PTAB

IPR2014-00137

BomTech Electronics Co Ltd v. MT derm GmbH

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Ink Application Device For Tattooing Or For Making Permanent Make-Up
  • Brief Description: The ’553 patent discloses an ink application device for tattooing or permanent make-up comprising at least two releasably connected modules. One module is a reusable base with an integrated needle drive, and the other is a sterilized, disposable module containing all components that could be infected by bodily fluids.

3. Grounds for Unpatentability

Ground 1: Anticipation over Theiss - Claims 1-4, 10-14, 22, 23, 26-28, and 30 are anticipated under 35 U.S.C. §102(e) by Theiss.

  • Prior Art Relied Upon: Theiss (Patent 6,033,421).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Theiss, which discloses a handheld tattoo machine with a reusable drive unit and a replaceable driven grip tube, teaches every limitation of the challenged claims. Theiss’s drive unit corresponds to the claimed “basic module,” and its replaceable grip tube corresponds to the “sterilized disposable module.” Crucially, Petitioner contended that the O-rings disclosed in Theiss to “minimize the transmission of fluids” meet the “resilient diaphragm” limitation under the broadest reasonable interpretation, as they are resilient structures that prevent ink leakage. Theiss further discloses a housing, needle, and a detachable configuration, mapping to all other limitations of the independent claims.
    • Key Aspects: The core of this ground rested on construing Theiss’s O-rings as functionally and structurally equivalent to the claimed "resilient diaphragm," a limitation added during prosecution to achieve allowance of the ’553 patent.

Ground 2: Anticipation over Zhan - Claims 1-4, 10-14, 22, 23, 26-28, and 30 are anticipated under 35 U.S.C. §102(b) by Zhan.

  • Prior Art Relied Upon: Zhan (Taiwanese Patent No. TW326643B).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Zhan, which relates to an automatic dye-supplying tattooing machine, explicitly discloses all claimed features. Zhan’s device comprises a main body (basic module) and a disposable dye cartridge (disposable module). Significantly, Zhan expressly teaches a “flexible sealing element” made of a non-toxic, elastic material that is disposed between the ink tank and the basic module to block fluid backflow. Petitioner argued this element is patentably indistinguishable from the claimed “resilient diaphragm.” Zhan also discloses all other claim elements, including the integrated needle drive, housing, needle, and the detachable nature of the cartridge.

Ground 3: Obviousness over Theiss in view of Zhan - Claims 1-4, 10-14, 22, 23, 26-28, and 30 are obvious over Theiss in view of Zhan.

  • Prior Art Relied Upon: Theiss (Patent 6,033,421) and Zhan (Taiwanese Patent No. TW326643B).
  • Core Argument for this Ground:
    • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that if Theiss’s O-rings were deemed insufficient to meet the “resilient diaphragm” limitation, a person of ordinary skill in the art (POSITA) would have found it obvious to modify Theiss’s device using the teachings of Zhan. Theiss provided the basic two-module tattoo device structure. Zhan taught a superior sealing solution for the same type of device—a dedicated “flexible sealing element” (diaphragm).
    • Motivation to Combine: A POSITA would combine Theiss and Zhan to solve the well-known problem of preventing ink leakage and cross-contamination in tattooing devices. Both references are directed to this same problem. A POSITA would have been motivated to replace Theiss’s O-ring sealing mechanism with Zhan’s more robust diaphragm to improve hygiene and prevent fluid backflow, a known issue in the art.
    • Expectation of Success: A POSITA would have had a high expectation of success because combining the references was a mere substitution of one known sealing element (an O-ring) for another (a diaphragm) to perform the same function (sealing) in the same type of device, leading to the predictable result of improved sanitation.
  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including combinations of Theiss in view of Trott (Patent 4,796,624), Stocking (Patent 5,704,914), or Proni (Patent 5,580,030), and combinations of Chou (Patent 5,586,473) or Hsieh (Patent 5,741,290) in view of Zhan. These grounds similarly relied on theories of substituting known sealing diaphragms into prior art tattoo devices.

4. Key Claim Construction Positions

  • "resilient diaphragm": Petitioner argued this term, which was added to overcome prior art rejections, should be construed broadly as “a resilient structure ensuring substantially no ink leakage from the ink tank of a disposable module.” This construction was based on the patent’s specification and the Patent Owner’s own broad interpretation in prior litigation, which encompassed structures beyond the specific embodiments shown in the patent’s figures.
  • "integrated needle drive": Based on the term’s use in the related ’530 patent and arguments made during prior litigation, Petitioner proposed this term be construed as “needle drive incorporated into the basic module.”

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-14, 20-23, 26-28, and 30 of the ’553 patent as unpatentable.