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Tag: Apple

Lynn’s Picks: Foresight’s Patent of the Week – US Granted Patent 11,861,255: Wearable Device for Facilitating Enhanced Interaction (Apple Inc.)

Posted on Modified on by Lynn Dudinsky

 

Disclaimer: This blog was created for informational purposes only and does not represent Foresight’s or the author’s opinion regarding the validity, quality or enforceability of any particular patent covered in this blog.  Foresight is not a law firm and no portion of the information contained in this blog was intended to serve as legal opinion.

In this week’s blog, we are following up on our first post in the series highlighting Rivian’s Spare Wheel Containers for a Vehicle (link to blog) patent application with a newly issued patent from Apple titled Wearable Device for Facilitating Enhanced Interaction. Apple Inc. designs, manufactures, and markets smartphones, personal computers, tablets, wearables and accessories worldwide and reported $383 billion in total revenues in fiscal year 2023, based on the company’s most recent annual report. In addition to the traditional offerings many of us use throughout our day, Apple is debuting a new form of content consumption, computer usage and productivity called the Vision Pro which is set to start accepting pre-orders on January 19th. The Vision Pro is a form of spatial computing that utilizes artificial intelligence and computer vision to combine virtual content with the physical world. Many will view this technology as the next step in Augmented Reality/Virtual Reality (AR/VR) and we have seen early forms of this technology in products such as Magic Leap or Oculus (now Meta Quest). While this blog is not an endorsement of the future of spatial computing, Apple’s participation in the market is a sign of market traction and likely growth in rollout of consumer products targeting the typical use of personal computers rather than being driven by gaming applications, which is the reason this patent was selected to be highlighted in this blog series.

As seen in the images below, the issued patent, which was filed in 2018, addresses the person to person interaction element that is anticipated when a user has a computing device covering the majority of their face. Given the intent of this device to be used in a similar manner in which our phones and computers are currently being used, there needs to be a way to allow personal interaction in a fashion that is not currently available in most VR or other head devices. To overcome this issue and to provide the user with awareness of and engagement with the real-world, the patent presents a system with internal and external cameras and displays to facilitate interaction between the wearer and another person or environment.

 

In order to allow the device to be a practical device for any number of targeted uses, isolating the wearer from the environment while also preventing those surrounding the user to interact with the user in a traditional way, requires the device to have the ability to show human expression which is a critical component of person to person interaction. One could easily argue that such a system is unnecessary but the same has been said about a myriad of technologies that have emerged over the past 10-20 years that we utilize every day, whether that is a personal assistant like Siri or a toaster with an interactive display. The inventive process should not be limited by current habit of the consumer, but rather, the inventive process should anticipate and nudge the consumer into seeing the value and purpose of the underlying inventive concept. This can be seen in other images from the patent copied below. Is it necessary to display the wearer’s facial expressions as if the wearer’s eyes were that of a lion? No, but it is a feature that consumers immediately understand due to the similarity to the endless number of filters we can apply to our faces during facetime or other video calls. Will this lead to enjoyable mishaps like the lawyer on a zoom conference in District Court that could not figure out how turn off the cat filter? It remains to be seen how the consumer interacts with the facial features of the Vision Pro and whether these features are “facilitating enhanced interaction” as the patent’s title says.

Have you come across any interesting patents you would like us to feature in future blogs or did you invent a technology you would like featured? Please send us an email at media@foresightvaluation.com or call our office at (650) 561-3374.

