Candela Corp v. Tankovich NIKOlai

1. Case Identification

• Case #: IPR2023-00234
• Patent #: 10,675,481
• Filed: November 18, 2022
• Petitioner(s): Candela Corporation
• Patent Owner(s): Nikolai Tankovich
• Challenged Claims: 1-28

2. Patent Overview

• Title: System and Method for Delivering Multiple Laser Wavelengths
• Brief Description: The ’481 patent discloses a laser system and method for tissue therapy that utilizes at least two laser beams. The system is designed so that a first laser beam forms a first pattern and a second laser beam forms a second pattern, which are then combined to produce both overlapping and non-overlapping beam distributions on the target tissue.

3. Grounds for Unpatentability

Ground 1: Claims 1-28 are obvious over Hsia in view of Black.

• Prior Art Relied Upon: Hsia (Application # 2008/0161888) and Black (Application # 2003/0109860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hsia discloses a method and apparatus for treating skin using two radiation sources to create a plurality of thermal injuries that can be overlapping or non-overlapping. While Hsia uses a "modulator" to create these patterns, Black teaches a multiple laser system where each laser can have its own mirror-based scanner to generate various programmable treatment patterns. Petitioner contended that a person of ordinary skill in the art (POSITA) would find it obvious to implement the well-known, adjustable scanner technology of Black in Hsia's dual-source system to achieve the claimed patterns.
  • Motivation to Combine: A POSITA would combine Hsia and Black to improve the adjustability and programmability of the treatment, allowing for more precise control over the beam patterns. This combination would be motivated by the desire to decrease treatment times, reduce side effects by minimizing unwanted thermal damage, and achieve the benefits of both ablative and fractional resurfacing in a single device.
  • Expectation of Success: Petitioner asserted a high expectation of success, as the combination involves integrating known scanner technology from Black into the laser system of Hsia. The control and programming of multiple scanners were well-known, and their use to create desired overlapping and non-overlapping patterns would produce predictable results.

Ground 2: Claims 1-28 are obvious over Altshuler in view of Black.

• Prior Art Relied Upon: Altshuler (Application # 2008/0294152) and Black (Application # 2003/0109860).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Altshuler discloses a photocosmetic device with two radiation sources that can produce either parallel (non-overlapping) or overlapping radiation beams. Altshuler explicitly teaches configuring the system so that radiation portions overlap or remain parallel. To satisfy the “scanner” limitation, Petitioner again relied on Black’s teaching of a multiple laser apparatus with individual, programmable scanners for each laser source to create various treatment patterns.
  • Motivation to Combine: A POSITA would combine Altshuler’s system with Black’s scanner technology to achieve more dynamic and precise control over the beam patterns than Altshuler’s fixed parallel/overlapping configurations. The motivation would be to improve safety by minimizing skin injuries (a concern noted in Altshuler), decrease treatment times by leveraging Black's efficiency, and create a more versatile device.
  • Expectation of Success: The combination of Altshuler's dual-beam concept with Black's adjustable scanner technology was argued to be a straightforward application of known components. A POSITA would reasonably expect to successfully create a system capable of producing a variety of combined overlapping and non-overlapping patterns.

Ground 3: Claim 23 is obvious over Hsia and Black in view of Negus.

• Prior Art Relied Upon: Hsia (Application # 2008/0161888), Black (Application # 2003/0109860), and Negus (WO 2018/106751).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the combination of Hsia and Black to address the specific limitation of claim 23, which requires that contacting the tissue “causes said tissue to release one or more cytokines.” Petitioner argued this is an inherent result of the thermal injury taught by Hsia. However, should this be insufficient, Negus explicitly teaches using lasers to treat wounds and damaged tissue by stimulating host immune and wound-healing responses, including responses that improve the number and/or penetration of cytokines.
  • Motivation to Combine: A POSITA, seeking to enhance the therapeutic effects of the laser treatment taught by Hsia and Black, would be motivated to incorporate the teachings of Negus. Inducing a cytokine response would be a known and desirable goal for promoting wound healing and tissue rejuvenation, providing a clear reason to configure the Hsia/Black system to achieve this effect.
  • Expectation of Success: A POSITA would expect that applying laser energy sufficient to cause the thermal injuries described in Hsia would predictably stimulate the well-known wound-healing responses, including cytokine release, as expressly taught by Negus.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Hsia, Black, and Altshuler (for claims 27-28) and Altshuler, Black, and Negus (for claim 23), relying on similar motivations to combine.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-28 of the ’481 patent as unpatentable.