The petitions allege 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 this 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.