1:23-cv-00032
BTL Industries Inc v. Rejuva Fresh LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries Inc (Delaware)
- Defendant: Rejuva Fresh LLC (Wyoming) and Polly Jacobs (Individual)
- Plaintiff’s Counsel: Pierce Atwood LLP
- Case Identification: 1:23-cv-00032, D. Me., 07/01/2024
- Venue Allegations: Venue is alleged to be proper in the District of Maine as Defendants are residents of the district and are subject to personal jurisdiction there.
- Core Dispute: Plaintiff alleges that Defendant’s non-invasive body-contouring devices infringe five patents related to the use of time-varying magnetic fields for aesthetic treatments such as muscle toning and body sculpting.
- Technical Context: The technology involves using high-intensity focused electromagnetic (HIFEM) energy to induce powerful, non-voluntary muscle contractions for aesthetic body-contouring, a field Plaintiff claims to have pioneered with its EMSCULPT® device.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendants a cease-and-desist letter on July 14, 2022, informing them of alleged infringement of Plaintiff's trademarks, patents, and copyrights. This event is cited as evidence of pre-suit knowledge for the purpose of willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2014-07-02 | ’519 Patent Priority Date |
| 2016-07-01 | ’634, ’575, ’852, ’386 Patents Priority Date |
| 2017-05-02 | ’519 Patent Issued |
| 2018-06-01 | BTL launches EMSCULPT® device |
| 2019-11-19 | ’634 Patent Issued |
| 2020-03-24 | ’386 Patent Issued |
| 2020-06-30 | ’575 Patent Issued |
| 2022-03-08 | ’852 Patent Issued |
| 2022-07-14 | BTL sends cease-and-desist letter to Defendants |
| 2024-07-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,478,634 - “Aesthetic Method of Biological Structure Treatment by Magnetic Field”
The Invention Explained
- Problem Addressed: The patent's background describes existing non-invasive aesthetic treatments—such as those using mechanical waves or thermal energy—as having significant drawbacks, including the risk of tissue damage (panniculitis), non-homogenous results, and an inability to effectively tone or shape muscle tissue (’634 Patent, col. 2:5-30).
- The Patented Solution: The invention proposes a method for toning muscles and enhancing visual appearance by applying a time-varying magnetic field sufficient to induce muscle contractions (’634 Patent, Abstract). The method involves placing an applicator with a magnetic coil onto a specific body region, such as the abdomen or buttocks, securing it with a belt, and applying energy to generate a magnetic field of a specific "fluence" and flux density to cause the muscle to contract (’634 Patent, col. 3:11-20).
- Technical Importance: This technology provided a non-invasive method to directly target and remodel muscle tissue for aesthetic purposes, a capability that prior aesthetic devices focused on fat and skin generally lacked (Compl. ¶17).
Key Claims at a Glance
- The complaint alleges infringement of at least Claim 1 (Compl. ¶95).
- Independent Claim 1 requires the steps of:
- 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 first 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 for this patent.
U.S. Patent No. 10,695,575 - “Aesthetic Method of Biological Structure Treatment by Magnetic Field”
The Invention Explained
- Problem Addressed: The patent addresses similar problems as the '634 Patent regarding the limitations of prior aesthetic treatments and seeks to provide an improved method for muscle toning using magnetic fields (’575 Patent, col. 2:5-35).
- The Patented Solution: The invention is a method for toning muscles using two independently positioned applicators, each containing a magnetic field generating coil of the "same inductance" (’575 Patent, Claim 1). The method involves charging separate energy storage devices and discharging them to the respective coils to generate timed magnetic impulses with specific flux density and duration parameters. The method also requires that an impulse from the second coil is generated during the pulse duration of the first, and includes a step for cooling the coils (’575 Patent, Abstract; col. 3:11-20).
- Technical Importance: This method appears to refine the use of magnetic stimulation for body contouring by enabling simultaneous, coordinated treatment with two applicators, which could allow for more efficient and symmetrical treatment of bilateral body parts like the abdomen.
Key Claims at a Glance
- The complaint alleges infringement of at least Claim 1 (Compl. ¶78).
