A Medical Device Daily

Palomar Medical Technologies (Burlington, Massachusetts), a developer of light-based systems for cosmetic treatments, reported that the U.S. Patent and Trademark Officehas confirmed the validity of 56 claims in the re-examination of U.S. patent No. 5,735,844 (the '844 patent), titled "Hair Removal Using Optical Pulses."

Rejecting claims and arguments from Candela (Wayland, Massachusetts) and another company to the contrary, the USPTO confirmed that claims 1-3, 6-8, 11, 17-20, 27, 28, 30, 32 of the '844 patent are valid and patentable. As part of the re-examination process, Palomar added 26 new claims (33-59) to the '844 patent, and the USPTO also confirmed these new claims as valid and patentable. The USPTO rejected only independent claim 12 and related dependent claims 13-14 as unpatentable.

Palomar has canceled these claims 12-14 from the '844 patent in order to expedite the re-examination proceeding. Claims 4, 5, 9, 10, 15, 16, 21-26, 29 and 31 are not under re-examination. Consequently, all currently pending claims are valid.

Palomar and Massachusetts General Hospital (Boston) are suing Candela for willful infringement of the '844 patent in the U.S. District Court for the District of Massachusetts. On Nov. 17, 2008, the lawsuit was stayed by the court pending the outcome of the re-examination proceeding of the '844 patent and the re-examination proceeding of U.S. patent No. 5,595,568 (the '568 patent). Palomar will seek a re-start of the lawsuit given the allowance of all currently pending claims in the '844 patent.

The re-examination of the '568 patent is ongoing and no office action has yet been issued.

This light-based hair removal patent family has already been licensed to 10 competitors and is also the subject of a patent infringement lawsuit against Syneron (Irvine, California).

Palomar CEO Joseph Caruso said, "We are very pleased with the office action issued by the U.S. Patent Office, as we have always believed in the strength of this patent family. We are especially pleased with the speed with which this re-examination was handled. Defendants often request re-examination purely to cause long delays of patent infringement lawsuits. We look forward to re-starting the patent infringement lawsuit against Candela as quickly as possible.

"Palomar was the first company to receive FDA clearance and bring a high powered light-based hair removal system to market," he said. "Palomar was later the first company to receive FDA clearance for permanent hair reduction and the first company to receive over-the-counter clearance from the FDA for a hair removal device."

Caruso added, "After establishing light-based hair removal as a viable treatment option, many competitors began to use our technology. Several properly took licenses, while others opted not to at their own risk."

He said, "Unauthorized taking of technology is what the patent system is designed to prevent. We intend to continue our aggressive patent enforcement strategy both to protect our own investment in research and market development as well as the investment of our competitor licensees."