company/news/news-media/2016/#news-3c555bf2-2e14-4eaa-abc0-
`5b723675c1e9 (“Agreement ends all pending lawsuits between the two companies and . . . includes
`a cash payment of USD 300 million by Philips to Masimo.”).
`11 Masimo Corporation, Fiscal Year 2020 Form 10-K Annual Report, at 66, available at
`https://investor.masimo.com/financials/sec-filings/sec-filings-
`details/default.aspx?FilingId=14736544
`(last
`visited Oct.
`“Masimo F.Y. 2020 10-K”].
`
`[hereinafter
`
`18,
`
`2022)
`
`12
`
`

`

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`or importing products using the technology. . .”12 For the first time in a long while, Masimo would
`
`have to compete without the benefit of patent exclusivity.
`
`28.
`
`Around the same time, Masimo noticed that the nature of health technology was
`
`changing—driven by innovative companies like Apple—to evince a new focus on consumer health
`
`and general well-being.13 In 2018, Masimo noted to its investors that leading technology
`
`companies, including specifically Apple, had expanded into consumer health technology.14 At the
`
`close of its fiscal year 2020—the year Masimo sued Apple in federal court—Masimo again
`
`referenced Apple’s success in health-oriented wearables in its 10-K and remarked: “If we are
`
`unable to successfully compete against them, our financial performance could decline.”15 And in
`
`2021—the year Masimo sued Apple at the ITC—it again referenced Apple, this time specifically
`
`highlighting Apple Watch Series 6 and Series 7.16 It told its investors pointedly: “To effectively
`
`compete, we may need to expand our product offerings and distribution channels. . .”17 Seeing
`
`Apple’s continued success, Masimo tried to pivot to focus on the consumer to stay competitive.
`
`But Masimo, having focused only on clinical settings for decades, had already fallen behind.
`
`29. Masimo had never designed a consumer wearable.18 Delivering a high-quality
`
`product to market from scratch would take years of investment and innovation, but Masimo,
`
`already behind the curve, wanted to get there faster. As explained below, Masimo took shortcuts.
`
`
`12 Masimo F.Y. 2021 10-K at 43.
`13 Masimo F.Y. 2021 10-K at 39.
`14 Masimo Corporation, Fiscal Year 2018 Form 10-K Annual Report, at 34, available at
`https://investor.masimo.com/financials/sec-filings/sec-filings-
`details/default.aspx?FilingId=13255271 (last visited Oct. 18, 2022).
`15 Masimo F.Y. 2020 10-K at 33.
`16 Masimo F.Y. 2021 10-K at 39.
`17 Id.
`18 Prior to the W1, Masimo’s only consumer products were consumer versions of its fingertip pulse
`oximeters (iSpO2 and MightySat), which “account for a very, very tiny portion of [Masimo’s]
`
`
`13
`
`

