UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`
`
`In the Matter of
`
`
`
`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
`
`
`Investigation No. 337-TA-1276
`
`
`CEASE AND DESIST ORDER
`
`
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`IT IS HEREBY ORDERED THAT RESPONDENT Apple, Inc. of Cupertino,
`
`California cease and desist from conducting any of the following activities in the United States:
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`importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for
`
`exportation), soliciting United States agents or distributors, and aiding or abetting other entities
`
`in the importation, sale for importation, sale after importation, transfer (except for exportation),
`
`or distribution of certain light-based physiological measurement devices and components thereof
`
`(as defined in Definition (G) below) that infringe one or more of claim 28 of U.S. Patent No.
`
`10,912,502 and claims 12, 24, and 30 of U.S. Patent No. 10,945,648 (“Asserted Patents”) in
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`violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
`
`I.
`Definitions
`
`As used in this order:
`
`(A)
`
`(B)
`
`“Commission” shall mean the United States International Trade Commission.
`
`“Complainant” shall mean Masimo Corporation and Cercacor Laboratories, Inc.,
`
`both of Irvine, California.
`
`(C)
`
`“Respondent” shall mean Apple, Inc. of Cupertino, California.
`
`
`Washington, D.C.
`
`
`
`In the Matter of
`
`
`
`CERTAIN LIGHT-BASED
`PHYSIOLOGICAL MEASUREMENT
`DEVICES AND COMPONENTS
`THEREOF
`
`
`Investigation No. 337-TA-1276
`
`
`CEASE AND DESIST ORDER
`
`
`
`IT IS HEREBY ORDERED THAT RESPONDENT Apple, Inc. of Cupertino,
`
`California cease and desist from conducting any of the following activities in the United States:
`
`importing, selling, offering for sale, marketing, advertising, distributing, transferring (except for
`
`exportation), soliciting United States agents or distributors, and aiding or abetting other entities
`
`in the importation, sale for importation, sale after importation, transfer (except for exportation),
`
`or distribution of certain light-based physiological measurement devices and components thereof
`
`(as defined in Definition (G) below) that infringe one or more of claim 28 of U.S. Patent No.
`
`10,912,502 and claims 12, 24, and 30 of U.S. Patent No. 10,945,648 (“Asserted Patents”) in
`
`violation of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337).
`
`I.
`Definitions
`
`As used in this order:
`
`(A)
`
`(B)
`
`“Commission” shall mean the United States International Trade Commission.
`
`“Complainant” shall mean Masimo Corporation and Cercacor Laboratories, Inc.,
`
`both of Irvine, California.
`
`(C)
`
`“Respondent” shall mean Apple, Inc. of Cupertino, California.
`
`
`
`
`
`
`(D)
`
`“Person” shall mean an individual, or any non-governmental partnership, firm,
`
`association, corporation, or other legal or business entity other than Respondent or
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`its majority-owned or controlled subsidiaries, successors, or assigns.
`
`(E)
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`“United States” shall mean the fifty States, the District of Columbia, and
`
`Puerto Rico.
`
`(F)
`
`The terms “import” and “importation” refer to importation for entry for
`
`consumption under the Customs laws of the United States.
`
`(G)
`
`The term “covered products” shall mean light-based physiological measurement
`
`devices and components thereof that infringe one or more of claims 22 and 28 of
`
`U.S. Patent No. 10,912,502 and claims 12, 24, and 30 of U.S. Patent No.
`
`10,945,648. The light-based physiological measurement devices and components
`
`thereof subject to this order are as follows: wearable electronic devices with
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`light-based pulse oximetry functionality and components thereof. Covered
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`products shall not include articles for which a provision of law or license avoids
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`liability for infringement.
`
`II.
`Applicability
`
`The provisions of this Cease and Desist Order shall apply to Respondent and to any of its
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`principals, stockholders, officers, directors, employees, agents, distributors, controlled (whether
`
`by stock ownership or otherwise) and majority-owned business entities, successors, and assigns,
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`and to each of them, insofar as they are engaging in conduct prohibited by section III, infra, for,
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`with, or otherwise on behalf of, Respondent.
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`2
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`
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`III.
`Conduct Prohibited
`
`The following conduct of Respondent in the United States is prohibited by this Order.
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`For the remaining terms of the Asserted Patents, Respondent shall not:
`
`(A)
`
`import or sell for importation into the United States covered products;
`
`(B) market, distribute, sell, offer to sell, or otherwise transfer (except for exportation)
`
`(C)
`
`(D)
`
`(E)
`
`in the United States imported covered products;
`
`advertise imported covered products;
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`solicit U.S. agents or distributors for imported covered products; or
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`aid or abet other entities in the importation, sale for importation, sale after
`
`importation, transfer (except for exportation), or distribution of covered products.
`
`IV.
`Conduct Permitted
`
`Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
`
`by the terms of this Order shall be permitted if:
`
`(A)
`
`in a written instrument, the owner of the Asserted Patents licenses or authorizes
`
`such specific conduct;
`
`(B)
`
`such specific conduct is related to the importation or sale of covered products by
`
`or for the United States; or
`
`(C)
`
`such specific conduct is limited to importation, sale, and provision of parts
`
`necessary to repair covered products purchased by consumers prior to the date this
`
`Order becomes final within the meaning of 19 U.S.C. § 1337(j)(4), or limited to
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`importation and provision of covered products that are replacements for covered
`
`products purchased by consumers prior to the date this Order becomes final
`
`
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`3
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`
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`within the meaning of 19 U.S.C. § 1337(j)(4), provided that replacement is
`
`pursuant to a warranty for the replaced article.
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`V.