- Independent Claim 1 requires the steps of:
- positioning a first applicator on the patient, the first applicator housing a first magnetic field generating coil having an inductance;
- independently positioning a second applicator on the patient, the second applicator housing a second magnetic field generating coil having the same inductance as the first magnetic field generating coil;
- charging a first energy storage device and a second energy storage device;
- discharging the energy storage devices to their respective coils to generate first impulses of a first and second time-varying magnetic field;
- wherein the impulses each have a magnetic flux density between 0.1 and 7 Tesla and an impulse duration between 3 µs and 3 ms;
- establishing a first pulse duration... wherein the first impulse generated by the second magnetic field generating coil is generated during the first pulse duration;
- cooling each of the first and the second magnetic field generating coils; and
- applying pluralities of impulses from both coils to cause muscle contraction and toning.
- The complaint does not explicitly reserve the right to assert dependent claims for this patent.
U.S. Patent No. 11,266,852 - “Aesthetic Method of Biological Structure Treatment by Magnetic Field”
Technology Synopsis
This patent describes a treatment device, rather than a method, for enhancing a patient's visual appearance. The device comprises first and second planar magnetic field generating coils housed in applicators, configured to generate time-varying magnetic fields with specific repetition rates (1 Hz to 300 Hz) and magnetic flux densities (0.1 Tesla to 7 Tesla) to cause muscle contraction in the buttocks or abdomen (Compl. ¶56). The coils are configured to generate pulses independently and at different repetition rates within a single treatment session (Compl. ¶56).
Asserted Claims
The complaint asserts infringement of at least Claim 9 (Compl. ¶57).
Accused Features
The accused features are the various body sculpting machines that allegedly include two planar magnetic coils in their applicators (handles) and are configured to generate magnetic pulses at specified frequencies and intensities to treat the abdomen and buttocks (Compl. ¶¶ 60-72).
U.S. Patent No. 9,636,519 - “Magnetic Stimulation Methods and Devices for Therapeutic Treatments”
Technology Synopsis
This patent is directed to the cooling mechanism for a magnetic stimulation device. It claims a device comprising a coil, a casing, and at least one blower arranged on the circumference of the coil. This arrangement is designed to cool the coil by enabling fluid (e.g., air) to flow in-between the coil and casing and over the coil's upper and lower sides, addressing the problem of overheating in high-power magnetic stimulation devices (Compl. ¶107; ’519 Patent, col. 2:4-11).
Asserted Claims
The complaint asserts infringement of at least Claim 1 (Compl. ¶108).
Accused Features
The accused features are the air cooling systems within the Accused Devices, which allegedly use at least one blower to circulate air within the device applicators (casings) and around the magnetic coils to cool them (Compl. ¶¶ 116-118).
U.S. Patent No. 10,596,386 - “Aesthetic Method of Biological Structure Treatment by Magnetic Field”
Technology Synopsis
This patent describes a treatment device with an applicator held in place by a belt, an energy storage device, and means for discharging energy to create biphasic magnetic impulses with a specified repetition rate and duration. The patent also claims a "means for cooling the magnetic field generating device by a fluid cooling media." The device is intended to repetitively contract muscle in the buttocks or abdomen to achieve a toning effect (Compl. ¶123).
Asserted Claims
The complaint asserts infringement of at least Claim 12 (Compl. ¶124).
Accused Features
The accused features are the body sculpting machines that are sold with applicators, belts for positioning, energy storage and discharge components, and fluid (air) cooling systems, and which are promoted for toning muscles in the abdomen and buttocks (Compl. ¶¶ 127-132).
III. The Accused Instrumentality
Product Identification
The complaint identifies a range of products sold by Defendants, including the "Personal EMSZERO NEO Sculpting Machine," "Professional EMSZERO NEO Body Sculpting Machine," and "EMSLIM NEO for Home Use," among others, collectively termed the "Accused Devices" (Compl. ¶28).
