DCT
1:22-cv-01762
BTL Industries v. Tekyard LLC also Known As Tekyard LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Tekyard LLC (Minnesota)
- Plaintiff’s Counsel: The Law Office of Rami Bardenstein, LLC
- Case Identification: 1:22-cv-01762, D. Md., 07/19/2022
- Venue Allegations: Plaintiff alleges venue is proper in the District of Maryland because Defendant maintains at least two offices and a warehouse, constituting 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 devices infringes two utility patents and one design patent related to Plaintiff's EMSCULPT muscle toning system.
- Technical Context: The technology involves the use of high-intensity, time-varying magnetic fields to induce supramaximal muscle contractions for non-invasive aesthetic body contouring and muscle toning.
- Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history concerning the patents-in-suit. Plaintiff’s authentic EMSCULPT device was launched in the United States in June 2018.
Case Timeline
| Date | Event |
|---|---|
| 2016-12-30 | '576 and '634 Patents - Earliest Priority Date |
| 2018-04-10 | '009 Patent - Priority Date |
| 2018-06-01 | Plaintiff's EMSCULPT Device Launch Date |
| 2019-11-19 | U.S. Patent No. 10,478,634 Issued |
| 2020-01-28 | U.S. Design Patent No. D874,009 Issued |
| 2020-06-30 | U.S. Patent No. 10,695,576 Issued |
| 2022-07-19 | 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, entitled "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued on June 30, 2020 (’576 Patent, cover; Compl. ¶24).
The Invention Explained
- Problem Addressed: The patent describes existing non-invasive aesthetic methods, such as those using mechanical or electromagnetic waves, as having drawbacks including risks of non-homogenous results, thermal damage, and inefficiency ('576 Patent, col. 2:5-36). Existing magnetic field devices are noted for low efficiency, energy waste, and engineering challenges caused by induced eddy currents that generate unwanted heat ('576 Patent, col. 2:37-46).
- The Patented Solution: The invention proposes a device and method for aesthetic treatment using a time-varying magnetic field sufficient to induce muscle contraction ('576 Patent, col. 1:53-60). The solution emphasizes an improved hardware topology, including the use of individually insulated wires with small diameters, to reduce self-heating and significantly increase the efficiency of the magnetic treatment device, thereby enabling more effective treatment protocols (’576 Patent, col. 3:11-29).
- Technical Importance: The technology aims to provide a new category of aesthetic treatment focused on improving muscle appearance and remodeling adipose tissue through induced contractions, representing an advancement over prior methods that primarily targeted skin or fat cells directly ('576 Patent, col. 4:49-54).
Key Claims at a Glance
- The complaint does not identify specific claims but makes a general allegation of infringement against the entire patent (Compl. ¶85). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A method for toning muscles in a patient.
- Placing a first applicator with a magnetic field generating coil in contact with skin or clothing at an abdomen or a buttock.
- Coupling the applicator to the patient with an adjustable flexible belt.
- 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 to cause a muscle contraction.
- The complaint does not explicitly reserve the right to assert dependent claims.
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, entitled "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued on November 19, 2019 (’634 Patent, cover; Compl. ¶29).
The Invention Explained
- Problem Addressed: The patent addresses the inability of conventional aesthetic treatments to enhance the visual appearance of muscle through effects like shaping, toning, or volumization ('634 Patent, col. 2:28-32). It notes that current magnetic methods are limited in key parameters, preventing a satisfactory enhancement of visual appearance ('634 Patent, col. 2:32-36).
- The Patented Solution: The invention describes methods for treating a patient by applying a time-varying magnetic field that induces "supramaximal muscle contractions" which are not achievable voluntarily ('634 Patent, Abstract; col. 19:20-22). These intense contractions are alleged to trigger changes in muscle structure (hypertrophy and/or hyperplasia) and promote metabolic changes in adjacent fat cells, leading to apoptosis (’634 Patent, col. 25:22-30; col. 26:27-31). The patent details specific treatment protocols using bursts of magnetic pulses at varying repetition rates to achieve targeted effects like muscle strengthening or relaxation ('634 Patent, Fig. 14; col. 29:26-41).
