DCT
5:23-cv-01105
BTL Industries Inc v. Beauty BY Izzy
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Beauty by Izzy; Isabel Gomez (California)
- Plaintiff’s Counsel: Payne & Fears LLP; Patterson Intellectual Property Law, P.C.
- Case Identification: 5:23-cv-01105, C.D. Cal., 06/09/2023
- Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant Beauty by Izzy has its principal place of business in the District, and Defendant Isabel Gomez is alleged to be the active agent behind the entity's actions.
- Core Dispute: Plaintiff alleges that Defendant’s aesthetic devices infringe a patent related to methods for toning muscles using time-varying magnetic fields.
- Technical Context: The technology relates to non-invasive aesthetic body contouring, a market in which electromagnetic energy is used to induce powerful muscle contractions for the purpose of improving muscle tone and body shape.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent multiple notice letters apprising Defendants of the infringing conduct, starting on September 29, 2022, prior to filing the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2019-11-19 | ’634 Patent Issue Date |
| 2022-09-22 | Alleged start of Defendants' advertising of the Accused Device |
| 2022-09-29 | Plaintiff's counsel allegedly sent initial Notice Letter to Defendants |
| 2023-06-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,478,634, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued November 19, 2019.
The Invention Explained
- Problem Addressed: The patent describes a need for new non-invasive aesthetic treatment methods to enhance the visual appearance of a patient's body, noting that existing methods are limited in their ability to shape, tone, or increase the volume of muscle tissue ('634 Patent, col. 2:26-35). Existing magnetic methods are described as being limited by key parameters, preventing a satisfactory enhancement of visual appearance ('634 Patent, col. 2:36-39).
- The Patented Solution: The invention is a method for treating a patient using a time-varying magnetic field with a magnetic flux density sufficient to induce muscle contractions ('634 Patent, Abstract). This is achieved by placing an applicator with a magnetic field generating coil on a specific body region (e.g., abdomen or buttock) and applying energy at a specific magnetic fluence to cause the desired muscle contractions for an aesthetic effect ('634 Patent, col. 18:1-26).
- Technical Importance: The method provides a non-invasive way to induce supramaximal muscle contractions—contractions that cannot be voluntarily achieved—to increase muscle strength and volume for aesthetic body sculpting ('634 Patent, col. 20:17-26).
Key Claims at a Glance
- Independent Claim Asserted: Claim 1.
- Essential Elements of Claim 1:
- A method for toning muscles in a patient using time-varying magnetic fields.
- Placing a first applicator with a magnetic field generating coil in contact with the patient's skin or clothing at an abdomen or a buttock.
- Coupling the applicator to the patient with an adjustable flexible belt to hold it in place.
- Providing energy to the coil to generate a time-varying magnetic field.
- Applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region.
- The magnetic field is applied with a magnetic flux density sufficient to cause muscle contraction.
- The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶33).
III. The Accused Instrumentality
Product Identification
- Devices advertised under the names "EM Slim," "EM SLIM NEO," and "EM SLIM NOVA" (collectively, the "Accused Device") (Compl. ¶25).
Functionality and Market Context
- The complaint alleges the Accused Device is a non-authentic BTL device that uses time-varying magnetic fields to cause muscle contraction for aesthetic purposes (Compl. ¶28).
- It is alleged to operate by applying these fields to a patient's skin via an applicator containing a magnetic field generating coil, which is held in place with a flexible belt (Compl. ¶28). The complaint shows a marketing image of the Accused Device, which depicts a console with two applicators (Compl. p. 9, ¶26).
