DCT
1:24-cv-00865
BTL Industries Inc v. PBT Financial LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: PBT Financial LLC d/b/a Photo Biotech (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC; Patterson Intellectual Property Law, P.C.
- Case Identification: 1:24-cv-00865, D. Del., 07/24/2024
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware entity and the acts complained of allegedly occurred in the District.
- Core Dispute: Plaintiff alleges that Defendant’s non-invasive body contouring devices infringe a patent related to methods for toning muscles using time-varying magnetic fields.
- Technical Context: The technology at issue involves using high-intensity focused electromagnetic fields to induce supramaximal muscle contractions for aesthetic body shaping and muscle toning.
- Key Procedural History: Plaintiff alleges it sent Defendant three cease-and-desist letters regarding potential patent and trademark infringement between September 2023 and February 2024, to which Defendant allegedly did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2015-07-01 | ’634 Patent Priority Date |
| 2018-01-01 | Plaintiff BTL launches its EMSCULPT® device (approximate date) |
| 2019-11-19 | U.S. Patent No. 10,478,634 Issues |
| 2023-09-19 | Plaintiff sends first cease-and-desist letter to Defendant |
| 2024-01-30 | Plaintiff sends second cease-and-desist letter to Defendant |
| 2024-02-12 | Plaintiff sends third cease-and-desist letter to Defendant |
| 2024-07-24 | Complaint Filed |
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 (’634 Patent).
The Invention Explained
- Problem Addressed: The patent describes a need for new non-invasive aesthetic treatment methods that can provide satisfactory results with minimal risk, specifically noting that existing mechanical and thermal treatments are not able to provide an "enhanced visual appearance of a muscle, e.g. muscle shaping, toning and/or volumization" (’634 Patent, col. 2:26-29). Existing magnetic field devices were described as having low efficiency and engineering challenges related to energy waste and heat generation from eddy currents within the device itself (’634 Patent, col. 2:36-49).
- The Patented Solution: The invention proposes a method of using a time-varying magnetic field with a magnetic flux density sufficient to induce muscle contractions for aesthetic purposes (’634 Patent, Abstract). The method is intended to remodel biological structures, such as by reducing adipose tissue and enhancing the visual appearance of muscles, through targeted muscle contraction (’634 Patent, col. 3:49-64). The patent also describes technical improvements to the magnetic field generating device, such as using individually insulated wires of a small diameter to reduce self-heating and increase efficiency (’634 Patent, col. 7:1-11).
- Technical Importance: This technology provided a non-invasive method for directly targeting and stimulating muscle tissue for aesthetic improvement, a capability the patent asserts was lacking in prior art thermal and mechanical treatments (Compl. ¶14).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (’634 Patent, Compl. ¶36).
- Independent Claim 1 recites a method with the following essential elements:
- 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.
- Wherein the magnetic field has a magnetic flux density sufficient to cause a muscle contraction.
- The complaint reserves the right to assert infringement of other claims (’634 Patent, Compl. ¶31).
III. The Accused Instrumentality
Product Identification
- The "Freedom Body PFM machine (a/k/a Freedom Body RF Multi-Application)" and the "Freedom PFM PFD machine (a/k/a Freedom+)" (the "Accused Devices") (Compl. ¶23).
Functionality and Market Context
- The Accused Devices are alleged to be non-invasive body contouring devices that use electromagnetic waves to generate muscle contractions (Compl. ¶23).
- Defendant’s marketing materials state the devices "initiate deep powerful supra maximal contractions for muscle volume building" and are used for "passive fitness treatments" (Compl. ¶¶37, 42; p. 26). An image from Defendant's website shows a video still depicting an applicator held against an abdomen with an adjustable strap (Compl. p. 24). The devices are promoted with claims such as "Tone, sculpt and enhance with this ultimate muscle building" and that "supramaximal muscle contractions create an increased need for energy" (Compl. ¶¶37, 42).
