DCT

2:22-cv-06555

BTL INDUSTRIES, INC. vs. DR. Devs Plastic Surgery & Medspa LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:22-cv-06555, D.N.J., 11/10/2022
  • Venue Allegations: Venue is alleged to be proper as Defendants are residents of the District of New Jersey and are subject to personal jurisdiction within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s non-invasive body-contouring devices and services, marketed as "TEMS" therapy, infringe four patents related to aesthetic treatment using high-intensity electromagnetic fields.
  • Technical Context: The technology involves using focused electromagnetic energy to induce powerful muscle contractions for non-invasive aesthetic body shaping, such as muscle toning and fat reduction.
  • Key Procedural History: The complaint alleges that Plaintiff sent Defendants multiple cease-and-desist letters regarding trademark infringement and also informed them that their sale and use of the accused devices infringed Plaintiff's patents, to which Defendants allegedly did not respond.

Case Timeline

Date Event
2015-07-01 Priority Date for U.S. Patent No. 10,695,575
2015-07-01 Priority Date for U.S. Patent No. 9,636,519
2016-07-01 Priority Date for U.S. Patent Nos. 10,478,634 & 11,266,852
2017-05-02 Issue Date for U.S. Patent No. 9,636,519
2018-06-01 BTL receives initial FDA clearance for EMSCULPT device
2018-09-28 Defendants purchase an authentic EMSCULPT device from BTL
2019-11-19 Issue Date for U.S. Patent No. 10,478,634
2020-01-01 Defendants allegedly begin marketing knock-off devices (approx. date)
2020-06-30 Issue Date for U.S. Patent No. 10,695,575
2020-07-01 Defendants allegedly begin using/selling infringing TEMS devices (approx. date)
2022-03-08 Issue Date for U.S. Patent No. 11,266,852
2022-11-10 Complaint Filing Date

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

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 March 8, 2022. (Compl. ¶29).

The Invention Explained

  • Problem Addressed: The patent's background describes existing non-invasive aesthetic procedures as having drawbacks, including risks of overheating, non-homogenous results, and an inability to enhance muscle appearance. (Compl. Ex. T, ’852 Patent, col. 2:4-31). It also notes that existing magnetic methods are limited by low efficiency and waste energy, which generates unwanted heat. (’852 Patent, col. 2:36-46).
  • The Patented Solution: The invention is a treatment device that uses time-varying magnetic fields to remodel a patient's body for aesthetic purposes. (’852 Patent, Abstract). It employs features like individually insulated wires in the magnetic field generating coils to reduce self-heating and increase efficiency, allowing for higher repetition rates and stronger muscle contractions than prior methods. (’852 Patent, col. 3:11-30; col. 8:1-8).
  • Technical Importance: The technology enabled the use of high-intensity focused electromagnetic energy to tone and firm muscle non-invasively, which the complaint alleges created a new market. (Compl. ¶24).

Key Claims at a Glance

  • The complaint asserts independent claim 9. (Compl. ¶62).
  • Essential elements of Claim 9 include:
    • A treatment device for enhancing a visual appearance of a patient.
    • The device comprises a first and second planar magnetic field generating coil.
    • A first applicator comprises the first coil, which is configured to generate a first time-varying magnetic field with specific repetition rate (1-300 Hz) and magnetic flux density (0.1-7 Tesla) parameters.
    • The second coil is configured to generate a second time-varying magnetic field with the same parameters.
    • The first coil is configured to generate its field independently of the second.
    • Each coil is configured to generate a plurality of pulses, where each plurality of pulses comprises a first plurality of pulses at a first repetition rate and a second plurality of pulses at a second, different repetition rate.
    • The coils are configured to be placed near a body region (buttocks or abdomen) to cause muscle contraction.
  • 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

  • Patent Identification: U.S. Patent No. 10,695,575, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued June 30, 2020. (Compl. ¶28).

