DCT
1:24-cv-00191
Erchonia Corp LLC v. Ohana Medspas LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Erchonia Corporation LLC (Texas)
- Defendant: Ohana MedSpas, LLC (Hawaii)
- Plaintiff’s Counsel: McCorriston Miller Mukai MacKinnon LLP
- Case Identification: 1:24-cv-00191, D. Haw., 04/26/2024
- Venue Allegations: Venue is alleged to be proper in the District of Hawaii because the Defendant resides in the district, has its principal place of business there, and has allegedly committed acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s use and importation of its "Green Lipo Laser" system, used for non-invasive fat loss, infringes patents related to methods for laser body slimming and the apparatus for a scanning laser treatment device.
- Technical Context: The lawsuit concerns the field of low-level laser therapy (LLLT), a non-invasive technology used in aesthetic medicine for applications such as body contouring and fat reduction.
- Key Procedural History: The complaint alleges that prior to the infringing conduct, Defendant’s principal engaged in a "months-long conversation" with Plaintiff to potentially acquire one of Plaintiff’s patented laser systems, during which Plaintiff provided "detailed information about Erchonia's patented products and processes." This alleged pre-suit knowledge forms the basis of the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-02 | ’067 Patent Priority Date |
| 2004-02-06 | ’650 Patent Priority Date |
| 2011-05-24 | ’067 Patent Issued |
| 2015-10-06 | ’650 Patent Issued |
| 2023-03-01 | Alleged pre-suit knowledge discussions begin (approximate) |
| 2024-04-26 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,149,650 - “Non-Invasive Method for Slimming a Human Body Using Laser Energy of Wavelengths Shorter Than 632 nm,” issued October 6, 2015 (’650 Patent)
The Invention Explained
- Problem Addressed: The patent background describes the trauma, risks, and long recovery associated with surgical liposuction ('650 Patent, col. 1:45-53). It also notes that the low-level laser therapy (LLLT) industry previously believed that only red laser light (around 635 nm) could non-traumatically reduce fat, and that shorter wavelengths would fail to penetrate tissue sufficiently or would cause undesirable heating and damage ('650 Patent, col. 2:31-50).
- The Patented Solution: The invention is a method for non-invasively slimming a patient by applying laser energy of a wavelength shorter than 632 nm (e.g., green or violet light) externally to a targeted area. A key aspect is that the energy is applied at a dose rate that causes "no detectable temperature rise of the treated tissue," thereby avoiding the damage associated with ablative procedures while achieving a slimming effect. ('650 Patent, Abstract; col. 3:21-34).
- Technical Importance: The claimed method challenged the prevailing view in the field by proposing that shorter, higher-energy wavelengths could be used more effectively and efficiently than red light for non-traumatic body contouring ('650 Patent, col. 3:61-65).
Key Claims at a Glance
- The complaint asserts claims 1-3 (Compl. ¶21). Independent claim 1 is central.
- Claim 1 (Method) requires:
- Applying monochromatic laser energy having a wavelength shorter than 570 nm.
- Applying the energy externally to the patient at a targeted area.
- Applying the energy in a dose rate that causes no detectable temperature rise of the treated tissue.
- The complaint notes that dependent claims 2 and 3 specify monochromatic green light and a wavelength of 532 nm, respectively (Compl. ¶22).
U.S. Patent No. 7,947,067 - “Scanning Treatment Laser With Sweep Beam Spot and Universal Carriage,” issued May 24, 2011 (’067 Patent)
The Invention Explained
- Problem Addressed: The patent identifies a need for a way to apply LLLT to a large area of a patient's body without requiring significant manual effort from a therapist (which causes fatigue) or using complex and expensive devices with large arrays of laser diodes ('067 Patent, col. 2:21-40, col. 2:61-65).