`

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`30.
`
`In January 2020, Masimo brought a patent lawsuit against Apple targeting Apple
`
`Watch.19 In that case, access to Apple’s confidential information and source code for various
`
`models of Apple Watch, including details of its construction and functionality, was provided to a
`
`board member of Cercacor—a spin-off from Masimo that focuses on research and development.20
`
`That was two years before Masimo released the W1 to the general public.
`
`31.
`
`In June 2021, Masimo filed a complaint before the U.S. International Trade
`
`Commission (ITC), an administrative agency, seeking an order that bans Apple Watch from being
`
`imported into the United States.21 According to the public complaint, Masimo’s ITC lawsuit
`
`claimed that Apple Watch allegedly infringed Masimo patents related to pulse oximetry.22 But in
`
`the months that followed, a more nefarious potential strategy of this lawsuit came to light: to
`
`remove Apple Watch from the market and make way for Masimo’s own watch.
`
`32.
`
`In a Statement of Public Interest—a filing required to bring an ITC lawsuit—
`
`Masimo told the ITC that “no public interest concerns exist” with banning importation of Apple
`
`Watch. For example, Masimo claimed that the ban would not raise public health, safety, or welfare
`
`concerns because “Masimo offers pulse oximetry devices with reliable medical grade
`
`
`overall business.” MASI – Masimo Corp. at Deutsche Bank Health Care Conference, THOMSON
`REUTERS STREETEVENTS (May 8, 2018) (statement of Eli Kammerman, VP of Business
`Development & Investor Relations at Masimo), Exhibit E.
`19 Masimo Corp. v. Apple Inc., Complaint, D.I. 1, No. 20-cv-48-JVS-JDE (C.D. Cal.).
`20 See Masimo Corp. v. Apple Inc., D.I. 61-1 at 36–49, No. 20-cv-48-JVS-JDE (C.D. Cal.); see
`also id. D.I. 67 ¶ 9.3. Masimo and Cercacor retain a close relationship and have a significant
`technology cross-license agreement. Masimo’s CEO and Chairman Joe Kiani is also the CEO and
`Chairman of Cercacor. See Masimo F.Y. 2021 10-K at 25; see also Who We Are, CERCACOR
`LABORATORIES, available at https://www.cercacor.com/pages/about-us-team (last visited Oct. 13,
`2022) (“[Masimo CEO] Joe Kiani has ultimate oversight of [Cercacor’s] marketing, product
`development, staffing and other key functions.”).
`21 Complaint (Public Version) at ¶ 7, In the Matter of Certain Light-Based Physiological
`Measurement Devices and Components Thereof, Inv. No. 337-TA-1276 (Int’l Trade Comm. Jun.
`29, 2021) [hereinafter ITC Action].
`22 Id. ¶¶ 39–76.
`
`14
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 15 of 32 PageID #: 15
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`measurements, directly to consumers.”23 Masimo also stated that “[e]ven if smartwatches were
`
`necessary for some important public interest function, Apple and other third parties can provide
`
`an adequate supply of alternatives to consumers.”24
`
`33.
`
`In its ITC complaint, Masimo identified an alleged “Masimo Watch” as a “domestic
`
`industry” product for four of its patents.25 On information and belief, no commercial “Masimo
`
`Watch” existed at the time Masimo filed its ITC lawsuit in June 2021—rather, it was hastily
`
`developed during litigation.26
`
`34. Masimo, while trying to block importation or sale of Apple Watch, was also
`
`secretly copying it. Masimo hid its copying until the W1 was ready for the public.
`
`35. Masimo unveiled the W1 to the public in January 2022—with the ITC lawsuit
`
`ongoing—at a conference in Dubai. At the conference, Masimo executives demonstrated the W1
`
`to attendees and gave interviews to the media.
`
`
`23 Complainants’ Statement on the Public Interest (Public Version) at 2–3, ITC Action (Jun. 29,
`2021).
`24 Id. at 4.
`25 Order No. 32: Granting-in-Part and Denying-in-Part Respondent’s Motion to Strike and
`Preclude Reliance on Complainants’ Domestic Industry Contentions (Public Version) at 1–2, ITC
`Action (May 5, 2022).
`26 See Order No. 31: Denying Respondent’s Motion For Sanctions (Public Version) at 2, ITC
`Action (April 28, 2022) (explaining Masimo “represented that ‘a confidential sample of a Masimo
`Watch” existed); id. at 5-6 (“Complainants oppose the motion for sanctions, arguing that Apple’s
`contentions are premised on an erroneous assumption that the domestic industry requirement
`requires a finished commercial product.”); id. at 8 (“[T]he Amended Complaint is equivocal on
`the issue of whether a domestic industry exists or is in the process of being established.”).
`
`15
`
`

