The opinion
UNITED STATES DISTRICT COURT FILED
CLERK
EASTERN DISTRICT OF NEW YORK
----------------------------------------------------------------X 2:22 pm, Jun 06, 2023
EDGE SYSTEMS LLC,
U.S. DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
Plaintiff,
LONG ISLAND OFFICE
-against- MEMORANDUM AND ORDER
CARTESSA AESTHETICS, LLC, 20-CV-6082 (GRB)(ST)
Defendant.
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APPEARANCES:
Sean M. Murray
Craig S. Summers
Ali S. Razai
Karen M. Cassidy Selvaggio
Ashley C. Morales
Attorneys for Plaintiff
Knobbe Martens
2040 Main Street, 14th Floor
Irvine, CA 92614
Steven P. Tepera
Aya Hatori
Attorneys for Defendant
Pillsbury Winthrop Shaw Pittman LLP
401 Congress Avenue, Ste. 1700
Austin, TX 78701
David G. Keyko
Attorney for Defendant
Pillsbury Winthrop Shaw Pittman LLP
31 West 52nd Street
New York, NY 10019
GARY R. BROWN, United States District Judge:
In this action, plaintiff Edge Systems LLC (“Edge”) seeks recovery for purported
infringement of several U.S. Patents against defendant Cartessa Aesthetics, LLC (“Cartessa”), all
relating to claimed inventions and improvements in systems for treating skin. Both plaintiff and
defendant produce and market competing skincare treatment machines known as
“hydradermabrasion devices.” A previous opinion issued findings following an expedited
Markman hearing to resolve claim construction issues as to certain disputed terms and denied a
motion to strike Cartessa’s affirmative defense of unclean hands. Edge Sys. LLC v. Cartessa
Aesthetics, LLC, 571 F. Supp. 3d 13, 16 (E.D.N.Y. 2021) (“Edge I”). Familiarity with that opinion
is assumed.
The parties now move for summary judgment relating to Edge’s U.S. Patent No. 9,550,052
(the “’052 patent”), as follows: Edge’s motion seeks judgment as to the validity of Claim 1 of the
’052 patent, as to which Cartessa asserts invalidity based on U.S. Patent No. 6,162,232 (the “232”
or “Shadduck patent”), also held by Edge. Moreover, both parties seek summary judgment as to
whether Cartessa’s device, known as the “Skinwave,” infringes Claim 1 of the ’052 patent. While
discovery is complete and the parties ostensibly agree that there are no undisputed issues of fact
as to these questions, there are nuances presented that require examination.
Procedural History
The procedural history of this matter is set forth in Edge I and is incorporated by reference
herein. Thereafter, the parties commenced discovery and motion practice. In June 2022, the
parties filed letters seeking a pre-motion conference concerning the pending motions as well as
Edge’s motion for summary judgment as to Cartessa’s amended affirmative defense of unclean
hands. Docket Entry (“DE”) 65-69. At the conference, the Court deemed that motion made and,
following argument, granted summary judgment as to the affirmative defense. DE 85; DE 86 at
48-52. Counsel filed motion papers regarding the summary judgment motions concerning
invalidity and non-infringement. DE 88-96.
This opinion follows.
Relevant Undisputed Facts
a. Invalidity
Edge seeks a declaration of “no invalidity” of the ’052 patent, contending that it is beyond
dispute that the invention described therein was not anticipated by the Shadduck patent, asserting
the following facts:
The invention described in the ’052 patent encompasses “skin rejuvenation systems with a
handpiece that applies treatment fluids to the skin while simultaneously suctioning away waste
from the skin surface.” DE 66-1 4 8. The patent includes an illustration showing “four fluid
containers . . . containing treatment fluid that is delivered to the handpiece via a supply conduit”
and “a waste conduit for conveying waste — suctioned from the patient’s skin — to a waste container
inside the console.” Figure 1 of the patent illustrates the device as follows:
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Id. Importantly, the patent describes “a manifold system that holds containers containing treatment
fluids and/or antimicrobial agents.” Id. at ¶ 9; DE 76-1 ¶ 9. In fact, Claim 1 of the ’052 patent
expressly and repeatedly explains that the claimed invention consists of “a console including a
manifold, the manifold being in fluid communication with a first fluid container and at least a
second fluid container,” and “a supply conduit placing the manifold of the console in fluid
communication with the handpiece assembly . . . wherein the manifold is configured to control a
flow of treatment material from the first fluid container and at least the second fluid container.”
