DCT
2:23-cv-10991
BTL Industries Inc v. Body BY Za LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Body by Za LLC and Alyza Bianchi (Michigan)
- Plaintiff’s Counsel: Patterson Intellectual Property Law, P.C.
- Case Identification: 2:23-cv-10991, E.D. Mich., 04/27/2023
- Venue Allegations: Venue is alleged to be proper as Defendant Body by Za is a Michigan company with its principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendants' aesthetic body-contouring services, which utilize a device referred to as the "Counterfeit Device," infringe a patent directed to methods for toning muscles using time-varying magnetic fields.
- Technical Context: The technology at issue involves non-invasive aesthetic body contouring through the use of high-intensity, focused electromagnetic energy to induce powerful muscle contractions.
- Key Procedural History: The complaint alleges that Plaintiff sent Defendants an initial notice letter regarding the infringing conduct on June 7, 2022, followed by at least three subsequent communications, including the provision of a claim chart on April 11, 2023, prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2018-01-01 | BTL launches its EMSCULPT device (approximate date) |
| 2019-11-19 | U.S. Patent No. 10,478,634 Issues |
| 2021-07-24 | Date of Defendants' social media post depicting accused device |
| 2022-06-07 | Plaintiff sends initial notice letter to Defendants |
| 2022-09-16 | Plaintiff sends subsequent notice to Defendants |
| 2022-11-18 | Plaintiff sends subsequent notice to Defendants' counsel |
| 2023-04-11 | Plaintiff sends claim chart and final notice to Defendants' counsel |
| 2023-04-27 | Complaint Filed |
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 “’634 Patent”).
The Invention Explained
- Problem Addressed: The patent’s background section notes that common non-invasive aesthetic procedures based on mechanical or electromagnetic waves have drawbacks, such as the risk of overheating, patient harm, or an inability to enhance muscle appearance through toning or shaping (’634 Patent, col. 2:15-36). Existing magnetic methods are described as being limited in key parameters, creating a need for new methods to enhance a patient's visual appearance (’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. 1:54-58). An applicator containing a magnetic field generating coil is placed on a target body region, such as the abdomen or buttocks, and is held in place by a flexible belt to deliver the treatment (’634 Patent, col. 96:52-67). This approach aims to remodel and tone muscle for an improved aesthetic appearance.
- Technical Importance: The patented method provided a non-invasive technique to directly target and stimulate muscles for aesthetic purposes, an area the patent suggests was not adequately addressed by prior art focused primarily on skin and fat tissue (’634 Patent, col. 2:26-36).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶32).
- The essential elements of independent claim 1 are:
- A method for toning muscles using time-varying magnetic fields.
- Placing a first applicator with a magnetic field generating coil in contact with a patient's skin or clothing at the abdomen or a buttock.
- Coupling the 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 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.
- Applying the field with a magnetic flux density sufficient to cause a muscle contraction.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is a service offered by Defendants using a device variously called "EMSCULPT," "EMSCULPT NEO," and "E.S. NEO," which Plaintiff identifies as a "Counterfeit Device" (Compl. ¶25, ¶29).
Functionality and Market Context
The complaint alleges the Counterfeit Device performs a method for toning muscles by using time-varying magnetic fields applied to a patient’s skin via an applicator that includes a magnetic field generating coil (Compl. ¶29). The complaint further alleges this applicator is held in place by a flexible belt, generates a magnetic flux within a specific range, and causes muscle contraction (Compl. ¶29). A representative image from Defendants' social media shows the device's applicator strapped to a person's arm during treatment (Compl. ¶26, p. 10). Defendants advertise these treatments at a cost of $645 per session (Compl. ¶27).
