DCT

2:23-cv-00269

BTL Industries Inc v. Munera Esthetics Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00269, C.D. Cal., 01/13/2023
  • Venue Allegations: Venue is alleged to be proper as Defendant is a California corporation with its principal place of business in the district, making it a resident of the district.
  • Core Dispute: Plaintiff alleges that Defendant’s aesthetic body-contouring devices infringe five patents related to methods and devices for treating biological structures with time-varying magnetic fields.
  • Technical Context: The technology concerns non-invasive aesthetic treatments using high-intensity focused electromagnetic energy to induce muscle contractions for the purposes of muscle toning and body sculpting.
  • Key Procedural History: The complaint details pre-suit communications, beginning with a cease-and-desist letter sent by Plaintiff on April 26, 2022. Plaintiff alleges that after Defendant assured it had ceased marketing the accused SCULPTME devices, Defendant rebranded the products as MUSCLE MAX and continued its allegedly infringing activities. This history may be central to Plaintiff's allegations of willful infringement.

Case Timeline

Date Event
2015-07-01 U.S. Patent No. 9,636,519 Priority Date
2016-07-01 U.S. Patent Nos. 10,478,634, 10,695,575, 10,596,386, and 11,266,852 Priority Date
2017-05-02 U.S. Patent No. 9,636,519 Issues
2019-11-19 U.S. Patent No. 10,478,634 Issues
2020-03-24 U.S. Patent No. 10,596,386 Issues
2020-06-30 U.S. Patent No. 10,695,575 Issues
2021-12-01 Accused SCULPTME Product Launch (on or around date)
2022-03-08 U.S. Patent No. 11,266,852 Issues
2022-04-26 Plaintiff sends cease-and-desist letter to Defendant
2022-08-01 Accused MUSCLE MAX Product Launch (on or around date)
2023-01-13 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,266,852 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Issued: March 8, 2022 (the "’852 Patent")

The Invention Explained

  • Problem Addressed: The patent's background describes limitations in existing aesthetic treatments, noting that mechanical and thermal methods carry risks and are unable to effectively enhance muscle appearance, while prior magnetic methods are limited in their operational parameters (’852 Patent, col. 2:27-36).
  • The Patented Solution: The invention is a treatment device for enhancing a patient's visual appearance. The device uses two independent, planar magnetic field generating coils housed in applicators to generate time-varying magnetic fields. These fields are applied to a body region like the abdomen or buttocks to cause muscle contractions, with the coils configured to generate pulses independently and at varying repetition rates to achieve specific therapeutic effects (’852 Patent, Abstract; col. 25:19-26:24).
  • Technical Importance: The use of dual, independently controlled planar coils allows for sophisticated treatment protocols that can target paired muscle groups or large body areas more effectively than single-applicator systems (Compl. ¶¶56, 72).

Key Claims at a Glance

  • The complaint asserts independent Claim 9 (Compl. ¶49).
  • The essential elements of Claim 9 are:
    • A treatment device for enhancing a visual appearance of a patient.
    • Comprising a first and second planar magnetic field generating coil.
    • A first applicator comprising the first coil.
    • The first coil is configured to generate a first time-varying magnetic field with a repetition rate of 1 Hz to 300 Hz and a magnetic flux density of 0.1 to 7 Tesla.
    • The second coil is configured to generate a second time-varying magnetic field with similar parameters.
    • The first coil is configured to generate its field independently of the second coil.
    • Each coil is configured to generate a plurality of pulses, where each plurality comprises a first and second plurality of pulses at different repetition rates.
    • Each pulse comprises an impulse and has a specific duration relative to the next impulse.
    • The coils are configured for placement proximate to a body region (buttocks or abdomen) to cause muscle contraction and enhance visual appearance.

