DCT

4:20-cv-04335

Edge Systems LLC v. Ageless Serums LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:20-cv-04335, S.D. Tex., 12/22/2020
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is a Texas entity residing in the judicial district, maintains a regular and established place of business in the district, and has committed alleged acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant induces infringement of six patents related to hydradermabrasion methods and systems by selling cosmetic serums specifically for use in third-party hydradermabrasion machines.
  • Technical Context: The technology at issue is hydradermabrasion, a dermatological procedure that simultaneously exfoliates the skin using an abrasive tip and infuses it with therapeutic solutions.
  • Key Procedural History: The complaint alleges a history of litigation, including a prior 2017 lawsuit by Plaintiff against Defendant that was dismissed without prejudice. It also references prior lawsuits against the manufacturers of the third-party machines (IMD and Aesthetic), which allegedly resulted in consent judgments acknowledging infringement. The complaint notes that Defendant's managing partner is a former employee of Plaintiff. Five of the six asserted patents expired in August 2020, limiting claims on those patents to past damages.

Case Timeline

Date Event
1999-08-26 Earliest Priority Date (’591, ’120, ’886, ’513, ’464 Patents)
2003-11-04 ’591 Patent Issued
2005-12-30 Earliest Priority Date (’052 Patent)
2010-03-16 ’120 Patent Issued
2010-09-07 ’886 Patent Issued
2011-02-28 Defendant's Founder Begins Employment at Plaintiff
2012-03-12 Defendant's Founder Ends Employment at Plaintiff
2012-12-25 ’513 Patent Issued
2016-10-18 ’464 Patent Issued
2017-01-24 ’052 Patent Issued
2017-04-10 Plaintiff Files First Infringement Suit Against Defendant
2017-06-22 Plaintiff Files Infringement Suit Against Aesthetic
2017-12-01 Plaintiff Files Infringement Suit Against IMD
2020-08-01 ’591, ’120, ’886, ’513, ’464 Patents Expire
2020-12-22 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," issued November 4, 2003

The Invention Explained

  • Problem Addressed: The patent's background describes limitations of prior art skin treatments. Deep resurfacing methods like CO2 lasers involve significant post-treatment recovery time and potential complications, while existing superficial treatments like micro-dermabrasion using abrasive particles present health hazards from inhalation and are limited in their efficacy. (’591 Patent, col. 1:53 - col. 3:42).
  • The Patented Solution: The invention is a hand-held instrument for skin resurfacing that integrates three functions: a vacuum source to aspirate skin debris, a source for delivering a flowable treatment medium, and a skin-contacting interface with an abrasive structure. (’591 Patent, Abstract). This combination allows for simultaneous exfoliation and hydration, with the fluid delivery potentially "puffing up" the skin to make it more susceptible to abrasion, offering a potentially gentler yet effective treatment method. (’591 Patent, col. 8:8-16).
  • Technical Importance: This technology, known as hydradermabrasion, integrated mechanical exfoliation with liquid-based skin treatment, providing a combined therapy that could be less harsh than traditional dermabrasion or deep chemical peels. (Compl. ¶¶7–8).

Key Claims at a Glance

  • The complaint asserts independent method claim 10. (Compl. ¶39).
  • Essential elements of Claim 10 include:
    • positioning a treatment device against a patient's skin, where the device has at least one media entrance port
    • directing a flowable treatment medium, which is sterile water or a saline solution, through the entrance port
    • translating the device over the skin so the combination of an abrasive structure and the medium removes dermal tissue
    • aspirating the spent treatment media and removed tissue from the treatment region
  • The complaint reserves the right to assert additional claims.