IV. Analysis of Infringement Allegations
’634 Patent 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, the method comprising: | Defendants advertise and perform services for toning muscles in a patient using a device that allegedly uses time-varying magnetic fields. | ¶29, ¶31 | col. 1:52-54 |
| 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; | Defendants' device uses an applicator with a magnetic field generating coil that is placed on a patient's body region to tone muscles. An image shows the applicator in contact with a patient's arm, and text mentions treatments for the abdomen and buttocks. | ¶29, ¶18, ¶26 | col. 24:42-46 |
| 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 alleges the Counterfeit Device uses a flexible belt to hold the applicator to the patient's skin. A visual in the complaint depicts an applicator held on a patient's body with a strap. | ¶29, ¶26 | col. 10:51-54 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and | The complaint alleges that the device's magnetic field generating coil generates a time-varying magnetic field. | ¶29 | col. 11:59-12:5 |
| 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 device applies a magnetic flux of 50 T cm² to 1,500 T cm². | ¶29 | col. 14:10-21 |
| 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 alleges the device applies a magnetic field that causes muscle contraction. Marketing materials state it can induce "20,000 supramaximal contractions" in 30 minutes. | ¶29, ¶26 | col. 18:1-2 |
- Identified Points of Contention:
- Evidentiary Questions: The complaint alleges, "on information and belief," that the accused device meets the specific numerical limitation of applying a "magnetic fluence of 50 T cm² to 1,500 T cm²" (Compl. ¶29). A central question for the court will be whether discovery yields evidence sufficient to prove that the accused device operates within this claimed range.
- Scope Questions: The complaint provides a visual of the accused device being applied to an arm, while Claim 1 is limited to application on an "abdomen or a buttock" (Compl. ¶26, p. 10; ’634 Patent, col. 96:58-59). The infringement analysis will turn on evidence of the device being used on the claimed body regions, which the complaint alleges based on Defendants’ marketing materials (Compl. ¶26).
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
Context and Importance: This term is critical because it introduces a specific, quantitative limitation (50 to 1,500 T cm²) that the accused method must meet. The entire infringement analysis for this element hinges on how this term is defined, measured, and applied to the accused device's operation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides a specific formula: MF=BPP*A_MFGD, where BPP is the maximal peak-to-peak magnetic flux density and A_MFGD is the area of the magnetic field generating device (’634 Patent, col. 14:1-7). A party might argue that "area of the magnetic field generating device" should be interpreted broadly to include the entire surface of the applicator head, which could alter the resulting fluence calculation.
- Evidence for a Narrower Interpretation: A party could argue that the "area of the magnetic field generating device" refers only to the area of the actual windings (Area A2 in FIG. 6), excluding any core or non-winding portions (’634 Patent, col. 13:21-25). This could lead to a narrower construction and a different calculated fluence value.
The Term: "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"
Context and Importance: This term is important as it describes not just the presence of a belt, but its specific function. Practitioners may focus on this term because the "so that" clause requires a causal link between the belt and the "holding" of the applicator, which could be a point of non-infringement if the belt is shown to serve a different primary purpose.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: One might argue that any belt that keeps the applicator from falling off satisfies the "holds" limitation, even if an operator's hand or gravity provides the primary force for maintaining contact.
- Evidence for a Narrower Interpretation: The specification states the positioning member (such as a belt) "may ensure tight attachment of the applicator" (’634 Patent, col. 10:54-56). This language suggests the belt must do more than simply prevent the applicator from falling; it must actively secure it in a "tight" manner against the patient's body.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by "encouraging, promoting, and instructing customers to use the Counterfeit Device in a manner that directly infringes the ’634 patent" (Compl. ¶33).
- Willful Infringement: The willfulness allegation is based on pre-suit knowledge. The complaint alleges Plaintiff sent multiple notice letters, including an initial letter on June 7, 2022, and later provided a claim chart, putting Defendants on notice of the alleged infringement before the suit was filed (Compl. ¶25, ¶34). The complaint also cites BTL's virtual patent marking website as a source of knowledge (Compl. ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can the plaintiff, through discovery, produce technical evidence demonstrating that the accused "Counterfeit Device" in fact generates a "magnetic fluence" within the specific numerical range of 50 to 1,500 T cm² recited in Claim 1?
- A second key question will relate to willfulness: given the complaint's detailed allegations of pre-suit notice, including multiple letters and a claim chart, the case may focus significantly on whether the defendants' continued conduct, if found to be infringing, was objectively reckless and warrants enhanced damages.