DCT
2:23-cv-02736
BTL INDUSTRIES, INC. v. New and Used LASERS, LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: New and Used Lasers, LLC (New Jersey), Michael Knight, and John Haberlen
- Plaintiff’s Counsel: Hill Wallack LLP
- Case Identification: 2:23-cv-02736, D.N.J., 05/19/2023
- Venue Allegations: Venue is alleged as proper in the District of New Jersey because Defendant New and Used Lasers, LLC is a New Jersey entity with its principal place of business in the District.
- Core Dispute: Plaintiff alleges that Defendants’ marketing and sale of a device branded "EMSCULPT" infringes a patent related to methods for non-invasive muscle toning using time-varying magnetic fields.
- Technical Context: The technology at issue occupies the aesthetic medicine market, specifically non-invasive body contouring, which uses electromagnetic energy to stimulate muscle contractions beyond what is achievable through voluntary exercise.
- Key Procedural History: The complaint alleges that Plaintiff informed Defendants of the alleged patent infringement via a letter dated March 7, 2023, which may be relevant to the allegation of willful infringement. The complaint also notes that Plaintiff's authentic products are marked with a reference to an online patent listing.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2018 | Plaintiff launches its EMSCULPT device |
| 2019-11-19 | ’634 Patent Issue Date |
| 2023-03 | Alleged infringing activities by Defendants begin |
| 2023-05-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,478,634, entitled “Aesthetic Method of Biological Structure Treatment by Magnetic Field,” issued November 19, 2019.
The Invention Explained
- Problem Addressed: The patent’s background section notes that conventional non-invasive aesthetic treatments, such as those using mechanical or thermal energy, carry risks like thermal damage or non-homogenous results and are not able to provide muscle shaping, toning, or volumization effects (’634 Patent, col. 2:15-32). Existing magnetic methods were described as limited in key parameters, preventing satisfactory enhancement of 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 to induce muscle contractions (’634 Patent, Abstract). An applicator containing a magnetic field generating coil is placed on a specific body region, such as the abdomen or buttocks, and secured with a belt. Energy is provided to the coil to generate a magnetic field with sufficient flux density to cause supramaximal muscle contractions, which cannot be achieved voluntarily, thereby toning the muscle and enhancing the body’s visual appearance (’634 Patent, col. 19:18-24).
- Technical Importance: This technology created a new market for non-invasive body contouring by being the first to use high-intensity, focused electromagnetic technology to tone and firm muscle (Compl. ¶19).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶35-36).
- The essential elements of independent claim 1 are:
- A method for toning muscles in a patient using time-varying magnetic fields.
- Placing a first applicator comprising a magnetic field generating coil in contact with a patient's skin or clothing at an abdomen or a buttock.
- Coupling the first applicator to the patient with an adjustable flexible belt that holds the applicator to the patient's skin or clothing.
- Providing energy to the magnetic field generating 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 with a magnetic flux density sufficient to cause muscle contraction.
III. The Accused Instrumentality
Product Identification
- A device marketed and sold by Defendants under the name “EMSCULPT” (the “Accused Device”) (Compl. ¶28).
Functionality and Market Context
The complaint alleges the Accused Device operates by using time-varying magnetic fields that are applied to a patient's skin via an applicator containing a magnetic field generating coil (Compl. ¶33). This applicator is allegedly held in place using a flexible belt (Compl. ¶33). A photograph included in the complaint shows the Accused Device, which consists of a wheeled console with a large display screen and an attached paddle-style applicator (Compl. p. 7). Another image depicts the applicator being held, illustrating its size and shape relative to a user's hand (Compl. p. 8). The device is allegedly offered for sale for $64,900.00 (Compl. ¶30).
