DCT
2:17-cv-00876
Altair Instruments Inc v. Image Derm Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Altair Instruments, Inc. (California)
- Defendant: Image Derm, Inc. (California)
- Plaintiff’s Counsel: Rutan & Tucker, LLP
- Case Identification: 2:17-cv-00876, C.D. Cal., 02/03/2017
- Venue Allegations: Venue is alleged based on Defendant’s residence, principal place of business, and its sales and offers for sale of the accused products within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s "Diamantech" microdermabrasion devices infringe a patent related to vacuum-assisted skin abrasion technology.
- Technical Context: The technology resides in the field of aesthetic dermatology, specifically devices for mechanical exfoliation of the skin to improve its appearance.
- Key Procedural History: The patent-in-suit has undergone two separate ex parte reexaminations, both resulting in amendments to the asserted claims. The first reexamination certificate was issued in 2007 and the second in 2015. Plaintiff alleges that Defendant received actual notice of the patent in October 2014, while the second reexamination was pending. The prosecution history during these reexaminations will be central to determining the scope of the amended claims.
Case Timeline
| Date | Event |
|---|---|
| 1999-11-12 | '739 Patent Priority Date (Application Filing) |
| 2001-06-05 | '739 Patent Issue Date |
| 2007-12-11 | '739 Patent First Reexamination Certificate (C1) Issued |
| 2014-10-16 | Plaintiff Alleges Sending Notice of '739 Patent to Defendant |
| 2015-07-15 | '739 Patent Second Reexamination Certificate (C2) Issued |
| 2017-02-03 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 6,241,739, "Microdermabrasion Device And Method Of Treating The Skin Surface," issued June 5, 2001.
The Invention Explained
- Problem Addressed: The patent describes prior art microdermabrasion techniques that used a stream of powdered abrasive particles, such as aluminum oxide, to exfoliate the skin ('739 Patent, col. 2:2-6). This method presented potential disadvantages, including the risk of abrasive particles being inhaled by the patient or operator, becoming lodged in the skin, and creating challenges for proper disposal ('739 Patent, col. 2:17-36).
- The Patented Solution: The invention is a microdermabrasion system that avoids loose powders by using a treatment tool with an abrasive material, like diamond grit, permanently attached to its tip ('739 Patent, Abstract; col. 3:23-28). A vacuum is applied through an opening in the abrasive tip. This vacuum performs a dual function: it pulls the skin into firm, "intimate contact" with the abrasive surface for more effective treatment, and it suctions away the removed skin cells for collection in a filter ('739 Patent, col. 3:38-41; col. 4:42-48).
- Technical Importance: The described approach sought to provide a safer and cleaner alternative to the powder-based "bead-blasting" microdermabrasion systems that were prevalent at the time of the invention ('739 Patent, col. 2:17-22).
Key Claims at a Glance
- The complaint asserts independent claims 1, 9, 12, and 16, all as amended by subsequent reexaminations (Compl. ¶12).
- Independent Claim 1 (Device): A device for removing the epidermis without damaging the dermis, comprising:
- a source of a vacuum; and
- a tube with a treatment tip having an abrasive material permanently attached to its operating end;
- the treatment delivery surface having one or more openings for continuously applying the vacuum to a skin surface;
- the vacuum causing the skin to have an increased area of contact with the abrasive material and also functioning to collect the removed epidermis cells ('739 Patent, C2 Certificate, col. 1:21-44).
- Independent Claim 12 (Method): A method for performing microdermabrasion to remove epidermal cells without injuring the dermis, comprising:
- providing a tubular treatment tool with a non-rotational, skin-contacting surface having a permanently attached abrasive material;
- providing a vacuum through one or more holes in the end of the tool;
- bringing the abrasive surface into contact with the skin while the vacuum is delivered; and
- moving the abrasive material across the skin surface to remove the cells ('739 Patent, C2 Certificate, col. 2:7-27).
- The complaint also asserts independent device claim 9, independent wand assembly claim 16, and various dependent claims, and reserves the right to assert others (Compl. ¶12).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused products as "one or more microdermabrasion devices, including one known as the 'Diamantech'" (Compl. ¶12).
Functionality and Market Context
The complaint does not provide sufficient detail for analysis of the Accused Devices' specific functionality, components, or operation. It alleges in a conclusory manner that the devices "contain each and every element" of the asserted claims (Compl. ¶12). No information regarding the market position or commercial importance of the "Diamantech" device is provided.
IV. Analysis of Infringement Allegations
The complaint alleges that the "Diamantech" device infringes the '739 Patent but does not map specific product features to the elements of the asserted claims. The following tables summarize the infringement allegations for representative independent claims based on the complaint's general assertions.
