DCT

1:22-cv-02216

BTL Industries Inc v. JV Medical Supplies Inc

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-02216, S.D. Ind., 11/16/2022
  • Venue Allegations: Venue is alleged to be proper because the Defendant, an Indiana corporation, maintains a regular and established place of business in the district and has committed the alleged acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s sale of counterfeit aesthetic body-contouring devices infringes five patents related to methods and devices for muscle treatment using magnetic fields, in addition to constituting trademark infringement.
  • Technical Context: The technology involves the use of high-intensity, time-varying magnetic fields to induce supramaximal muscle contractions for non-invasive aesthetic purposes like muscle toning and body shaping.
  • Key Procedural History: The complaint does not mention any prior litigation between the parties, Inter Partes Review proceedings concerning the patents-in-suit, or any relevant licensing history.

Case Timeline

Date Event
2016-07-01 Earliest Priority Date for ’576, ’575, ’852, ’634 Patents
2018-04-10 Priority Date for ’009 Patent
2018-06-01 BTL launches EMSCULPT device in the U.S.
2019-11-19 U.S. Patent No. 10,478,634 Issued
2020-01-28 U.S. Patent No. D874,009 Issued
2020-06-30 U.S. Patent No. 10,695,576 Issued
2020-06-30 U.S. Patent No. 10,695,575 Issued
2022-03-08 U.S. Patent No. 11,266,852 Issued
2022-11-16 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,695,576 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 10,695,576, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued on June 30, 2020 (the "’576 Patent").

The Invention Explained

  • Problem Addressed: The patent’s background section describes existing non-invasive aesthetic methods as having significant drawbacks, such as the risk of panniculitis (inflammation of subcutaneous fat), non-homogenous results, and an inability to enhance muscle appearance. It further notes that existing magnetic therapy devices suffer from low efficiency and waste energy, creating engineering challenges due to heat generated by eddy currents. (’576 Patent, col. 2:15-46).
  • The Patented Solution: The invention proposes methods and devices that use a time-varying magnetic field with high flux density to induce strong muscle contractions for aesthetic treatment. This approach aims to provide focused remodeling of a patient's body by simultaneously affecting muscle and adipose tissue. The patent also details an improved construction for the magnetic field generating device, using individually insulated wires to reduce self-heating and increase efficiency. (’576 Patent, Abstract; col. 3:11-30).
  • Technical Importance: The technology purports to offer a more effective and efficient non-invasive method for body contouring by directly targeting muscle structures, an effect not achievable with prior thermal or mechanical treatments. (Compl. ¶24-25).

Key Claims at a Glance

  • The complaint alleges infringement of the ’576 Patent generally without identifying specific claims. Independent claim 1 is representative of the patent's methodical claims.
  • The essential elements of independent claim 1 include:
    • A method for toning muscles in a patient using time-varying magnetic fields.
    • Positioning a first applicator comprising a first magnetic field generating coil on a portion of a body region of the patient.
    • Independently positioning a second applicator with a second magnetic field generating coil on a different portion of the body region.
    • Generating a first time-varying magnetic field with the first coil and a second time-varying magnetic field with the second coil, each having specific impulse duration and magnetic flux density characteristics.
    • Applying the magnetic fields to cause muscle contractions.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,695,575 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 10,695,575, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued on June 30, 2020 (the "’575 Patent").

The Invention Explained

  • Problem Addressed: Similar to the ’576 Patent, the background describes the limitations of prior non-invasive aesthetic treatments, which often produce unsatisfactory results, carry risks of side effects, and are inefficient. (’575 Patent, col. 2:1-37).
  • The Patented Solution: The invention is a device for toning muscle that includes at least two applicators, each with a magnetic field generating coil. The device is configured to generate time-varying magnetic fields with specific parameters (e.g., flux density, impulse duration) to induce muscle contractions in a targeted body region, such as the abdomen or buttocks. The patent discloses specific treatment protocols involving sequences of magnetic pulses to achieve the desired aesthetic effect. (’575 Patent, Abstract; col. 3:8-24).
  • Technical Importance: The claimed device provides a system-level solution for implementing the patented muscle toning method, offering specific hardware configurations for delivering targeted aesthetic treatments. (Compl. ¶29-30).