IV. Analysis of Infringement Allegations
10,478,634 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing a first applicator comprising a magnetic field generating coil in contact with a patient's skin or clothing at a body region... wherein the body region is an abdomen or a buttock | The Accused Device uses an applicator that is applied to a patient's skin to deliver the treatment. | ¶33 | col. 18:31-35 |
| 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 applicator is held in place using a flexible belt. | ¶33 | col. 10:51-54 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field | The magnetic field generating coil in the Accused Device generates a time-varying magnetic field. | ¶33 | col. 11:61-64 |
| 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... with a magnetic flux density sufficient to cause a muscle contraction in the body region | The Accused Device applies a magnetic flux of 50 T cm² to 1,500 T cm² and causes muscle contraction. | ¶33 | col. 14:3-16 |
Identified Points of Contention
- Scope Questions: The asserted patent claim is for a method. The complaint accuses Defendants, who are alleged to be making, using, and selling a device, of infringement. This raises the question of whether the allegations support direct infringement by the Defendants themselves, or if the case will center on theories of indirect infringement (e.g., inducement) based on the actions of the device's end-users.
- Technical Questions: The complaint alleges the Accused Device applies a "magnetic flux" within the claimed range, while Claim 1 recites a "magnetic fluence" (Compl. ¶33; ’634 Patent, Claim 1). While these terms are related, they have distinct technical meanings. This discrepancy raises a potential dispute over whether the accused product's operation meets this specific claim limitation as defined in the patent.
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
- Context and Importance: The construction of this term may be central, as the complaint uses the term "magnetic flux" to describe the accused functionality (Compl. ¶33). Defendants could argue that "fluence," even as defined in the patent, requires a specific type of energy delivery that is distinct from "flux" and is not performed by the accused device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides an explicit definition in Equation 4:
MF=BPP*AMFGD, where MF is magnetic fluence, BPP is peak-to-peak magnetic flux density, and AMFGD is the area of the magnetic field generating device (’634 Patent, col. 14:3-7). Plaintiff may argue that this express definition controls and is what the complaint's allegations of "magnetic flux" are intended to map onto. - Evidence for a Narrower Interpretation: A defendant may argue that the ordinary meaning of "fluence" in physics and the relevant art implies an integration over time or area that is not captured by a simple "flux" measurement. They may contend that the patent’s definition is idiosyncratic and that the accused product does not actually apply a "magnetic fluence" as understood by a person of ordinary skill in the art.
- Evidence for a Broader Interpretation: The patent provides an explicit definition in Equation 4:
The Term: "coupling"
- Context and Importance: This term relates to how the applicator is secured to the patient. Practitioners may focus on this term because the required degree of connection could be a point of factual dispute, depending on the actual design and function of the belt used with the Accused Device.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests the purpose is functional attachment, stating a "positioning member may ensure tight attachment of the applicator... or alternatively, direct contact with the patient" (’634 Patent, col. 10:55-57). This language may support a construction where any flexible belt that holds the applicator in place meets the limitation.
- Evidence for a Narrower Interpretation: The claim requires the belt to "hold" the applicator. The specification also describes the positioning member being used as a "guiding member" for dynamic adjustment, which could suggest a more robust and secure form of "coupling" than a simple strap (’634 Patent, col. 11:7-10).
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendants induce infringement by "encouraging, promoting, and instructing customers to use the Accused Device in a manner that directly infringes" the ’634 patent (Compl. ¶37).
- Willful Infringement: The complaint alleges willfulness based on both pre-suit and post-suit knowledge. It asserts Defendants were aware of BTL’s products and online patent marking, and were explicitly notified of infringement via a letter sent on March 7, 2023, more than two months before the complaint was filed (Compl. ¶38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional precision: does the accused device's alleged application of "magnetic flux" meet the specific requirements of the claimed "magnetic fluence," particularly in light of the explicit but potentially unconventional definition provided in the patent's specification?
- A key legal question will be one of liability for a method claim: can the plaintiff establish that the Defendants, as sellers of a device, are directly or indirectly liable for infringing a method that is ultimately performed by the end-user? The strength of the inducement allegations will likely be pivotal.