1:22-cv-01458
Tankovich MD PhD v. Candela Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Nikolai Tankovich, MD, PHD (California) v. Candela Corporation (Delaware)
- Plaintiff’s Counsel: Morgan, Lewis & Bockius LLP
- Case Identification: 1:22-cv-01458, D. Del., 11/04/2022
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant, Candela Corporation, is a Delaware corporation and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s Frax Pro and Nordlys laser skin treatment systems infringe a patent related to a system and method for simultaneously administering multiple laser beams for tissue therapy.
- Technical Context: The technology concerns fractional laser skin treatments, a field where different laser wavelengths are used to target different skin depths for therapeutic effects like rejuvenation.
- Key Procedural History: The complaint details a prior business relationship between the parties, alleging that Plaintiff disclosed his prototype and proprietary information to Defendant under Non-Disclosure Agreements. The complaint further alleges that Defendant used this information to develop the accused products after ceasing communications with Plaintiff. A prior lawsuit against a related entity, Candela Medical, Inc., was filed in the Central District of California but was dismissed for lack of personal jurisdiction prior to the filing of the present action.
Case Timeline
| Date | Event |
|---|---|
| 2018-07-31 | Plaintiff and Defendant enter into Non-Disclosure Agreements (NDAs) |
| 2019-03-XX | Defendant provides Plaintiff with an "Evaluation Report" on his technology |
| 2019-08-20 | Priority Date for U.S. Patent No. 10,675,481 |
| 2020-06-09 | U.S. Patent No. 10,675,481 Issues |
| 2021-01-XX | Defendant releases the accused Frax Pro laser device |
| 2021-XX-XX | Defendant releases the accused Nordlys laser device |
| 2022-10-25 | Prior related lawsuit in C.D. Cal. is dismissed |
| 2022-11-04 | Complaint Filed in D. Del. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,675,481 - "LASER SYSTEM FOR MULTIPLE BEAM TISSUE THERAPY", issued June 9, 2020
The Invention Explained
- Problem Addressed: The patent's background section describes a problem with the sequential application of different laser wavelengths in skin treatments. The first laser application can alter the skin tissue (e.g., by causing swelling or coagulation), which then interferes with the proper propagation and absorption of a second, subsequent laser beam, compromising the overall treatment effectiveness (’481 Patent, col. 1:23-34).
- The Patented Solution: The invention claims to solve this problem with a laser system that can deliver multiple laser beams simultaneously. This system generates a distribution pattern on the tissue comprising "spatially separated overlapping and non-overlapping regions" ('481 Patent, Abstract). By applying the different beams at the same time, the system avoids the interference effects that arise from treating already-treated tissue, allowing each wavelength to achieve its intended effect without being compromised by a prior laser application ('481 Patent, col. 2:1-9). The system uses fractional scanners in communication with the lasers to create these specific patterns ('481 Patent, col. 4:50-53).
- Technical Importance: This approach seeks to improve the efficacy and efficiency of multi-wavelength laser therapies by enabling different wavelengths to penetrate to different, targeted tissue depths simultaneously without interference ('481 Patent, col. 1:50-57).
Key Claims at a Glance
- The complaint asserts infringement of independent claim 1 and dependent claims 2, 4, 6, 7, 8, and 9 (Compl. ¶45).
- Independent Claim 1 recites a laser system comprising the following essential elements:
- a first laser in optical communication with a first laser scanner that is adapted to distribute a beam from the first laser in a first pattern; and
- a second laser in optical communication with a second laser scanner that is adapted to distribute a beam from the second laser in a second pattern;
- wherein the first pattern and the second pattern combine to produce overlapping beams and non-overlapping beams.
III. The Accused Instrumentality
Product Identification
The Candela Frax Pro and the Candela Nordlys laser skin treatment devices (collectively, the "Accused Products") (Compl. ¶24).
Functionality and Market Context
The complaint alleges the Frax Pro system is an "advanced diode laser system that delivers highly targeted 1550 nm and 1940 nm wavelengths for dual-depth skin resurfacing" (Compl. ¶40). The Nordlys system is alleged to incorporate the same Frax 1550 and Frax 1940 components as the Frax Pro (Compl. ¶41-42). A marketing image from Defendant's website shows the Nordlys system includes distinct applicators for "Frax 1550" and "Frax 1940" treatments (Compl. ¶41, p. 8). The complaint alleges these products are "substantially a copy" of the plaintiff's patented device and utilize proprietary features disclosed to Candela under an NDA (Compl. ¶22).