Key Claims at a Glance

  • The complaint alleges infringement of the ’575 Patent generally without identifying specific claims. Independent claim 1 is representative of the patent's device claims.
  • The essential elements of independent claim 1 include:
    • A device for toning muscles of a patient.
    • A first applicator comprising a first magnetic field generating coil.
    • A second applicator comprising a second magnetic field generating coil with the same inductance as the first.
    • Circuitry for discharging energy storage devices to the coils to generate time-varying magnetic fields with specific parameters.
    • A configuration to apply the magnetic fields to cause muscle contraction.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,266,852 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 11,266,852, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued on March 8, 2022 (the "’852 Patent"). (Compl. ¶32).
  • Technology Synopsis: The patent relates to a device for aesthetic muscle toning that uses magnetic and induced electric fields. It describes a "unique hardware components topology" intended to provide more effective treatment protocols than prior art devices. (Compl. ¶34).
  • Asserted Claims: The complaint does not specify which claims of the ’852 Patent are asserted but generally alleges direct and indirect infringement. (Compl. ¶88-89). Claim 1 is a representative independent claim.
  • Accused Features: The "Counterfeit Devices" sold by Defendant are accused of embodying the claimed invention. (Compl. ¶88).

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 on November 19, 2019 (the "’634 Patent"). (Compl. ¶37).
  • Technology Synopsis: This patent discloses methods for toning muscles by applying a time-varying magnetic field with sufficient magnetic flux density to induce muscle contraction, thereby enhancing the visual appearance of a body region. (’634 Patent, Abstract; col. 17:36-50).
  • Asserted Claims: The complaint alleges infringement of at least claim 1. (Compl. ¶39).
  • Accused Features: Defendant is accused of inducing its customers to use the "Counterfeit Devices" to perform the patented methods of muscle toning. (Compl. ¶93).

U.S. Patent No. D874,009 - "Medical Device"

  • Patent Identification: U.S. Patent No. D874,009, "Medical Device," issued on January 28, 2020 (the "’009 Patent"). (Compl. ¶42).
  • Technology Synopsis: The patent claims the ornamental design for a medical device, which consists of the visual, non-functional aspects of the device's shape and configuration. (’009 Patent, Claim).
  • Asserted Claims: The complaint asserts infringement of the single claim of the design patent. (Compl. ¶44).
  • Accused Features: The overall ornamental appearance of the "Counterfeit Devices" is accused of infringing the patented design. A side-by-side visual comparison in the complaint shows the accused device next to an authentic device embodying the design. (Compl. p. 14).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are "Counterfeit Devices" advertised and sold by Defendant JV Medical which purport to be authentic BTL EMSCULPT devices. (Compl. ¶4, ¶52).
  • Functionality and Market Context: The complaint alleges these devices are sold to customers for the purpose of treating patients using BTL's patented technology for non-invasive muscle toning. (Compl. ¶62). The devices are alleged to be non-authentic and differ from genuine BTL products by having "missing or different components," "different user interfaces," and "missing serial numbers." (Compl. ¶57). The complaint includes a photograph of a representative counterfeit device, which bears the "EMSCULPT" trademark. (Compl. p. 13). A second photograph presents a side-by-side comparison of an accused counterfeit device and an authentic BTL device, which is intended to illustrate the similarity in ornamental design. (Compl. p. 14).