The Invention Explained

  • Problem Addressed: The patent background identifies similar technical problems as the ’852 Patent, focusing on the limitations and risks of existing non-invasive aesthetic treatments. (Compl. Ex. S, ’575 Patent, col. 2:4-31).
  • The Patented Solution: The patent claims a method for toning muscles. The method involves positioning two separate applicators on a patient, each housing a magnetic field generating coil of the same inductance. (’575 Patent, Claim 1). Separate energy storage devices are charged and then discharged to each coil to generate time-varying magnetic fields. The method also requires cooling the coils and applying the generated impulses to muscle fibers to cause contraction and toning. (’575 Patent, Claim 1).
  • Technical Importance: The claimed method provides a specific protocol for using a dual-applicator electromagnetic device to achieve aesthetic muscle toning.

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶83).
  • Essential elements of Claim 1 include:
    • A method for toning muscles of a patient.
    • Positioning a first applicator (housing a first coil) and independently positioning a second applicator (housing a second coil with the same inductance).
    • Charging a first and a second energy storage device.
    • Discharging the first storage device to the first coil to generate a first impulse of a first time-varying magnetic field.
    • Discharging the second storage device to the second coil to generate a first impulse of a second time-varying magnetic field.
    • The impulses must have specific magnetic flux density (0.1-7 Tesla) and duration (3 µs-3 ms) parameters.
    • Cooling each of the coils.
    • Applying pluralities of impulses from the coils to muscle fibers to cause contraction.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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 November 19, 2019. (Compl. ¶27).
  • Technology Synopsis: The patent claims a method for toning muscles by placing an applicator in contact with a patient's abdomen or buttock, coupling it with an adjustable flexible belt, and applying energy to generate a time-varying magnetic field. (Compl. ¶104). The method specifies a particular range for the applied "magnetic fluence" sufficient to cause muscle contraction. (Compl. Ex. R, ’634 Patent, Claim 1).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶104).
  • Accused Features: The performance of TEMS therapy services using the accused devices, which allegedly involves placing applicators on the abdomen or buttocks and fastening them with an adjustable belt, thereby performing the claimed steps. (Compl. ¶¶108-109).

U.S. Patent No. 9,636,519 - Magnetic Stimulation Methods and Devices for Therapeutic Treatments

  • Patent Identification: U.S. Patent No. 9,636,519, "Magnetic Stimulation Methods and Devices for Therapeutic Treatments," issued May 2, 2017. (Compl. ¶30).
  • Technology Synopsis: This patent is directed to a magnetic stimulation device with a specific cooling architecture designed to mitigate heat generated during operation. The invention describes a device where a blower is arranged on the circumference of a coil, and the coil and its casing are arranged so that fluid can flow between them to cool the upper and lower sides of the coil. (Compl. ¶120).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶120).
  • Accused Features: The Renasculpt device, which allegedly includes applicators containing two fans that circulate air to dissipate heat, purportedly meeting the structural requirements of the claimed cooling system. (Compl. ¶¶127-130).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the "Renasculpt" and "UMS Sculptor" devices, which are collectively referred to as "TEMS devices." (Compl. ¶¶ 40, 42, 63). The complaint also accuses the "TEMS therapy services" performed using these devices. (Compl. ¶36).

Functionality and Market Context

  • The complaint alleges the TEMS devices are "knockoff" versions of Plaintiff's EMSCULPT device, sold by overseas distributors. (Compl. ¶¶ 40, 42). An Instagram post included in the complaint shows the accused Renasculpt device, which consists of a central console and two applicators. (Compl. p. 18). The devices are alleged to utilize electromagnetic waves to generate muscle contractions for aesthetic body-contouring. (Compl. ¶36). Promotional materials allegedly represent that the devices have applicators with "Double layer Coil[s]" that can operate "independently or simultaneously" and that one of the devices includes an "Air cooling system." (Compl. ¶¶ 66, 70, 94). The complaint alleges Defendants market these devices as cheaper, equally effective alternatives to Plaintiff's EMSCULPT product. (Compl. ¶9).

