Cartessa Aesthetics LLC v. Serendia LLC

1. Case Identification

• Case #: IPR2022-00593
• Patent #: 10,058,379
• Filed: February 10, 2022
• Petitioner(s): Cartessa Aesthetics, LLC and Aesthetics Biomedical, Inc.
• Patent Owner(s): Serendia, LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: Electrically Based Medical Treatment Device and Method
• Brief Description: The ’379 patent discloses a method and apparatus for skin treatment using a plurality of bipolar electrodes (needles) to deliver radio frequency (RF) energy into the dermis. The central inventive concept asserted is a method of applying energy to body segments around each electrode rather than to body segments between the electrodes, purportedly to reduce side effects like burning and scarring.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are obvious over Mehta in view of Mulholland

• Prior Art Relied Upon: Mehta (Application # 2010/0204695) and Mulholland (Application # 2010/0023003).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mehta discloses all key limitations of the independent claims. Mehta teaches a microneedling apparatus with bipolar electrodes for treating skin and explicitly discloses that the "spacing of probes... may be selected to minimize delivery of energy between adjacent pairs of probes." Petitioner asserted this teaching directly corresponds to the ’379 patent’s core limitation of applying energy around, rather than between, electrodes. Mehta further discloses creating "discrete fractional lesions" surrounded by a "spared zone of normal dermis," which Petitioner argued is the same effect claimed in the ’379 patent. Dependent claim limitations, such as using a predetermined time interval, non-insulated electrodes, and specific frequencies, were also alleged to be disclosed by Mehta or would have been obvious variations.
  • Motivation to Combine: Petitioner contended that to the extent Mehta does not explicitly disclose using an "oscillating current," Mulholland remedies this. Mulholland discloses an RF generator that converts a DC voltage into a "high frequency alternating current" for RF energy delivery to needles. A person of ordinary skill in the art (POSITA) would combine Mehta with Mulholland to implement a common and flexible design choice, allowing DC-powered components (like motors for the needles) to be used in a handheld device while generating the required alternating RF current for treatment.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves integrating a standard RF generator design (Mulholland) into a known microneedling system (Mehta) to achieve predictable results.

Ground 2: Claims 1-18 are obvious over INTRAcel Video in view of Mulholland

• Prior Art Relied Upon: INTRAcel Video (a YouTube video published April 8, 2011) and Mulholland (Application # 2010/0023003).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued the INTRAcel Video, which demonstrates a commercially available fractional RF microneedling device, provides a direct visual mapping for the claims. The video presents histology results showing that bipolar RF irradiation creates denatured protein zones localized "around each needle," while the tissue segments "between the needles" remain "undamaged." Petitioner asserted this is a clear disclosure of applying energy around the electrodes rather than between them. The video also shows the device's components, including the RF workstation (RF generation module) and the handpiece with a plurality of bipolar microneedles insertable into the skin.
  • Motivation to Combine: The motivation to combine the INTRAcel Video with Mulholland was identical to that in Ground 1. While the INTRAcel device inherently used an oscillating RF current, the video focuses on its clinical effects. Mulholland was cited to provide an explicit teaching of the well-known principle of using an RF generator to create a high-frequency alternating current for such applications, confirming this was a conventional design choice.
  • Expectation of Success: A POSITA would readily understand that the effects shown in the INTRAcel Video were achieved using standard RF generation techniques, such as those described in Mulholland, and would expect success in implementing such a system.

4. Key Claim Construction Positions

• Term: "apply energy to body segments around each electrode rather than to body segments between the electrodes"
• Petitioner's Proposed Construction: "concentrate energy in a first area of the body around each electrode, while minimally affecting a second area of the body between adjacent electrodes."
• Importance: This construction was central to Petitioner's entire obviousness argument. Petitioner argued that the phrase does not require a complete absence of energy between electrodes, which is physically impossible with bipolar electrodes, but rather a relative concentration of energy. By framing the limitation this way, Petitioner contended that the prior art, which teaches minimizing energy between probes and creating discrete treatment zones, clearly discloses the claimed invention. This construction counters the Patent Owner's position during prosecution that it had discovered a novel effect.

5. Arguments Regarding Discretionary Denial

• §325(d) - Same or Substantially Same Art or Arguments: Petitioner argued against discretionary denial because none of the primary references (Mehta, INTRAcel Video, Mulholland) were cited or substantively evaluated by the Examiner during prosecution. While a different patent by an inventor named Mehta was submitted in an IDS, Petitioner argued it was not cumulative and was never mentioned on the record. Thus, the Examiner did not have the benefit of the specific teachings and combinations presented in the petition.
• §314(a) - Fintiv Factors: Petitioner argued that the co-pending district court litigations were in nascent stages, with no trial dates set and minimal investment by the parties. A motion to stay had already been filed in one case. Petitioner asserted that these circumstances weigh heavily in favor of institution, as an IPR would resolve invalidity issues efficiently without significant overlap with maturing court proceedings.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’379 patent as unpatentable.