- The Patented Solution: The invention is a scanning laser apparatus featuring a single laser source and a rotating scanning head. The head includes a "hollow spindle" for the laser beam to pass through and a "rotatable carriage" holding an optical element (e.g., a rod lens). This element shapes the beam into a line. As the carriage rotates 360 degrees, this line of light sweeps in a circle, creating the appearance of a large, continuous circular treatment area. ('067 Patent, Abstract; col. 4:5-20).
- Technical Importance: This design provides a mechanically simple and cost-effective solution for treating a large surface area, automating the process and reducing the need for multiple expensive laser sources ('067 Patent, col. 3:3-11).
Key Claims at a Glance
- The complaint asserts claim 1 (Compl. ¶34).
- Claim 1 (Apparatus) requires:
- At least one laser energy source.
- A scanning head comprising:
- a hollow spindle substantially coaxial with the laser beam;
- a refractive optical element to produce a linear first beam spot;
- a rotatable carriage housing the optical element, which when rotated creates an apparent solid circular second beam spot; and
- a means for continuously rotating the carriage through 360 degrees.
III. The Accused Instrumentality
Product Identification
Defendant’s "Green Lipo Laser" or "Maxlipo Master" system and the services using it (Compl. ¶17).
Functionality and Market Context
The accused instrumentality is a device used in non-invasive aesthetic treatments for fat loss and body sculpting (Compl. ¶17, images). The complaint alleges it is a "Chinese knockoff" of Plaintiff's own "Emerald laser" (Compl. ¶17). Promotional materials cited in the complaint state the device uses "532nm Green Light" and operates as a "totally non-invasive, hands-free treatment" with "No heating or freezing of the skin" (Compl. ¶24b, image; ¶24d, image). Additional materials show the device head performs a "360° Scanning" motion to cover a large treatment area (Compl. ¶13, image).
IV. Analysis of Infringement Allegations
’650 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of slimming a patient, the method comprising applying monochromatic laser energy having a wavelength shorter than 570 nm | Defendant offers a "non-invasive procedure to lose weight and reduce body fat" (Compl. ¶24a) using a "Maxlipo Master Laser" with "532nm Green Light," a wavelength shorter than 570 nm. A product image shows the green laser in use (Compl. ¶24b, image). | ¶24a, ¶24b | col. 3:61-65 |
| externally to the patient at a targeted area | An image in the complaint depicts the laser head positioned over a patient's abdomen to apply energy externally. (Compl. ¶24c, image). | ¶24c | col. 4:39-42 |
| in a dose rate that causes no detectable temperature rise of the treated tissue | Promotional material for the accused device states that the treatment involves "No heating or freezing of the skin." (Compl. ¶24d, image). | ¶24d | col. 8:5-7 |
’067 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A laser comprising: at least one laser energy source for generating a laser beam | The accused device is a laser system that generates laser beams, as depicted in a promotional image showing light emanating from the scanning head. (Compl. ¶37a, image). | ¶37a | col. 4:47-50 |
| a scanning head further comprising: i. a hollow spindle substantially coaxial with the laser beam and through which the laser beam is conveyed | The complaint alleges the device has a scanning head with this structure, or alternatively, a structure that performs substantially the same function in the same way, citing images of the device's head. (Compl. ¶37b). | ¶37b | col. 4:25-27 |
| ii. a refractive optical element through which the laser beam is conveyed to produce a linear first beam spot... | The complaint alleges the device uses an optical element to produce a linear beam spot, citing images of the laser head in operation. (Compl. ¶37c, ¶37d). | ¶37c, ¶37d | col. 4:5-8 |
| iii. a rotatable carriage housing the optical element and... which, when rotated, creates an apparent solid circular second beam spot... | The accused device is advertised as performing "360° Scanning" (Compl. ¶13, image) and is alleged to have a rotatable carriage that creates a circular beam spot when rotated (Compl. ¶37e, ¶37f). | ¶37e, ¶37f | col. 4:8-17 |
| iv. means for continuously rotating the carriage through 360 degrees. | The complaint alleges the device contains means to achieve this function, pointing to images showing the "360° Scanning" capability. (Compl. ¶37g). | ¶37g | col. 4:21-25 |
Identified Points of Contention
- Scope Questions: For the ’650 patent, a question is whether the accused product's use of both "635nm Red Light & 532nm Green Light" (Compl. ¶24b, image) meets the "monochromatic" limitation of Claim 1. For the ’067 patent, the complaint's alternative pleading under the doctrine of equivalents for the "hollow spindle" element (Compl. ¶37b.i) suggests a potential dispute over whether the accused device literally contains the claimed mechanical structure.
