BTL Industries Inc v. Exquisite Depot LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: BTL Industries, Inc. (Delaware)
  • Defendant: Exquisite Depot LLC (New Jersey) and Omry Gottlib
  • Plaintiff’s Counsel: Hill Wallack LLP
• Case Identification: 2:24-cv-09407, D.N.J., 09/24/2024
• Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendants have their principal place of business and are domiciled in the District, and the acts complained of occurred there.
• Core Dispute: Plaintiff alleges that Defendant’s aesthetic body-contouring devices infringe a patent related to methods of toning muscles using time-varying magnetic fields.
• Technical Context: The technology concerns non-invasive aesthetic treatments that use high-intensity, focused electromagnetic energy to induce muscle contractions for body sculpting purposes.
• Key Procedural History: The complaint alleges that Plaintiff’s counsel sent multiple demand letters to Defendants beginning on August 4, 2023, informing them of the alleged infringement, but received no response. This history may be relevant to the allegations of willful infringement.

Case Timeline

Date	Event
2016-07-01	Earliest Priority Date for U.S. Patent No. 10,478,634
2018-01-01	Plaintiff launched its first EMSCULPT® device
2019-11-19	U.S. Patent No. 10,478,634 Issued
2023-08-04	Plaintiff sent first demand letter to Defendants
2023-08-07	Plaintiff sent demand letter to Defendants via Certified Mail
2023-11-30	Plaintiff sent follow-up letter to Defendants
2024-06-03	Plaintiff sent another follow-up letter to Defendants
2024-09-24	Complaint Filed

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

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 (’634 Patent).

The Invention Explained

• Problem Addressed: The patent’s background section notes that common non-invasive aesthetic treatments based on mechanical or thermal energy have drawbacks, such as the risk of panniculitis (inflammation of subcutaneous fat), non-homogenous results, and an inability to effectively shape or tone muscle ('634 Patent, col. 2:15-31). Existing magnetic methods were described as inefficient and limited by key parameters, wasting energy and creating unwanted heat ('634 Patent, col. 2:37-46).
• The Patented Solution: The invention proposes a method for aesthetic treatment using a time-varying magnetic field with a magnetic flux density sufficient to induce muscle contractions ('634 Patent, Abstract). This method aims to provide focused remodeling of a patient's body, such as toning muscles on the abdomen or buttocks, by directly stimulating muscle tissue in a targeted manner ('634 Patent, col. 18:31-51). The technology is designed to be more efficient, in part by using individually insulated wires in the magnetic field generator to reduce self-heating ('634 Patent, col. 3:20-28).
• Technical Importance: The claimed approach provides a non-invasive method for directly targeting and strengthening muscles for aesthetic purposes, an effect that prior thermal or mechanical treatments could not achieve ('634 Patent, col. 2:26-31).

Key Claims at a Glance

• The complaint asserts infringement of at least independent claim 1 (Compl. ¶34).
• 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 to hold the applicator in place.
  • 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.
  • Wherein the magnetic field is applied with a magnetic flux density sufficient to cause a muscle contraction.
• The complaint does not explicitly reserve the right to assert dependent claims, but the prayer for relief requests a judgment of infringement of "one or more claims" (Compl. p. 30, Prayer A).

III. The Accused Instrumentality

Product Identification

• The complaint identifies six accused devices: Exquisite 2 in 1 Fat Freezing Body Slimming EMSculpt NEO Machine; Exquisite EMS Sculpt Electromagnetic Slimming & Muscle Shaping Machine; Exquisite Four Handle EM Sculpt Fat Burning Therapy; Exquisite Four Handle EMS Sculpt Therapy; Exquisite Non-Invasive Body Sculpting Focused Electromagnetic Contour Machine; and Exquisite One Handle EMS Sculpt Machine (collectively, the "Accused Devices") (Compl. ¶26, pp. 7-9).

Functionality and Market Context

• The complaint alleges the Accused Devices are aesthetic body-contouring machines that use electromagnetic energy to tone muscles and reduce fat (Compl. ¶¶37, 43, 48). For example, the landing page for the "Exquisite EMS Sculpt Electromagnetic Slimming & Muscle Shaping Machine" allegedly states the device is "approved to burn fat and build muscle mass" and "yield[s] better muscle tone" (Compl. ¶37). A table in the complaint provides an image of each device, such as the "Exquisite 2 in 1 Fat Freezing Body Slimming EMSculpt NEO Machine," which depicts a central console with multiple applicators attached (Compl. p. 7). The complaint alleges Defendants market these devices using terms confusingly similar to Plaintiff's "EMSCULPT" trademarks, suggesting they compete in the same market for non-invasive body contouring (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...	Defendants allegedly encourage and instruct customers to use the Accused Devices for muscle toning. Marketing materials for the devices state they are "approved to burn fat and build muscle mass" and "yield[s] better muscle tone." The devices are alleged to use "high-intensity focused energy" in the form of time-varying magnetic waves.	¶35-41	col. 17:52-54
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;	The Accused Devices allegedly include at least one applicator with a magnetic field generating coil. Marketing materials allegedly state the devices are configured to "treat your abdomen, buttocks, arms, calves, and thighs," and instruct users to place the applicator or "treatment head" on the patient's skin or clothing to effect treatment.	¶58-66	col. 18:35-40
coupling the first applicator to the patient with an adjustable flexible belt so that the belt holds the applicator to the patient's skin or clothing;	The Accused Devices allegedly come with "bindings" or "adjustable flexible belts" that are used to hold the applicators or handles to the patient during treatment.	¶76-79	col. 10:56-62
providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and	The Accused Devices allegedly include power supplies that transmit energy to the applicators to generate time-varying magnetic fields. Product images allegedly depict power cord insertion points, and marketing materials reference a "power supply line."	¶86-92	col. 12:5-10
applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region.	On information and belief, the Accused Devices are alleged to generate and deliver magnetic fields that have a magnetic fluence within the claimed range of 50–1,500 T cm². The complaint states that discovery will show this to be the case.	¶105-109	col. 14:9-15
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 landing pages for the Accused Devices allegedly promote their ability to cause muscle contractions, with statements such as "cause[s] thousands of powerful muscle contractions" and treatment "equivalent to 30,000 abdominal contractors/squat muscle contractions."	¶113-119	col. 17:65 - 18:2

