Eunsung Global Corp v. HydraFacial LLC

1. Case Identification

• Case #: IPR2025-00452
• Patent #: 12,053,607
• Filed: January 13, 2025
• Petitioner(s): Eunsung Global Corp.
• Challenged Claims: 1-20

2. Patent Overview

• Title: DEVICES AND METHODS FOR TREATING SKIN
• Brief Description: The ’607 patent describes a skin treatment apparatus comprising a console, a handpiece, and a user input device. The system uses a manifold configured to hold multiple fluid sources and deliver selected fluids sequentially to the handpiece for microdermabrasion procedures.

3. Grounds for Unpatentability

Ground 1A: Obviousness over Karasiuk-Palmer - Claims 1-5, 7, 9, and 20 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 handpiece, vacuum source, and waste collection, but only disclosed a single fluid reservoir. Palmer taught a medical fluid delivery system with multiple solution reservoirs, a selector valve for choosing between them, and a modular mobile cart to house the components. The combined system would place Karasiuk’s components into Palmer’s mobile cart (the claimed console) and replace Karasiuk’s single reservoir with Palmer’s multiple reservoirs and selector valve. This combination allegedly disclosed a system with a console receiving multiple containers, a handpiece, supply and waste lines, and a vacuum source that draws treatment material when the tip is pressed against the skin. For dependent claims, Palmer’s selector knob taught the user input device, and its placement on the cart’s control unit met the console-positioned limitation.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Karasiuk and Palmer to improve the flexibility and efficiency of Karasiuk’s microdermabrasion system. Incorporating Palmer’s multiple, selectable reservoirs would allow for the use of different treatment solutions during a single procedure without the time-consuming need to swap containers. Adopting Palmer's modular cart design would also provide the known benefits of increased organization and portability.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references related to medical fluid delivery systems, and the combination involved the simple substitution of a known component (multiple reservoirs for a single reservoir) to achieve predictable results.

Ground 1C: Obviousness over Karasiuk-Palmer-Trueba - Claims 1-20 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 the teachings of Trueba. Trueba disclosed a fluid delivery system with computer control and a touch screen display for selecting and automatically dispensing multiple compositions sequentially. Petitioner argued that adding Trueba’s controller (the claimed computing device) and touch screen (the claimed user input device and display) to the Karasiuk-Palmer system would automate the fluid selection process. This modification allegedly met the limitations of claims requiring a computing device, a touch screen, a display on the console, and automated sequential delivery.
  • Motivation to Combine: A POSITA would be motivated to add Trueba’s computer controls to the Karasiuk-Palmer system to gain the benefits of automation, precision, and clarity. This would replace a manual selection process with a programmable, automated one, allowing for complex treatment protocols, reducing human error, and displaying system status to the operator.
  • Expectation of Success: The combination represented the use of a known technique—automating a manual process with a computer controller and user interface—to improve a known device. As computer-controlled fluid delivery systems were well-known, a POSITA would expect success in implementing this modification.

Ground 2A: Obviousness over Greenberg - Claims 1 and 3-5 are obvious over Greenberg.

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

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Greenberg alone disclosed all elements of the challenged claims. Greenberg’s microdermabrasion apparatus (the console) was designed to receive multiple supply containers with different treatment particles. The system included a handpiece, a vacuum pump (the vacuum source), and a valve system to selectively connect a supply container to the handpiece, thereby creating supply and waste lines. Petitioner asserted Greenberg taught using the system to first treat with highly abrasive particles and subsequently with organic particles, meeting the sequential delivery limitation. For dependent claims, Greenberg disclosed several flow rate controllers, including an inlet regulator and a suction regulator, located on the main apparatus (the console).
  • Key Aspects: This ground asserted that a single prior art reference taught a complete, multi-container microdermabrasion system with sequential delivery capabilities, rendering the claimed invention obvious.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Waldron (Patent 6,500,183) for its teachings of a handpiece-mounted flow control valve. Further grounds combined Greenberg with Palmer, Trueba, and Waldron, arguing similar automation and design modification theories as applied to the Greenberg base system instead of the Karasiuk-Palmer system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was not warranted. It was contended that the primary combination references of Palmer and Trueba were never cited or considered by the Examiner during prosecution. While Karasiuk, Greenberg, and Waldron were cited in a lengthy Information Disclosure Statement (IDS), they were not substantively addressed or combined in the manner presented in the petition, meaning the Examiner did not previously consider the specific invalidity arguments raised.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 12,053,607 as unpatentable.