U.S. Patent No. 10,695,575 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Issued: June 30, 2020 (the "’575 Patent")

The Invention Explained

  • Problem Addressed: The patent identifies drawbacks in conventional non-invasive aesthetic treatments, such as the risk of tissue damage from thermal or mechanical methods and the inability of those methods to produce muscle toning or shaping effects (’575 Patent, col. 1:5-2:4).
  • The Patented Solution: The invention is a method for toning muscles using two independently positioned applicators. The method involves discharging energy from two separate storage devices to two separate magnetic field generating coils that have the same inductance. It specifies parameters for generating impulses, including their duration, magnetic flux density, and a specific timing relationship where an impulse from the second coil is generated during the pulse duration of the first. The method also requires cooling the coils (’575 Patent, Abstract; Claim 1).
  • Technical Importance: This patented method provides a protocol for using dual applicators to achieve muscle toning, addressing the technical challenges of coordinating energy delivery and managing heat in a dual-coil system (Compl. ¶¶73, 77, 78).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 (Compl. ¶69).
  • The essential elements of Claim 1 are:
    • A method for toning muscles of a patient.
    • Positioning a first applicator with a first coil having an inductance.
    • Independently positioning a second applicator with a second coil having the same inductance.
    • Charging a first and a second energy storage device.
    • Discharging the storage devices to their respective coils to generate first impulses of time-varying magnetic fields.
    • The impulses each have a magnetic flux density between 0.1 and 7 Tesla and an impulse duration between 3 µs and 3 ms.
    • Establishing a pulse duration where the impulse from the second coil is generated during the pulse duration of the first.
    • Cooling both coils.
    • Applying pluralities of impulses from both coils to cause muscle contraction and toning.

U.S. Patent No. 10,478,634 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Issued: November 19, 2019
  • Technology Synopsis: This patent discloses a method for toning muscles by applying a time-varying magnetic field with specific parameters. The method involves placing an applicator on an abdomen or buttock, coupling it with a belt, providing energy to generate the field, and applying a specific magnetic fluence sufficient to cause muscle contraction (’634 Patent, Abstract; Claim 1).
  • Asserted Claims: At least Claim 1 (independent) (Compl. ¶87).
  • Accused Features: The complaint alleges that Defendant instructs users to perform the patented method by placing the Accused Devices' applicators on patients' abdomens using adjustable belts and operating the devices to cause muscle contractions (Compl. ¶¶88-93).

U.S. Patent No. 9,636,519 - "Magnetic Stimulation Methods and Devices for Therapeutic Treatments"

  • Issued: May 2, 2017
  • Technology Synopsis: This patent is directed to a magnetic stimulation device that incorporates a specific cooling mechanism. It claims a device comprising a coil, a casing, and at least one blower arranged on the circumference of the coil, configured such that a fluid can flow between the coil and casing to cool the coil from at least its upper and lower sides (’519 Patent, Abstract; Claim 1). A promotional video for the Accused Devices depicts a deconstructed applicator showing fans positioned next to the coil (Compl. ¶104).
  • Asserted Claims: At least Claim 1 (independent) (Compl. ¶98).
  • Accused Features: The "air-cooled cooling system" of the Accused Devices, which allegedly includes at least one fan (blower) housed in the applicator casing next to the coil, is accused of infringing (Compl. ¶¶78, 104-106).

U.S. Patent No. 10,596,386 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Issued: March 24, 2020
  • Technology Synopsis: This patent claims a treatment device for muscle toning. The device comprises an applicator held by a belt, an energy storage device, means for discharging energy to create biphasic impulses with a specific repetition rate and duration, and means for cooling the device with a fluid medium (’386 Patent, Abstract; Claim 12).
  • Asserted Claims: At least Claim 12 (independent) (Compl. ¶111).
  • Accused Features: The Accused Devices, which are used with belts and allegedly include an energy storage device, cooling means, and generate magnetic impulses with the claimed characteristics, are accused of infringement (Compl. ¶¶115-118).

III. The Accused Instrumentality

Product Identification

The SCULPTME, SCULPTME GOLD, and MUSCLE MAX devices, collectively referred to as the "Accused Devices" (Compl. ¶¶15, 38).

