DCT
8:23-cv-00654
BTL Industries Inc v. Beauty Works Oc LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Beauty Works OC LLC; Newport Peaches Inc.; Snezhana Kurkina (California)
- Plaintiff’s Counsel: Payne & Fears LLP; Patterson Intellectual Property Law, P.C.
- Case Identification: 8:23-cv-00654, C.D. Cal., 04/18/2023
- Venue Allegations: Venue is alleged to be proper as Defendants are California corporations with their principal places of business within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendants’ aesthetic services, marketed under names such as "EM SCULPT NEO" and performed with "Counterfeit Devices," infringe a patent related to methods for toning muscles using time-varying magnetic fields.
- Technical Context: The technology lies in the field of non-invasive aesthetic body-contouring, specifically using high-intensity focused electromagnetic (HIFEM) energy to induce powerful muscle contractions.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent at least five communications to Defendants regarding the infringing conduct, beginning with a notice letter on December 22, 2021, to which Defendants allegedly did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2019-11-19 | ’634 Patent Issue Date |
| 2021-12-22 | Plaintiff sends initial Notice Letter to Defendants |
| 2023-04-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,478,634 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"
The Invention Explained
- Problem Addressed: The patent describes existing non-invasive aesthetic procedures as having drawbacks, such as the risk of side effects (e.g., panniculitis) and an inability to effectively enhance the visual appearance of muscle through toning or shaping (Compl. Ex. 4, ’634 Patent, col. 2:15-32). Existing magnetic methods were also described as limited in key parameters that would allow for satisfactory enhancement of visual appearance (’634 Patent, col. 2:33-36).
- The Patented Solution: The invention is a method for aesthetic treatment that uses a time-varying magnetic field to induce muscle contractions. An applicator with a magnetic field generating coil is placed on a target body region, such as the abdomen or buttocks, and energized to generate a magnetic field with a flux density sufficient to cause the underlying muscles to contract, thereby improving their tone and appearance (’634 Patent, Abstract; col. 19:46-50). The patent describes specific treatment applications for buttocks and abdomen enhancement (’634 Patent, Figs. 15-16).
- Technical Importance: This technology provided a non-invasive method to directly target and stimulate muscle tissue for aesthetic improvement, a dimension of body contouring not fully addressed by prior technologies focused primarily on fat reduction or skin tightening (Compl. ¶16).
Key Claims at a Glance
- The complaint asserts independent claim 1 of the ’634 Patent (Compl. ¶¶32-34).
- The essential elements of independent claim 1 are:
- 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 the abdomen or a buttock.
- Coupling the applicator to the patient with an adjustable flexible belt that holds 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, with a magnetic flux density sufficient to cause muscle contraction.
- The complaint does not explicitly reserve the right to assert dependent claims, though this remains a possibility as the case proceeds.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are services advertised by Defendants under names including "EMSCULPT NEO," "EM SCULPT NEO," and "EMSCULPT," which are performed using devices referred to in the complaint as "Counterfeit Devices" (Compl. ¶¶25, 29).
Functionality and Market Context
The complaint alleges that Defendants' Counterfeit Devices perform a method for toning muscles by applying time-varying magnetic fields to a patient's skin (Compl. ¶29). This is accomplished using an applicator containing a magnetic field generating coil, which is held against the treatment area by a flexible belt (Compl. ¶29). A visual provided in the complaint, which is alleged to be from Defendants' advertising, depicts an applicator strapped to a patient's abdomen with a belt. (Compl. p. 9). The complaint further alleges that the device generates a time-varying magnetic field and applies a magnetic flux within a specific range to cause muscle contraction (Compl. ¶29).
