Medtronic, Masimo split win in PTAB decision

Masimo (NSDQ:MASI) said this week the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board delivered split a decision related to pulse oximetry technology patents owned by Masimo that were challenged last year by Medtronic (NYSE:MDT).

The PTAB ruled on petitions to review 2 different patents owned by Masimo related to signal processing apparati, granting Medtronic’s request to review certain claims on one and denying other claims on it and a second patent.

The PTAB denied Medtronic’s request to review challenged claims on Masimo’s ‘034 patent, but approved the company’s petition for review of other claims on the similarly named ‘393 patent, Masimo said.

Masimo said it planned to “defend the claims of the ‘393 Patent for which review was granted,” according to an SEC filing. The patent is set to expire in September this year, while the ‘034 patent will expire in October 2018.

Medtronic challenged Masimo patents last October, filing inter partes reviews with the U.S. Patent & Trademark Office.

The petition alleged that claims in 1 of the patents, covering “Signal processing apparatus,” are obvious due to prior art that the patent office “did not fully consider during prosecution as the prior art did not form the basis of a rejection.” Medtronic alleges obviousness and anticipation for the 2nd patent, according to documents filed with the PTO’s Patent Trial & Appeal Board.

Medtronic acquired the patents last year when it bought Covidien, whose Nellcor subsidiary (itself a legacy from corporate predecessor Tyco Healthcare) lost a series of legal battles with Masimo over the same patents. In January 2006 Covidien agreed to pay $330 million plus unspecified royalties to settle the beef, after a federal appeals court upheld a $140 million anti-trust judgment against Nellcor.

Masimo said Medtronic threatened to halt royalties “only when it feels it has reached an appropriate point in the process” and vowed to fight the inter partes review petitions and any eventual patentability proceedings at the PTAB.

Medtronic is barred from from challenging 1 of the patents because of its prior win over Covidien, Masimo claimed.

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