Cartessa Aesthetics LLC v. Serendia LLC

1. Case Identification

• Case #: IPR2022-00594
• Patent #: Patent 9,480,836
• Filed: February 10, 2022
• Petitioner(s): Cartessa Aesthetics, LLC and Aesthetics Biomedical, Inc.
• Patent Owner(s): Serendia, LLC
• Challenged Claims: 1-29

2. Patent Overview

• Title: Skin Treatment Apparatus and Method
• Brief Description: The ’836 patent relates to a skin treatment apparatus and method that uses a plurality of bipolar needle electrodes to deliver radio frequency (RF) energy into the skin. The technology’s purported novelty is its ability to cause thermal coagulation around each individual electrode rather than coagulating the tissue between the electrodes.

3. Grounds for Unpatentability

Ground 1: Claims 1-29 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 disclosed all key elements of the independent claims. Mehta described a skin treatment apparatus with a plurality of bipolar electrodes (probes) insertable into the skin, coupled to an RF energy supply. Critically, Petitioner asserted that Mehta taught the core limitation of claim 1 by describing a method to create "discrete fractional lesions" that leaves tissue between the electrodes undamaged. Mehta achieved this by adjusting parameters, including selecting the spacing of probes to "minimize delivery of energy between adjacent pairs of probes." Petitioner contended that this selective, localized coagulation around the probes is the same functional result claimed in the ’836 patent.
  • Motivation to Combine: Petitioner asserted that while Mehta’s disclosure of delivering an RF treatment current with a sinusoidal waveform inherently implies an Alternating Current (AC) RF signal, Mulholland was cited to explicitly teach this limitation and cure any potential deficiency. Mulholland disclosed a needle-based RF device that used an AC/DC convertor to generate a "high frequency alternating current" for treatment. A person of ordinary skill in the art (POSITA) would combine Mehta and Mulholland to achieve the design flexibility of using a DC power source for mechanical components (e.g., needle actuators) while using an AC source for the RF energy delivery, which is a common and predictable design choice for handheld medical devices.
  • Expectation of Success: The combination involved integrating a well-understood power supply architecture (from Mulholland) with a known type of RF treatment device (from Mehta). A POSITA would have had a high expectation of success as it relied on standard engineering principles and components to achieve a predictable outcome.

Ground 2: Claims 1-29 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 that the INTRAcel Video, which demonstrated a commercially available fractional RF microneedling device, disclosed every limitation of the independent claims. The video showed a system with a handheld piece containing an array of bipolar microneedles electrically coupled to a workstation that generated RF energy. Most importantly, the video presented histology images of treated tissue, which visually demonstrated that coagulation occurred in distinct zones around each needle track within the dermis, while the tissue between the needle tracks remained "undamaged." Petitioner argued this was a direct, visual disclosure of causing "coagulation around each electrode rather than coagulating between the electrodes."
  • Motivation to Combine: The motivation to combine with Mulholland was identical to that in Ground 1. Although the INTRAcel device was shown to emit "bi-polar RF energy," which is inherently AC, Mulholland was cited to provide an explicit teaching of using an AC RF signal and the benefits of an AC/DC power architecture. A POSITA would be motivated to incorporate Mulholland’s flexible power supply design into a device like the one shown in the INTRAcel Video for the same reasons of optimizing power for different system components.
  • Expectation of Success: A POSITA would expect success in combining the teachings, as it involved applying a known power supply configuration from Mulholland to a proven, existing commercial device (INTRAcel) to enhance its design without altering its fundamental therapeutic function.

4. Key Claim Construction Positions

• Petitioner argued for a specific construction of the central claim term "cause coagulation around each electrode rather than coagulating between the electrodes."
  • Proposed Construction: "concentrate heat around the needle(s) to cause coagulation while minimally affecting the area between the needles."
  • Rationale: Petitioner asserted this construction was consistent with the intrinsic record, including specification language stating heat "may be concentrated" at the needles and may "minimally affect" adjacent areas. This construction does not require a complete absence of heat between electrodes, merely a concentration around them, which Petitioner argued the prior art clearly demonstrated.

5. Key Technical Contentions (Beyond Claim Construction)

• Nature of RF Signals: A central technical contention was that an RF signal is, by definition, an alternating current. During prosecution of the ’836 patent, the applicant successfully argued to the examiner that the prior art taught an RF signal or an AC signal as distinct embodiments. Petitioner contended this was a technically flawed argument that led to improper allowance, as an RF signal is fundamentally an AC signal that oscillates at radio frequencies. This contention underpinned both the obviousness arguments and the arguments against discretionary denial.

6. Arguments Regarding Discretionary Denial

• §325(d): Petitioner argued that discretionary denial would be improper because none of the asserted prior art references (Mehta, INTRAcel Video, Mulholland) were presented to or considered by the examiner during prosecution. Furthermore, Petitioner argued the examiner’s allowance was based on a flawed technical premise—the erroneous distinction between RF and AC signals—which the new arguments and evidence directly address.
• §314(a) (Fintiv): Petitioner acknowledged co-pending district court litigation but argued that the cases were in "nascent stages" with no trial dates set, weighing against discretionary denial.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-29 of the ’836 patent as unpatentable.