DCT
2:18-cv-16234
Telebrands Corp v. Altair Instruments Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Telebrands Corp. (New Jersey)
- Defendant: Altair Instruments, Inc. (California)
- Plaintiff’s Counsel: Walsh Pizzi O'Reilly Falanga LLP; Cooper & Dunham LLP
- Case Identification: 2:18-cv-16234, D.N.J., 11/16/2018
- Venue Allegations: Plaintiff Telebrands asserts venue is proper because Defendant Altair Instruments transacts business in the District of New Jersey, including through internet sales and distributors, and sent the cease and desist letter that forms the basis of the controversy into the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its DERMASUCTION skincare product does not infringe Defendant’s patent related to microdermabrasion devices and methods.
- Technical Context: The lawsuit concerns the field of non-invasive cosmetic skincare devices, specifically those designed to exfoliate or treat the outer layers of skin using abrasion and vacuum suction.
- Key Procedural History: The patent-in-suit, U.S. Patent No. 6,241,739, has undergone two separate ex parte reexaminations, resulting in the amendment of all asserted independent claims. The complaint notes that during the second reexamination, the patent owner distinguished "microdermabrasion" from other procedures like "exfoliation," a distinction that may prove central to claim scope. This lawsuit was precipitated by a cease and desist letter sent by the Defendant to the Plaintiff.
Case Timeline
| Date | Event |
|---|---|
| 1999-11-12 | ’739 Patent Priority Date |
| 2001-01-05 | ’739 Patent Original Issue Date |
| 2005-08-22 | First ex parte reexamination requested |
| 2007-12-11 | First Ex Parte Reexamination Certificate issued |
| 2014-07-02 | Second ex parte reexamination requested |
| 2015-07-15 | Second Ex Parte Reexamination Certificate issued |
| 2018-10-10 | Defendant sends cease and desist letter to Plaintiff |
| 2018-11-16 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,241,739 - "Microdermabrasion Device And Method Of Treating The Skin Surface," issued January 5, 2001
The Invention Explained
- Problem Addressed: The patent describes prior art dermabrasion techniques that used flowing, powdered abrasive materials (like aluminum oxide) which posed potential health risks, such as inhalation by patients or practitioners and particles becoming lodged in the skin, causing irritation ('739 Patent, col. 2:16-36).
- The Patented Solution: The invention proposes a handheld device that avoids powdered abrasives. It consists of a hollow tube with a treatment tip that has a fixed, abrasive material (e.g., diamond grit) permanently attached ('739 Patent, col. 3:19-24). A vacuum is applied through an opening in the tip, which serves two functions: it pulls the skin into "intimate contact" with the abrasive surface to enhance the treatment, and it suctions away the removed skin cells into a filter ('739 Patent, col. 4:41-48; Abstract).
- Technical Importance: The described technology offered a method for performing microdermabrasion without the potential contamination and cleanup issues associated with loose, airborne abrasive powders ('739 Patent, col. 3:16-20).
Key Claims at a Glance
- The complaint identifies independent claims 1, 9, 12, and 16 as being at issue (Compl. ¶17). The following is an analysis of the twice-reexamined independent device claim 1.
- Independent Claim 1 (as amended by the second reexamination certificate):
- A device for removing the epidermis without damaging the dermis in a microdermabrasion procedure comprising:
- a source of a vacuum; and
- a tube with a treatment tip thereon for removing cells comprising the epidermis layer of the skin surface being treated,
- the treatment tip having an abrasive material permanently attached to an operating end thereof to provide a treatment delivery surface,
- the treatment delivery surface having an orientation fixed in regard to an axis extending longitudinally through the tube,
- the tube being attached to the source of vacuum so that a lumen through the tube has a reduced pressure,
- the treatment delivery surface having one or more openings therein for continuously applying the reduced pressure,
- 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 of the skin surface being treated.
- The complaint does not explicitly reserve the right to assert dependent claims but seeks a declaratory judgment of non-infringement as to "any claim of the '739 Patent" (Compl. ¶16).
III. The Accused Instrumentality
Product Identification
- The DERMASUCTION Product (Compl. ¶10).
Functionality and Market Context
- The complaint describes the accused product as a "handheld skincare product that removes blackheads and unclogs skin pores" (Compl. ¶10).