U.S. Patent No. 7,678,120 - "INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS," issued March 16, 2010

The Invention Explained

  • Problem Addressed: The patent addresses the need for controlled and effective mechanical skin abrasion, building upon the concepts of earlier skin resurfacing technologies. (’120 Patent, col. 1:19 - col. 2:68).
  • The Patented Solution: The invention is a method of skin abrasion that focuses on the specific geometry of the treatment tip. It discloses using a working end with an "abrading surface comprising apexes extending upwardly... and the apexes having sharp edges." (’120 Patent, Abstract; col. 7:48-56). A vacuum is applied through an aspiration opening to draw the skin into firm contact with these sharp-edged apexes, which then abrade the skin as the device is moved across its surface.
  • Technical Importance: The patent defined a specific mechanical configuration for the treatment tip, aiming to improve the efficiency of physical exfoliation when combined with a vacuum source as part of a hydradermabrasion procedure. (Compl. ¶¶7–8).

Key Claims at a Glance

  • The complaint asserts independent method claim 1 and dependent claim 2. (Compl. ¶46).
  • Essential elements of Claim 1 include:
    • placing a working end of a device against the skin
    • drawing the skin against an abrading surface by applying suction, where the surface has upwardly extending apexes with sharp edges
    • moving the device across the skin while the sharp edges remain stationary with respect to the working end
    • abrading the skin against the sharp edges while continuously applying suction
    • removing skin debris through an aspiration opening
  • The complaint asserts dependent claim 2, which adds the step of providing a fluid to the skin. (Compl. p. 17).

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

  • Patent Identification: U.S. Patent No. 7,789,886, "INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS," issued September 7, 2010. (Compl. ¶12).
  • Technology Synopsis: This patent describes a method for skin treatment using an instrument where the abrading structure is positioned within a "raised outer periphery." A vacuum source creates suction, causing the skin to engage against both the raised periphery and the sharp elements of the abrading structure to facilitate exfoliation. (’886 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 1 and dependent claims 2-3. (Compl. ¶52).
  • Accused Features: The use of Ageless Serums with third-party devices that allegedly feature a handpiece with an abrading structure located inside a raised outer periphery, used in conjunction with a vacuum. (Compl. ¶¶52–53).

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

  • Patent Identification: U.S. Patent No. 8,337,513, "INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL LAYERS," issued December 25, 2012. (Compl. ¶13).
  • Technology Synopsis: This patent claims a skin treatment system rather than a method. The system includes a handheld device with a working end that has an outer periphery, at least one "surface element" with a sharp edge for abrasion positioned inside the periphery, and an opening connected to a vacuum source to remove debris. (’513 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 1 and dependent claims 2, 4, and 6. (Compl. ¶66).
  • Accused Features: The combination of Ageless Serums (as a flowable media source) with third-party devices alleged to embody the claimed system, including the handheld device with its specified working end structure. (Compl. ¶¶66–67).

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

  • Patent Identification: U.S. Patent No. 9,468,464, "METHODS FOR TREATING THE SKIN USING VACUUM," issued October 18, 2016. (Compl. ¶14).
  • Technology Synopsis: This patent discloses a method using a device with two distinct aperture arrangements: a first for a vacuum source and a second for a treatment media source. The claimed method involves simultaneously delivering a liquid treatment medium to the skin while aspirating spent media, with the vacuum action causing adjacent skin to "at least partially puff up to facilitate the treatment method." (’464 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 1. (Compl. ¶59).
  • Accused Features: The use of Ageless Serums with third-party devices that allegedly function as a closed-loop system, simultaneously delivering and aspirating fluid while using vacuum to cause skin to puff up. (Compl. ¶¶59–60).

U.S. Patent No. 9,550,052 - "CONSOLE SYSTEM FOR THE TREATMENT OF SKIN," issued January 24, 2017

  • Patent Identification: U.S. Patent No. 9,550,052, "CONSOLE SYSTEM FOR THE TREATMENT OF SKIN," issued January 24, 2017. (Compl. ¶15).
  • Technology Synopsis: This patent claims a complete system comprising a console with a manifold connected to at least two fluid containers. A handpiece assembly is connected to the manifold via a supply conduit, and the manifold is configured to control which fluid from the containers is delivered to the handpiece. (’052 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 1 and dependent claim 4. (Compl. ¶73).
  • Accused Features: The combination of Ageless Serums (supplied in bottles that function as the fluid containers) with third-party console systems (BioXFusion MD, Aqua Skin Facial) that allegedly include a manifold for selecting and delivering different fluids to a handpiece. (Compl. ¶¶73–74).

