PTAB

IPR2014-00138

BomTech Electronics Co Ltd v. Medium Tech MedizIngeräte GmbH

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Ink Application Device For Tattooing Or For Making Permanent Make-Up
  • Brief Description: The ’530 patent discloses an ink application device for tattooing or permanent make-up featuring a modular design. The device consists of a reusable base module with an integrated needle drive and a sterilized, disposable module containing all components that contact a customer's bodily fluids, intended to improve hygiene.

3. Grounds for Unpatentability

Ground 1: Anticipation over German Priority Document - Claims 10-18 are anticipated under 35 U.S.C. §102(b) by DE '199

  • Prior Art Relied Upon: Adler (German Utility Model Publication No. DE 299 19 199 U1, “DE ’199”).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that claims 10-18 are not entitled to the priority date of the parent ’553 patent or the DE ’199 document itself. This is because the term "sealing means," recited in independent claim 10, was first introduced during prosecution of the ’530 patent and constitutes new matter. Consequently, DE ’199, published in January 2000, qualifies as §102(b) prior art against these claims, which have an effective filing date of February 2002. Petitioner asserted that DE ’199 discloses every limitation of claims 10-18, presenting side-by-side comparisons of figures and claim language to show that the documents describe identical embodiments. For example, DE ’199 was shown to disclose a disposable module with an ink tank sealed from the base module by a resilient diaphragm, which meets the "sealing means" limitation.

Ground 2: Anticipation over Theiss - Claims 1-3, 7-12, and 16-20 are anticipated under §102 by Theiss

  • Prior Art Relied Upon: Theiss (Patent 6,033,421).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Theiss discloses all limitations of the challenged claims. Theiss describes a tattoo machine with two major sub-assemblies: a drive unit (the "basic module") and a replaceable driven grip tube (the "disposable module"). Petitioner mapped each element of independent claims 1, 10, and 19 to Theiss, arguing that Theiss’s "driven grip tube" is designed to be easily insertable and removable from the drive unit housing, thereby meeting the limitation "means for allowing simultaneous removal of the entire disposable module." For the "sealing means" of claim 10, Petitioner argued that Theiss’s disclosure of O-rings to prevent fluid penetration between the disposable and basic modules meets the limitation, especially given the Patent Owner’s own broad interpretation of the term during prosecution. Dependent claims were also argued to be disclosed, such as Theiss’s pigment reservoir meeting the volume requirements and its cam follower contacting the drive cam meeting the needle shaft contact limitation.

Ground 3: Anticipation over Zhan - Claims 1-3 and 7-20 are anticipated under §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, anticipates the claims. Zhan discloses a main body (basic module) and a disposable dye cartridge that can be attached by "clicking, screwing or other attachment means," which Petitioner equated to the claimed "means for allowing simultaneous removal." Zhan’s core inventive feature is a "flexible sealing element" (a diaphragm) within the disposable cartridge that segments the cartridge from the main body to block backflow of dye and bodily fluids. Petitioner contended this structure meets the "diaphragm" limitation of claims 9 and 18 and the "sealing means" of claim 10. Petitioner further argued that Zhan’s pre-filled dye cartridge inherently has sufficient volume for one application and that its design for replacing the entire cartridge anticipates the method steps of claims 19 and 20.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These grounds primarily combined Theiss with other references to disclose specific features. Combinations included Theiss with Beuchat (Patent 4,671,277) for adding a separate, attachable ink module; Theiss with Bailey (Patent 4,582,060) for teaching a cylindrical needle shaft; and Theiss with Trott (Patent 4,796,624), Stocking (Patent 5,704,914), or Proni (Patent 5,580,030) for teaching the use of a diaphragm or seal for hygienic purposes.

4. Key Claim Construction Positions

  • "means for allowing simultaneous removal of the entire disposable module from the basic module": Petitioner agreed with the construction from a prior ITC investigation, interpreting this as a means-plus-function term under §112, ¶ 6.
    • Function: allowing simultaneous removal of the entire disposable module from the basic module.
    • Structure: a rear housing part of the disposable module that is connected to and detachable from the basic module, with optional magnetic or clamping connections. This construction was central to mapping Theiss and Zhan, which show disposable cartridges that attach and detach as a single unit.
  • "diaphragm" (claims 9 and 18): Petitioner proposed the construction "a resilient structure ensuring substantially no ink leakage from the ink tank of a disposable module." This broad construction was based on the patent’s specification and the Patent Owner's arguments in prior litigation. It was critical to Petitioner's arguments that the O-rings in Theiss and the "seal" in Trott met this limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’530 patent as unpatentable.