PTAB

IPR2022-00377

Cartessa Aesthetics LLC v. Serendia LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method, System, and Apparatus for Dermatological Treatment
  • Brief Description: The ’812 patent describes a dermatological treatment apparatus featuring a handheld device and a disposable, deployable needle module. Petitioner argued the patent’s effective priority date is March 3, 2011, not an earlier claimed 2008 date, because the key limitations—a "releasably couplable deployable needle module" and a "needle assembly movable within" that module—were first disclosed in a 2011 provisional application.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Morris in view of Zhang.

  • Prior Art Relied Upon: Morris (Application # 2002/0120260) and Zhang (Application # 2006/0036210).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of Morris and Zhang disclosed all limitations of the challenged claims. The key inventive concept that led to the patent's allowance was a needle assembly that is movable within a deployable needle module. Petitioner argued Morris taught this core concept, describing a handheld "tissue surface treatment apparatus" with a housing (the claimed "needle module") and an internal advancement member that controllably deploys and retracts needles ("energy delivery devices") from within that housing. While Morris disclosed that its needle housing could be "coupled to" the handpiece, it did not explicitly detail a releasable mechanism. Petitioner contended that Zhang supplied this missing element. Zhang described a "modular electroporation device" with a reusable handle and a disposable, "releasably couplable" head component containing needles. Zhang explicitly taught the use of snap-fit connectors to make the needle head easily attachable and detachable from the handle for single-patient use.
    • Motivation to Combine: A POSITA would combine Morris's internal needle deployment system with Zhang's releasable and disposable head design for predictable and compelling reasons. The primary motivations were to enhance patient safety by using sterile, single-use needle cartridges to prevent cross-contamination, and to improve economic efficiency by allowing the more expensive handle containing the drive electronics to be reused without sterilization. This combination represented a simple substitution of one known type of needle housing (integral) with another known type (releasably couplable) to gain the well-understood benefits of modularity and disposability in a medical device.
    • Expectation of Success: A POSITA would have a high expectation of success. The integration of a separable head as taught by Zhang onto the handheld device of Morris would involve standard mechanical and electrical engineering. No significant changes to the functionality or operability of Morris's internal needle advancement mechanism would be required. The petition noted that designing mechanical couplings (like Zhang's snap-fits) and corresponding electrical connectors to maintain a circuit were well within the ordinary skill in the art.
    • Key Aspects: Petitioner emphasized that the prior art references relied upon were not considered by the USPTO during the original prosecution. It was argued that Morris alone taught the very feature—needles movable within a module—that the Applicant added to overcome the Examiner’s rejections based on other art.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate because the co-pending district court litigations were in nascent stages, with minimal investment and a trial date not expected until mid-2023, well after a Final Written Decision in the IPR. The petition stated an intent to seek a stay in the district court, noted that the prior art and arguments presented were new and not previously considered by the USPTO, and stipulated that it would not pursue the same invalidity grounds in district court if the IPR was instituted. These factors, Petitioner argued, strongly favored institution.

5. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’812 patent as unpatentable.