III. The Accused Instrumentality

Product Identification

  • The complaint asserts induced infringement, where the accused instrumentality is the method of combining Defendant's "Ageless Serums" with various third-party hydradermabrasion machines. (Compl. ¶19). The machines identified include the "IMD Devices" (Ageless Glow MD, BioXFusion MD, BioXFusion Mini) and the "Aesthetic Devices" (Aqua Skin Facial, Aqua Skin Facial Table Top). (Compl. ¶¶18, 23–24, 26).

Functionality and Market Context

  • Defendant promotes and sells serums for use with hydradermabrasion machines manufactured by others. (Compl. ¶18). The complaint alleges that Defendant provides instructions on its website for using its serums with these machines to perform skin treatments. (Compl. ¶21). The serums allegedly include sterile water and saline solutions, which are supplied to customers who own the third-party machines. (Compl. p. 11). The complaint positions Defendant as a direct competitor to Plaintiff and alleges that it specifically targets purchasers of infringing devices. (Compl. ¶¶28, 33). An annotated photograph of the accused BioXFusion MD console identifies the manifold and fluid containers. (Compl. p. 49).

IV. Analysis of Infringement Allegations

'591 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
positioning a treatment device against a patient's skin creating a treatment region at a skin treatment site, The handpiece of the third-party devices is positioned against a patient's skin, creating a treatment region. ¶39 col. 9:11-13
the treatment device comprising at least one media entrance port; The third-party devices have at least one media entry port on the treatment tip. ¶39 col. 9:14-16
directing at least one flowable treatment medium through said at least one entrance port; The handpiece directs a flowable treatment medium (the Ageless Serum) through the entrance port. ¶39 col. 9:17-19
wherein the treatment medium is sterile water or a saline solution; Defendant provides sterile water (Pure Aqua) and Ageless Serums, which the complaint alleges are saline solutions because they contain sodium benzoate, a salt. ¶39 col. 9:20-21
translating the treatment device over the skin treatment site whereby the combination of an abrasive structure carried by the treatment device and the flowable treatment medium removes dermal tissue; and The device is moved over the skin, and the combination of the abrasive tip structure and the flow of the serum abrades and removes dermal tissue. ¶39 col. 9:22-26
aspirating dermal treatment media and any removed dermal tissue from the treatment region. A vacuum source in the device aspirates spent serum and removed skin from the treatment site. ¶39 col. 9:27-29

An annotated photograph illustrates the positioning of the treatment device against the skin to create a treatment site and region. (Compl. p. 10).

'120 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
(a) placing a working end of a skin treatment device against the skin of the patient; During use, the handpiece of the third-party Aesthetic Devices is positioned against a patient's skin. ¶46 col. 7:45-47
(b) drawing the skin against an abrading surface...by applying suction...the abrading surface comprising apexes extending upwardly from the abrading surface and the apexes having sharp edges; A vacuum source draws the patient's skin against an abrading surface on the tip, which allegedly comprises sharp-edged apexes. ¶46 col. 7:48-56
(c) moving the treatment device across the skin while the sharp edge of the apexes remain stationary with respect to the working end of the skin treatment device; The user moves the handpiece across the skin while the sharp edges of the abrading surface allegedly remain stationary relative to the skin interface. ¶46 col. 7:57-61
(d) abrading the skin drawn against the sharp edge of the apexes while continuously applying suction through the aspiration opening; and Continuous suction keeps the skin drawn against the sharp edges of the apexes, causing abrasion as the device moves across the skin. ¶46 col. 7:62-65
(e) removing skin debris through the aspiration opening in the working end of the skin treatment device. Debris from the skin abrasion is drawn through the aspiration opening in the device's tip. ¶46 col. 7:66-68

An annotated photograph of a treatment tip identifies the abrading surface, skin interface, and aspiration opening. (Compl. p. 15).