- The complaint alleges Defendants market the Accused Device using clinical study results from Plaintiff's own products, claiming benefits such as a "19% reduction of fat" and a "16% increase in muscle mass" (Compl. ¶29).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,478,634 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for toning muscles in a patient using time-varying magnetic fields, the method comprising: | The Accused Device is advertised and used for aesthetic muscle toning and body shaping via time-varying magnetic fields. | ¶28 | col. 18:1-4 |
| placing a first applicator comprising a magnetic field generating coil in contact with a patient's skin or clothing at a body region of the patient, wherein the body region is an abdomen or a buttock; | The Accused Device includes an applicator with a magnetic coil that is applied to a patient's skin. A marketing image shows applicators suitable for abdominals/buttocks. | ¶28; p. 9, ¶26 | col. 9:47-50 |
| coupling the first applicator to the patient with an adjustable flexible belt so that the belt holds the first applicator to the patient's skin or clothing; | The Accused Device is allegedly held to the patient using a flexible belt attached to the applicator. | ¶28 | col. 10:55-61 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and | The Accused Device provides energy to its applicator coil to generate a time-varying magnetic field. | ¶28 | col. 12:5-9 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, | The complaint alleges, upon information and belief, that the Accused Device applies a magnetic flux within the claimed range of 50 T cm² to 1,500 T cm². | ¶28 | col. 14:7-15 |
| wherein the time-varying magnetic field is applied to the body region with a magnetic flux density sufficient to cause a muscle contraction in the body region. | The device's operation is alleged to apply a magnetic field that causes muscle contraction. | ¶28 | col. 18:59-64 |
- Identified Points of Contention:
- Evidentiary Questions: A primary point of contention will likely be evidentiary. The complaint alleges on "information and belief" that the Accused Device generates a "magnetic fluence" within the specific numerical range of 50 to 1,500 T cm². The central technical question will be what evidence, if any, supports this quantitative allegation, as this parameter is not typically disclosed in public-facing marketing materials.
- Scope Questions: The analysis may raise the question of whether the "adjustable flexible belt" used with the Accused Device performs the specific function of "coupling" and "holding" the applicator in the manner described and required by the claim.
V. Key Claim Terms for Construction
- The Term: "magnetic fluence"
- Context and Importance: This term is a quantitative limitation at the heart of the infringement allegation. The dispute will likely turn on whether the Plaintiff can prove the Accused Device meets this specific, technical range. Practitioners may focus on this term because proving infringement of a precise numerical range often requires technical testing and expert testimony.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides an explicit formula: MF=BPP*AMFGD (Eq. 4), where MF is magnetic fluence, BPP is the maximal peak-to-peak magnetic flux density, and AMFGD is the area of the magnetic field generating device ('634 Patent, col. 14:2-6). Parties may argue this definition is straightforward and should be applied as written, encompassing any device that meets the calculated value.
- Evidence for a Narrower Interpretation: A defendant may argue that the term should be interpreted in the context of the patent's disclosed embodiments and the problems it purports to solve. The specification discusses specific device characteristics, such as wire construction and cooling systems, that enable its performance ('634 Patent, col. 7:8-21; col. 9:1-12). It could be argued that "magnetic fluence" as claimed is tied to devices capable of achieving the performance described in the patent, not just any device that happens to fall within the numerical range.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants encourage, promote, and instruct customers to use the Accused Device in a manner that directly infringes Claim 1 (Compl. ¶34).
- Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the '634 Patent since "before the filing of this Complaint" (Compl. ¶35). This knowledge is allegedly based on awareness of BTL's products, which are marked with a patent notice, and on direct notice letters sent by BTL's counsel starting on September 22, 2022 (Compl. ¶35).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical proof: what evidence will be adduced to demonstrate that the Accused Device, on information and belief, actually generates a "magnetic fluence" within the specific numerical range of 50 T cm² to 1,500 T cm² as required by Claim 1? The case may depend heavily on the outcome of expert testing and discovery concerning the accused product's technical operating parameters.
- A key legal question will be one of knowledge and intent: assuming infringement is found, what evidence demonstrates that Defendants had the requisite knowledge of the patent and specific intent to encourage infringement to support the claims for willfulness and inducement, particularly in the period before receiving Plaintiff's first notice letter?