DCT
1:24-cv-00560
BTL Industries Inc v. Be Minked Beauty & Co LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Be Minked Beauty & Company LLC and Britney Humphrey (Indiana)
- Plaintiff’s Counsel: Barnes & Thornburg LLP
- Case Identification: 1:24-cv-00560, N.D. Ind., 12/20/2024
- Venue Allegations: Venue is alleged to be proper in the Northern District of Indiana because Defendants have their principal place of business and are domiciled in the District, and the acts of infringement allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s "Emsculpt RF Machine" infringes a patent related to methods for aesthetic muscle toning using time-varying magnetic fields.
- Technical Context: The technology at issue involves non-invasive aesthetic devices that use high-intensity electromagnetic fields to induce muscle contractions for body contouring and toning.
- Key Procedural History: The complaint alleges that Plaintiff sent a demand letter to Defendants on May 30, 2024, informing them of the alleged infringement and their intellectual property rights. This event is cited as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2018-01-01 | Plaintiff's EMSCULPT® device launched (approximate year) |
| 2019-11-19 | U.S. Patent No. 10,478,634 Issued |
| 2024-05-30 | Plaintiff sent demand letter to Defendants |
| 2024-10-04 | Date Plaintiff accessed Defendant's website for evidence |
| 2024-12-20 | 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’s background section states that common non-invasive aesthetic methods, such as those using mechanical or electromagnetic waves, have drawbacks including the risk of overheating, non-homogenous results, and an inability to enhance the visual appearance of muscle (e.g., shaping, toning) (’634 Patent, col. 2:4-36). Existing magnetic methods are described as being limited in key parameters, preventing satisfactory results (’634 Patent, col. 2:32-36).
- The Patented Solution: The invention is a method for aesthetic treatment that uses a time-varying magnetic field with a magnetic flux density sufficient to induce muscle contractions (’634 Patent, col. 2:56-61). The patent describes an improved magnetic field generating device constructed from individually insulated wires, which reduces self-heating and allows for stronger muscle contractions at higher repetition rates, thereby making the treatment more efficient for reducing adipocytes and enhancing the appearance of the treated body region (’634 Patent, col. 3:11-24, 3:55-64).
- Technical Importance: This approach claims to provide a more effective, non-invasive method for muscle toning and body contouring compared to prior thermal or mechanical treatments, which were not designed for muscle shaping (’634 Patent, col. 2:26-31).
- Key Claims at a Glance:
- The complaint asserts independent Claim 1 (Compl. ¶34).
- The essential elements of Claim 1 are:
- A method for toning muscles in a patient using time-varying magnetic fields, the method comprising:
- 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;
- coupling the first applicator to the patient with an adjustable flexible belt so that the belt holds the applicator to the patient's skin or clothing;
- providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and
- 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 complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: The “Emsculpt RF Machine” (also referred to as the “Accused Device”), sold on Defendant's website (Compl. ¶27).
- Functionality and Market Context:
- The complaint alleges the Accused Device is a body-contouring machine that uses “Non Invasive HIFEM (High-Intensity Focused Electromagnetic)” technology to induce “short bursts of powerful muscle contractions” (Compl. ¶30, p. 8). A screenshot from Defendant's website, showing the device's product description, is provided as evidence for this functionality (Compl. ¶30, p. 8).
- The complaint alleges the device is used to perform aesthetic treatments on patients by placing applicators on a target body area, such as the abdomen, and securing them with a belt (Compl. ¶¶ 43, 47). A photograph from the website shows an applicator held by a belt against a person's abdomen (Compl. ¶47, p. 11).
- The complaint alleges the Accused Device is marketed and sold using Plaintiff’s own trademarks, EMSCULPT and HIFEM, suggesting it is positioned to compete directly with Plaintiff’s products (Compl. ¶¶ 28, 32).
