Jeisys Medical Inc v. Serendia LLC

1. Case Identification

• Case #: IPR2024-00383
• Patent #: 9,775,774
• Filed: January 9, 2024
• Petitioner(s): Jeisys Medical Inc. and Ilooda Co., Ltd.
• Patent Owner(s): Serendia, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method, System, and Apparatus for Dermatological Treatment
• Brief Description: The ’774 patent relates to radiofrequency (RF) microneedling systems and methods for skin rejuvenation. The technology involves a device with a plurality of needles, described as "one of extending or extendable," which are inserted into a patient's skin to deliver RF energy to the dermis. Petitioner argued that the challenged claims are not entitled to their earliest claimed priority date from the "2008 Korean chain" because the concept of "extendable" needles is absent from that chain's disclosure, making certain references, like Na ’848, available as prior art.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-7 and 9-18 under 35 U.S.C. §102

• Prior Art Relied Upon: Mehta (Patent 8,608,737).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mehta discloses every element of the challenged claims. Mehta describes a microneedling apparatus with a plurality of needles (probes 104) that are extendable from a device surface via a moveable actuator (motor 250). This actuator enables the needles to be driven into tissue to a "desired depth." Mehta further teaches directing an RF energy unit to supply pulsed RF energy, including in the form of a square wave, through the needles to treat dermatological tissue, such as by shrinking collagen in the dermis. Petitioner contended that Mehta’s disclosure of a user interface for setting treatment parameters and a stepper motor for adjustments satisfies the "desired distance" limitation under any reasonable interpretation.
  • Key Aspects: This ground asserted that Mehta, owned by a competitor of the Patent Owner, discloses a complete RF microneedling system with extendable needles that anticipates the core method and apparatus claims of the ’774 patent.

Ground 2: Obviousness of Claims 8, 19, and 20 under 35 U.S.C. §103

• Prior Art Relied Upon: Mehta (Patent 8,608,737) and Na ’848 (WO 2010/016848).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Mehta discloses all limitations of the base claims, as argued in Ground 1. Claims 8, 19, and 20 add limitations specifying a predetermined time interval for the RF pulses (100 ms to 500 ms) and a pulse width (100 microseconds to 500 microseconds). Na ’848, which shares significant disclosure with the ’774 patent, explicitly teaches using these exact time interval and pulse width parameters for treating dermatological cells.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Mehta and Na ’848 because both are directed to treating dermatological tissue with energized needles. A POSA would have been motivated to implement the specific, efficacious pulse parameters taught by Na ’848 into the adjustable RF system of Mehta to optimize treatment outcomes, a predictable improvement.
  • Expectation of Success: A POSA would have had a high expectation of success, as the combination involved applying known, advantageous signal parameters (from Na ’848) to a known, controllable RF microneedling device (Mehta) to achieve the well-understood therapeutic effects of RF energy on skin tissue.

Ground 3: Obviousness of Claims 1-7 and 9-18 under 35 U.S.C. §103

• Prior Art Relied Upon: Mehta (Patent 8,608,737) and Lee (Korean Patent No. 20-0441552).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, should Mehta be found not to disclose the "desired distance" limitation under the Patent Owner's narrower interpretation requiring user-settable control. Petitioner argued Lee remedies any potential deficiency by teaching a "position-controllable" stepper motor for precise, user-programmable control of microneedle insertion depth along the axis of extension.
  • Motivation to Combine: A POSA would combine Mehta and Lee to improve the functionality of Mehta’s device. Lee addresses the known problem of controlling needle insertion depth. A POSA would have been motivated to incorporate Lee’s stepper motor control into Mehta’s system to gain more precise and flexible control over needle depth, thereby improving safety and treatment uniformity—goals also sought by Mehta.
  • Expectation of Success: Success would be expected, as it involved integrating a known component (a stepper motor, also mentioned in Mehta) to perform its established function (precise position control) within a known system. This would be a matter of routine engineering and programming for a POSA.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including Ground III (Na ’848 in view of Mehta for claims 1, 5-11, and 15-20) and Ground V (Mehta, Lee, and Na ’848 for claims 8, 19, and 20), which relied on similar combination rationales to achieve the complete claimed invention.

4. Key Claim Construction Positions

• "needles one of extending or extendable": Petitioner noted this phrase was construed in a related International Trade Commission (ITC) proceeding by agreement of the parties to mean "needles that are either extended or can be extended [from the device surface]," where "'extending' ... covers non-extendable needles having a fixed length; 'extendable' ... covers needles which are not fixed."
• "a desired distance": Petitioner argued this term should be given its plain and ordinary meaning, which distinguishes extending a desired distance from an undesired one. Petitioner argued against a narrower interpretation potentially favored by the Patent Owner that would require a user-settable extension distance, noting that Mehta anticipates even under that narrower view.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) or §325(d). It was argued that discretionary denial under Fintiv is inappropriate because the parallel district court cases are stayed, and ITC proceedings are not a basis for denial under current USPTO guidance.
• Petitioner further argued that denial under §325(d) is unwarranted because the petition presents entirely new prior art (Mehta, Na ’848, and Lee) and arguments that were not before the USPTO during original examination or in a previously denied IPR filed by a different petitioner (Cartessa Aesthetics). Petitioner contended this petition is not a "roadmap" of the prior failed attempt but a meritorious challenge based on compelling new evidence.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of the ’774 patent as unpatentable.