- Telebrands is identified as a direct marketing company known for driving retail sales through nationwide advertising programs for its consumer products (Compl. ¶¶8-9). The DERMASUCTION product is marketed as part of this consumer product portfolio (Compl. ¶10).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint is for a declaratory judgment of non-infringement. It does not contain a traditional infringement claim chart. Instead, it makes the conclusory allegation that the DERMASUCTION product is missing required limitations from the asserted claims (Compl. ¶17). The central non-infringement theory is that the product does not perform "microdermabrasion" as required by the claims and as distinguished from "exfoliation" during patent prosecution (Compl. ¶¶17-18). The table below summarizes this asserted theory of non-infringement against representative Claim 1.
’739 Patent Non-Infringement Allegations (Plaintiff's Theory)
| Claim Element (from Independent Claim 1) | Plaintiff's Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A device for removing the epidermis without damaging the dermis in a microdermabrasion procedure | The complaint alleges the DERMASUCTION product does not perform "microdermabrasion" as required by the claims. It argues this term was distinguished from other procedures, such as exfoliation, during reexamination. | ¶¶17-18 | col. 5:41-48 |
| the vacuum also functioning to collect epidermis cells of the skin surface being treated | The complaint describes the product as one that "removes blackheads and unclogs skin pores," which raises the question of whether the collected material constitutes "epidermis cells" removed by the claimed abrasive process. | ¶10 | col. 4:26-29 |
Identified Points of Contention
- Scope Questions: The primary dispute will concern the scope of the term "microdermabrasion procedure." The key question is whether the operation of the DERMASUCTION product, described as removing blackheads and unclogging pores, falls within the definition of "microdermabrasion" as that term is used in the patent and limited by statements made during reexamination.
- Technical Questions: What evidence will show that the DERMASUCTION product's mode of action is merely "exfoliation" (as Telebrands implicitly suggests) rather than the claimed "microdermabrasion"? The court will need to examine how the accused product actually functions—specifically, whether it uses an abrasive surface in conjunction with a vacuum to remove the epidermis, or if it primarily uses suction to extract material from pores. The complaint does not provide sufficient detail for analysis of this technical distinction.
V. Key Claim Terms for Construction
The Term: "microdermabrasion"
- Context and Importance: This term appears in the preamble of independent claims 1, 9, 12, and 16. The complaint explicitly states that the DERMASUCTION product "does not perform 'microdermabrasion,' as required by all the claims" (Compl. ¶18). It further notes that the patent owner distinguished this term from "exfoliation" during reexamination (Compl. ¶17). Therefore, the construction of this term will be dispositive of the non-infringement argument. Practitioners may focus on this term because its definition appears to have been narrowed during prosecution, potentially giving rise to a prosecution history estoppel argument.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification at times uses "dermabrasion" and "microdermabrasion" interchangeably and describes the process generally as the "removal of dead cells from the outermost layer of the skin" ('739 Patent, col. 1:15-17). This could support a broader definition encompassing many forms of skin resurfacing.
- Evidence for a Narrower Interpretation: The "Summary of the Invention" describes the device as comprising a "hollow tube with and [sic] abrasive material permanent attached to a skin contacting end" where a vacuum is applied to "remove cells abraded from the skin surface" ('739 Patent, col. 2:39-44). The detailed description repeatedly discusses the use of an abrasive tip (e.g., with diamond grit) that is rubbed over the skin to abrade the epidermis ('739 Patent, col. 3:20-24, col. 4:20-24). This suggests "microdermabrasion" requires the specific mechanism of abrasive rubbing to remove the epidermis, not merely suctioning pores. The arguments made during reexamination to distinguish the term from "exfoliation" will provide further evidence for a narrower scope (Compl. ¶17).
VI. Other Allegations
The complaint is a declaratory judgment action for non-infringement and does not contain allegations of indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on claim construction informed by prosecution history. The key questions for the court will likely be:
- A core issue will be one of definitional scope: Based on the patent's specification and its reexamination history, what is the proper construction of the term "microdermabrasion procedure"? Specifically, does the term require the physical scraping or abrading of the epidermal layer by a fixed abrasive surface, as distinct from a procedure that primarily uses suction to clean pores?
- A key evidentiary question will be one of technical operation: Does the Plaintiff's DERMASUCTION product, which is alleged to "remove blackheads and unclog skin pores," actually perform the function of "microdermabrasion" as construed from the patent? The outcome will depend on factual evidence regarding how the accused product interacts with a user's skin.