Serendia LLC v. Rohrer Aesthetics Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Serendia, LLC (California)
  • Defendant: Rohrer Aesthetics, Inc. (Delaware)
  • Plaintiff’s Counsel: Devlin Law Firm LLC; Latham & Watkins LLP
• Case Identification: 1:23-cv-00226, D. Del., 03/01/2023
• Venue Allegations: Venue is asserted in the District of Delaware based on Defendant's incorporation in the state.
• Core Dispute: Plaintiff alleges that Defendant’s RF microneedling devices infringe six patents related to methods and apparatuses for dermatological treatment using radio frequency energy delivered via microneedles.
• Technical Context: The technology at issue is radio frequency (RF) microneedling, a cosmetic procedure that uses fine needles to create micro-wounds in the skin and deliver RF energy to the dermis for skin rejuvenation and tightening.
• Key Procedural History: The complaint notes that a parallel complaint was filed at the International Trade Commission (ITC), indicating a multi-front legal strategy by the Plaintiff. The complaint also alleges that the inventor, Dr. Jongju Na, is a pioneer in the field and that the patented technology is associated with a scientifically recognized phenomenon termed the "Na effect."

Case Timeline

Date	Event
2008-08-06	Earliest Priority Date (’536, ’774, ’812 Patents)
2011-06-14	Earliest Priority Date (’836, ’379, ’444 Patents)
2016-04-26	U.S. Patent No. 9,320,536 Issues
2016-11-01	U.S. Patent No. 9,480,836 Issues
2017-10-03	U.S. Patent No. 9,775,774 Issues
2018-08-28	U.S. Patent No. 10,058,379 Issues
2020-12-22	U.S. Patent No. 10,869,812 Issues
2022-08-09	U.S. Patent No. 11,406,444 Issues
2023-03-01	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,320,536 - “Method, System, and Apparatus for Dermatological Treatment”

The Invention Explained

• Problem Addressed: The complaint alleges that prior art skin treatments could cause burning, pain, and scarring (Compl. ¶23). The patent family background explains the desirability of new methods to treat dermatological tissue (’812 Patent, col. 1:40-42).
• The Patented Solution: The invention is a dermatological treatment system featuring a hand-held device with a disposable or detachable cartridge containing a plurality of microneedles (’812 Patent, col. 2:32-41). A motor within the device controllably deploys the needles from the cartridge into the skin, and a signal generator delivers electrical signals to the needles to treat the tissue (’812 Patent, col. 10:9-19). This design is intended to allow for precise control over treatment depth and energy delivery (Compl. ¶23).
• Technical Importance: The claimed system architecture, featuring a reusable handle and a disposable needle cartridge, provides a framework for delivering various forms of energy to the skin in a controlled and repeatable manner (Compl. ¶22).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" and references a claim chart for the "independent claims" in an exhibit (Compl. ¶28-29). Independent claim 1 is a representative method claim.
• Essential elements of claim 1 include:
  • Placing a user holdable device with a "releasably couplable deployable needle module" on or near dermatological tissue.
  • Communicating electrical signals from the device's proximal end to the needle assembly.
  • Energizing a motor to extend the needles a desired distance from the module's end surface.
  • Energizing the extended needles with a signal generator to treat the tissue.

U.S. Patent No. 9,480,836 - “Skin Treatment Apparatus and Method”

The Invention Explained

• Problem Addressed: The patent's background describes issues with prior art RF skin treatments, including the potential for high-frequency energy to burn the epidermis between needles and problems with insulated needles, such as causing pain, allergic reactions, or insulation failure (’379 Patent, col. 2:14-28).
• The Patented Solution: The invention proposes an apparatus using a plurality of bipolar electrodes (needles) that are energized with an alternating current (AC) radio frequency (RF) signal. This configuration is designed to cause coagulation in the tissue around each individual electrode rather than creating a current path between the electrodes (’836 Patent, Claim 1). This concentrates the thermal effect in the targeted dermis layer while minimizing heat in the epidermis, a phenomenon the complaint terms the "Na effect" (Compl. ¶21; ’379 Patent, col. 3:51-64).
• Technical Importance: By focusing energy around each needle tip, the invention purports to enable effective treatment of the dermis while avoiding burns to the outer skin layer, thereby reducing pain and side effects (Compl. ¶21, ¶23).

Key Claims at a Glance

• The complaint alleges infringement of "at least one claim" and references a claim chart for the "independent claims" in an exhibit (Compl. ¶39-40). Independent claim 1 is a representative apparatus claim.
• Essential elements of claim 1 include:
  • A plurality of electrodes that are bipolar and configured to be insertable into skin.
  • An RF generation module coupled to the electrodes.
  • The module is configured to provide an AC RF signal that causes coagulation "around each electrode rather than coagulating between the electrodes."

U.S. Patent No. 9,775,774 - “Method, System, and Apparatus for Dermatological Treatment”

• Technology Synopsis: Belonging to the same family as the ’536 Patent, this patent relates to a dermatological treatment system comprising a handpiece and a mechanically detachable and deployable needle cartridge. The technology focuses on the structural and functional aspects of the apparatus for delivering controlled treatment to the skin.
• Asserted Claims: The complaint asserts infringement of the independent claims (Compl. ¶51).
• Accused Features: The Pixel8 RF and Pixel8 Pro devices are accused of embodying the claimed apparatus (Compl. ¶24).