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... | Defendant allegedly encourages and instructs customers to use the Accused Devices to tone and sculpt muscles using time-varying magnetic fields, as described in marketing materials promoting "ultimate muscle building for passive fitness treatments" and "Functional magnetic stimulation (FMS)." | ¶37 | 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 Devices allegedly include at least one applicator with a magnetic field generating coil. The complaint provides a screenshot from Defendant's website depicting the applicator emitting waves onto a patient's abdomen (Compl. p. 21). | ¶38 | col. 18:35-40 |
| ...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 Devices allegedly come with an adjustable flexible belt to fasten the applicator to the patient. The complaint provides a video screenshot from Defendant's website showing an applicator held onto a patient's abdomen with such a belt (Compl. p. 24). | ¶39 | col. 10:52-58 |
| ...providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and | On information and belief, the Accused Devices allegedly include power supplies that transmit energy to the applicators to generate time-varying magnetic fields. | ¶40 | col. 11:65-12:2 |
| ...applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, | On information and belief, the Accused Devices are alleged to generate and deliver magnetic fields that vary in area density depending on treatment parameters, and that discovery will show this fluence falls within the claimed range. | ¶41 | col. 14:13-15 |
| ...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. | Defendant's landing pages for the Accused Devices allegedly promote their ability to generate magnetic fields sufficient to cause muscle contractions, citing marketing claims of initiating "deep powerful supra maximal contractions for muscle volume building" and that "Functional magnetic stimulation (FMS) targets and restores weak muscles." | ¶42 | col. 18:10-14 |
- Identified Points of Contention:
- Scope Questions: The court may need to determine if the functions described in Defendant's marketing, such as "muscle volume building" and "body strengthening," fall within the scope of the claim's preamble phrase "toning muscles" (’634 Patent, col. 23:49).
- Technical Questions: A central evidentiary question will be whether the Accused Devices actually apply a "magnetic fluence of 50 T cm² to 1,500 T cm²" as required by the claim. The complaint alleges this on "information and belief" and acknowledges that discovery is needed, suggesting Plaintiff does not currently possess direct evidence of this technical parameter (Compl. ¶41).
V. Key Claim Terms for Construction
- The Term: "toning muscles"
- Context and Importance: This term, appearing in the preamble of the asserted independent claim, defines the overall purpose of the claimed method. Its construction is important because it sets the scope of the invention. Defendant may argue for a narrow definition to contend its products, which are marketed for "muscle volume building" and "strengthening," perform a different, non-infringing function (Compl. ¶42; p. 26).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification repeatedly frames the invention in broad aesthetic terms, such as "enhancing a visual appearance," "muscle shaping," "body contouring," "buttock lifting," and "muscle strengthening" (’634 Patent, col. 19:59-64; col. 20:5-6). This language may support a construction where "toning" encompasses a wide range of aesthetic muscle treatments.
- Evidence for a Narrower Interpretation: The patent also uses more specific language, contrasting "muscle volumization, toning, strengthening and/or remodeling" as distinct effects that may be caused by the treatment (’634 Patent, col. 20:36-39). A defendant could argue this suggests "toning" is a specific outcome, distinct from "strengthening" or "volumization," potentially supporting a narrower construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant encourages and instructs its customers to use the Accused Devices in an infringing manner through its marketing materials, website, and product instructions (Compl. ¶¶32, 36-42).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge of the ’634 Patent. It cites three cease-and-desist letters sent to Defendant on September 19, 2023, January 30, 2024, and February 12, 2024, which allegedly identified the patent-in-suit (Compl. ¶¶25, 44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: can Plaintiff, through discovery, demonstrate that the Accused Devices operate within the specific quantitative limitation of "applying a magnetic fluence of 50 T cm² to 1,500 T cm²," an allegation currently based on "information and belief"?
- A secondary legal question will be one of definitional scope: will the claim term "toning muscles" be construed broadly to encompass the "muscle volume building" and "strengthening" functions advertised for the accused products, or can Defendant successfully argue these functionalities fall outside the patented method?
- A key question for damages will be one of intent: does the evidence of three unanswered pre-suit notice letters support a finding of willful infringement, potentially leading to enhanced damages?