Candela Corporation et al. v. Nikolai Tankovich

This case, Candela Corporation et al. v. Nikolai Tankovich, IPR2023-00234, arises from a challenge to the validity of a patent at the Patent Trial and Appeal Board (PTAB), which is closely tied to an underlying patent infringement lawsuit. The petitioners, Candela Corporation and Candela Medical, Inc., are established operating companies in the medical aesthetic device industry, renowned for designing, manufacturing, and marketing laser systems for various skin and hair treatments. The respondent and patent owner, Nikolai Tankovich, is a distinguished inventor, researcher, and educator in medical laser applications, recognized for his pioneering work in fractional non-ablative lasers.

The patent at issue is U.S. Patent 10,675,481, titled "Fractional laser system and method for administering multiple beams of laser energy." This patent generally describes a system and method for skin resurfacing using multiple beams of laser energy. The technology is central to a patent infringement lawsuit filed by Dr. Tankovich against Candela Medical, Inc. on November 29, 2021, initially in the U.S. District Court for the Central District of California, and later refiled in the U.S. District Court for the District of Delaware (Civil Action No. 22-1458-RGA) on November 4, 2022. In this district court case, Candela's Frax Pro and Nordlys laser skin treatment devices are the accused products, allegedly infringing Dr. Tankovich's patent.

The procedural posture began with Candela filing the Inter Partes Review at the PTAB on November 18, 2022, to challenge the patentability of claims in U.S. Patent 10,675,481. The PTAB, an administrative tribunal within the USPTO, serves as a venue for reviewing patent validity, often offering a more streamlined and less costly alternative to district court litigation. On June 5, 2024, the PTAB issued a Final Written Decision finding the patentable claims to be patentable. Candela subsequently appealed this decision to the U.S. Court of Appeals for the Federal Circuit (CAFC) under case number 24-2177. However, the appeal was dismissed on April 16, 2026, by agreement of the parties, suggesting a potential settlement or resolution outside of a Federal Circuit ruling. This case is notable due to the "David versus Goliath" narrative, as highlighted in the district court complaint, involving a large medical device corporation challenging the patent of a significant individual inventor in the competitive medical aesthetic laser market.

The case provided, Candela Corporation et al. v. Nikolai Tankovich, IPR2023-00234, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. Therefore, the procedural milestones will reflect the IPR process rather than a traditional infringement lawsuit.

Here are the key legal developments and outcomes for IPR2023-00234:

Key Legal Developments and Outcome for IPR2023-00234

• Filing & Initial Pleadings:

  • 2022-11-18: Candela Corporation and Candela Medical, Inc. (Petitioners) filed a Petition for Inter Partes Review against Nikolai Tankovich (Patent Owner), challenging claims 1-6, 8, and 9 of U.S. Patent No. 10,675,481.
  • 2023-03-03: The Patent Owner, Nikolai Tankovich, filed a Patent Owner Preliminary Response.

• Institution Decision:

  • 2023-05-18: The PTAB issued a Decision to Institute an Inter Partes Review for claims 1-6, 8, and 9 of U.S. Patent No. 10,675,481. The PTAB found that the Petitioners had shown a reasonable likelihood that they would prevail with respect to at least one challenged claim.

• Claim Construction:

  • In IPR proceedings, the PTAB generally uses the same claim construction standard as federal courts, interpreting claims according to their broadest reasonable interpretation in light of the specification and prosecution history, which typically aligns with the Phillips standard for unexpired patents. The Institution Decision and Final Written Decision would have included the PTAB's claim construction for the challenged terms.

• Discovery and Motions:

  • The IPR process involves limited discovery as prescribed by the PTAB rules. Parties can file motions to exclude evidence or for additional discovery. The public docket indicates several filings, including evidence, declarations, and oppositions, consistent with IPR procedure.
  • 2023-08-04: Patent Owner filed a Patent Owner Response.
  • 2023-10-27: Petitioners filed a Reply to Patent Owner Response.

• Oral Hearing:

  • 2024-02-08: An Oral Hearing was held before the PTAB.

• Final Written Decision (FWD):

  • 2024-06-05: The PTAB issued its Final Written Decision. The Board found claims 1-6, 8, and 9 of U.S. Patent No. 10,675,481 to be patentable, concluding that the Petitioners did not prove that these claims were unpatentable. This means the Petitioners (Candela) did not prevail in their challenge.

• Appeal – Present Posture:

  • 2024-08-02: Candela Corporation and Candela Medical, Inc. (Petitioners) appealed the Final Written Decision to the United States Court of Appeals for the Federal Circuit.
  • The appeal is currently active at the Federal Circuit.

• Parallel Litigation:

  • A search for parallel district court litigation involving U.S. Patent No. 10,675,481, Candela, and Nikolai Tankovich did not yield publicly available results for patent infringement litigation that would have directly involved this IPR's stay or related motions to dismiss or transfer. The IPR proceeding itself focused on the patentability of the claims, independent of any active infringement suit at the time of the IPR filing.

The following counsel of record represented Candela Corporation and Candela Medical, Inc. in I Inter Partes Review IPR2023-00234:

• James P. Murphy

  • Role: Counsel for Petitioner
  • Firm: Polsinelli PC, Houston, Texas
  • Note: James P. Murphy is a registered patent attorney with registration number 55,474.

• Mark T. Deming

  • Firm: Polsinelli
  • Note: While listed as an attorney for the petitioner, his specific role (e.g., lead counsel, of counsel) is not detailed in the provided snippets.

• Luke T. Shannon

  • Firm: Polsinelli
  • Note: While listed as an attorney for the petitioner, his specific role is not detailed in the provided snippets.

• Allison Krepel

  • Firm: Polsinelli
  • Note: While listed as an attorney for the petitioner, her specific role is not detailed in the provided snippets.

Additional details regarding the specific roles (e.g., lead counsel, of counsel) and comprehensive litigation experience for all attorneys beyond James P. Murphy were not explicitly detailed in the provided search results.

Nikolai Tankovich, the defendant in IPR2023-00234, was represented by attorneys from Morgan Lewis & Bockius LLP.

The counsel of record for Nikolai Tankovich included:

• Dion M. Bregman
  • Role: Counsel for Patent Owner
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results but the firm has multiple offices known for IP litigation, including Silicon Valley, San Francisco, and Washington D.C.).
  • Note: Bregman is recognized for his practice in intellectual property, including patent litigation.
• Stephen F. Gillen
  • Role: Counsel for Patent Owner (identified in general attorney list)
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results).
  • Note: Further information on specific patent litigation experience was not readily available in the search results.
• Jason C. White
  • Role: Counsel for Patent Owner
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results).
  • Note: Confirmed as Counsel for Patent Owner in multiple filings in the IPR proceeding.
• Ahren Hsu-Hoffman
  • Role: Counsel for Patent Owner
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results).
  • Note: Further information on specific patent litigation experience was not readily available in the search results.
• Olga Berson
  • Role: Counsel for Patent Owner
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results).
  • Note: Further information on specific patent litigation experience was not readily available in the search results.
• Austin Zuck
  • Role: Counsel for Patent Owner (identified in general attorney list)
  • Firm: Morgan Lewis & Bockius LLP (specific office location not detailed in search results).
  • Note: Further information on specific patent litigation experience was not readily available in the search results.