`Reporting
`
`For purposes of this requirement, the reporting periods shall commence on January 1 of
`
`each year and shall end on the subsequent December 31. The first report required under this
`
`section shall cover the period from the date of issuance of this order through December 31, 2023.
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`This reporting requirement shall continue in force until such time as Respondent has truthfully
`
`reported, in two consecutive timely filed reports, that it has no inventory (whether held in
`
`warehouses or at customer sites) of covered products in the United States.
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`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
`
`the Commission: (a) the quantity in units and the value in dollars of covered products that it has
`
`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
`
`and (b) the quantity in units and value in dollars of reported covered products that remain in
`
`inventory in the United States at the end of the reporting period.
`
`When filing written submissions, Respondent must file the original document
`
`electronically on or before the deadlines stated above. Submissions should refer to the
`
`investigation number (“Inv. No. 337-TA-1276”) in a prominent place on the cover pages and/or
`
`the first page. See Handbook for Electronic Filing Procedures,
`
`http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf.
`
`Persons with questions regarding filing should contact the Secretary (202-205-2000). If
`
`Respondent desires to submit a document to the Commission in confidence, it must file the
`
`
`
`4
`
`
`
`
`
`original and a public version of the original with the Office of the Secretary and must serve a
`
`copy of the confidential version on Complainant’s counsel.1
`
`Any failure to make the required report or the filing of any false or inaccurate report shall
`
`constitute a violation of this Order, and the submission of a false or inaccurate report may be
`
`referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
`
`VI.
`Record-Keeping and Inspection
`
`(A)
`
`For the purpose of securing compliance with this Order, Respondent shall retain
`
`any and all records relating to the sale, marketing, or distribution in the United
`
`States of covered products, made and received in the usual and ordinary course of
`
`business, whether in detail or in summary form, for a period of three (3) years
`
`from the close of the fiscal year to which they pertain.
`
`(B)
`
`For the purposes of determining or securing compliance with this Order and for
`
`no other purpose, subject to any privilege recognized by the federal courts of the
`
`United States, and upon reasonable written notice by the Commission or its staff,
`
`duly authorized representatives of the Commission shall be permitted access and
`
`the right to inspect and copy, in Respondent’s principal offices during office
`
`hours, and in the presence of counsel or other representatives if Respondent so
`
`chooses, all books, ledgers, accounts, correspondence, memoranda, and other
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`records and documents, in detail and in summary form, that must be retained
`
`under subparagraph VI(A) of this Order.
`
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`1 Complainants must file a letter with the Secretary identifying the attorney to receive
`reports and bond information associated with this Order. The designated attorney must be on the
`protective order entered in the investigation.
`
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`5
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`VII.
`Service of Cease and Desist Order
`
`The Secretary shall serve copies of this Order upon each party of record in this
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`investigation that has retained counsel or otherwise provided a point of contact for electronic
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`service. While temporary remote operating procedures are in place in response to COVID-19,
`
`the Office of the Secretary is not able to serve parties that have not retained counsel or otherwise
`
`provided a point of contact for electronic service. Accordingly, pursuant to Commission Rules
`
`201.16(a) and 210.7(a)(1) (19 C.F.R. §§ 201.16(a), 210.7(a)(1)), the Commission orders that the
`
`Complainant complete service of this Order for any party without a method of electronic service
`
`noted on the attached Certificate of Service and shall file proof of service on the Electronic
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`Document Information System (EDIS).
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`Respondent is ordered and directed to:
`
`(A)
`
`Serve, within fifteen (15) days after the effective date of this Order, a copy of this
`
`Order upon each of its respective officers, directors, managing agents, agents, and
`
`employees who have any responsibility for the importation, marketing,
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`distribution, transfer, or sale of imported covered products in the United States;
`
`(B)
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`Serve, within fifteen (15) days after the succession of any persons referred to in
`
`subparagraph VII(A) of this order, a copy of the Order upon each successor; and
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`(C) Maintain such records as will show the name, title, and address of each person
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`upon whom the Order has been served, as described in subparagraphs VII(A) and
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`VII(B) of this order, together with the date on which service was made.
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`The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
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`the expiration of the Asserted Patents.
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`6
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`VIII.
`Confidentiality
`
`Any request for confidential treatment of information obtained by the Commission
`
`pursuant to section VI of this order should be made in accordance with section 201.6 of the
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`Commission’s Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
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`confidential treatment is sought, Respondent must provide a public version of such report with
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`confidential information redacted.
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`IX.
`Enforcement
`
`Violation of this order may result in any of the actions specified in section 210.75 of the
`
`Commission’s Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for
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`civil penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as
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`any other action that the Commission deems appropriate. In determining whether Respondent is
`
`in violation of this order, the Commission may infer facts adverse to Respondent if it fails to
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`provide adequate or timely information.
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`X.
`Modification
`
`The Commission may amend this order on its own motion or in accordance with the
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`procedure described in section 210.76 of the Commission’s Rules of Practice and Procedure
`
`(19 C.F.R. § 210.76).
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`XI.
`Bonding
`
`The conduct prohibited by section III of this order may be continued during the sixty (60)
`
`day period in which this Order is under review by the United States Trade Representative, as
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`delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent’s posting
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`7
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`of a bond in the amount of zero percent (0%, i.e., no bond) of their entered value. This bond
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`provision does not apply to conduct that is otherwise permitted by section IV of this Order.
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`Covered products imported on or after the date of issuance of this Order are subject to the entry
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`bond as set forth in the exclusion order issued by the Commission, and are not subject to this
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`bond provision.
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`By order of the Commission.
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`Issued: October 26, 2023
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`
`
`
`Lisa R. Barton
`Secretary to the Commission
`
`
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`8
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