PTAB

IPR2024-01491

Eunsung Global Corp v. HydraFacial LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: DEVICES AND METHODS FOR TREATING SKIN
  • Brief Description: The ’287 patent describes a skin treatment apparatus, such as a microdermabrasion system, that includes a console with a user input device, a handpiece assembly, and a manifold system configured to hold and selectively deliver fluids from a plurality of fluid sources to the handpiece.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 8-12, 14-16, 22-23, 26, 28-29, 34-37, 39-40, and 45 are obvious over Karasiuk in view of Palmer.

  • Prior Art Relied Upon: Karasiuk (Application # 2003/0212415) and Palmer (Patent 5,199,604).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Karasiuk taught a complete microdermabrasion system with a handheld device, a fluid reservoir, a collection reservoir, and a vacuum source for delivering a treatment solution and retrieving waste. However, Karasiuk was limited to a single fluid source. Palmer taught a medical device system with a handpiece, multiple solution reservoirs, and a selector valve for delivering a selected fluid to an application site. The combination allegedly disclosed all elements of the challenged claims, including a console (Palmer's mobile cart), a handpiece (Karasiuk), a "block" for fluid selection (Palmer's selector valve), multiple containers, and a vacuum source (Karasiuk).
    • Motivation to Combine: A POSITA would combine Palmer's multi-container selection system with Karasiuk's microdermabrasion device to improve its functionality and flexibility. This combination would allow for the sequential delivery of different treatment solutions during a single procedure without the time-consuming and messy process of stopping to clean and refill a single reservoir. A POSITA would also be motivated to house the combined components in a modular console, as taught by Palmer's mobile cart, for known benefits of portability and organization.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because both references related to medical devices that deliver fluids to a treatment site via a handpiece. The integration was a simple substitution of a single fluid source with a known multi-fluid selection system to achieve predictable results.

Ground 2: Claims 1-10, 12, 17-20, 22-26, 28-36, and 40-44 are obvious over Karasiuk and Palmer in view of Trueba.

  • Prior Art Relied Upon: Karasiuk (Application # 2003/0212415), Palmer (Patent 5,199,604), and Trueba (Patent 6,684,880).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Karasiuk-Palmer combination by adding Trueba's teachings. Petitioner asserted Trueba disclosed a fluid delivery system controlled by a computer linked to a touch screen user input and display. This addition would provide the computing device, user input device (touch screen), and display elements recited in various dependent claims not addressed by the primary combination.
    • Motivation to Combine: A POSITA would incorporate Trueba’s computer control and touch screen into the Karasiuk-Palmer system to automate the manual fluid selection process. The motivation was to gain benefits of added precision, automation, improved safety (e.g., preventing incorrect dosing), and a clearer user interface that could display information about the treatment being delivered.
    • Expectation of Success: Success was expected because implementing computer and touch screen control for fluid delivery systems was a well-known technique at the time of the invention. The modification involved automating a known manual process with conventional technology.

Ground 3: Claims 1-3, 8-12, 14-16, 22-23, 26, 28-29, 34-37, 39-40, and 45 are obvious over Greenberg.

  • Prior Art Relied Upon: Greenberg (Application # 2003/0093089).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Greenberg, standing alone, disclosed all key features of the independent claims. Greenberg described a microdermabrasion apparatus with a plurality of supply containers for different treatment particles, a hand tool, a recovery container, and a valve system (valves 106 and 108) for selectively connecting a chosen supply container to the hand tool. Petitioner asserted that Greenberg’s apparatus 10 constituted the claimed "console," its valve system was the "block," its hand tool was the "handpiece," and its pneumatic source was the "vacuum source."
    • Motivation to Combine (for §103 grounds): This ground was presented primarily as an anticipation-style obviousness argument, asserting that Greenberg taught every element. The motivation for a POSITA to arrive at the claimed invention was inherent in Greenberg's own disclosure, which aimed to provide a microdermabrasion machine with a choice of different treatment particles.
    • Expectation of Success: As Greenberg allegedly disclosed all elements, a POSITA would have an absolute expectation of success in arriving at the claimed invention.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge based on the combination of Greenberg and Trueba, relying on the same motivation to add computer and touch-screen control as detailed in Ground 2.

4. Key Claim Construction Positions

  • "block": Petitioner argued that the ’287 patent specification is silent on the term "block" but describes a "manifold" performing similar functions. Therefore, "block" should be construed to encompass structures disclosed in the prior art that perform selective fluid communication, such as Palmer’s "selector valve means" or Greenberg’s valve system.
  • "fluid": Petitioner contended that the term "fluid" should be given its broad definition as provided in the ’287 patent, which includes "a plurality of fine solids." This construction was critical for arguing that the abrasive "particles" disclosed in Greenberg met the "fluid" limitation of the claims.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted. It was asserted that the Examiner did not have the benefit of considering key references Palmer and Trueba during prosecution. While Karasiuk and Greenberg were cited in a large Information Disclosure Statement (IDS), they were not substantively analyzed or applied in combination, meaning the specific arguments and art combinations presented in the petition were never before the Office.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-12, 14-20, 22-26, 28-37, and 39-45 of the ’287 patent as unpatentable.