IV. Analysis of Infringement Allegations
- 10,478,634 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 | The Accused Device includes at least one applicator with a magnetic field generating coil, which is placed on a patient's abdomen or buttock for treatment. | ¶40-43 | col. 18:35-42 |
| coupling the first applicator to the patient with an adjustable flexible belt so that the belt holds the applicator to the patient's skin or clothing | The Accused Device is allegedly used with an adjustable flexible belt that holds the applicator to the patient's body. The complaint includes a visual depicting this alleged use. | ¶45-47 | col. 10:51-54 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field | The Accused Device allegedly uses "High-Intensity Focused Electromagnetic [energy]" and requires electricity, which is provided to the applicator coil to generate the magnetic fields. | ¶48-52 | col. 12:5-9 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region | The Accused Device allegedly generates and delivers magnetic fields with a magnetic fluence within the claimed range, based on its ability to operate in different modes with varying parameters. | ¶54-56 | 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 Accused Device is advertised as causing "powerful muscle contractions" equivalent to thousands of sit-ups, which allegedly meets this limitation. | ¶57-59 | col. 18:59-62 |
- Identified Points of Contention:
- Technical Question: The complaint alleges on "information and belief" that the Accused Device applies a "magnetic fluence of 50 T cm² to 1,500 T cm²" (Compl. ¶55). A screenshot of the device's user interface is offered as evidence that it can operate in "multiple different modes and parameters" (Compl. ¶56, p. 14). However, the complaint does not provide direct evidence that these operational parameters result in a magnetic fluence within the specific numerical range required by the claim. This raises the evidentiary question of whether discovery will substantiate this technical allegation.
- Scope Question: A potential point of contention may arise from the defendant's use of "RF" (radio frequency) in its product name ("Emsculpt RF Machine"). The ’634 patent is directed to treatment by magnetic field and distinguishes itself from prior art radiofrequency treatments (’634 patent, col. 2:6-8). The complaint does not address the "RF" functionality. This raises the question of whether the accused product's primary operating principle matches that of the patented method, or if its functionality is based on a different technology that may fall outside the claim scope.
V. Key Claim Terms for Construction
- The Term: "magnetic fluence"
- Context and Importance: This term is central to the dispute as it is defined by a specific numerical range (50-1,500 T cm²). Proving that the Accused Device meets this quantitative limitation is essential for Plaintiff's infringement case. Practitioners may focus on this term because infringement will likely depend on expert testimony and technical measurements of the Accused Device's output.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a clear formula for calculating "magnetic fluence" as the product of the maximal peak-to-peak magnetic flux density (Bpp) and the area of the magnetic field generating device (AMFGD) (’634 Patent, col. 14:1-4). A party could argue this straightforward definition should be applied without further limitation.
- Evidence for a Narrower Interpretation: The specification provides several exemplary ranges for magnetic fluence, such as "preferably in the range of 70 to 20000 T-cm²" (’634 Patent, col. 14:11-12). A party might argue that the context provided by these preferred embodiments should inform the construction of the term, potentially narrowing its scope in practice, although the claim language itself provides the definitive bounds.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct customers to use the Accused Device in a manner that directly infringes Claim 1 (Compl. ¶35). The allegations cite the product's landing page as instructing users on the claimed method steps (Compl. ¶¶ 37, 40, 45).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and constructive knowledge. It asserts Defendants had pre-suit knowledge via a demand letter sent on May 30, 2024 (Compl. ¶61). It also alleges constructive knowledge based on Plaintiff’s marking of its own products with a reference to an online patent listing (Compl. ¶61).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the Plaintiff, through discovery and expert analysis, produce technical evidence demonstrating that the Defendant's "Emsculpt RF Machine" actually operates within the specific numerical range of "magnetic fluence of 50 T cm² to 1,500 T cm²" as required by Claim 1?
- A key legal question will be one of induced infringement: Does the evidence from Defendant's website, user manuals, or other instructional materials show an affirmative intent to encourage customers to perform each and every step of the claimed method, thereby establishing the specific intent required for inducement?
- A final question will be one of technical operation: Does the "RF" functionality suggested by the Accused Device's name represent a different mode of operation from the purely magnetic field-based method claimed in the ’634 patent, and if so, does this create a fundamental mismatch that could support a non-infringement argument?