IV. Analysis of Infringement Allegations
Claim Chart Summary: U.S. Patent No. 10,675,481 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) a first laser in optical communication with a first laser scanner that is adapted to distribute a beam from said first laser in a first pattern; and | The Frax Pro's Frax 1550 component has a first laser diode that generates a first laser and, upon information and belief, passes through a first laser scanner to distribute a beam in a first pattern. | ¶47 | col. 4:50-53 |
| b) a second laser in optical communication with a second laser scanner that is adapted to distribute a beam from said second laser in a second pattern; | The Frax Pro's Frax 1940 component has a second laser diode that generates a second laser and, upon information and belief, passes through a second laser scanner to distribute a beam in a second pattern. | ¶47 | col. 4:50-53 |
| c) wherein said first pattern and said second pattern combine to produce overlapping beams and non-overlapping beams. | Upon information and belief, the first and second patterns produced by the accused devices combine to produce overlapping and non-overlapping beams. A product photo shows two separate handpieces, labeled "Frax 1550" and "Frax 1940" (pictured below). | ¶47, p. 13 | col. 2:1-4 |
A product image from Defendant's website shows two distinct handpieces, labeled "Frax 1550" and "Frax 1940," which comprise the Frax Pro system (Compl. ¶47, p. 13).
Identified Points of Contention
- Scope Questions: A central dispute may arise over the term "a laser system." The patent figures depict a single, integrated handpiece containing multiple lasers and scanners ('481 Patent, Fig. 1), whereas the accused Frax Pro system appears from complaint exhibits to consist of two separate physical handpieces (Compl. ¶47, p. 13). This raises the question of whether a "system" composed of multiple, distinct physical applicators falls within the scope of the claim term "a laser system."
- Technical Questions: The allegation that the accused products "combine to produce overlapping beams and non-overlapping beams" (Claim 1c) is made solely "upon information and belief" (Compl. ¶47, p. 10). A key question for the court will be what evidence the plaintiff can produce to demonstrate that the accused devices, when used, actually generate this specific, combined beam pattern, which is a core functional element of the claimed invention.
V. Key Claim Terms for Construction
The Term: "a laser system"
Context and Importance: The definition of this term is critical because the accused product appears to be composed of two separate handpieces, while the patent specification depicts a single, integrated device. The infringement analysis depends on whether the collection of accused components constitutes a single "system" as claimed.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim preamble refers to "administering two or more beams," which could arguably be accomplished by a set of coordinated components sold and used together, even if not in a single housing.
- Evidence for a Narrower Interpretation: The figures in the patent consistently depict a single, integrated handpiece labeled "Laser system 1" that contains all the laser and scanner components ('481 Patent, Figs. 1, 3, 4, 5). This could support an interpretation that the "system" must be a single, physically integrated unit.
The Term: "combine to produce overlapping beams and non-overlapping beams"
Context and Importance: This limitation defines the specific functional output of the claimed system and is the patent's proposed solution to the prior art problem of interference. Practitioners may focus on this term because the plaintiff's complaint does not provide specific factual allegations or evidence (beyond conclusory statements) showing how the accused products achieve this result.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify the degree of overlap or the exact geometry of the pattern, potentially allowing for any combination that includes some overlapping and some non-overlapping spots.
- Evidence for a Narrower Interpretation: The specification links this feature directly to the goal of avoiding interference from sequential applications by delivering beams simultaneously ('481 Patent, col. 2:1-9). Figures 2A, 2B, and 2C illustrate specific, structured patterns of "non-overlapping," "fully overlapping," and "partially overlapping" beams, which could be used to argue for a more structured and limited definition of the required output ('481 Patent, col. 2:26-33).
VI. Other Allegations
Indirect Infringement
The complaint alleges that Candela induces infringement by end-users (Compl. ¶46). The complaint does not specify the factual basis, but such claims are typically supported by evidence of user manuals, marketing materials, or training that instruct users to operate the accused devices in a way that performs the claimed method.
Willful Infringement
The complaint makes detailed allegations to support willfulness. It asserts that Candela had pre-suit knowledge of the technology itself through a confidential relationship and NDAs beginning in 2018 (Compl. ¶3-10). It further alleges that Candela used this confidential information to develop its products and had "actual notice of the '481 Patent prior to the filing of this lawsuit" (Compl. ¶22, 49).
VII. Analyst’s Conclusion: Key Questions for the Case
- Definitional Scope: A core issue will be whether the term "a laser system" in claim 1, which is depicted in the patent as a single integrated device, can be construed to read on the accused products, which appear to operate via two distinct physical handpieces.
- Evidentiary Sufficiency: A key evidentiary question will be one of functional operation: can the plaintiff provide sufficient evidence beyond "information and belief" to prove that the accused products, in operation, actually generate a combined pattern of "overlapping beams and non-overlapping beams" as required by the patent claims?
- Impact of Pre-Suit Conduct: The case presents strong allegations of pre-suit knowledge and misappropriation of technology under an NDA. A central aspect of the litigation will be the extent to which these factual allegations, if proven, can support the claims of willful infringement and potentially lead to enhanced damages, irrespective of the ultimate outcome on the finer technical points of infringement.