DCT

0:18-cv-62588

Edge Systems LLC v. Venus Concept USA Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 0:18-cv-62588, S.D. Fla., 12/19/2018
  • Venue Allegations: Venue is alleged to be proper because Defendant maintains a regular and established place of business within the district and has committed the alleged acts of infringement, including selling and offering to sell the accused products, within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Venus Glow hydradermabrasion system infringes five patents related to devices and methods for exfoliating skin while simultaneously delivering fluids.
  • Technical Context: The technology resides in the aesthetic dermatology market, where hydradermabrasion systems aim to provide improved skin texture and appearance by combining mechanical exfoliation, vacuum-based extraction, and infusion of therapeutic solutions.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the asserted patents, based on hiring one of Plaintiff’s former sales managers, alleged affirmative investigation of Plaintiff’s patent portfolio as a market competitor, and interactions at industry trade shows.

Case Timeline

Date Event
1999-08-26 Priority Date for ’886, ’716, ’513, ’464, and ’646 Patents
2010-09-07 ’886 Patent Issued
2011-11-29 ’716 Patent Issued
2012-12-25 ’513 Patent Issued
2015-08-01 Start of Plaintiff's employment of Travis Hosch
2016-10-18 ’464 Patent Issued
2017-09-01 End of Plaintiff's employment of Travis Hosch
2017-09-01 Start of Defendant's employment of Travis Hosch
2017-10-03 ’646 Patent Issued
2018-09-01 US Weekly Magazine article published
2018-12-15 Alleged Launch of Accused Product (approx. date)
2018-12-19 Amended Complaint Filed

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

U.S. Patent No. 7,789,886 - “INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS,” issued September 7, 2010

The Invention Explained

  • Problem Addressed: The patent addresses the shortcomings of prior art skin resurfacing techniques. Deep treatments like CO2 laser resurfacing involve significant pain and long recovery periods, while superficial treatments like conventional micro-dermabrasion offer limited efficacy and can create health hazards from inhaled abrasive particles. (’886 Patent, col. 2:56-62; col. 3:19-26).
  • The Patented Solution: The invention is a hand-held instrument for controlled epidermal abrasion. It features a working end with a specially configured "ridged surface structure" and a central aperture connected to a vacuum source. (’886 Patent, col. 4:11-20). As the device moves across the skin, the vacuum draws tissue against the ridged surface, which gently abrades the epidermis, while the vacuum simultaneously aspirates away spent crystals and skin debris through the central aperture. (’886 Patent, col. 6:52-65).
  • Technical Importance: The technology sought to provide a more effective, controlled, and comfortable method of skin exfoliation than existing options by combining mechanical abrasion with vacuum suction in a novel handpiece design. (’886 Patent, col. 2:40-54).

Key Claims at a Glance

  • The complaint asserts at least independent method claim 11. (Compl. ¶50).
  • Essential elements of claim 11 include:
    • Translating a working surface of a handheld device relative to the skin surface, the working surface comprising an abrasive structure, an aperture, and an outer periphery that encircles both.
    • The abrasive structure is spaced from the aperture.
    • Continuously applying a vacuum through the aperture to draw skin against the outer periphery and abrasive structure.
    • Aspirating debris away from the working surface while abrading the skin.
  • The complaint does not explicitly reserve the right to assert dependent claims but makes general allegations covering all Asserted Patents. (Compl. ¶¶ 14, 49).

U.S. Patent No. 8,066,716 - “INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS,” issued November 29, 2011

The Invention Explained

  • Problem Addressed: As with the related ’886 Patent, this patent aims to overcome the limitations of prior art skin treatments, which were often either too harsh with long recovery times or too superficial to be effective. (’716 Patent, col. 2:1-13).
  • The Patented Solution: The invention is a system for skin treatment that combines abrasion with the delivery of "flowable media." A handpiece includes a working end with an abrading structure, a vacuum aperture, and a separate inflow port. (’716 Patent, Abstract). The system is designed so that the flowable media is delivered to the skin, passes through or over the abrading structures during treatment, and is then removed along with debris by the vacuum. (’716 Patent, col. 7:60-67).
  • Technical Importance: This design integrates exfoliation with the simultaneous infusion of therapeutic or hydrating fluids, enabling a multi-action treatment within a single device and procedure. (’716 Patent, col. 2:55-62).