IV. Analysis of Infringement Allegations
’634 Patent 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: | Defendants advertise and perform services for toning muscles in a patient using what are alleged to be counterfeit devices that employ time-varying magnetic fields. | ¶¶29, 32 | col. 18:4-5 |
| 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 method involves applying an applicator with a magnetic field generating coil to a patient's skin. | ¶29 | col. 19:46-50 |
| 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 method uses a flexible belt to hold the applicator against the patient's skin. A representative image shows this configuration. | ¶29, p. 9 | col. 10:56-58 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and | The accused devices are alleged to generate a time-varying magnetic field via the coil. | ¶29 | col. 11:65-67 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, 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 accused devices are alleged to apply a magnetic flux of 50 T cm² to 1,500 T cm² and cause muscle contraction. | ¶29 | col. 14:7-16 |
- Identified Points of Contention:
- Scope Questions: A potential issue may arise regarding the interpretation of "in contact with a patient's skin or clothing." The patent specification contemplates both direct contact and contactless application within a close proximity, which may raise questions about the precise scope of this limitation as claimed (’634 Patent, col. 18:35-41).
- Technical Questions: A central factual question will be whether the accused "Counterfeit Devices" actually operate within the claimed "magnetic fluence of 50 T cm² to 1,500 T cm²." The complaint alleges this on information and belief (Compl. ¶29), but it will require technical evidence, such as testing of the accused devices, to substantiate.
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
Context and Importance: This term, with its specific numerical range (50 T cm² to 1,500 T cm²), is a critical limitation. The infringement analysis will depend heavily on whether the accused devices can be proven to generate a magnetic fluence that falls within this claimed range. Practitioners may focus on this term because it is a quantitative, technical parameter that requires specific evidence to prove or disprove.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a formula for calculating magnetic fluence: MF=BPP*AMFGD, where BPP is the maximal peak-to-peak magnetic flux density and AMFGD is the area of the magnetic field generating device (’634 Patent, col. 14:3-6). A party might argue for flexibility in how these underlying variables are measured or defined, potentially broadening the scope of what meets the numerical range.
- Evidence for a Narrower Interpretation: The explicit recitation of a numerical range (50-1,500 T cm²) provides a clear boundary. A party could argue that this range must be strictly met and that any device operating outside these specific values, as calculated by the patent's own formula, does not infringe. The patent further provides specific examples of winding areas and magnetic flux densities that could be used to anchor the term to particular embodiments (’634 Patent, col. 13:41-52; col. 16:62-64).
The Term: "an adjustable flexible belt"
Context and Importance: This structural term defines how the applicator is secured to the patient. Infringement requires the use of a component that meets this definition. Practitioners may focus on this term if the accused device uses a different type of securing mechanism that a defendant could argue is not a "belt."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the belt as a type of "positioning member" that "may ensure tight attachment of the applicator" (’634 Patent, col. 10:55-58). A party might argue that "belt" should be construed broadly to cover any flexible, adjustable strap-like apparatus that performs this holding function.
- Evidence for a Narrower Interpretation: The specification provides more specific context, noting that the "positioning member may include a buckle for adjusting the length of the belt" (’634 Patent, col. 10:65-66). This language could be used to argue for a narrower construction, limiting the term to traditional belts with buckle-like adjustment mechanisms and excluding other types of fasteners or harnesses.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct their customers on how to use the "Counterfeit Devices" in a manner that directly infringes Claim 1 (Compl. ¶35).
- Willful Infringement: Willfulness is alleged based on Defendants’ purported knowledge of the ’634 patent "since before the filing of this Complaint" (Compl. ¶36). This allegation is supported by the claim that Plaintiff’s counsel sent multiple notice letters and emails to Defendants starting on December 22, 2021, which allegedly went unanswered (Compl. ¶25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: can Plaintiff produce technical evidence demonstrating that the accused "Counterfeit Devices" actually generate a "magnetic fluence" within the specific numerical range of 50 T cm² to 1,500 T cm² as required by Claim 1?
- A secondary issue will be one of structural scope: does the fastening mechanism used with the accused devices meet the claim limitation of "an adjustable flexible belt," and how broadly will the court construe this common term in light of the patent's specification?
- A key question for damages will be one of intent: will the evidence of pre-suit notice letters sent by Plaintiff, and Defendants' alleged failure to respond, be sufficient to support a finding of willful infringement?