IV. Analysis of Infringement Allegations

The complaint does not provide detailed infringement allegations or claim charts mapping specific features of the Accused Instrumentality to the elements of the asserted claims. The infringement theory is presented in broad, narrative terms. Plaintiff alleges on "information and belief" that the "Counterfeit Devices" made, used, sold, or imported by Defendant practice the methods and embody the systems claimed in the patents-in-suit (Compl. ¶79, ¶88, ¶97). For the method claims, Defendant is accused of inducing infringement by encouraging its customers and end-users to use the devices in a manner that infringes. (Compl. ¶80, ¶93).

  • Identified Points of Contention:
    • Factual Questions: A primary point of contention will be factual proof. The complaint alleges that the accused devices are "counterfeit" and have "missing or different components" (Compl. ¶57), which raises the question of whether these devices, upon technical inspection, actually meet every limitation of the asserted claims. Discovery will be required to determine the precise operating parameters and hardware configuration of the accused devices.
    • Design Patent Infringement: For the ’009 Patent, the central question will be whether an ordinary observer, giving such attention as a purchaser usually gives, would find the overall ornamental appearance of the accused device to be substantially the same as the design claimed in the patent. The side-by-side photographic evidence provided in the complaint will be a key piece of evidence in this analysis. (Compl. p. 14).

V. Key Claim Terms for Construction

  • The Term: "applying a time-varying magnetic field" (from Claim 1 of the ’634 Patent)

  • Context and Importance: The definition of this term is central, as it defines the core infringing act for the method patents. Practitioners may focus on this term because the patents' specifications describe highly specific protocols for application (e.g., using particular sequences of pulses, trains, and bursts with defined repetition rates). The central question is whether the term "applying" should be construed to include these specific protocols, or if it simply means generating any infringing magnetic field.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain language of the claim does not recite specific protocols, suggesting any application of a magnetic field with the claimed flux density would infringe.
    • Evidence for a Narrower Interpretation: The specification extensively details specific treatment protocols, describing them as providing a "new treatment." (’576 Patent, col. 3:14-17). A defendant could argue that these detailed descriptions limit the scope of "applying" to these specific, disclosed methods.

  • The Term: "magnetic field generating device" (from Claim 1 of the ’575 Patent)

  • Context and Importance: The construction of this term will determine the scope of the device claims. The dispute may center on whether the term is limited to the specific coil constructions detailed in the specification.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term itself is general and could be argued to cover any device that generates a magnetic field for the intended purpose.
    • Evidence for a Narrower Interpretation: The specification describes the device's construction using "individually insulated wires" as a "substantial improvement" that "increases efficiency" by reducing eddy currents. (’576 Patent, col. 7:47-56). A defendant may argue that this description limits the claim term to devices with this specific wire configuration.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for the method patents, stating that JV Medical intentionally encourages its customers and end-users to use the counterfeit devices to treat patients in a manner that infringes. (Compl. ¶80, ¶84, ¶93). The complaint alleges specific intent based on JV Medical’s alleged knowledge that the devices would be used for their intended infringing purpose. (Compl. ¶62, ¶80).
  • Willful Infringement: The complaint alleges that JV Medical was aware that the devices were counterfeit, misrepresented them as authentic, and supplied fraudulent serial numbers. (Compl. ¶56-59). The prayer for relief seeks enhanced damages on the basis that the infringement was willful. (Compl., Prayer for Relief ¶P).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of evidentiary proof: What technical evidence will discovery produce to demonstrate that the accused "Counterfeit Devices," which are alleged to have different components from authentic products, actually operate in a manner that meets the specific technical limitations (e.g., magnetic flux density, impulse duration, hardware configuration) of the asserted utility patent claims?
  • A key question for the design patent will be one of visual identity: Based on the side-by-side comparison provided in the complaint, is the overall ornamental appearance of the accused device substantially the same as the design claimed in the ’009 Patent from the perspective of an ordinary observer?
  • A dispositive question for willfulness and indirect infringement will be the defendant's state of mind: Beyond the allegations of counterfeiting, what evidence will demonstrate that JV Medical had knowledge of the specific patents-in-suit and acted with the specific intent required to induce its customers to infringe?