DE 66-1 ¶ 11 (quoting Claim 1 of the ’052 patent).
Edge distinguishes the ’052 patent from the Shadduck patent on the grounds of the
“manifold limitation,” asserting:
The device in the ’232 Patent does not have a “manifold” as required by Claim 1
of the ’052 Patent. The ’232 Patent does not mention or disclose a “manifold” or
describe any component as having multiple inlets and one outlet, or multiple outlets
and one inlet.
Id. ¶ 58. The ’232 patent does not use the word manifold. Id.
The ’232 patent does discuss mixing certain products, noting, for example, that “the 2nd
delivery means introduces the coolant fluid plus a crystalline agent into chamber to intermix with
the high-pressure gas streams provided by the 1st delivery means, to thereafter impact the Skin
Surface to abrade away superficial layers.” U.S. Patent No. 6,162,232 col. 9 l. 40-45 (filed Apr.
19, 1999). Even assuming, arguendo, that a person of ordinary skill in the art (POSITA) could
infer a manifold from such this language, Edge further argues that “the ’232 patent does not
disclose a device that allows the user to select treatment liquid from multiple containers as Claim
1 requires.” DE 88-1 at 2. And clearly it does not: the focus of the ’232 patent centers on the
abrasion of skin via a solid crystalline agent propelled against the skin using a gas stream or liquid.
Defendant attempts to disagree, relying on equivocal testimony by its own expert
suggesting “somewhere there must be a place where these treatment media are being combined.
Hence, Shadduck has a manifold.” DE
76-1 4 67. In other words, defendant [ese ee < eae, [Seaueara Swen
argues that the ’232 patent inferentially maa ol VALVE EAs | a |
“teaches a manifold,” without using the patch Choe} —— 1
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word. /d. ¥ 58. Cartessa identifies the [eouscnoy sera oN Lp
area defined by the highlighted box a
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added to Fig. 2A of the Shadduck 15“ yg = 22
patent — which does nothing more than showcase a schematic line between two sources, as the
component in which “the fluid flow from different containers 30 and 40 meet, intermix, and travel
out a single conduit.” /d. 67. Thus, in the context of invalidity, Cartessa seems to argue that any
space where fluids combine constitutes a manifold. /d. By contrast, in the context of infringement,
Cartessa vehemently argues that a manifold represents “a well-known device in engineering
contexts” with “an ability to combine fluids from multiple sources into one [ | or the ability to
divide fluids from a single source into multiple conduits.” Jd. § 24. In fact, defendant goes to
great lengths to demonstrate that a manifold constitutes much more than “a closed space or pipe
with one inlet and several outlets, or with one outlet and several inlets, for the passage of liquids
or gasses.” Jd. § 22. And defendant persuasively argues that a hose splitter — an item highly akin
to the theoretical “manifold” in the Shadduck patent — is positively not a manifold. /d.
Thus, on the question of invalidity, plaintiff convincingly distinguishes the prior art taught
in the Shadduck patent, mainly relying upon the expression of a manifold and the requirement of
multiple selectable fluids. Defendant tries to conjure a manifold in the Shadduck patent
interstitially, but simply has no evidence upon which base such a conclusion. As the analysis
moves to infringement, however, the proverbial shoe quickly moves to the other foot.
b. Infringement and the Mystery of the White Box
Paradoxically, the question of whether the defendant’s “Skinwave” device infringes Claim
1 of the °052 patent turns on whether it deploys a manifold. Plaintiff attempts to assert that this
question is undisputed by referring to:
a white, box-shaped component inside the Accused Device. The component has (1)
four inlets connected to each of the four fluid containers by tubing and (11) an outlet
that connects to the supply conduit that provides fluid to the handpiece.
