Eunsung Global Corp v. HydraFacial LLC

1. Case Identification

• Case #: IPR2025-00445
• Patent #: 9,550,052
• Filed: January 10, 2025
• Petitioner(s): Eunsung Global Corp.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Console System for the Treatment of Skin
• Brief Description: The ’052 patent relates to a skin treatment system featuring a console with a manifold configured to selectively deliver liquid treatment materials from multiple fluid containers to a handpiece assembly, which also uses a vacuum source to remove waste from the skin surface.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Karasiuk and Palmer - Claims 1, 4-12, and 15-17 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 microdermabrasion system with a handpiece and a vacuum source that simultaneously delivered treatment liquid from a single reservoir and removed resulting waste. Palmer taught a medical device with a manifold for selecting and delivering treatment liquids from multiple reservoirs, all housed within a movable console. The proposed combination would integrate Palmer's multi-reservoir console and selector manifold with Karasiuk's handpiece and dual-function vacuum system, thereby arriving at the claimed invention. For example, Palmer’s mobile cart would serve as the claimed console, its selector means would be the manifold, and its multiple solution reservoirs would meet the first and second fluid container limitation.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the references to overcome the functional limitations of Karasiuk’s single-fluid system. Adopting Palmer’s multi-fluid selection capability would add flexibility, allow for sequential treatments without inefficient tank changes, and improve system organization and portability via Palmer's mobile cart design.
  • Expectation of Success: A POSITA would have a high expectation of success, as both references disclose fluid delivery systems for medical applications. The proposed integration involved the predictable substitution of a multi-source fluid supply for a single-source one to gain known benefits.

Ground 1B: Obviousness over Karasiuk, Palmer, and Trueba - Claims 1-17 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 incorporating Trueba's teachings to meet limitations in dependent claims. Trueba disclosed a computer-controlled system using a touch screen display to program and automate the delivery of multiple fluids. Adding Trueba’s touch screen controller to the Karasiuk-Palmer system would satisfy the limitations of claims 2 and 3, which require a display and a touch screen user input device.
  • Motivation to Combine: A POSITA would be motivated to add Trueba's computer control to the Karasiuk-Palmer system to achieve greater precision, automate complex treatment protocols, and provide a clearer, more modern user interface compared to Palmer’s manual selector knob. This would be a known method for improving such devices.
  • Expectation of Success: Success was expected because computer-controlled fluid delivery systems were well-known at the time. Automating the manual selection process of the base combination with Trueba's established technology was argued to be a predictable improvement.

Ground 1D: Obviousness over Karasiuk, Palmer, and Wunsch - Claims 1, 4-12, and 15-17 are obvious over Karasiuk and Palmer in view of Wunsch.

• Prior Art Relied Upon: Karasiuk (Application # 2003/0212415), Palmer (Patent 5,199,604), and Wunsch (Patent 4,559,036).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground proposed modifying the Karasiuk-Palmer combination by replacing Palmer’s manual selector manifold with Wunsch’s automated manifold selector and sequencer-timer. Wunsch's system used a programmable timer to automatically control a series of valves, allowing for the automated and sequential dispensing of different fluids from multiple sources.
  • Motivation to Combine: A POSITA would be motivated to incorporate Wunsch's system to automate the cumbersome and error-prone process of manual fluid selection taught by Palmer. Additional motivations cited from Wunsch included the ability to prevent cross-contamination by flushing the manifold between fluids and the convenience of using easily replaceable, disposable manifolds.
  • Expectation of Success: A POSITA would expect success in replacing one fluid selection mechanism (Palmer's) with another, more advanced automated one (Wunsch's) to achieve the predictable result of automated sequential delivery of treatment fluids.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Mercier (to teach alternative handpiece connector designs) and combining the teachings of Wunsch and Trueba (to teach upgrading Wunsch's sequencer-timer with modern computer controls).

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. The core prior art references central to its primary combinations (Palmer, Trueba, and Wunsch) were never considered by the U.S. Patent and Trademark Office during prosecution. Although Karasiuk and Mercier were cited in a large Information Disclosure Statement (IDS), they were not substantively addressed by the examiner or applied in the combinations asserted in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-17 of the ’052 patent as unpatentable.