Key Claims at a Glance

  • The complaint asserts at least independent system claim 15. (Compl. ¶58).
  • Essential elements of claim 15 include:
    • A handheld device with a working end comprising an abrading structure.
    • At least one aperture connected to a vacuum source to draw away debris.
    • At least one inflow port to deliver flowable media.
    • A non-abrasive outer periphery that circumscribes an interior area containing the abrading structure, aperture, and inflow port.
    • The flowable media is configured to pass through at least a portion of the abrading structure before being removed via the aperture.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,337,513 - “INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS,” issued December 25, 2012

  • Technology Synopsis: The patent describes a skin treatment system with a handpiece designed for abrasion. The key features include an outer periphery configured to contact the skin surface, an interior area containing at least one surface element with a "sharp edge" for abrasion, and an opening connected to a vacuum source to remove debris. (’513 Patent, col. 8:1-20).
  • Asserted Claims: At least independent system claim 1 is asserted. (Compl. ¶64).
  • Accused Features: The accused features are the components of the Venus Glow system, including its handpiece with a working end, an outer periphery, an internal abrading surface element, and a vacuum opening. (Compl. ¶64).

U.S. Patent No. 9,468,464 - “METHODS FOR TREATING THE SKIN USING VACUUM,” issued October 18, 2016

  • Technology Synopsis: This patent claims a method of treating skin using a handheld device with two separate aperture arrangements: one for a vacuum source and one for a treatment media source. The method involves activating the vacuum to simultaneously deliver liquid treatment media to the skin surface and aspirate spent media away, which allegedly "causes adjacent skin to puff up to facilitate the treatment method." (’464 Patent, col. 8:35-51; Compl. ¶75).
  • Asserted Claims: At least independent method claim 1 is asserted. (Compl. ¶70).
  • Accused Features: The accused feature is the use of the Venus Glow system to position the handpiece against the skin and activate the vacuum, which allegedly facilitates both the delivery of liquid media and the aspiration of spent media. (Compl. ¶¶71-75).

U.S. Patent No. 9,775,646 - “DEVICES AND SYSTEMS FOR TREATING THE SKIN USING VACUUM,” issued October 3, 2017

  • Technology Synopsis: The patent describes a device for skin treatment comprising a handpiece with a working end that has a perimeter for contacting skin. Inside the perimeter is a skin interface portion, a first aperture (port) connected to a vacuum and waste container, and a second aperture (port) connected to a treatment media source. The vacuum is configured to create suction that simultaneously delivers the treatment media to the working end and removes used media away from it. (’646 Patent, col. 8:35-56).
  • Asserted Claims: At least independent device claim 1 is asserted. (Compl. ¶81).
  • Accused Features: The accused features are the Venus Glow handpiece, its working end with a perimeter, internal skin interface, and two separate ports for vacuum/waste and treatment media, respectively. (Compl. ¶¶81-85).

III. The Accused Instrumentality

Product Identification

The Venus Glow system, which Plaintiff also alleges is the same product as the Clear-Z by Korean company Daonic. (Compl. ¶¶ 15, 17).

Functionality and Market Context

  • The Venus Glow is a system for treating the skin surface, described by Defendant as a device that "[r]emoves impurities from the stratum corneum, exfoliates, extracts, and hydrates the skin." (Compl. ¶¶ 18, 24). The system consists of a main console housing a vacuum source, a fluid source ("Set solution Bottle"), and a waste container ("Set Suction Bottle"), connected to a handheld device. (Compl. ¶¶ 19, 22, 24). The handpiece uses a disposable tip that allegedly has an "abrading structure with at least one substantially sharp edge." (Compl. ¶20). A diagram in the complaint illustrates this "Abrasive Structure" in contact with the skin. (Compl. ¶20). In operation, the vacuum creates a seal with the patient's skin, drawing it into the tip. (Compl. ¶21). The system then deposits fluid onto the skin, which is spread by the tip, and the vacuum aspirates the fluid and exfoliated debris into the waste container. (Compl. ¶¶ 22, 24).
  • The complaint contains several diagrams illustrating the alleged operation. One diagram shows how the vacuum pulls skin into the tip to open pores while a "360-degree rotating tip spreads the solution evenly." (Compl. p. 6). Another set of diagrams provided in the infringement allegations for the ’886 Patent illustrates how the vacuum pulls skin against the "Outer periphery" and "Abrasive structure" to extract impurities. (Compl. p. 12).

