DCT

2:20-cv-06082

Edge Systems LLC v. Cartessa Aesthetics LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:20-cv-06082, E.D.N.Y., 12/14/2020
  • Venue Allegations: Venue is alleged to be proper as Defendant has a principal place of business in the district and has allegedly sold or offered for sale the accused products within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Skinwave hydradermabrasion system infringes five U.S. patents related to devices and techniques for skin resurfacing and treatment.
  • Technical Context: The technology at issue is hydradermabrasion, an aesthetic treatment that uses a handheld device to simultaneously exfoliate the skin, deliver therapeutic solutions, and remove waste via vacuum suction.
  • Key Procedural History: The complaint alleges that Defendant’s supplier, Eunsung Global, was notified of certain patents in Plaintiff’s portfolio as early as 2014. It further alleges that Plaintiff sent a letter to Defendant on approximately September 16, 2020, providing notice of the Asserted Patents and the alleged infringement. Four of the five asserted patents expired in August 2020, limiting the infringement claims for those patents to past damages.

Case Timeline

Date Event
1999-08-26 Priority Date for ’591, ’716, ’513, and ’646 Patents
2003-11-04 ’591 Patent Issued
2005-12-30 Priority Date for ’052 Patent
2011-11-29 ’716 Patent Issued
2012-12-25 ’513 Patent Issued
2014-04-25 Plaintiff allegedly sent letter to Defendant's supplier, Eunsung
2017-01-24 ’052 Patent Issued
2017-02-01 Plaintiff allegedly sent emails to Defendant's supplier, Eunsung
2017-10-03 ’646 Patent Issued
2019 Defendant allegedly introduced the Skinwave system
2019-07-11 Plaintiff and Defendant allegedly attend "The Aesthetic Show"
2020-08 ’591, ’716, ’513, and ’646 Patents ("Shadduck Patents") Expired
2020-09-16 Plaintiff allegedly sent notice letter to Defendant
2020-12-14 Complaint Filed

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

U.S. Patent No. 6,641,591 - INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS

The Invention Explained

  • Problem Addressed: The patent’s background section describes the drawbacks of existing skin resurfacing techniques. Deep treatments like CO₂ laser resurfacing involve significant expense and long, painful recovery periods, while superficial treatments like microdermabrasion are less effective and can create health hazards from airborne abrasive particles (’591 Patent, col. 3:1-42).
  • The Patented Solution: The invention is a hand-held instrument that combines three functions: a vacuum to draw skin to the device, a source for delivering treatment fluids, and a specially structured “skin interface” for abrading epidermal layers. This combination allows for controlled abrasion of skin that has been simultaneously hydrated by the treatment fluid, with the vacuum system immediately removing abraded tissue and spent fluid (’591 Patent, Abstract; col. 4:6-15).
  • Technical Importance: This approach sought to create a middle ground in skin resurfacing, aiming for efficacy greater than simple microdermabrasion but with substantially less downtime and risk than deep laser treatments by integrating mechanical abrasion with active fluid-based therapy (’591 Patent, Abstract).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’591 Patent, col. 8:43-52; Compl. ¶36).
  • The essential elements of Claim 1 are:
    • A system for treating a skin surface comprising an instrument body with a distal working end defining a skin interface portion.
    • A first aperture arrangement in the skin interface with at least one port in communication with a treatment media source.
    • A second aperture arrangement in the skin interface with at least one port in communication with a vacuum source for removing media and tissue.
    • The skin interface comprises an abrading structure with substantially sharp edges for abrading tissue.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,337,513 - INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS

