DCT
4:23-cv-02446
BTL Industries Inc v. Nu Visionz LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Nu Visionz LLC (California) and Courtney Webb
- Plaintiff’s Counsel: Payne & Fears LLP; Patterson Intellectual Property Law, P.C.
- Case Identification: 3:23-cv-02446, N.D. Cal., 05/19/2023
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant Nu Visionz has its principal place of business in the district, and Defendant Courtney Webb resides in and is the registered agent for Nu Visionz in the district.
- Core Dispute: Plaintiff alleges that Defendants’ aesthetic body-contouring services, which use non-authentic devices, infringe a patent related to methods of toning muscle using time-varying magnetic fields.
- Technical Context: The technology involves the use of high-intensity, focused electromagnetic energy to non-invasively induce muscle contractions for aesthetic body contouring and muscle strengthening.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent Defendants an initial notice letter regarding the infringing conduct on May 27, 2022, followed by at least six subsequent communications over the next year, which may be relevant to the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2019-11-19 | ’634 Patent Issue Date |
| 2022-05-27 | Alleged Infringing Activity Begins; Plaintiff Sends First Notice Letter |
| 2023-05-19 | 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
- Patent Identification: U.S. Patent No. 10,478,634, Aesthetic Method of Biological Structure Treatment by Magnetic Field, issued November 19, 2019. (Compl. ¶19).
The Invention Explained
- Problem Addressed: The patent’s background section notes that common non-invasive aesthetic treatments based on mechanical or electromagnetic waves carry risks such as overheating, thermal damage, and non-homogenous results, and are not able to provide an "enhanced visual appearance of a muscle" such as shaping or toning. (’634 Patent, col. 2:15-32). Existing magnetic methods are described as being limited in key parameters, which prevents satisfactory enhancement of visual appearance. (’634 Patent, col. 2:32-37).
- The Patented Solution: The invention proposes a method for aesthetic treatment using a time-varying magnetic field with a magnetic flux density sufficient to induce muscle contractions. (’634 Patent, col. 1:56-62). The method involves placing an applicator with a magnetic field generating coil onto a specific body region (e.g., abdomen, buttocks), securing it with a belt, and applying energy to generate a magnetic field within a specific range of "magnetic fluence" to cause muscle contraction. (’634 Patent, Claim 1).
- Technical Importance: This technology is presented as having created a new market for non-invasive aesthetic body contouring through high-intensity electromagnetic muscle stimulation. (Compl. ¶¶15, 17).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶28).
- The essential elements of Claim 1 are:
- A method for toning muscles using time-varying magnetic fields.
- Placing a first applicator with a magnetic field generating coil in contact with a 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, with a magnetic flux density sufficient to cause muscle contraction.
- The prayer for relief seeks a judgment that Defendants have infringed "one or more claims" of the patent. (Compl. p. 11, ¶A).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the accused instrumentalities as services using devices referred to as "EMS NEO," "EMS," or "EMSCULPT" (the "Accused Devices"). (Compl. ¶24). The complaint alleges these are not authentic BTL devices. (Compl. ¶26).
Functionality and Market Context
- The Accused Devices are alleged to "use time-varying magnetic fields that are applied to a patient's skin and held there using a flexible belt attached to an applicator that includes a magnetic field generating coil." (Compl. ¶26).
- The complaint alleges, on information and belief, that the magnetic field generating coil generates a time-varying magnetic field and applies a magnetic flux of 50 T cm² to 1,500 T cm² to cause muscle contraction. (Compl. ¶26). A social media image depicts an applicator being used on a patient’s abdomen to provide a treatment (Compl. ¶25, p. 7).
- Defendants are alleged to advertise these services on social media, using Plaintiff's "EMSCULPT" trademark to promote them. (Compl. ¶25).
IV. Analysis of Infringement Allegations
- '634 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| 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 | Defendants allegedly use an applicator with a magnetic field generating coil that is applied to a patient's skin on body regions including the abdomen. | ¶¶25-26 | col. 96:55-59 |
| 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 applicator is allegedly held to the patient using a flexible belt. | ¶26 | col. 96:60-63 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field | The magnetic field generating coil in the Accused Devices is alleged to generate a time-varying magnetic field. | ¶26 | col. 96:64-66 |
| 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 allegedly apply a magnetic flux within the specified range and cause muscle contraction. | ¶26 | col. 96:67-97:3 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint's infringement allegations regarding the technical operation of the Accused Devices are made "upon information and belief" (Compl. ¶26). A primary issue for discovery will be to obtain evidence confirming that the accused, non-authentic devices actually operate within the specific quantitative range of "magnetic fluence" recited in the claim.
- Scope Questions: The complaint alleges the device applies a "magnetic flux" within the claimed numerical range, while the patent claims a "magnetic fluence" within that range (Compl. ¶26; ’634 Patent, col. 96:67). While the patent provides a definition for "magnetic fluence," the potential for a distinction between these terms raises a question of whether the accused functionality, once discovered, will meet the specific limitation as construed by the court.
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
Context and Importance: This quantitative limitation ("50 T cm² to 1,500 T cm²") is a cornerstone of Claim 1. The outcome of the infringement analysis will depend heavily on whether the accused method is proven to operate within this specific range, making the term's construction critical.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides an explicit definition in Equation 4: "MF=BPP*AMFGD", 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. 14:3-7). A party arguing for a broad interpretation may contend that this definition should be applied directly, without limitations imported from preferred embodiments.
- Evidence for a Narrower Interpretation: A party seeking a narrower construction might argue that the calculation of the "area of the magnetic field generating device" ("AMFGD") should be limited by the specific circular and planar embodiments described in the specification, such as the one detailed in connection with Figure 6. (’634 Patent, col. 13:14-33).
The Term: "coupling... with an adjustable flexible belt"
Context and Importance: This term defines the physical relationship between the applicator and the means for securing it. Practitioners may focus on this term because the nature of the "coupling" could be a point of non-infringement if the accused method uses, for example, a separate, unattached strap rather than an integrated belt system.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff would likely argue for the term's plain and ordinary meaning, covering any flexible, adjustable strap that serves to hold the applicator in place. The specification refers to a "positioning member" which can be "an arm or an adjustable flexible belt," suggesting the term is used in its conventional sense. (’634 Patent, col. 10:56-57).
- Evidence for a Narrower Interpretation: A defendant might point to specific embodiments to argue for a more limited meaning. Figure 3b depicts a "concavity (50) of the applicator" that "may enable inserting a positioning member such as a length adjustable belt," which could suggest that "coupling" requires a specific physical integration between the applicator and the belt. (’634 Patent, col. 10:29-32, Fig. 3b).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct customers to use the Accused Devices in a manner that directly infringes the ’634 Patent. (Compl. ¶30).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. The allegations cite Defendants' awareness of BTL's products and patent markings, and more directly, a series of seven alleged notifications from BTL to Defendants regarding their infringing conduct, starting with a letter dated May 27, 2022. (Compl. ¶¶24, 31).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: as the infringement allegations are made "on information and belief," can the Plaintiff produce sufficient evidence during discovery to demonstrate that the unauthorized accused devices perform the patented method, particularly by generating a "magnetic fluence" that falls within the specific numerical range of Claim 1?
- A second key question will be one of enhanced damages: given the complaint’s detailed timeline of pre-suit notice letters sent to Defendants, if infringement is found, will the court determine that the Defendants' continued conduct constitutes willful infringement, justifying an award of treble damages?