IV. Analysis of Infringement Allegations

’886 Patent Infringement Allegations

Claim Element (from Independent Claim 11) Alleged Infringing Functionality Complaint Citation Patent Citation
translating a working surface of a handheld device relative to the skin surface, said working surface comprising an abrasive structure configured to abrade the skin surface, an aperture in the working surface, an outer periphery that encircles the abrasive structure and the aperture, at least a portion of the abrasive structure spaced from the aperture; The Accused Product includes a handpiece with a working surface (tip) that is translated on the skin. This surface includes an abrasive structure, a vacuum aperture, and an outer periphery encircling both elements. ¶51-52 col. 8:5-15
and continuously applying a vacuum through the aperture formed in the working surface in order to draw the skin against the outer periphery and the abrasive structure When in use, a continuous vacuum is applied through the aperture, which draws the patient's skin against the handpiece's outer periphery and abrasive structure. ¶52 col. 8:57-62
and aspirate debris away from the working surface while abrading the skin surface. The vacuum aspirates debris resulting from the skin abrasion away from the working surface. A diagram illustrates the "Abrasive structure" exfoliating the stratum corneum. ¶52 col. 8:62-65

’716 Patent Infringement Allegations

Claim Element (from Independent Claim 15) Alleged Infringing Functionality Complaint Citation Patent Citation
a handheld device comprising a main body and a working end at a distal end of the main body, said working end comprising an abrading structure configured to selectively abrade skin; The Accused Product is a system with a handpiece and a working end that includes an abrading structure for exfoliating skin. ¶58 col. 7:40-45
at least one aperture at or near the working end of the device, wherein said aperture is in fluid communication with a vacuum source adapted to apply a suction to said aperture to draw debris away from the skin surface; The handpiece has an aperture connected to a vacuum source, which applies suction to remove debris from the skin. ¶58 col. 7:46-50
and at least one inflow port at the working end, said inflow port configured to deliver a flowable media to the skin surface during treatment; The working end of the handpiece includes an inflow port to deliver flowable media (e.g., skin treatment media) to the skin. ¶58 col. 7:51-53
wherein the working end comprises a non-abrasive outer periphery that generally circumscribes an interior area, the abrading structure being located completely within said interior area, the outer periphery is configured to contact the skin surface during treatment... The working end has a non-abrasive outer periphery that surrounds the abrading structures, aperture, and inflow port, and is configured to contact the skin during use. ¶58 col. 7:54-62
wherein flowable media delivered through the at least one inflow port is configured to pass through at least a portion of the abrading structure before being removed away from the working end through the at least one aperture. The flowable media delivered by the inflow port is alleged to pass through the abrading structures before being suctioned away via the vacuum aperture. A diagram illustrates this process. ¶58 col. 7:63-67

Identified Points of Contention

  • Scope Questions: A central question for the '886 patent may be whether the accused tip's design meets the specific structural limitations of an "outer periphery that encircles the abrasive structure and the aperture" with the "abrasive structure spaced from the aperture." For the '716 patent, a key dispute may arise over the fluid path, specifically whether the accused device is "configured to pass" media "through...the abrading structure," which suggests a particular interaction between the fluid and the abrasive elements.
  • Technical Questions: A factual question is whether the "abrading structure" of the accused tip, which the complaint alleges has a "substantially sharp edge" (Compl. ¶20), functions in the manner described by the patents. Further, for the later patents ('464 and '646), the complaint alleges the vacuum "simultaneously facilitates the delivery" of fluid (Compl. ¶74). The court may need to determine if the vacuum is the primary driver of fluid delivery or merely assists a separate pump, and whether this distinction matters for infringement.