Functionality and Market Context

The Accused Devices are non-invasive body-contouring machines that use electromagnetic waves to generate muscle contractions for aesthetic purposes (Compl. ¶38). The complaint alleges the MUSCLE MAX and SCULPTME GOLD devices are identical, providing a side-by-side visual comparison and citing identical technical specifications (Compl. ¶¶13-14). This comparison shows two devices with identical housings, screen shapes, and power button placements (Compl. p. 7, "MUSCLE MAX DEVICE" and "SCULPTME GOLD DEVICE" comparison). The devices are promoted as having two applicators, "enhanced coil[s]," a "dual power source for independent handle treatments," and an "air-cooled cooling system" (Compl. ¶¶52, 56, 78). Plaintiff alleges the devices are "knockoff EMSCULPT devices" that were rebranded after Plaintiff sent a cease-and-desist letter (Compl. ¶¶3, 12, 17).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,266,852 Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A treatment device for enhancing a visual appearance of a patient... The Accused Devices are promoted to "BUILD MUSCLE [&] BURN FAT" for aesthetic body contouring. ¶51 col. 25:19-20
...a first magnetic field generating coil and a second magnetic field generating coil, wherein both...are planar; The Accused Devices are promoted as coming with "[e]nhanced coil[s]" which are alleged to be planar. ¶52 col. 25:21-24
a first applicator, wherein the first applicator comprises the first magnetic field generating coil... The Accused Devices are sold with two applicators, each containing a coil. ¶53 col. 25:24-26
wherein the first magnetic field generating coil is configured to generate a first time-varying magnetic field with a repetition rate in a range of 1 Hz to 300 Hz... The Accused Devices are advertised as operating at frequencies of 1-110 Hz. ¶54 col. 25:26-28
wherein the first magnetic field generating coil is configured to generate the first time-varying magnetic field independently of the second... A promotional video for the Accused Devices states they have a "dual power source" for "independent handle treatments." ¶56 col. 26:6-8
wherein each of the first and the second magnetic field generating coils is configured to generate a plurality of pulses, wherein each of the plurality of pulses comprises a first plurality of pulses having a first repetition rate and a second plurality of pulses having a second repetition rate, wherein the first repetition rate differs from the second repetition rate... The Accused Devices are advertised as having three unique treatment modes, which allegedly generate pulses at different frequencies. ¶58 col. 26:9-15
wherein the first and the second magnetic field generating coils are configured to be placed proximate to a body region...to cause a contraction of at least one muscle... Promotional materials for the Accused Devices show their use on abdomens and thighs to build muscle. A promotional video shows various target muscle groups, including the abdomen and thighs (Compl. p. 31, "FOCUSING ON YOUR CLIENTS MOST DESIRABLE MUSCLE GROUPS"). ¶61 col. 26:19-23
...wherein the body region comprises one of a buttocks or an abdomen. Promotional materials for the Accused Devices explicitly show treatment of the abdomen. ¶62 col. 26:23-24
  • Identified Points of Contention:
    • Technical Questions: A key technical question will be whether the Accused Devices' "3 [u]nique treatment modes" actually perform the specific function of generating a "first plurality of pulses" and a "second plurality of pulses" with different repetition rates within a single operational sequence, as required by the claim. The complaint's allegation relies on an inference from marketing materials that will require technical validation.
    • Scope Questions: The claim requires the first coil to generate its field "independently of the second." The interpretation of "independently" could become a point of contention. It raises the question of whether this requires complete electrical and control-path separation, or if software-controlled independent timing from a shared controller would suffice.

U.S. Patent No. 10,695,575 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for toning muscles of a patient, comprising: positioning a first applicator on the patient, the first applicator housing a first magnetic field generating coil having an inductance; Defendant's marketing materials allegedly instruct customers to position the applicators, which house coils, on patients, often secured by elastic belts. The complaint includes photos showing the applicators fastened to patients' abdomens (Compl. p. 34). ¶71 col. 32:13-16
independently positioning a second applicator on the patient...having the same inductance as the first...coil; The Accused Devices include a second applicator that can be positioned independently. The complaint alleges on information and belief that discovery will show the inductances of the two coils are the same. ¶72 col. 32:16-19
charging a first energy storage device and a second energy storage device; The complaint alleges that the Accused Devices' advertised "DUAL POWER SUPPLY" corresponds to two energy storage devices. ¶73 col. 32:19-20
discharging the first energy storage device to the first...coil such that a first impulse...is generated; The complaint alleges on information and belief that the Accused Devices are configured to discharge energy from their storage devices to the coils to generate magnetic impulses. ¶74 col. 32:20-23
...wherein the first impulse...each have...an impulse duration in a range between 3 µs and 3 ms; The complaint alleges on information and belief that the devices' ability to produce 30,000 contractions in 30 minutes means the impulses likely fall within the claimed duration range. ¶76 col. 33:1-3
establishing a first pulse duration...wherein the first impulse generated by the second...coil is generated during the first pulse duration; The complaint alleges on information and belief that the "independent handle treatment" functionality will be shown through discovery to meet this specific timing requirement. ¶77 col. 33:4-9
cooling each of the first and the second magnetic field generating coils; The complaint cites promotional materials stating the Accused Devices feature an "air-cooled cooling system." ¶78 col. 33:10
  • Identified Points of Contention:
    • Technical Questions: The complaint's allegation that the impulse duration falls within the claimed 3 µs to 3 ms range is based on an inference from the advertised number of contractions per session. This raises an evidentiary question of whether the actual operational parameters of the device match this inference. Likewise, the specific timing relationship between impulses from the two coils is alleged on "information and belief" and will require technical evidence.
    • Scope Questions: A potential point of dispute is whether the advertised "DUAL POWER SUPPLY" constitutes two distinct "energy storage device[s]" as recited in the claim. The construction of this term may be important, raising the question of whether it requires two physically separate capacitors or if a single power unit with dual independent outputs would meet the limitation.