'739 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A device for removing the epidermis without damaging the dermis of the skin in a microdermabrasion procedure | The complaint alleges the Accused Devices are microdermabrasion devices that infringe the claim. | ¶12 | col. 1:21-24 (C2) |
| a source of a vacuum | The complaint alleges the Accused Devices contain a vacuum source. | ¶12 | col. 14:46 |
| a tube with a treatment tip ... the treatment tip having an abrasive material permanently attached to an operating end thereof | The complaint alleges the Accused Devices contain a tube with a treatment tip that has a permanently attached abrasive material. | ¶12 | col. 3:23-28 |
| the treatment delivery surface having one or more openings therein for continuously applying the reduced pressure | The complaint alleges the Accused Devices' treatment tips have openings for applying a vacuum. Figure 5 of the patent, incorporated via Exhibit A, shows a magnified view of the abrasive tip (42) with its underlying structure (44) through which a vacuum opening would pass (Compl. Ex. A, p. 9). | ¶12 | col. 3:38-41 |
| said continuously applied vacuum causing the skin being treated to have an increased area of contact with the abrasive material ... the vacuum also functioning to collect epidermis cells | The complaint alleges the Accused Devices use a vacuum that both increases skin contact with the tip and collects removed cells. Figure 1 of the patent, provided in Exhibit A, shows a complete system where a vacuum pump (24) connects through tubing to a wand (20), illustrating the pathway for suction and collection (Compl. Ex. A, p. 8). | ¶12 | col. 4:42-59 |
'739 Patent Infringement Allegations (Claim 12)
| Claim Element (from Independent Claim 12, as amended) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of performing microdermabrasion of a skin surface ... to remove cells comprising the epidermis ... without injuring the dermis | The complaint alleges that users of the Accused Devices perform a method of microdermabrasion that infringes the claim. | ¶12 | col. 2:7-11 (C2) |
| providing a tubular treatment tool with a skin contacting surface having an abrasive material permanently attached to the end thereof, the skin contacting surface being non-rotational during use | The complaint alleges that users are provided with and use a non-rotational tool with a permanently attached abrasive surface. | ¶12 | col. 2:12-16 (C2) |
| providing through a lumen within the tubular treatment tool ... a pressure which is less than ambient pressure | The complaint alleges that the method of using the Accused Devices involves providing a vacuum through the tool. | ¶12 | col. 4:42-45 |
| bringing the end of the skin contacting surface ... into contact with the skin surface while said lesser pressure is delivered | The complaint alleges users bring the abrasive tip into contact with skin while the vacuum is active. | ¶12 | col. 4:42-48 |
| moving the abrasive material on the skin contacting surface across the skin surface so as to remove epidermal cells without injuring the dermis | The complaint alleges users move the tool across the skin to perform the abrasion as claimed. | ¶12 | col. 3:17-24 |
Identified Points of Contention
- Scope Questions: A primary question will be the proper construction of "permanently attached." Does this term require a specific manufacturing process like plating, as described in an embodiment ('739 Patent, col. 3:25-28), or can it read on other non-disposable attachment methods?
- Technical Questions: The amended claims require removing the epidermis "without damaging the dermis" ('739 Patent, C2 Cert., col. 1:22-23). The complaint provides no factual basis to show that the "Diamantech" device satisfies this negative limitation, raising the question of what evidence Plaintiff will offer to prove this functional characteristic.
V. Key Claim Terms for Construction
The Term: "permanently attached"
- Context and Importance: This term appears in all asserted independent claims and distinguishes the invention from prior art using loose abrasive powders. Its construction will be critical, as it defines the required relationship between the abrasive material and the treatment tool, which may be a central point of dispute over whether the "Diamantech" device's tip construction falls within the claim scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests alternatives to the preferred embodiment, stating that "The abrasive can also be adhered with an adhesive" and describes a "removable and replaceable tip" as a "further alternative" ('739 Patent, col. 3:60-64). This language may support a construction that is not limited to a specific bonding process like plating and could include tips that are securely fastened but not necessarily integral to the wand.
- Evidence for a Narrower Interpretation: The primary embodiment describes diamond grit "adhered to the end of a metal tube by a plating process using nickel as a binder," which implies a highly durable, non-removable, and integral bond ('739 Patent, col. 3:25-28). Parties may argue that the term "permanently" was intended to capture this level of durability and distinguish it from merely "removable" tips mentioned elsewhere.
The Term: "without damaging the dermis"
- Context and Importance: This limitation was added to claims 1, 9, 12, and 16 during the second reexamination to secure their patentability ('739 Patent, C2 Certificate). Practitioners may focus on this term because proving infringement requires Plaintiff to establish that the accused device, when used as a method or as an apparatus, meets this specific, negative functional outcome.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the phrase should be interpreted in the context of the device's intended and normal operation, meaning it is designed and calibrated to target only the epidermis. The patent's overall objective is described as removing "outer layers of skin... without damaging the remaining skin surface" ('739 Patent, col. 1:10-12).
- Evidence for a Narrower Interpretation: The specification itself warns that "if the particles are to large the dermis can be damaged" ('739 Patent, col. 3:36-37). A party could argue that if the accused device is capable of damaging the dermis under any setting or condition (e.g., high vacuum, coarse grit), it does not meet this limitation, making infringement dependent on the full operational capabilities of the "Diamantech" device.
VI. Other Allegations
Indirect Infringement
The complaint makes conclusory allegations of induced and contributory infringement (Compl. ¶1, ¶28). The factual basis for this is the assertion that "Users of the Accused Devices also infringe" the patent (Compl. ¶12). The complaint does not plead specific facts to support the elements of either claim, such as acts of encouragement for inducement or the sale of a non-staple component for contributory infringement.
Willful Infringement
The complaint alleges willful infringement based on Defendant having "actual knowledge of the '739 patent since at least October 16, 2014," the date Plaintiff allegedly sent a copy of the patent to ImageDerm (Compl. ¶10, ¶14). The complaint alleges that despite this knowledge, ImageDerm continued its infringing activities (Compl. ¶13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "permanently attached," which is central to all asserted claims, be broadly construed to cover any securely-fastened abrasive tip, or will it be limited to the more integral bonding methods described in the patent's preferred embodiments?
- A key evidentiary question will be one of functional performance: can Plaintiff produce sufficient evidence, likely via expert testing and testimony, to demonstrate that the accused "Diamantech" device satisfies the negative limitation of removing the "epidermis without damaging the dermis," a clause added during reexamination to distinguish the invention from prior art?
- A threshold procedural question may arise regarding pleading sufficiency: given that the complaint provides no specific facts mapping the accused product's features to claim elements, the case may face an early challenge on whether the allegations meet the plausibility standard required for patent infringement claims.