DE 66-1 § 23. A photograph accompanies this description:
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Id. Tf, in fact, the white box constitutes a “manifold,” infringement could present a significant
problem. However, far from being undisputed, defendant vehemently contests this assertion.
Cartessa responds, without meaningful disputation by Edge, that plaintiff's expert failed to
investigate whether the object in question is a manifold, remained unaware of its internal structure
and composition, did not detach the device from the console, did no destructive testing and could
not remember even touching the device. DE 76-1 ¶ 23. As a result, plaintiff’s expert could only
“speculate” as to its functioning, and merely “assumes” that the device is a manifold. Id. In
addition to this dearth of evidence, defendant points to the undisputed fact that the “Skinwave
cannot provide treatment fluid from two fluid containers simultaneously.” Id. ¶ 32. This
underscores the assertion that the Skinwave fails to satisfy the “fluid communication” limitations
of the ’052 patent, which expressly requires “a first fluid container and at least a second fluid
container.” Id.
Months after the close of expert discovery in May 2022 and, indeed, the service of
summary judgment papers and preliminary oral argument, counsel for Edge submitted a
supplemental expert declaration, dated October 13, 2022, without leave of court. DE 91-3. In that
declaration, plaintiff’s expert avers that—at an unspecified date “subsequent” to his “first
inspection” of the Skinwave device, he “isolated” the white box (which he refers to as a manifold).
Id. ¶ 5. While the expert endeavors to reconcile his subsequent disassembly and examination of
the white box with his initial inspection, this proves unpersuasive, as the supplemental declaration
contains original photographs, annotations and analysis suggesting that the white box functions as
a manifold. Id. ¶¶ 5-7. Defendant moves to strike this declaration as improper, a motion which,
given plaintiff’s untimely submission during lengthy, thorough and otherwise orderly litigation of
this matter, seems appropriate.1 Thus, the Court will not consider this late (and largely
unpersuasive) submission, except as follows: In response to the motion to strike, plaintiff suggests
that the purpose of this affidavit is simply to adopt the unsworn report, thereby rendering it
admissible. DE 96 at 3 (citing Mid-Town Laundry, LLC v. Pierce, 2021 WL 2417672, at *8
1 This fails to qualify as even an “eleventh-hour” effort by plaintiff; well past all relevant deadlines, the declaration
seems better described as a “thirteenth-hour” submission.
(N.D.N.Y. 2021)). While the argument seems seasoned with disingenuity,2 the Court will deem
the expert report as having been adopted by the sworn affidavit for admissibility purposes.
And the issue goes beyond an absence of evidence proffered by plaintiff as to the function
of the white box. Defendant’s expert affirmatively opines that the component “doesn’t work like
a manifold and it is not a manifold.” DE 69-1 ¶ 11. Instead, defendant’s expert proffers that the
device “is a matrix or a line of solenoid valves.” Id. And this evidence has not been effectively
controverted.
Discussion
Invalidity
In the context of a summary judgment motion, a party seeking invalidity of a patent must
not only satisfy the requisites usually faced by litigants under Rule 56, but must also contend with
the statutory presumption of validity and the burden of proof contained in the statute. 35 U.S.C. §
282(a) (“[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the
party asserting such invalidity.”). As a result, “a defendant raising an invalidity defense [bears] ‘a
heavy burden of persuasion,’ requiring proof of the defense by clear and convincing evidence.”
Microsoft Corp. v. I4I Ltd. P'ship, 564 U.S. 91, 102 (2011) (quoting Radio Corp. of Am. v. Radio
Eng'g Lab'ys, 293 U.S. 1, 8, (1934)). Defendant’s burden is intensified where, as here, it relies
solely upon an earlier patent, “as new evidence supporting an invalidity defense may ‘carry more
weight’ in an infringement action than evidence previously considered by the PTO.” Microsoft,
564 U.S. at 110 (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360
(Fed. Cir. 1984), abrogated by Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed.
