PTAB

IPR2024-00463

Ilooda Co Ltd v. Serendia LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Skin Treatment Systems and Methods
  • Brief Description: The ’812 patent discloses a skin treatment system that uses microneedles to deliver electrical energy for skin tightening. The system comprises a hand-held apparatus with a reusable motor and LED module (MLM) and a disposable, releasably couplable deployable needle module (DNM).

3. Grounds for Unpatentability

Ground I: Anticipation over Mehta - Claims 1-3, 6, 8, and 12-16 are anticipated by Mehta.

  • Prior Art Relied Upon: Mehta (Patent 8,608,737).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Mehta discloses every limitation of independent apparatus claim 12 and its counterpart method claim 1. Mehta was described as teaching a skin treatment device with a handpiece (the "user holdable device including a proximal end") and a removable cartridge (the "releasably couplable deployable needle module"). Petitioner asserted that Mehta's cartridge contains a movable needle assembly that extends and retracts, and that its disclosure of an "actuator 250" (motor) and electrical "contact portions 116" meet the remaining limitations of the independent claims. The dependent claims were argued to be met by Mehta's teachings of a step-motor for desired depth, a signal generator, and a drive shaft.

Ground II: Obviousness over Mehta and Na'848 - Claims 4-5 and 17 are obvious over Mehta in view of Na'848.

  • Prior Art Relied Upon: Mehta (Patent 8,608,737) and Na’848 (WO 2010/016848).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that while Mehta discloses the core apparatus, claims 4, 5, and 17 add limitations requiring an embedded LED to illuminate the needle module, optionally through a translucent section of the needle assembly. Na’848 was argued to supply these missing elements by teaching a microneedling device with LEDs for illuminating the treatment area and a needle assembly with a translucent section made of polyurethane or medical silicon to facilitate light transmission.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Mehta and Na’848 because both relate to energized microneedle systems for dermatological treatment. The motivation was to add the known benefit of illumination (taught by Na’848) to Mehta’s device to improve visibility of the treatment area, a simple and advantageous modification.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves incorporating a known, simple lighting element (an LED) and using a known material property (translucence) into a similar device, which would be a predictable and routine design choice.

Ground III: Obviousness over Livneh and Mehta - Claims 1, 7, 9-12, and 18-20 are obvious over Livneh in view of Mehta.

  • Prior Art Relied Upon: Livneh (WO 2008/005477) and Mehta (Patent 8,608,737).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Livneh discloses a microneedling device with most of the claimed features, including extendable needles and electrical contacts (coils) that extend in the same direction as the needles (as recited in claim 18). However, Livneh’s needle module was not described as being detachable from its handle. Mehta was cited for its explicit teaching of a removable and releasably couplable needle cartridge, a feature Petitioner argued was absent in Livneh.
    • Motivation to Combine: A POSITA would be motivated to modify Livneh’s device to incorporate Mehta’s removable cartridge design. The motivation was to gain the well-known advantages of disposable cartridges, such as preventing contamination between treatments and allowing for easy, cost-effective replacement of damaged or dull needles, which were common and desirable industry practices.
    • Expectation of Success: Success was expected because creating releasable mechanical and electrical connections between a handpiece and a cartridge was a matter of routine engineering at the time, as demonstrated by the system in Mehta.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1-6, 8, 10, and 12-17 are obvious over Mehta alone (or in view of POSA knowledge), and that certain claims are obvious over combinations including Lee (a Korean utility model) to supply teachings of precise, user-settable needle depth control.

4. Key Claim Construction Positions

  • "a desired distance" / "predetermined depth": Petitioner argued these terms should be given their plain and ordinary meaning, which encompasses both fixed and user-adjustable needle extension depths. This construction was asserted to counter the Patent Owner's anticipated narrower interpretation requiring a "user-settable" distance. Petitioner contended that the patent owner’s likely interpretation is inconsistent with the use of the term in related patents in the same family, where it was used in connection with fixed-length needles.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under 35 U.S.C. §314(a) and §325(d). It asserted the petition presents compelling evidence of unpatentability using entirely new prior art references and arguments, and is not a "roadmap" based on a previously denied IPR filed by another party (Cartessa Aesthetics). Petitioner also noted that all related district court litigation involving Petitioners has been stayed. Furthermore, it argued that under current USPTO guidance, a parallel ITC proceeding is not a basis for a discretionary denial under Fintiv. Regarding §325(d), Petitioner emphasized that none of the primary prior art references relied upon were considered during the original examination of the ’812 patent.

6. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-20 of Patent 10,869,812 as unpatentable.