- Technical Importance: The technology established a method for non-surgical body sculpting by directly targeting muscle tissue to a degree not possible with conventional exercise, thereby creating a new approach to aesthetic body contouring ('634 Patent, col. 19:20-24).
Key Claims at a Glance
- The complaint does not identify specific claims but alleges induced infringement of the patent generally (Compl. ¶90). Independent claim 1 is representative.
- Essential elements of independent claim 1 include:
- A method for toning muscles in a patient.
- Placing a first applicator with a magnetic field generating coil in contact with the patient's skin or clothing.
- Applying a time-varying magnetic field to muscle fibers, neuromuscular plates, or nerves.
- The application occurs in "bursts," where each burst comprises a "first time period" with a plurality of magnetic pulses causing contraction and a "second time period" where no magnetic field is generated.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Design Patent No. D874,009 - "Medical Device"
- Multi-Patent Capsule:
- Patent Identification: U.S. Design Patent No. D874,009, entitled "Medical Device," issued on January 28, 2020 (’009 Patent, cover; Compl. ¶34).
- Technology Synopsis: The '009 Patent claims the ornamental design for a medical device (Compl. ¶36). The design consists of a wheeled vertical console with an angled top portion housing a user interface screen and an arm-like feature for holding an applicator (’009 Patent, Figs. 1-8).
- Asserted Claims: The single claim is for "The ornamental design for a medical device, as shown and described" (’009 Patent).
- Accused Features: The complaint alleges that the Accused Devices incorporate the ornamental design claimed in the ’009 Patent (Compl. ¶94). A side-by-side photograph in the complaint juxtaposes an Accused Device with an image of an authentic EMSCULPT device, which embodies the patented design (Compl. ¶46).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Devices" as specific items (282968, 282969, 286152, and 286153) that are alleged to be counterfeit BTL EMSCULPT devices (Compl. ¶43).
Functionality and Market Context
- The Accused Devices are promoted and sold as "BTL EMSCULPT System" devices for non-invasive aesthetic muscle toning (Compl. ¶43). The complaint alleges these devices are counterfeits that purport to be authentic BTL devices but have "missing or different components," missing serial numbers, and different user interfaces (Compl. ¶4, 48). Defendant allegedly markets and sells this equipment to "unsuspecting customers," with one customer reportedly spending upwards of $40,000 for a device (Compl. ¶3, 47, 54). The complaint provides a photograph showing one of the Accused Devices, which visually resembles the authentic EMSCULPT product (Compl. ¶45).
IV. Analysis of Infringement Allegations
The complaint alleges infringement on information and belief and does not provide a claim chart or specific technical details mapping claim elements to the Accused Devices' functionality. The infringement theory appears to be grounded in the allegation that the Accused Devices are "counterfeit" and therefore intended to practice the patented methods and embody the patented design.
’576 Patent Infringement Allegations
The complaint does not provide sufficient detail for analysis of most claim elements.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for toning muscles in a patient... 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 | The Accused Devices are sold for non-invasive aesthetic body contouring and muscle toning, and Plaintiff alleges Defendant induces customers to use them to treat patients. | ¶16, ¶55 | col. 17:50-59 |
| 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 complaint does not provide sufficient detail for analysis of this element. | N/A | col. 17:59-62 |
| applying a magnetic fluence of 50 T·cm² to 1,500 T·cm² to the body region | The complaint does not provide technical specifications for the magnetic fluence generated by the Accused Devices. | N/A | col. 17:65-67 |
’634 Patent Infringement Allegations
The complaint does not provide sufficient detail for analysis of most claim elements.