IV. Analysis of Infringement Allegations

11,266,852 Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A treatment device for enhancing a visual appearance of a patient... The accused Renasculpt and UMS Sculptor devices are marketed as aesthetic body-contouring devices that tone muscles and reduce fat. ¶65 col. 17:5-18:14
...a first magnetic field generating coil and a second magnetic field generating coil, wherein both of the first and second magnetic field generating coils are planar; The Renasculpt device is alleged to include "Double layer Coil[s]" and the UMS Sculptor is alleged to come with "2 or 4 applicators" that house magnetic field generating coils. These coils are alleged to be planar. ¶66 col. 8:9-24
...the first magnetic field generating coil is configured to generate a first time-varying magnetic field with a repetition rate in a range of 1 Hz to 300 Hz and a magnetic flux density in a range of 0.1 Tesla to 7 Tesla... Marketing materials for the Renasculpt device allegedly state an "Energy intensity" of 0-7 Tesla. Similar materials for the UMS Sculptor allegedly state a "Magnetic Power" of "7.0Tesla ± 20%" and a frequency of "150hz." ¶68 col. 3:67-4:3
...the first magnetic field generating coil is configured to generate the first time-varying magnetic field independently of the second time-varying magnetic field... Promotional materials for the Renasculpt device allegedly state its two applicators can operate "independently or simultaneously." The UMS Sculptor applicators are also alleged to work at the same time. ¶70 col. 15:66-16:24
...each of the plurality of pulses comprises a first plurality of pulses having a first repetition rate and a second plurality of pulses having a second repetition rate, wherein the first repetition rate differs from the second repetition rate... The accused devices are alleged to be configured to generate magnetic pulses at different frequencies. A promotional video allegedly shows a touch screen panel with multiple different treatment modes. ¶73 col. 16:47-51
...coils are configured to be placed proximate to a body region... to cause a contraction of at least one muscle... wherein the body region comprises one of a buttocks or an abdomen. Promotional images and videos allegedly depict the device applicators positioned on the buttocks and abdomen of patients, causing muscle contractions. A diagram from promotional materials shows the applicator generating magnetic fields. (Compl. p. 34). ¶76, ¶77 col. 18:31-19:2
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the phrase "wherein each of the plurality of pulses comprises a first plurality of pulses having a first repetition rate and a second plurality of pulses having a second repetition rate..." requires this complex pulse structure to be present within a single, continuous treatment protocol, or if user-selectable "treatment modes" with different frequencies (as alleged from a YouTube video) can satisfy this limitation. (Compl. ¶73).
    • Technical Questions: The complaint relies heavily on marketing materials to allege that the accused devices meet specific technical parameters like flux density and repetition rate. A key factual question will be whether the devices, when tested, actually perform within the claimed ranges and generate the complex, multi-rate pulse structure required by the claim.

10,695,575 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for toning muscles of a patient... Defendants' TEMS therapy services are promoted as aesthetic body-contouring methods that tone muscle. ¶86 col. 19:61-62
...positioning a first applicator... housing a first magnetic field generating coil having an inductance; Defendants' TEMS devices allegedly include at least one applicator housing a magnetic coil, and as part of their services, these applicators are positioned on a patient's body. ¶87 col. 10:48-62
...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... Promotional materials allegedly state the applicators can operate "independently," suggesting they are positioned as separate units. The complaint alleges on information and belief that the coils have the same inductance. ¶88, ¶89 col. 10:48-62
...the first impulse... and the... second impulse... each have a magnetic flux density in a range between 0.1 Tesla and 7 Tesla... and... an impulse duration in a range between 3 µs and 3 ms; Marketing materials for the accused devices allegedly state a magnetic power of up to 7 Tesla and pulse durations/widths of 300 µs and 310 µs, which fall within the claimed ranges. ¶92 col. 22:1-11
...cooling each of the first and the second magnetic field generating coils... Promotional materials for the UMS Sculptor allegedly state it includes an "Air cooling system." A promotional image for the Renasculpt device depicts applicators with "DOUBLE FANS" to dissipate heat. (Compl. p. 44). ¶94 col. 10:22-28
...applying a first plurality of impulses... and applying a second plurality of impulses... to muscle fibers... to cause muscles... to contract such that the muscles are toned. Promotional videos allegedly depict the applicators positioned on patients' body regions inducing visible muscle contractions. ¶95 col. 19:27-30
  • Identified Points of Contention:
    • Scope Questions: A primary issue may be the construction of "cooling." The patent specification discusses more active cooling systems like Peltier coolers or Stirling engines. (’575 Patent, col. 10:25-28). The defendants may argue that the alleged air cooling via simple fans does not meet the "cooling" limitation as it is described and enabled in the patent.
    • Technical Questions: The allegation that the two coils have "the same inductance" is made without direct evidentiary support and will be a central factual question for discovery and expert analysis of the accused devices.