`

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`
`
`
`Masimo W1 display at Arab Health 202227
`
`
`
`36. When the Masimo W1 became public, it was clear that Masimo had copied Apple.
`
`As more details emerged, it was clear the scope of that copying was expansive. In addition to
`
`copying Apple Watch’s overall look and feel, the Masimo W1 copied the patented designs of
`
`Apple Watch and its wireless charger. Apple worked hard to develop innovative designs and
`
`features for Apple Watch. Masimo took shortcuts.
`
`
`27 Arab Health, Masimo Talks to Arab Health TV (Nazih Darwish), YOUTUBE (Jan 24, 2022),
`https://www.youtube.com/watch?v=5KvcsFkxBvE (last accessed Oct. 13, 2022).
`
`16
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 17 of 32 PageID #: 17
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`
`
`
`37. With the ITC lawsuit against Apple ongoing, Masimo bought Defendant Sound
`
`
`
`United to bring the W1 to market as quickly as possible. In February 2022, Masimo announced
`
`that it would acquire Sound United, “a leading innovator of premium, high-performance audio
`
`products for consumers,”28 for $1.025 billion.29 Masimo’s stated reason for the acquisition, which
`
`closed in April 2022, was to “leverage Sound United’s expertise across consumer channels to
`
`
`28 Sound United Enters into Agreement to Be Acquired by Masimo Corporation, SOUND UNITED
`(Feb. 15, 2022), https://www.soundunited.com/news/sound-united-enters-into-agreement-to-be-
`acquired-by-masimo-corporation.
`29 William White, MASI Stock: The Masimo-Sound United Deal That Has Investors Scratching
`Their Heads, INVESTORPLACE (Feb. 16, 2022), https://investorplace.com/2022/02/masi-stock-
`the-masimo-sound-united-deal-that-has-investors-scratching-their-heads/.
`
`17
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 18 of 32 PageID #: 18
`
`accelerate distribution of the combined company’s expanding portfolio of consumer-facing
`
`healthcare products.”30 The CEO of Masimo stated on an earnings call in February 2022: “We
`
`like Sound United the most for several reasons. One, it’s [sic] management team. Two, the
`
`distribution channel, that is essential to what we are doing as an important product for us which is
`
`the Masimo Watch.”31
`
`38. Masimo’s sudden pivot into consumer wearables with a product that copied Apple
`
`Watch required consumer distribution channels that Masimo lacked. Masimo’s stock fell 35% the
`
`day after it announced the Sound United acquisition.32 Months later, news outlet CNBC reported
`
`that an “activist” investor had increased its holdings of Masimo, and CNBC questioned the
`
`motivation of Masimo’s sudden move into consumer wearables: “But, now Masimo has launched
`
`its own W1 watch to compete with Apple. This feels more personal than fiduciary.”33
`
`39. Masimo released the W1 to the general public on August 31, 2022.34 As shown
`
`below, the Masimo W1 infringes the Patents-in-Suit.
`
`
`30 Masimo Closes Acquisition of Sound United, MASIMO CORP. (April 12, 2022),
`https://www.masimo.com/company/news/news-media/#4rtyy700d-7c03-9876-bt7u-
`8y57ktr7ull8n.
`31 Masimo (MASI) Q4 2021 Earnings Call Transcript, MOTLEY FOOL TRANSCRIBING (Feb. 15,
`2022),
`https://www.fool.com/earnings/call-transcripts/2022/02/15/masimo-masi-q4-2021-
`earnings-call-transcript/.
`32 Ciara Linnane, Medical Technology Company Masimo Stock Slides 35% After Unveiling $1
`Sound United, MARKETWATCH
`(Feb.
`16,
`2022),
`Billion
`Acquisition
`of
`https://www.marketwatch.com/story/medical-technology-company-masimo-stock-slides-35-
`after-unveiling-1-billion-acquisition-of-sound-united-2022-02-16; William White, MASI Stock:
`The Masimo-Sound United Deal That Has Investors Scratching Their Heads, INVESTORPLACE
`(Feb. 16, 2022) https://investorplace.com/2022/02/masi-stock-the-masimo-sound-united-deal-
`that-has-investors-scratching-their-heads/.
`33 Kenneth Squire, How Activist Politan Capital May Find An Opportunity to Trim Costs, Build
`Value at Masimo, CNBC (Aug 20, 2022), https://www.cnbc.com/2022/08/20/how-activist-
`politan-capital-may-find-an-opportunity-to-trim-costs-build-value-at-masimo.html.
`34 Medical Pioneer Masimo Announces the Full Market Consumer Release of the Masimo W1™,
`the First Watch to Offer Accurate, Continuous Health Data, MASIMO CORP. (Aug. 31, 2022),
`
`
`18
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`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 19 of 32 PageID #: 19
`
`40. Masimo carefully studied Apple’s IP for its litigation campaign. Masimo cited
`
`numerous Apple Watch patents in its complaints in federal court35—well before willfully copying
`
`Apple Watch. On information and belief, Masimo either knew about or willfully blinded itself to
`
`Apple’s patent rights while infringing the Patents-in-Suit.
`
`COUNT I: INFRINGEMENT OF U.S. PATENT NO. D883,279
`
`41.
`
`42.
`