The Invention Explained

  • Problem Addressed: The patent addresses the same problems as the parent ’591 Patent: the need for a controlled, effective skin resurfacing method without the drawbacks of existing deep or superficial treatments (’513 Patent, col. 1:29-col. 2:68).
  • The Patented Solution: The invention is a skin treatment system featuring a handheld device with a specifically defined tip structure. The tip includes an "outer periphery" that extends along its distal end. Within the area circumscribed by this periphery, there is "at least one surface element" with a "sharp edge" configured for abrasion. The design also includes an opening for a vacuum source and requires that "substantially an entire circumference of the outer periphery is configured to contact a skin surface" during treatment (’513 Patent, Abstract; col. 8:23-46). This focuses on the geometry of the tip to control the treatment area.
  • Technical Importance: This patent appears to refine the design of the treatment tip to create a more defined and controlled interaction between the skin, the abrading elements, and the vacuum system, which could lead to more consistent treatment outcomes (’513 Patent, col. 8:23-46).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (’513 Patent, col. 8:23-46; Compl. ¶42).
  • The essential elements of Claim 1 are:
    • A system for treating skin with a handheld device having a working end and an outer periphery.
    • At least one surface element with a sharp edge for abrasion, positioned within an interior area circumscribed by the outer periphery.
    • At least one opening connected to a vacuum source via a passageway to convey debris away.
    • Substantially an entire circumference of the outer periphery is configured to contact a skin surface during a treatment procedure.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,066,716 - INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS

  • Technology Synopsis: The patent describes a handheld skin treatment device with an abrading structure comprising a "plurality of abrading elements," each having a sharp edge. The invention specifies that both the abrading elements and at least one vacuum aperture are located "completely within a raised outer periphery of the working end" (’716 Patent, col. 10:4-10). This patent further refines the geometric relationship of the functional components on the device tip.
  • Asserted Claims: Independent Claim 11 (Compl. ¶48).
  • Accused Features: The complaint alleges that the "Aqua Scaling Tip" of the Skinwave System possesses a plurality of sharp abrading elements and vacuum apertures that are completely encircled by a raised outer periphery (Compl. pp. 20, 22).

U.S. Patent No. 9,775,646 - DEVICES AND SYSTEMS FOR TREATING THE SKIN USING VACUUM

  • Technology Synopsis: The patent claims a handheld device with distinct apertures for waste removal and fluid delivery. It specifically claims a vacuum source configured to create a vacuum that "simultaneously deliver[s] a treatment media from the hydration treatment media source... and remove[s] spent treatment media" through a waste passageway (’646 Patent, col. 18:55-62). The focus is on the dual-functionality enabled by the vacuum system.
  • Asserted Claims: Independent Claim 1 (Compl. ¶54).
  • Accused Features: The complaint alleges that the Skinwave System's vacuum source simultaneously delivers treatment solutions to the tip while aspirating spent fluid and debris away from the skin surface through separate ports (Compl. p. 28).

U.S. Patent No. 9,550,052 - CONSOLE SYSTEM FOR THE TREATMENT OF SKIN

  • Technology Synopsis: This patent describes a complete system architecture, including a console with a manifold connected to at least two fluid containers. The system is configured to permit a user to select which treatment material from the various containers is delivered through a supply conduit to the handpiece assembly (’052 Patent, col. 22:35-41). The invention centers on the user-selectable, multi-fluid capability of the console.
  • Asserted Claims: Independent Claim 1 (Compl. ¶59).
  • Accused Features: The complaint accuses the Skinwave System's console, which allegedly includes a manifold, multiple fluid containers, and user controls that permit selection of different treatment solutions for delivery to the handpiece (Compl. ¶¶ 22, 30).

III. The Accused Instrumentality

Product Identification

  • The accused products are the Skinwave system and its associated disposable "Aqua Scaling Tips" (Compl. ¶¶ 17, 19).