U.S. Patent No. 10,058,379 - “Electrically Based Medical Treatment Device and Method”

• Technology Synopsis: As a member of the ’836 Patent family, this patent describes the method of using bipolar electrodes with an oscillating current to apply energy to tissue segments around each electrode instead of between them. This method is central to the "Na effect," which aims to treat the dermis while protecting the epidermis.
• Asserted Claims: The complaint asserts infringement of the independent claims (Compl. ¶62).
• Accused Features: The Pixel8 RF and Pixel8 Pro devices are accused of practicing the claimed method (Compl. ¶24).

U.S. Patent No. 10,869,812 - “Method, System, and Apparatus for Dermatological Treatment”

• Technology Synopsis: A member of the ’536 Patent family, this patent further describes the apparatus for dermatological treatment, including a handpiece with a motor and a releasably couplable needle module. The claims cover the mechanical system for deploying needles and delivering electrical signals for skin treatment.
• Asserted Claims: The complaint asserts infringement of the independent claims (Compl. ¶73).
• Accused Features: The Pixel8 RF and Pixel8 Pro devices are accused of infringing the claims of this patent (Compl. ¶24).

U.S. Patent No. 11,406,444 - “Electrically Based Medical Treatment Device and Method”

• Technology Synopsis: Belonging to the ’836 Patent family, this patent also claims a medical treatment apparatus using bipolar electrodes and an RF generation module that provides an oscillating current. The core of the claimed invention is the application of energy to create therapeutic effects in the tissue surrounding each individual electrode.
• Asserted Claims: The complaint asserts infringement of the independent claims (Compl. ¶84).
• Accused Features: The Pixel8 RF and Pixel8 Pro devices are accused of infringing the claims of this patent (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

• The accused products are the Pixel8 RF and Pixel8 Pro devices and their components, such as needle assemblies (Compl. ¶24).

Functionality and Market Context

• The complaint characterizes the accused products as "RF microneedling dermatological treatment devices" (Compl. ¶24). Plaintiff Serendia alleges that it competes directly with Defendant Rohrer in the market for such systems, with Serendia marketing its own "Scarlet SRF device" for similar skin tightening treatments (Compl. ¶25-26). The complaint alleges that the design, manufacture, and sale of these products is the primary nature of Rohrer's business (Compl. ¶24).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided. (Compl. ¶29, ¶40, ¶51, ¶62, ¶73, ¶84). The complaint's narrative infringement theory is that the accused Pixel8 RF and Pixel8 Pro products, as RF microneedling systems, practice the methods and embody the apparatuses claimed in the asserted patents, which cover systems for controllably deploying microneedles and applying RF energy to create coagulation around each needle tip. The complaint does not provide sufficient detail for a specific element-by-element analysis.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "coagulation around each electrode rather than coagulating between the electrodes" (from claim 1 of the ’836 Patent).
• Context and Importance: This phrase appears to be the central technical distinction of the ’836 patent family and the basis for the "Na effect" described in the complaint (Compl. ¶21). The outcome of the infringement analysis for the ’836, ’379, and ’444 patents may depend heavily on whether the accused devices are found to operate in this specific manner, as opposed to creating coagulation primarily in the tissue volume between the electrodes, a characteristic the patent specification attributes to prior art (’379 Patent, Fig. 3). Practitioners may focus on this term because it is a functional limitation that defines the invention by its result, raising questions about how that result is to be proven and measured.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that the claim covers any apparatus that uses bipolar electrodes and an AC RF signal to achieve the functional result of coagulation primarily localized around each needle, regardless of the precise shape or overlap of the coagulation zones. The specification discusses this effect as a byproduct of using AC signals where "each needle may independently form an energy field about its tip" (’379 Patent, col. 3:57-60).
  • Evidence for a Narrower Interpretation: A party could point to specific embodiments and figures in the specification to argue for a more limited scope. For instance, Figure 5 of the ’379 Patent depicts distinct, non-overlapping, oval-shaped heated areas around each needle tip, which is explicitly contrasted with prior art figures showing a connected heated area between needles (’379 Patent, col. 4:14-17, Fig. 5 vs. Fig. 3). An argument could be made that the claim is limited to systems that produce such discrete coagulation zones.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is alleged based on Rohrer providing "demonstrative and informational webinars, videos, and other materials" with the specific intent to encourage infringing use by its customers (Compl. ¶33, ¶44). Contributory infringement is alleged on the basis that the accused products are specially made for an infringing use and are not staple articles of commerce with substantial non-infringing uses (Compl. ¶34, ¶45).
• Willful Infringement: Willfulness is alleged for all asserted patents. The complaint pleads that Rohrer had knowledge of the patents no later than the filing date of the complaint and the parallel ITC complaint (Compl. ¶30, ¶41, ¶52, ¶63, ¶74, ¶85). This allegation of post-suit knowledge serves as a basis for seeking enhanced damages.

VII. Analyst’s Conclusion: Key Questions for the Case

• A key evidentiary question will be one of electrical functionality: Does the accused Pixel8 RF device, under normal operation, generate thermal coagulation zones primarily around each individual needle electrode, as required by the ’836 patent family, or does it generate a cohesive thermal zone between the electrodes? The answer may require expert testimony and empirical testing of the accused device’s RF energy distribution in tissue.
• A central issue of claim construction will be the definitional scope of the functional limitation "coagulation around each electrode rather than coagulating between the electrodes." The case may turn on whether this phrase requires the creation of physically separate and distinct coagulation zones, as depicted in the patent's figures, or if it can be construed more broadly to cover any system where the peak energy density is localized at the needle tips.
• For the ’536 patent family, a core question will be one of mechanical scope: How do the specific components and mechanisms of the accused products' handpiece and needle cartridge map onto the claim elements describing a "user holdable device" with a "releasably couplable deployable needle module"? The analysis will likely focus on the structural and functional correspondence between the accused device and the patent's claims.