- Technical Questions: A key evidentiary question for the ’650 patent will be whether the accused service, in actual operation, causes "no detectable temperature rise," as Plaintiff's allegation relies on marketing materials (Compl. ¶24d, image). For the ’067 patent, the infringement analysis will depend on evidence of the accused device's internal mechanical structure and how it compares to the structure corresponding to the "means for continuously rotating" limitation described in the patent.
V. Key Claim Terms for Construction
Term 1 (’650 Patent): "no detectable temperature rise"
- Context and Importance: This negative limitation is central to distinguishing the invention from prior art ablative or damaging thermal treatments. The definition of "detectable" (by what means, and to what degree of precision) will be critical to the infringement analysis.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification contrasts the invention with procedures that "excessively heat the surrounding tissue" ('650 Patent, col. 2:8-9), which may support a construction meaning no macroscopically significant or tissue-damaging temperature increase.
- Evidence for a Narrower Interpretation: The plain language of the claim is absolute. A defendant may argue that any application of laser energy causes some temperature change at a molecular level, and therefore the term should be construed literally to mean zero change as measured by a sensitive instrument.
Term 2 (’067 Patent): "hollow spindle"
- Context and Importance: This term defines a key structural component of the scanning head. Practitioners may focus on this term because the complaint's decision to plead infringement of this element under the doctrine of equivalents in the alternative suggests it is a likely area of non-literal infringement dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the spindle's function as a conduit through which the laser beam passes to an optical element ('067 Patent, col. 4:25-27). This could support a construction covering any hollow, rotating axial structure that performs this guiding function.
- Evidence for a Narrower Interpretation: The patent's figures depict a distinct mechanical part labeled "spindle 20" (e.g., '067 Patent, FIG. 3). This could support a narrower construction limited to a device having that specific form, as opposed to a more integrated design where an aperture in a motor housing serves the same function.
VI. Other Allegations
Indirect Infringement
The complaint focuses on direct infringement by Defendant through its use and importation of the accused laser system (Compl. ¶21, ¶34). No specific allegations of induced or contributory infringement are made.
Willful Infringement
The complaint alleges willful infringement for both patents based on pre-suit knowledge. It specifically claims that Defendant's principal was given "detailed information about Erchonia's patented products and processes" during "months-long" commercial discussions before Defendant allegedly imported and began using a "Chinese knockoff" of Plaintiff's product (Compl. ¶16, ¶17, ¶28, ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of willful conduct: did the pre-suit communications alleged in the complaint provide Defendant with actual, pre-infringement knowledge of the patents-in-suit, and was its subsequent use of an alleged "knockoff" device so egregious as to warrant enhanced damages?
- A key evidentiary question will be one of operational fact: does the accused "Green Lipo Laser" system, when in use, actually perform the method of the ’650 patent by operating at a dose rate that causes "no detectable temperature rise" and by using "monochromatic" light, or is there a technical mismatch with the claim requirements?
- The dispute over the ’067 patent will likely focus on structural equivalence: does the internal mechanism of the accused scanner literally include a "hollow spindle," or will Plaintiff bear the higher burden of proving that the accused structure is equivalent under the function-way-result test, particularly for a claim element it has already flagged for alternative DOE analysis?