Functionality and Market Context
The Accused Devices are alleged to be non-invasive body-contouring machines that utilize electromagnetic waves to induce muscle contractions (Compl. ¶28). The complaint asserts they are marketed for their ability to build muscle and burn fat, thereby enhancing a patient's visual appearance (Compl. ¶60). The devices are described as operating via treatment "handles" or applicators, which house magnetic field generating coils and are strapped to a patient's body region, such as the abdomen or buttocks (Compl. ¶61, ¶97-98). Promotional materials cited in the complaint indicate these devices can be set to different treatment modes with varying frequencies and energy levels and incorporate air cooling systems (Compl. ¶68, ¶87). An image in the complaint's exhibits shows an applicator generating a series of magnetic pulses that penetrate tissue layers (Compl. ¶61, p. 40). The complaint alleges Defendants compete with Plaintiff's EMSCULPT® product line and promote the Accused Devices using Plaintiff's proprietary photographs and clinical study results (Compl. ¶28, ¶¶ 36-45).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,478,634 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... | Defendants allegedly instruct customers to use the Accused Devices in a manner that tones muscles with time-varying magnetic fields. | ¶96 | col. 1:52-56 |
| 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 include at least one applicator with a magnetic coil, and promotional materials allegedly instruct users to place it on the abdomen or buttocks. | ¶97 | col. 18:41-45 |
| 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 are allegedly sold with elastic and length-adjustable belts to fasten the applicators to the body. | ¶98 | col. 9:50-54 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; | The Accused Devices allegedly include power supplies that transmit energy to the applicators to generate time-varying magnetic fields. | ¶99 | col. 11:51-53 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, | The complaint alleges on information and belief that the devices generate and deliver magnetic fields that vary in area density depending on the treatment mode. | ¶100 | 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 Devices' marketing materials allegedly promote their ability to generate magnetic fields sufficient to cause muscle contractions. | ¶101 | col. 18:6-14 |
- Identified Points of Contention:
- Scope Questions: What evidence does the complaint provide that the Accused Devices operate within the specific quantitative range of "a magnetic fluence of 50 T cm² to 1,500 T cm²"? The complaint makes this allegation on "information and belief," suggesting that this will be a central factual dispute requiring expert analysis and discovery.
- Technical Questions: The infringement theory for the '634 Patent is one of induced infringement, based on Defendants instructing users. A key question will be whether the user manuals and promotional materials instruct users to perform every step of the claimed method, including the specific step of applying a magnetic field that results in the claimed "magnetic fluence."
U.S. Patent No. 10,695,575 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| positioning a first applicator... housing a first magnetic field generating coil... independently positioning a second applicator... housing a second magnetic field generating coil having the same inductance... | The Accused Devices are alleged to have applicators with magnetic coils, and manuals instruct users on how to position them on the body. | ¶80-81 | col. 11:43-50 |
| charging a first energy storage device and a second energy storage device; | The complaint alleges on information and belief that the applicators require separate energy storage devices which must be charged prior to use. | ¶82 | col. 11:51-53 |
| discharging the... energy storage device... such that a first impulse... is generated; | User manuals allegedly instruct users to operate the device, which involves discharging the stored energy from the power supply to the applicators to generate magnetic impulses. | ¶83-84 | col. 11:53-61 |
| wherein the first impulse... and the first impulse... each have a magnetic flux density in a range between 0.1 Tesla and 7 Tesla, and wherein the... impulses each have an impulse duration in a range between 3 µs and 3 ms; | Promotional materials for certain accused devices allegedly represent they generate a magnetic flux density in a range of 0.1 to 7 Tesla and a "Pulse width" of approximately 310µs, which falls within the claimed duration range. | ¶85 | col. 13:58-62 |
| establishing a first pulse duration... wherein the first impulse generated by the second... coil is generated during the first pulse duration; | Promotional materials allegedly state that the device applicators can work simultaneously and be controlled separately, and a user interface screenshot depicts separate controls for different applicators. | ¶86, ¶66, p. 48 | col. 11:62-66 |
| cooling each of the first and the second magnetic field generating coils; | The complaint alleges that brochures and landing pages represent that the devices are configured with air cooling systems. | ¶87 | col. 9:25-28 |
| applying a first plurality of impulses... and applying a second plurality of impulses... to cause muscles... to contract such that the muscles are toned. | Marketing materials allegedly state that the devices work by "contracting and tightening the muscles to both burn fat and sculpt." | ¶88 | col. 12:4-9 |
- Identified Points of Contention:
- Technical Questions: What evidence supports the allegation that the coils in the two separate applicators have the "same inductance"? This is a precise technical limitation that is unlikely to be found in marketing materials and may require device teardowns and expert analysis.