`The preceding paragraphs are incorporated by reference as if fully realleged herein.
`
`U.S. Patent No. D883,279 (the “D’279 Patent”), entitled “Electronic Device,” was
`
`duly, legally, and validly issued to inventors Jody Akana et al. on May 5, 2020. The D’279 Patent
`
`is assigned to Apple. The D’279 Patent is attached hereto as Exhibit A.
`
`43.
`
`Apple is the exclusive and current owner of all rights, title, and interest in the D’279
`
`Patent, including the right to exclude and the right to seek damages and injunctive relief.
`
`44.
`
`The D’279 Patent claims the ornamental design for an electronic device as shown
`
`and described in its specification and the figures reproduced herein:
`
`
`https://www.masimo.com/company/news/news-media/#eccc62f2-a423-4e81-a064-
`57ddc48c8a13.
`35 See, e.g., Masimo Corp. v. Apple Inc., Complaint, D.I. 1, No. 20-cv-48-JVS-JDE (C.D. Cal.).
`
`19
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 20 of 32 PageID #: 20
`
`
`
`45.
`
`Defendants infringe the D’279 Patent by making, using, selling, and/or offering for
`
`
`
`sale in the United States, and/or importing into the United States, products that embody the design
`
`claimed in the D’279 Patent or a colorable imitation thereof, including the Masimo W1. The
`
`design embodied in the W1 Device is substantially similar to the design claimed in the D’279
`
`Patent such that it would deceive an ordinary observer. Defendants’ infringement is a violation of
`
`35 U.S.C. § 271.
`
`20
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 21 of 32 PageID #: 21
`
`
`
`46.
`
`Defendants’ infringement is willful. The design of the W1 product so closely
`
`
`
`resembles Apple Watch that the only plausible inference is that Defendants copied Apple Watch
`
`to develop their own product. On information and belief, Defendants have willfully blinded
`
`themselves to Apple’s patent rights, including the rights protected by the D’279 Patent.
`
`21
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 22 of 32 PageID #: 22
`
`47.
`
`
`Apple has been damaged and continues to be damaged by Defendants’ infringement
`
`of the D’279 Patent. In addition, Apple has suffered and will continue to suffer irreparable harm
`
`unless Defendants’ infringement of the D’279 Patent is enjoined.
`
`COUNT II: INFRINGEMENT OF U.S. PATENT NO. D947,842
`
`48.
`
`49.
`
`The preceding paragraphs are incorporated by reference as if fully realleged herein.
`
`U.S. Patent No. D947,842 (the “D’842 Patent”), entitled “Electronic Device,” was
`
`duly, legally, and validly issued to inventors Jody Akana et al. on April 5, 2022. The D’842 Patent
`
`is assigned to Apple. The D’842 Patent is attached hereto as Exhibit B.
`
`50.
`
`Apple is the exclusive and current owner of all rights, title, and interest in the D’842
`
`Patent, including the right to exclude and the right to seek damages and injunctive relief.
`
`51.
`
`The D’842 Patent claims the ornamental design for an electronic device as shown
`
`and described in its specification and the figures reproduced herein:
`
`22
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 23 of 32 PageID #: 23
`
`
`
`52.
`
`Defendants infringe the D’842 Patent by making, using, selling, and/or offering for
`
`
`
`sale in the United States, and/or importing into the United States, products that embody the design
`
`claimed in the D’842 Patent or a colorable imitation thereof, including the Masimo W1. The
`
`design embodied in the W1 Device is substantially similar to the design claimed in the D’842
`
`Patent such that it would deceive an ordinary observer. Defendants’ infringement is a violation of
`
`35 U.S.C. § 271.
`
`23
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 24 of 32 PageID #: 24
`
`
`
`53.
`
`Defendants’ infringement is willful. The design of the W1 so closely resembles
`
`
`
`Apple Watch that the only plausible inference is that Defendants copied Apple Watch to develop
`
`their own product. On information and belief, Defendants have willfully blinded themselves to
`
`Apple’s patent rights, including the rights protected by the D’842 Patent.
`
`24
`
`

`

`Case 1:22-cv-01377-UNA Document 1 Filed 10/20/22 Page 25 of 32 PageID #: 25
`
`
`
`54.
`
`Apple has been damaged and continues to be damaged by Defendants’ infringement
`
`
`
`of the D’842 Patent. In addition, Apple has suffered and will continue to suffer irreparable harm
`
`unless Defendants’ infringement of the D’842 Patent is enjoined.
`
`COUNT III: INFRINGEMENT OF U.S. PATENT NO. D962,936
`
`55.
`
`56.
`
`The preceding paragraphs are incorporated by reference as if fully realleged herein.
`
`U.S. Patent No. D962,936 (the “D’936 Patent”), entitled “Electronic Device,” was
`
`duly, legally, and validly issued to inventors Jody Akana et al. on September 6, 2022. The D’936
`
`Patent is assigned to Apple. The D’936 Patent is attached hereto as Exhibit C.
`
`57.
`
`Apple is the exclusive an