Functionality and Market Context

  • The Skinwave System is a hydradermabrasion device used for aesthetic skin treatments (Compl. ¶19). The system includes a console with multiple containers for different treatment solutions (e.g., Alpha Hydroxy Acid, Beta Hydroxy Acid) and controls for a user to select solutions, adjust flow levels, and set vacuum suction levels (Compl. ¶¶ 22-23). The complaint includes an image of the Skinwave System console showing four fluid containers and a connected handpiece (Compl. p. 5, Fig. 1). The system utilizes a handheld device with a replaceable plastic tip, the Aqua Scaling Tip, which features openings for fluid delivery and waste suction (Compl. ¶20). The tip’s working surface allegedly includes a pattern of raised structures with sharp edges designed to abrade and exfoliate the skin (Compl. ¶21). An annotated image of the tip highlights these "Hard Plastic Structures" (Compl. p. 6, Fig. 3).
  • The complaint alleges the Skinwave System competes with Plaintiff’s own "HydraFacial® Systems" and is marketed to end users such as dermatologists, plastic surgeons, and aestheticians (Compl. ¶¶ 16-17).

IV. Analysis of Infringement Allegations

’591 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) an instrument body with a distal working end that defines a skin interface portion for contacting the skin; The Skinwave System has a handpiece (instrument body) with a distal working end featuring a tip (the Aqua Scaling Tip) that contacts the skin. p. 10 col. 3:55-61
(b) a first aperture arrangement in said skin interface consisting of at least one port in communication with a treatment media source; The tip has an aperture arrangement that delivers treatment media (e.g., AHA, BHA) from source containers in the console to the skin. p. 11 col. 7:53-58
(c) a second aperture arrangement in said skin interface consisting of at least one port in communication with a vacuum source for removing treatment media and removed tissue from the skin interface; and The tip has a second aperture arrangement with ports connected to a vacuum source inside the device casing, which suctions away used media and abraded skin. p. 12 col. 7:45-50
(d) wherein the skin interface comprises an abrading structure with substantially sharp edges for abrading tissue. The tip is made of hard plastic and has a configuration of raised structures with sharp edges that abrade skin as the tip moves across the surface. p. 13 col. 8:50-52
  • Identified Points of Contention:
    • Scope Questions: The complaint maps the claim term "first aperture arrangement" to the fluid delivery ports and "second aperture arrangement" to the vacuum ports (Compl. pp. 11-12). However, the patent’s description of its fluid-based embodiment ("Type B") appears to label these in reverse, describing the vacuum port as the "first aperture arrangement" and the fluid delivery port as the "second" (’591 Patent, col. 7:45-58). This raises the question of whether the claim terms are bound by the specification's labeling, potentially creating a non-infringement argument based on a mismatch in claim scope.

’513 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a handheld device comprising a main body and a working end along a distal end of the main body; The Skinwave System includes a handheld device with a main body and a distal working end that includes the Aqua Scaling Tip. p. 15 col. 8:23-25
an outer periphery extending along the distal end of the handheld device; The distal end of the device has a tip with an outer periphery. p. 15 col. 8:26-27
at least one surface element extending distally from the working end... positioned within an interior area circumscribed by the outer periphery; The tip has raised surface elements that extend distally and are located within the boundary of the outer periphery. p. 16 col. 8:28-31
wherein the at least one surface element comprises at least one sharp edge configured to abrade skin when said handheld device is moved relative to a skin surface; and The hard plastic surface elements are configured with sharp edges that abrade the skin when the device is moved across it. p. 16 col. 8:32-35
at least one opening along the working end of the handheld device; The tip has eight openings located near the periphery of the working end. p. 16 col. 8:36-37
wherein the at least one opening is configured to be placed in fluid communication with a vacuum source via a passageway...; and The openings connect to a vacuum source via a passageway to suction away used media and debris. The complaint provides an image showing waste being conveyed through tubes (Compl. p. 17, Fig. 4). p. 17 col. 8:38-42
wherein substantially an entire circumference of the outer periphery is configured to contact a skin surface during a treatment procedure. The complaint alleges that the entire outer periphery contacts the skin during use, supported by an ink imprint of the tip (Compl. p. 18, Fig. 7). p. 18 col. 8:43-46
  • Identified Points of Contention:
    • Technical Questions: The final limitation requires that "substantially an entire circumference of the outer periphery is configured to contact a skin surface." The complaint's primary evidence for this is a static ink imprint of the tip (Compl. p. 18, Fig. 7). This raises the technical question of what level of contact is required by the term "substantially an entire" and whether a static imprint accurately reflects the dynamic contact made during an actual "treatment procedure."

