AliveCor filed a complaint with the ITC in April 2021, alleging that Apple infringed its patents with the launch of its ECG feature for Apple Watch. The company also filed an anti-competition complaint against the company.
In June, the ITC issued an initial determination that Apple violated AliveCor's patents; however, today's ruling is a Final Determination. The ITC also issued a Limited Exclusion Order (LEO), a cease and desist order and set a bond in the amount of $2.00 per unit of infringing Apple Watches imported or sold during the Presidential review period.
Normally, the President would have 60 days to review the ban; however, the ITC has suspended enforcement of its orders pending resolution of AliveCor's appeal of a recent U.S. Patent and Trademark Office, Patent Trial and Appeal Board's ("PTAB") decision that found the patents invalid.
Upon review of the parties' submissions, the ID, the RD, evidence of record, and public interest filings, the Commission has determined that Apple violated section 337 by reason of importation and sale of articles that infringe asserted claims 12, 13, and 19-23 of the '941 patent; and claims 1, 3, 5, 8-10, 12, 15, and 16 of the '731 patent. Regarding the issues under review, the Commission has determined to affirm the ID's economic prong of the domestic industry findings with the modifications described in the accompanying Commission opinion. Concerning invalidity, the Commission has determined to affirm the ID's patent eligibility findings under 35 U.S.C. 101 as to one claim with modifications explained in the Commission opinion and reverse as to another; and to correct the ID for not considering objective indicia of non-obviousness for certain asserted claims. For remedy, the Commission has determined to issue a limited exclusion order prohibiting further importation of infringing products and a cease and desist order against Apple. The Commission has determined that the public interest factors do not counsel against issuing remedial orders. The Commission has determined that a bond in the amount of $2 per unit of covered articles is required for covered products imported or sold during the period of Presidential review.
The enforcement of these orders, including the bond provision, is suspended pending final resolution of the PTAB's Final Written Decisions finding the asserted patent claims unpatentable. See 35 U.S.C. 318(b); Apple, Inc. v. AliveCor, Inc., IPR2021-00971, Patent 10,595,731, Final Written Decision Determining All Challenged Claims Unpatentable (Dec. 6, 2022); Apple, Inc. v. AliveCor, Inc., IPR2021-00972, Patent 10,638,941, Final Written Decision Determining All Challenged Claims Unpatentable (Dec. 6, 2022).
Despite now needing to prove its patents valid, AliveCor sees the ITC ruling as a win.
"Today's ITC ruling is a win for innovation and consumer choice," said Priya Abani, CEO of AliveCor. "The ruling underscores the importance of upholding intellectual property rights for companies like AliveCor and scores of others whose innovations are at risk of being suppressed by a Goliath like Apple. We look forward to continuing to build and innovate on our cardiac solutions to improve people's lives."
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