 

Masimo vs. Apple: The Role of the ITC in Patent Disputes

Posted on Modified on by Lynn Dudinsky

As referenced in our previous blog, Demystifying the International Trade Commission (ITC), Apple made headlines in December 2023 for halting the sale of its latest Apple Watch Series 9 and Ultra 2 models in the US on December 21st. The reason behind this was a patent dispute between Apple and Masimo Corp. related to a blood oxygen sensor in which the ITC ruled Apple violated Masimo’s patents. While this came to media attention in late 2023, this case had been working its way through the court system for years, starting when Masimo won a patent infringement case against True Wearable in 2022. True Wearables’ founder and CEO Marcelo Lamego worked at both Masimo and Apple where he developed similar technologies before founding True Wearables. True Wearables’ founder first worked at Masimo and then contacted Apple CEO Tim Cook in 2013, offering to help with the Apple Watch. He subsequently joined Apple in 2014. At Apple Mr. Lamego was a named inventor on several health-related Apple patents before leaving to start True Wearables in 2014, after only a few months at Apple.  So Masimo found itself in a situation where both companies, True Wearables and Apple, were allegedly infringing its patents, which led to it taking legal action against both companies

In conjunction with the patent dispute against True Wearables which resulted in a permanent injunction against the sale of True Wearables infringing devices, Masimo also filed a Section 337 action at the ITC against Apple alleging that the company was importing into the US devices that infringed multiple patents held by Masimo. In Section 337 actions, the complainant must establish that a domestic industry for articles protected by the asserted patent(s) exists or is in the process of being established.  There are two requirements that must be met in regards to the ITC domestic industry analysis: an economic element and a technical element. The complainant  (Masimo) must show that one of the economic activities identified in 19 U.S.C § 1337(a)(3) has occurred to fulfill the economic requirement. These activities include: significant investment in plant and equipment, significant employment of labor or capital, or substantial investment in exploitation, including engineering, R&D or licensing. In regards to the technical element, the complainant must establish that it practices at least one claim in each asserted patent. One of the main arguments made by Apple was whether Masimo’s W1 smartwatch, or any product by Masimo, was actually released prior to the complaint being filed by Masimo. This is an area of active development and will likely feature prominently in the appeal by Apple which was filed on December 23, 2023.

In January of 2023, the ITC issued their Final Initial Determination that Apple was infringing on Masimo’s patents. The ITC then issued a limited exclusion order and cease and desist order against Apple in late October of 2023. Once this decision was made, the next step was a 60-day presidential review period where Apple hoped that President Biden would veto the ban as President Obama had done for Apple in 2013 in regards to the iPhone and iPad. However, as the 60-day review period approached its conclusion and there was no indication that President Biden would issue such a veto, Apple pulled the Watch Series 9 and Watch Ultra 2 from its stores and President Biden eventually declined to veto the ruling of the FTC. As a last resort, Apple filed an appeal with the United States Court of Appeals for the Federal Circuit (CAFC) and secured a temporary stay of the ITC’s importation and sales ban. On December 27, the Federal Circuit granted Apple’s request for an emergency stay.  This temporary could be extended through the conclusion of the ITC appeal which could take about 18 months.

The outcome of this appeal and any further actions are important to Apple as affected watch models have been some of its best sellers, accounting for a substantial portion of the company’s overall watch sales. Although Apple hasn’t publicly disclosed revenue figures, analysts estimate that the Apple Watch alone generated approximately $17 billion in sales in fiscal 2023. Moreover, the removal of the affected watches from Apple’s online store and physical retail locations only adds another layer of complexity to the situation, as the watches will still be available through third-party retailers. Apple is working across multiple venues to overcome the decision by the ITC. As referenced above, Apple filed the appeal and won a temporary stay and will push the CAFC to find in its favor and reverse the decision of the ITC. At the same time, Apple has submitted plans to the US Customs and Border Protection for a software solution. One other possibility in this complex dispute is for Apple to pay Masimo to end the dispute and put an end to the business disruption caused by this ongoing patent dispute.

The key takeaway from the events surrounding the Masimo patents is that the ITC is an important venue for patent enforcement in the U.S., where the range of remedies may actually include a physical importation and sales ban, particularly when it comes to products where the supply chain dictates importation of products manufactured overseas.  Stay tuned for more updates on this blog as the CAFC and ITC appeal proceedings continue in 2024.