  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over the meaning of "saline solution" in the ’591 Patent. The infringement allegation rests on the argument that a cosmetic serum containing sodium benzoate (a salt used as a preservative) meets this limitation. The question for the court will be whether the term, in the context of the patent, is limited to simple medical-grade salt-and-water solutions or if it can be construed more broadly to include complex serums that contain any type of salt.
    • Technical Questions: For the ’120 Patent, a key factual question may be whether the tips of the accused third-party devices actually possess "apexes extending upwardly" with "sharp edges" as required by claim 1. This will likely require expert testimony and analysis of the physical construction of the tips. Another question is what evidentiary basis supports the allegation that these sharp edges "remain stationary with respect to the working end" during use.

V. Key Claim Terms for Construction

  • The Term: "saline solution" (’591 Patent, Claim 10)

  • Context and Importance: This term's construction is critical for the infringement analysis of the ’591 Patent. The complaint's theory of infringement hinges on the accused Ageless Serums qualifying as a "saline solution." Practitioners may focus on this term because the accused products are complex cosmetic formulations, not simple salt water.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification does not appear to provide an explicit definition of "saline solution." A party arguing for a broad construction may assert that the plain and ordinary meaning of the term is any solution containing a salt. The complaint's allegation that the presence of sodium benzoate satisfies the limitation aligns with this view. (Compl. p. 11).
    • Evidence for a Narrower Interpretation: The specification discusses using "sterile water or saline solution for a treatment to remove dermal tissue." (’591 Patent, col. 8:14-16). A party arguing for a narrow construction may contend that this context implies a simple, medical-grade irrigating fluid, not a multi-ingredient cosmetic serum where a salt serves as a preservative.

  • The Term: "apexes having sharp edges" (’120 Patent, Claim 1)

  • Context and Importance: This term defines the specific geometry of the abrading surface. Infringement of the ’120 Patent depends on whether the third-party device tips used with Defendant's serums meet this structural limitation.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification states that the apexes of certain ridge elements "are substantially a sharp edge." (’120 Patent, col. 7:38-40). This language could support an argument that any non-rounded, raised structure intended for abrasion meets the limitation.
    • Evidence for a Narrower Interpretation: The patent's figures, such as Figures 8 and 9, depict specific tooth-like or ridged structures. A party may argue that these specific embodiments define the scope of the term and that a merely rough or textured surface without distinct, sharp-edged peaks does not infringe.

VI. Other Allegations

  • Indirect Infringement: The complaint exclusively pleads induced infringement under 35 U.S.C. § 271(b) for all six patents. The allegations of intent are based on claims that Defendant knew of the patents and intended for its customers to infringe by actively encouraging the infringing use. (Compl. ¶¶37, 44, 50, 57, 64, 71). The complaint alleges knowledge based on the Defendant's founder being a former employee of Plaintiff, prior litigation against Defendant in 2017, Defendant's awareness of litigation against the manufacturers of the third-party machines, and Defendant's own marketing materials and instructions. (Compl. ¶¶22, 29–33).
  • Willful Infringement: The complaint alleges that Defendant's infringement was and is willful for all asserted patents. This allegation is supported by the same facts asserted for inducement, primarily that Defendant had knowledge of the patents from multiple sources but continued to sell its serums for infringing uses, allegedly demonstrating reckless disregard for Plaintiff's patent rights. (Compl. ¶¶42, 48, 55, 62, 69, 76).

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

  • A core issue will be one of definitional scope: Can the term "saline solution," as used in the ’591 patent, be construed to cover a complex cosmetic serum that contains a salt as one of many ingredients, or is its meaning limited to a simple medical irrigating fluid?
  • A second central issue will be one of intent and knowledge: Can the plaintiff provide sufficient evidence to prove that the defendant possessed the specific intent to induce its customers to perform the claimed methods, particularly given the multi-party context involving third-party machine manufacturers?
  • A key evidentiary question will be one of technical structure: Does the physical construction of the various treatment tips used with the third-party machines meet the specific geometric limitations of the asserted claims, such as the "apexes having sharp edges" of the ’120 patent?