Cartessa Aesthetics LLC v. Serendia LLC

1. Case Identification

• Case #: IPR2022-00378
• Patent #: 9,320,536
• Filed: December 28, 2021
• Petitioner(s): Cartessa Aesthetics, LLC
• Patent Owner(s): Serendia, LLC
• Challenged Claims: 1-9 and 11-19

2. Patent Overview

• Title: Method, System, and Apparatus for Dermatological Treatment
• Brief Description: The ’536 patent describes a dermatological treatment system featuring a user handle and a releasably couplable, deployable needle module. The system is designed to create micro-wounds in the skin using an array of needles that can be energized to deliver therapeutic energy. A key aspect is the disposable nature of the needle cartridge.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morris in view of Zhang - Claims 1-9 and 11-19 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 argued that Morris discloses the core elements of the challenged claims, including a hand-held tissue treatment apparatus with a handle, a needle housing, a plurality of extendable needles, a motor to deploy the needles to a controlled depth, and a signal generator to energize them. However, Morris did not explicitly teach that its needle housing was releasably couplable or disposable. Petitioner asserted that Zhang remedies this deficiency by teaching a modular electroporation device with a reusable handle and a disposable, "releasably couplable" head component containing needles. Zhang explicitly discloses the use of mechanical (e.g., snap-fit) and electrical connectors to allow for the quick attachment and detachment of the disposable head. The combination of Morris's functional treatment device with Zhang's teaching of a disposable, modular head component renders the limitations of independent claims 1 (method) and 11 (apparatus) obvious. The dependent claims were argued to be obvious as they recite additional features also taught by the combination, such as the use of LEDs for illumination, translucent components, and specific electrical contact configurations (e.g., depressible pins).
  • Motivation to Combine: A POSITA would combine Morris and Zhang to achieve the well-known economic and hygienic benefits of a system with disposable components. By making the patient-contacting needle housing from Morris disposable, as taught by Zhang, a user could prevent cross-contamination between patients without needing to sterilize the entire expensive handpiece. This approach preserves the more costly components (motor, electronics in the handle) for reuse while discarding only the inexpensive needle cartridge. Petitioner contended this was a common design practice in medical devices by the early 2000s to enhance safety and efficiency, providing a strong motivation to apply Zhang's modular design to a device like Morris's.
  • Expectation of Success: A POSITA would have had a high expectation of success in this combination. Implementing a releasable coupling mechanism using known connectors, as shown in Zhang, to make a component of Morris’s device detachable was a straightforward mechanical and electrical integration task. The modification would not alter the fundamental operation of the Morris device—deploying and energizing needles—but would simply make the needle housing separable, a predictable result.

4. Key Claim Construction Positions

• "mechanically separatably" (claims 1, 11): Petitioner proposed construing this term to mean "mechanically separable," correcting an apparent typographical error in the claims.
• "a plurality of extendable needles extendable" (claim 11): To maintain a proper antecedent basis, Petitioner proposed that subsequent references to "plurality of extendable needles" be construed as "the plurality of extendable needles."
• "draft shaft" (claims 3, 13): Petitioner argued this term should be construed as "drive shaft" based on context from the patent's specification, which refers to "drive shafts" for deploying the needles.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that the ’536 patent is not entitled to its earliest claimed priority date of August 6, 2008. Key limitations recited in the independent claims, such as "a releasably couplable deployable needle assembly" and "a motor coupled to a plurality of extendable needles," were allegedly absent from the 2008 Korean priority application. Petitioner contended this subject matter was first introduced in a 2011 U.S. provisional application, making the effective priority date no earlier than March 3, 2011, and ensuring that Morris and Zhang qualify as prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The parallel district court litigations were asserted to be in a nascent stage, with no trial date set and minimal investment by the parties, making it likely an IPR Final Written Decision would issue before any trial.
• Petitioner stipulated that, if review is instituted, it would not pursue the same invalidity grounds in the district court, mitigating concerns of duplicative efforts.
• Crucially, Petitioner argued that the primary references, Morris and Zhang, were never considered by the USPTO during the original prosecution. This presentation of new, highly relevant prior art was argued to be a strong factor favoring institution and weighing against discretionary denial under both 35 U.S.C. §314(a) and §325(d).

7. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9 and 11-19 of the ’536 patent as unpatentable.