V. Key Claim Terms for Construction

  • The Term: "abrading structure with substantially sharp edges" (’591 Patent, Claim 1)

  • Context and Importance: This term is central to the mechanism of physical exfoliation. The dispute may center on whether the accused device's plastic tip, which Defendant may characterize as designed for gentle fluid delivery, possesses edges that are "substantially sharp" enough to meet this limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the structure more generally as having "projecting ridges" and an "irregular or ridged surface structure" that causes abrasion when moved across the skin (’591 Patent, col. 4:9-12). This could support a reading that does not require knife-like sharpness.
    • Evidence for a Narrower Interpretation: A specific embodiment describes how the "apexes of ridge elements... are substantially a sharp edge as are the edged of the notches," creating "teeth" that are "well suited to abrading skin layers" (’591 Patent, col. 8:61-66). This language may be cited to argue that the term requires a more aggressive, cutting or tooth-like structure.

  • The Term: "substantially an entire circumference of the outer periphery is configured to contact a skin surface" (’513 Patent, Claim 1)

  • Context and Importance: This limitation defines the nature of the contact between the treatment tip and the skin. Infringement depends on whether the accused tip is designed and operates in a way that achieves this level of circumferential contact.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The use of "substantially" implies that 100% continuous contact is not required. The phrase "configured to" could be interpreted to mean the device is merely designed to achieve this contact under normal operating conditions, not that it must do so perfectly at all times.
    • Evidence for a Narrower Interpretation: The patent does not provide a specific definition for "substantially." A defendant may argue that the term implies a continuous seal sufficient to maintain a vacuum effect across the treatment area, and that anything less than near-complete contact falls outside the claim scope.

VI. Other Allegations

  • Indirect Infringement: While not pleaded as separate counts, the complaint alleges that Defendant "knowingly and intentionally infringed" the asserted patents through its use, sale, and importation of the Skinwave System (Compl. ¶¶ 35, 41, 47, 53, 58). These allegations may provide a basis for future claims of induced infringement based on Defendant's marketing and sale of the system to end-users who perform the patented methods.
  • Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge (Compl. ¶33). The basis for pre-suit knowledge includes allegations that: (1) Defendant’s supplier, Eunsung, received notice letters from Plaintiff in 2014 and 2017, knowledge of which would have been discovered by Defendant during due diligence (Compl. ¶25); (2) Defendant, as a competitor, knew of Plaintiff’s role as an industry leader (Compl. ¶26); (3) both parties attended the same 2019 trade show where Plaintiff’s patent portfolio was referenced (Compl. ¶27); and (4) Defendant would have researched Plaintiff’s patents, which were listed on its website, before launching a competing product (Compl. ¶29). At a minimum, the complaint alleges Defendant had actual knowledge as of September 16, 2020, upon receiving a letter from Plaintiff (Compl. ¶30).

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

  • A central issue will be one of claim construction: The dispute may turn on how the court defines key terms such as "substantially sharp edges" and "substantially an entire circumference." Whether the accused product's plastic tip is found to be an "abrading structure" or merely a fluid delivery mechanism will be critical to the infringement analysis for several patents.
  • A key question will be one of evidentiary proof: How will the parties demonstrate the dynamic, real-world operation of the accused device? Infringement of claims related to simultaneous fluid delivery/removal and the nature of the tip’s contact with the skin will depend on evidence that goes beyond static images and marketing materials.
  • A third core issue will be willfulness: The complaint presents a multi-faceted narrative alleging pre-suit knowledge. The court's assessment of whether Defendant "knew, or should have known" of the infringement prior to the lawsuit will be determinative for Plaintiff's claim for enhanced damages.