2 That plaintiff does not simply rely on the belated supplemental affidavit solely for the purposes of adding an oath to
its original report is demonstrated, inter alia, by its copious use of new photos and information about the liberated
white box in its submissions. DE 91-1 at 19-21; DE 91-6 at 11.
Cir. 2011)). Moreover, “[t]o show that a patent claim is invalid as anticipated, the accused
infringer must show by clear and convincing evidence that a single prior art reference discloses
each and every element of a claimed invention.” Silicon Graphics, Inc. v. ATI Techs., Inc., 607
F.3d 784, 796 (Fed. Cir. 2010).
As to the manifold limitation, defendant, resting solely on the equivocal, conclusory
assertions of its expert, plainly fails to satisfy the “clear and convincing” standard for invalidity.
Regarding the multiple liquid container element of the ’052 patent, defendant offers no evidence,
but rather an extended exegesis of the patent’s text and diagrams, which proves unconvincing. DE
88-2 at 8-11. Given the onerous standard faced by defendant in its endeavor to invalidate the
patent, these efforts fall short. Thus, plaintiff is entitled to summary judgment on the question of
invalidity.
Infringement
On the issue of infringement, the Federal Circuit has held:
Summary judgment is appropriate when it is apparent that only one conclusion as
to infringement could be reached by a reasonable jury. Summary judgment of
noninfringement is appropriate where the patent owner's proof is deficient in
meeting an essential part of the legal standard for infringement, since such failure
will render all other facts immaterial.
A patent infringement analysis involves two steps: (1) claim construction and, (2)
application of the properly construed claim to the accused product. The first step,
claim construction, is a matter of law that this court reviews without deference.
Whether the accused device contains an element corresponding to each claim
limitation, or its equivalent, is a question of fact reviewed under the clearly
erroneous standard of review.
Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1323–24 (Fed. Cir. 2001)
(alterations omitted). “With regard to the second step of the infringement analysis, the patentee
must prove that the accused device embodies every limitation in the claim, either literally or by a
substantial equivalent.” Conroy v. Reebok Int'l, Ltd., 14 F.3d 1570, 1573 (Fed. Cir. 1994). This
Court is otherwise required to apply the well-known standards for summary judgment as defined
by the Second Circuit. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1350–51
(Fed. Cir. 2022).
Against that standard, the infringement motion is readily dispatched. Edge plainly has no
competent, admissible evidence that would establish that the Skinwave device contains a manifold.
Much of the briefing focuses on the meaning of manifold, whether dictionary definitions should
apply, how a POSITA would interpret the term and whether the failure to raise the definition of
the term during the Markman phase3 bars argument based on the term. See generally DE 91-1,
92-1. All of this misses the mark. The essential point is that the word manifold—which appears
four times in Claim 1 of the ’052 Patent and countless times throughout the document—must mean
something. See DE 91-1 at 14-15 (citing definitions of manifold that appear in four federal court
opinions). Edge defines the inclusion of a manifold as the first claim limitation, expressly dubbing
it the “manifold limitation.” DE 66-1 ¶ 11. Yet, based on its expert’s timely review of the accused
product, Edge has no evidence that the white box contained therein constitutes a manifold. Thus,
however one might construe the functions of a manifold, Edge cannot prove that the Skinwave
device contains one.
In sum, Cartessa has demonstrated that, upon the undisputed facts, Edge cannot “prove that
the accused device embodies every limitation in the claim.” Conroy, 14 F.3d at 1573. Therefore,
summary judgment of noninfringement is warranted.
Conclusion
Based on the foregoing, Edge’s motion for summary judgment on the question of invalidity
is GRANTED, but DENIED as to infringement, while Cartessa’s motion for summary judgment
3 At the Markman hearing, both sides declined the opportunity to present testimony. Edge I, 571 F. Supp. 3d at 16.
of noninfringement is GRANTED.
Counsel shall meet and confer and submit a joint status report within ten days of this
decision to advise the Court as to whether any further issues need to be resolved.
SO ORDERED.
Dated: June 6, 2023
Central Islip, New York
/s/ Gary R. Brown
GARY R. BROWN
UNITED STATES DISTRICT JUDGE