V. Key Claim Terms for Construction

'852 Patent

  • The Term: "wherein each of the plurality of pulses comprises a first plurality of pulses having a first repetition rate and a second plurality of pulses having a second repetition rate, wherein the first repetition rate differs from the second repetition rate"
  • Context and Importance: This term from claim 9 defines a complex, multi-frequency pulse sequence that appears central to the inventive concept of sophisticated muscle treatment protocols. Practitioners may focus on this term because the infringement allegation relies on evidence of different user-selectable "treatment modes" rather than a showing that this specific sequence is generated as part of a single, unified operation. (Compl. ¶73).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The detailed description discusses applying bursts of pulses with varying repetition rates in different "trains" to achieve different effects, such as muscle shredding followed by relaxation. (’852 Patent, col. 30:5-40). This may support an interpretation where distinct, user-selected modes that are applied sequentially can meet the claim limitation.
    • Evidence for a Narrower Interpretation: The claim language "each of the plurality of pulses comprises..." could be interpreted to require every sequence of pulses generated by the device to contain this dual-repetition-rate structure, suggesting a more integrated and less user-dependent function.

'575 Patent

  • The Term: "cooling each of the first and the second magnetic field generating coils"
  • Context and Importance: This method step is critical because the patents-in-suit identify inefficient cooling and unwanted heat as a key problem in the prior art. Practitioners may focus on this term because the complaint's allegation is based on promotional images of simple air fans in the applicators, raising the question of whether this meets the technical requirement of "cooling" as taught in the patent. (Compl. ¶94).
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that "at least one blower 4 can be placed around the circumference of the magnetic field generating device" and that the "blower may be e.g. a fan or a suction pump." (’575 Patent, col. 10:1-3). This language suggests that a fan-based system is explicitly contemplated.
    • Evidence for a Narrower Interpretation: The specification also discloses more sophisticated cooling mechanisms, stating "In an alternative embodiment cooling may be provided by a member using thermoelectric effect, e.g. a Peltier cooler. Alternatively, cooling may be provided by Stirling engine cooling system." (’575 Patent, col. 10:25-28). A defendant could argue these more complex embodiments contextualize "cooling" as requiring more than simple air circulation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement of the method patents (’575 and ’634). The allegations are based on Defendants encouraging, promoting, and instructing customers on how to use the TEMS devices in a manner that directly performs the steps of the claimed methods. (Compl. ¶¶ 98, 115).
  • Willful Infringement: Willfulness is alleged for all four patents. The complaint asserts that Defendants have had knowledge of the patents "since before the filing of this Complaint." (Compl. ¶¶ 79, 100, 116, 132). The alleged basis for this pre-suit knowledge is Defendants' purchase of Plaintiff's own EMSCULPT device on September 28, 2018, and Plaintiff's cease-and-desist letters, which allegedly informed Defendants of the patent infringement. (Compl. ¶¶ 12, 45).

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

  • A core issue will be one of evidentiary proof: The infringement allegations rely heavily on the accused products' marketing materials and online videos. A central question for the court will be whether Plaintiff can produce technical evidence from discovery and expert testing to prove that the accused "knockoff" devices actually operate with the specific magnetic flux densities, repetition rates, pulse structures, and coil inductances required by the asserted claims.
  • A second key issue will be one of technical scope: The dispute will likely involve claim construction arguments over whether terms like "cooling" can be read to cover the simple air fans allegedly used in the accused devices, especially when the patent specification also discloses more advanced cooling technologies. Similarly, the definition of the complex multi-rate pulse sequence in the ’852 patent will be critical to determining if different user-selectable "modes" meet the claim language.