V. Key Claim Terms for Construction

  • The Term: "wherein the first magnetic field generating coil is configured to generate the first time-varying magnetic field independently of the second time-varying magnetic field" (’852 Patent, Claim 9)
  • Context and Importance: The concept of "independent" generation is central to the alleged innovation of using dual applicators for customized treatments. The complaint supports this element with evidence of "independent handle treatments" (Compl. ¶56). Practitioners may focus on this term because its definition will determine whether the accused system's architecture, which may use a common controller, falls within the claim scope.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes an embodiment with "two independent magnetic field generating circuits," each with its own power supply, switch, and energy storage, suggesting that "independently" could refer to the ability to generate fields at different times or with different parameters, regardless of shared high-level control (’852 Patent, Fig. 12; col. 15:8-20).
    • Evidence for a Narrower Interpretation: A party could argue that "independently" requires complete electrical isolation up to the main power grid connection, which may not be present in a device with a single main power unit and a software-based controller managing two output channels.
  • The Term: "having the same inductance" (’575 Patent, Claim 1)
  • Context and Importance: This limitation requires that the coils in the two separate applicators have the "same inductance." Infringement of this element is alleged on "information and belief" (Compl. ¶72). The definition is critical because manufacturing tolerances may mean no two coils are perfectly identical, raising the question of how much variation is permissible.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that "same" should be construed in the context of the invention's purpose, meaning "substantially identical" or "functionally equivalent" to ensure predictable and balanced energy delivery to both applicators. The patent does not appear to define or elaborate on this term, potentially leaving it open to its plain and ordinary meaning.
    • Evidence for a Narrower Interpretation: A party could argue for a strict interpretation requiring the inductances to be identical within a very tight, specified tolerance. The patent's lack of explicit definition could be argued to imply that the plain meaning—i.e., identical—should control, creating a high bar for the plaintiff to prove infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement for the method claims of the ’634 and ’575 patents. The allegations are based on Defendant's marketing, promotional videos, and user instructions, which allegedly encourage and instruct customers to use the Accused Devices on patients in a manner that performs the claimed steps (Compl. ¶¶69, 71, 87, 90).
  • Willful Infringement: Willfulness is alleged for all five patents. The complaint alleges Defendant had pre-suit knowledge of the patents based on a cease-and-desist letter sent on April 26, 2022, and from the public listing of Plaintiff's patents on its corporate website. The complaint further alleges that Defendant's conduct of rebranding the products and continuing sales after receiving notice demonstrates deliberate and willful infringement (Compl. ¶¶12, 64, 82).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of evidentiary proof: can Plaintiff, through discovery and technical analysis, demonstrate that the Accused Devices actually operate within the specific quantitative parameters recited in the claims, such as the "magnetic fluence" range in the ’852 Patent and the precise impulse "duration" and inter-pulse timing of the ’575 Patent? The complaint's current reliance on inference and "information and belief" for these elements highlights that the case may turn on expert testimony and technical evidence obtained during discovery.
  • A second central issue will be one of knowing intent: given the detailed pre-suit communications alleged in the complaint, a key question for the fact-finder will be whether Defendant's actions, particularly the alleged rebranding and continued sales after receiving a cease-and-desist letter, rise to the level of willful infringement. This analysis will likely focus on the timeline of events and Defendant's state of mind after being notified of the asserted patents.