Demystifying the ITC: A Guide on the Role of the ITC in Patent Disputes

Posted on Modified on by Lynn Dudinsky

The International Trade Commission (ITC) received a lot of media attention in December of 2023 due to the patent dispute between Apple and Masimo resulting in a temporary ban on the importation and sale of certain models of the Apple Watch. While many people are familiar with State and Federal courts, most people are not familiar with ITC so Foresight created this primer to better understand the role of the ITC in patent disputes.

The ITC stands as a critical resource for patent holders, offering a unique avenue to counter patent infringements by preventing the importation of infringing products at U.S. ports of entry. However, the ITC’s procedures are distinct from those of Federal courts where patent disputes are normally litigated, demanding a nuanced understanding, especially for startups.

Filing a Complaint and Building Your Case

Initiating an ITC investigation is akin to commencing a lawsuit in Federal court. A formal complaint, known as a Section 337 action, is submitted, alleging that products arriving in the U.S. violate a valid patent. Simultaneously, the complaint must demonstrate the presence of a “domestic industry” linked to the allegedly infringed patented products.

Proving a “domestic industry” involves showcasing substantial investments in areas like labor, facilities, or research and development that support both the infringing products and the complainant’s own products. Following the complaint, the ITC evaluates whether to commence an investigation, typically within 30 days. Once initiated, the investigation becomes official and is documented in the Federal Register. Concurrently, any ongoing court cases dealing with the same issues and involving the same parties are temporarily paused during the ITC’s investigation.

The Role of the Judge and Special Staff

Throughout the investigation, an Administrative Law Judge (ALJ) assumes a central role as the fact-finder. The ALJ presides over hearings, issues decisions on motions, and substantially influences the investigation’s course. Adding to the complexity is the “Staff,” an attorney appointed from the Office of Unfair Import Investigations (OUII), who maintains an independent role during the investigation.

Timetables and Procedural Rules

The ITC strives for expedited investigations, determining an ultimate “target date” for the final decision, usually within 16 months of commencement. The ALJ establishes a procedural schedule encompassing deadlines for various aspects such as discovery, claim interpretation, motions, and hearings.

Collecting Evidence and Safeguarding Sensitive Information

After the investigation begins, both parties embark on evidence gathering, adhering to the established schedule. They employ tools like questions, document requests, and interviews. It is worth noting that in the ITC, responses to discovery requests must be provided within a shorter timeframe, just 10 days, in contrast to the more extended periods typically allowed in standard court proceedings. Renowned for its efficiency, an ITC investigation often concludes in months rather than the year or more typical in district court cases.

To safeguard sensitive information revealed during discovery, protective orders are issued, requiring attorneys to adhere to specific guidelines. Confidential business information (CBI) remains accessible only to specific individuals, including outside lawyers, experts, the Staff, ALJ, and the Commission.

Hearings and Witness Testimonies

ITC hearings depart significantly from traditional court trials. A jury is absent, and the ALJ serves as the fact-finder. Additionally, many ALJs opt for written witness statements instead of live testimony, with cross-examinations conducted during the hearing.

Initial and Final Decisions and Post-Investigation Remedies

Following the hearing and post-hearing arguments, the ALJ delivers an initial determination (ID). This document determines whether a violation of Section 337 occurred, based on evidence and the presence of a domestic industry. It also scrutinizes patent claims individually. Once the ITC’s determination has been finalized, and if a violation is established, remedies specified in the final determination (FD) become accessible.

Typically, the ITC offers exclusion orders or cease and desist orders. Exclusion orders direct U.S. Customs and Border Protection to block infringing products at ports of entry, with two types available – general (applicable to all infringing products) and limited (specific to identified manufacturers or importers). Cease and desist orders prohibit respondents from selling infringing products already within the U.S.

Presidential Review and Appellate Processes

Given that the ITC is a government agency, the President reviews exclusion orders within 60 days of the FD’s issuance. If no action is taken during this period, the ITC’s decision becomes final. Subsequently, either party can launch an appeal to the United States Court of Appeals for the Federal Circuit.