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for toning muscles... comprising: placing a first applicator... in contact with a patient's skin or clothing at a body region of the patient | The Accused Devices are sold for aesthetic body contouring, and the complaint alleges inducement of customers to use them to treat patients. | ¶16, ¶55 | col. 20:10-14 |
| applying a time-varying magnetic field... in bursts, wherein each burst comprises first and second time periods; wherein the first time period consists of a plurality of magnetic pulses... and wherein no time-varying magnetic field is generated during the second time period | The complaint alleges the Accused Devices use Plaintiff's "patented technology" and "muscle toning protocols," which may suggest the use of the claimed burst methodology, but provides no specific operational data. | ¶20, ¶47 | col. 20:15-21 |
- Identified Points of Contention:
- Technical Questions: A primary question for the utility patents will be evidentiary: what are the actual operating parameters (e.g., magnetic fluence, repetition rates, pulse sequences) of the Accused Devices? The complaint does not provide this technical data, making infringement contingent on facts to be developed during discovery. The allegation of "different user interfaces" raises the question of whether the devices actually implement the claimed treatment protocols (Compl. ¶48).
- Scope Questions: For the ’009 design patent, the infringement analysis will turn on a question of visual scope. A key issue will be whether an ordinary observer, giving such attention as a purchaser usually gives, would find the overall ornamental appearance of the Accused Devices to be substantially the same as the design claimed in the patent. The side-by-side photographic comparison provided in the complaint directly frames this as a central point of contention (Compl. ¶46).
V. Key Claim Terms for Construction
The Term: "magnetic fluence" (’576 Patent, Claim 1)
Context and Importance: This term recites a specific, quantitative range required for infringement (50 to 1,500 T·cm²). The determination of whether the Accused Devices infringe will depend on how this value is measured and calculated. Practitioners may focus on this term because infringement hinges on a precise technical measurement that is not alleged with specificity in the complaint.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide evidence for interpretation.
- Evidence for a Narrower Interpretation: The ’634 Patent, which shares a similar specification, explicitly defines "magnetic fluence" in Equation 4 as the product of the "maximal peak to peak magnetic flux density generated by the magnetic field generating device" and the "area of the magnetic field generating device" (’634 Patent, col. 14:1-5). This provides a specific formula that could support a narrow and precise construction.
The Term: "burst" (’634 Patent, Claim 1)
Context and Importance: The claim requires the application of magnetic pulses in "bursts" that are structurally defined as having two distinct time periods: one with pulses and one without. This structural limitation is central to the claimed method. A dispute may arise over whether the signal generated by the Accused Devices meets this two-part definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide evidence for interpretation.
- Evidence for a Narrower Interpretation: The specification explicitly defines a burst with reference to Figure 8, stating, "Active treatment followed by passive treatment may be called a burst, i.e. the burst includes a train and a period of no magnetic field applied to the patient" (’634 Patent, col. 16:45-48). This language suggests a specific, required sequence of an active phase followed by an inactive phase, which could support a narrow construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Tekyard induced infringement by its customers and end-users by encouraging them to use the Accused Devices in a manner that infringes the patents-in-suit (Compl. ¶86, 91, 95). It also alleges inducement of Tekyard's supplier to import the devices into the United States (Compl. ¶87, 96). Knowledge and specific intent are alleged "on information and belief."
- Willful Infringement: While not explicitly pled in the patent counts, the complaint alleges that Defendant's conduct was willful in the trademark counts (Compl. ¶60) and seeks enhanced damages for willful patent infringement in the prayer for relief (Compl. p. 24, ¶N). The factual basis appears to stem from the overarching allegation that Defendant knowingly sold counterfeit devices (Compl. ¶47-49).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: does the operational functionality of the Accused Devices meet the specific technical limitations of the utility patent claims, such as the "magnetic fluence" range in the ’576 Patent and the "burst" structure in the ’634 Patent? The complaint's reliance on "information and belief" for its infringement allegations elevates the importance of technical evidence that will emerge during discovery.
- A second central issue will be one of visual identity: is the overall ornamental design of the Accused Devices substantially the same as the design claimed in the ’009 Patent from the perspective of an ordinary observer? The side-by-side photograph presented in the complaint suggests this will be a visually driven and highly contested aspect of the litigation (Compl. ¶46).