- Scope Questions: Does the allegation that the applicators operate "simultaneously" or can be "used separately or together" (Compl. ¶66) meet the specific temporal sequence required by the claim, i.e., that an impulse from the second coil is "generated during the first pulse duration" of the first? The interpretation of this timing relationship will be critical.
V. Key Claim Terms for Construction
The Term: "magnetic fluence" (’634 Patent, Claim 1)
Context and Importance: This term, with its specific numerical range (50 T cm² to 1,500 T cm²), forms a central limitation of Claim 1. The infringement analysis for the ’634 patent will likely depend on whether the output of the Accused Devices, when measured, falls within this range. Practitioners may focus on this term because it is a quantitative requirement that is not explicitly advertised and will be a subject of expert discovery.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "magnetic fluence" or specify a required method for its calculation, which may support an argument for applying its plain and ordinary meaning as understood by a person of ordinary skill in the art (’634 Patent, col. 14:7-9).
- Evidence for a Narrower Interpretation: A party might argue that the term should be interpreted in light of the specification's examples and descriptions of magnetic flux density and treatment parameters, potentially limiting how the "fluence" is to be calculated or measured in the context of the invention (’634 Patent, col. 14:7-15).
The Term: "same inductance" (’575 Patent, Claim 1)
Context and Importance: This term requires a specific technical equivalence between the magnetic coils in the two applicators. Infringement of the '575 patent hinges on whether the coils in the Accused Devices meet this standard. Practitioners may focus on this term because "same" can be interpreted strictly as "identical" or more broadly to mean "substantially the same" within manufacturing tolerances.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that in the context of mass-produced electrical components, a person of ordinary skill would understand "same" to allow for minor, commercially reasonable variations or manufacturing tolerances, rather than requiring absolute mathematical identity.
- Evidence for a Narrower Interpretation: The claim language recites "same inductance" without any qualifiers like "substantially" or "approximately." The patent's abstract also highlights this feature, suggesting it is a deliberate and important design choice, which may support an argument for a stricter, more literal interpretation (’575 Patent, Abstract).
VI. Other Allegations
- Indirect Infringement: The complaint contains extensive allegations of induced infringement for all asserted patents. It claims that Defendants actively encourage and instruct their customers to perform the patented methods by providing user manuals, brochures, and online marketing materials that detail how to use the Accused Devices in an infringing manner (Compl. ¶31, ¶59, ¶78, ¶95, ¶110, ¶126).
- Willful Infringement: Willfulness is alleged for all five asserted patents. The complaint bases this on alleged pre-suit knowledge, citing a cease-and-desist letter sent on July 14, 2022, and the public listing of the patents on Plaintiff's website (Compl. ¶32, ¶73, ¶90, ¶103, ¶119, ¶134). For the '519 and '386 patents, which relate to cooling, knowledge is also alleged based on Defendants' own marketing of a "patented cooling system" (Compl. ¶32, fn. 1).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical performance: can the Plaintiff demonstrate through discovery that the Accused Devices actually operate within the specific, quantitative parameters recited in the claims—such as the "magnetic fluence" range of the '634 Patent and the "same inductance" requirement of the '575 Patent—which are not explicitly advertised in the cited promotional materials?
- A key legal question will be one of induced infringement: does the evidence from Defendants' user manuals and marketing materials show active steps to encourage customers to perform every single element of the asserted method claims, and does this conduct, in light of the alleged pre-suit notice, demonstrate the specific intent required for inducement?
- A central evidentiary question will be one of copying and intent: what is the strength of the evidence that Defendants appropriated Plaintiff's clinical study data and marketing photographs, and how will this evidence influence a jury's view of the allegations of willful infringement?