Conclusion

The ITC is an important forum for startups to become familiar with due to the impact of an exclusion order. Patent infringement is a common issue that startups are dealing with, the ITC is an important venue to addressing infringement involving products imported into the U.S. For a recent example of the role of the ITC in patent disputes and the impact of an exclusion order, please see our next blog focused on the ITC dispute between Apple and Masimo.

The “Secret Formula” for Choosing a Brand Name

Posted on Modified on by Sebastian Custodia

Unarguably, one of the most important branding decisions to be made by an entrepreneur is the name of the venture. Some of the world’s most iconic brands not only have catchy names, but also names with a great story behind them. These stories often offer a glimpse at the company’s history, whether or not the name actually has anything to do with the product or service itself. The origin of the Apple name, for example, is tied to a story told by Steve Wozniak in his autobiography, in which Steve Jobs suggested the name after returning home from a stint in a commune which he referred to as an “apple orchard.” The name Google was the result of a misspelled search in the domain name registry, and a welcomed change to the company’s original name, “BackRub.” And who can forget Justin Timberlake (as Sean Parker) advising Mark Zuckerberg to “drop the ‘The’” from TheFacebook.

From these examples, and many more, we learn that the origin of the name is  arguably equally important as the actual name itself. From a sheer branding perspective, having these stories to tell about your company history can greatly aid in the building of a community around your brand – fostering loyalty and contributing to sustained success. In fact, some suggest that brand names that are directly related to a product or service are less likely to succeed than an extraneous name. Scrolling down any list of top brands reveals that this notion seems to be accurate. Perhaps the reason is that the disconnect between the name of a company and its offerings provides for much stronger and sustainable Brand Awareness, Brand Association, Brand Positioning, etc. when consumers are tasked with connecting a name to a product or service themselves rather than being told exactly what to expect. In my own mind, for example, I was tasked with creating the associations between the Disney name (which at its origin is simply a surname with no relation to animation) with family-oriented, funny, and wholesome cartoons. Because I have learned to associate the name with the product and accompanying emotions on my own, that bond is far stronger. Conversely, another animation brand that I have grown up with is Cartoon Network. The company offers a brand name that is immediately reconcilable with their offering. Over the years, it is possible that by allowing me to skip the step of creating this brand association on my own, the brand has fostered a less meaningful and sustainable relationship. Among many other factors, the difference in brand power in my mind is conceivably attributable to the mechanics of the brand name itself.

Given that the brand name is so important, entrepreneurs spend countless hours mulling over their options to find the perfect fit. Sometimes, however, there are roadblocks. In a recent U.S. circuit court case, an entrepreneur was denied the right to use “The Krusty Krab” as the name for his new restaurant venture. The Krusty Krab, a Bikini Bottom staple, is of course the name used by the fictitious restauranteur Mr. Krabs in the SpongeBob SquarePants cartoon show and movies. The case is an example of an interesting rule around trademark protection for things that are not officially registered with the Trademark Office and that originate from fictional sources. Having appeared in over 80% of SpongeBob episodes, in addition to 2 feature films, the court ruled that Viacom (the rights holder to SpongeBob) should retain the rights to The Krusty Krab. In court, Viacom successfully proved that diners at the proposed Krusty Krab restaurant would likely confuse the establishment with SpongeBob’s fictional employer. The courts have taken a similar stance in the past on trademark related cases, granting trademark protection to the Daily Planet (from the Superman universe), as well as the General Lee (from The Dukes of Hazzard).

When developing a brand strategy, brand name is a pivotal decision. The various components of Brand Equity can be bolstered by a solid name with an interesting origin story. Unsurprisingly, entrepreneurs tap in to any and all available resources while attempting to derive the perfect name. It is important, however, to remember that trademark protection can be awarded for things outside of the official registry. But just because a name may be protected, does not necessarily rule out the possibility of its use for your venture. Interestingly enough, Viacom itself has a history of lending its marks in the food business. A license of the Bubba Gump Shrimp Co. name from the hit movie Forrest Gump is responsible for the turnaround and massive success of a once declining seafood provider. In this case, Mr. Krabs was not quite ready to grant access to his infamous secret formula.

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