V. Key Claim Terms for Construction

"abrasive structure" ('886 Patent, cl. 11; '716 Patent, cl. 15)

  • Context and Importance: This term is fundamental to the core function of the claimed inventions. The scope of "abrasive structure" will determine whether the specific design of the Venus Glow's tip falls within the claims. Practitioners may focus on this term because the patents' specifications provide detailed descriptions of specific embodiments, which may be used to argue for a narrower construction than the plain words suggest.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is general, simply requiring a "structure configured to abrade the skin." (’886 Patent, col. 8:10-11). This could be argued to encompass any surface on the handpiece tip that performs an exfoliating function.
    • Evidence for a Narrower Interpretation: The specifications of the patents-in-suit repeatedly describe a "particular irregular or ridged surface structure" with "projecting edge portion[s] 62a" and "valley portions 62b." (’886 Patent, col. 5:27-33, Fig. 4). A defendant may argue that these detailed descriptions and embodiments limit the scope of "abrasive structure" to such specific ridged configurations, rather than any generally abrasive surface.

"flowable media delivered through the at least one inflow port is configured to pass through at least a portion of the abrading structure before being removed away" ('716 Patent, cl. 15)

  • Context and Importance: This limitation defines the fluid pathway, which is central to the hydradermabrasion process claimed. Infringement hinges on whether the fluid in the Venus Glow system follows this specific path of being applied, interacting with the abrasive elements, and then being removed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A plaintiff might argue that "pass through" simply means the fluid flows over or across the area of the abrasive structure before being suctioned away, a general feature of such devices.
    • Evidence for a Narrower Interpretation: The specification describes a system where the "method of the invention appears to work well because the suction on the skin treatment site very quickly hydrated, or puffs up, the skin which in turn make the surface layer susceptible to painless abrasion." (’716 Patent, col. 8:50-54). A defendant could argue this language, combined with the claim's structure, requires a specific configuration where fluid is actively directed onto and through the abrasive elements to hydrate the precise point of abrasion, not just a general washing of the area.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Defendant actively induces infringement by providing end-users and distributors with manuals, marketing materials, and other instructions on how to use the Venus Glow product in an infringing manner. (Compl. ¶¶ 37, 54, 60, 66, 77, 87). The complaint alleges Defendant has the specific intent to cause these infringing acts. (Compl. ¶¶ 39, 56, 62, 68, 79, 89).

Willful Infringement

Willfulness is alleged based on Defendant’s purported pre-suit knowledge of the Asserted Patents. (Compl. ¶¶ 26, 41, 90). The complaint alleges this knowledge arose from multiple sources, including: (1) Defendant’s hiring of Plaintiff’s former sales manager in September 2017, who was allegedly aware of the patents from his time at Plaintiff (Compl. ¶¶ 27-30); (2) Defendant’s alleged research into its competitor’s (Plaintiff’s) patent portfolio before introducing the Accused Product (Compl. ¶¶ 31, 33, 35); and (3) Defendant’s alleged visits to Plaintiff’s website where the patents were prominently displayed (Compl. ¶36).

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

  • A core issue will be one of definitional scope: can the term "abrasive structure," as used in the claims, be broadly interpreted to cover the accused product's tip, or will it be narrowed by the court to the specific "ridged" and "sharp-edged" configurations that are heavily detailed in the patent specifications?
  • A key evidentiary question will be one of functional mechanics: does the accused Venus Glow system operate in the precise fluidic pathway required by claim 15 of the '716 patent, where media must "pass through" the abrading structure before removal, or is there a legally significant difference in its method of operation?
  • A central dispute regarding damages will turn on state of mind: do the complaint's detailed allegations—particularly the hiring of Plaintiff's former employee and alleged investigation of Plaintiff's patent portfolio—provide sufficient evidence to establish that Defendant had pre-suit knowledge of the patents and acted with the objective recklessness required for a finding of willful infringement?