• Identified Points of Contention:
  • Evidentiary Question: A central factual question is whether the Accused Devices actually apply a magnetic fluence within the specific numerical range of 50 T cm² to 1,500 T cm², as required by claim 1. The complaint alleges this on "information and belief," indicating that this will be a key subject for discovery and expert testing (Compl. ¶¶106-109).
  • Scope Question: The analysis may raise the question of whether the "bindings" alleged to be supplied with some Accused Devices (Compl. ¶78) meet the "adjustable flexible belt" limitation of the claim. The construction of "belt" could become a point of dispute.
  • Technical Question: The infringement theory relies on marketing statements from Defendants' websites to show that the devices perform the claimed function of causing muscle contraction (Compl. ¶¶116-123). A potential point of contention is whether the operational reality of the Accused Devices matches the functional requirements of the claim, or if the marketing language is merely puffery.

V. Key Claim Terms for Construction

• The Term: "applying a magnetic fluence of 50 T cm² to 1,500 T cm²"

• Context and Importance: This term is critical because it sets a specific, quantitative boundary for the claimed method. Infringement will hinge on whether the Accused Devices can be proven to operate within this precise numerical range. Practitioners may focus on this term because the complaint's allegations are based on "information and belief," making this a central evidentiary hurdle for the Plaintiff.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent specification describes the magnetic fluence in broad terms, stating the device "may generate" a field within this range, potentially suggesting that the capability to operate in the range is sufficient, not necessarily that it always operates in that range during normal use ('634 Patent, col. 14:9-15).
  • Evidence for a Narrower Interpretation: The claim language uses the active verb "applying," which may be construed to require that the accused method actually deliver a fluence within this range during an infringing use, not merely that the device is capable of doing so. The patent defines "magnetic fluence" with a specific formula (Eq. 4), tying it directly to the peak-to-peak magnetic flux density and the area of the generator ('634 Patent, col. 14:1-4).

• The Term: "coupling the first applicator to the patient with an adjustable flexible belt"

• Context and Importance: The definition of this term is key to determining whether the means used to secure the applicators of the Accused Devices fall within the claim scope. The complaint refers to the accused securing means as "bindings," which raises a potential definitional dispute over whether "bindings" are equivalent to a "belt" ('634 Patent, col. 10:56-62; Compl. ¶78).

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the "positioning member" in general terms as potentially being an "adjustable flexible belt" but does not appear to strictly limit it to a single embodiment, which may support a broader construction that covers any flexible, adjustable strap-like device used for securing the applicator ('634 Patent, col. 10:51-54).
  • Evidence for a Narrower Interpretation: A defendant might argue that the term "belt" should be construed according to its plain and ordinary meaning, which may not encompass all forms of "bindings." The patent also discusses the belt in the context of a "positioning member" that ensures "tight attachment," which could be argued to imply specific structural or functional characteristics not present in the accused "bindings" ('634 Patent, col. 10:55-59).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct customers to use the Accused Devices in a manner that directly infringes claim 1 (Compl. ¶34). The basis for this allegation includes the content of the product landing pages, which allegedly describe using the devices to tone muscles on the abdomen and buttocks (Compl. ¶¶36, 61, 65). An Instagram post is also referenced, which uses hashtags like "#emsculptneo" and "#emsculpt" to promote an accused device (Compl. ¶29).
• Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge of the ’634 patent. The complaint asserts that Defendants were aware of the patent because Plaintiff sent four demand letters starting on August 4, 2023, which went unanswered (Compl. ¶28, ¶127). The complaint also references Plaintiff's patent marking website as a source of notice (Compl. ¶127).

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

• A core issue will be one of evidentiary proof: can Plaintiff demonstrate through discovery and expert testing that the Accused Devices, during their operation, actually generate and apply a "magnetic fluence" within the numerically-limited range of 50 T cm² to 1,500 T cm² as required by the asserted claim?
• A key question will be one of functional performance: does the evidence, including Defendants' marketing materials and the technical operation of the Accused Devices, establish that the machines apply a magnetic field with a "magnetic flux density sufficient to cause a muscle contraction," or does the functionality of the accused products differ in a material way from that required by the claim?
• A secondary issue may be one of definitional scope: can the term "adjustable flexible belt," as used in the patent, be construed to read on the "bindings" allegedly provided with the Accused Devices, or is there a material difference in structure or function that places the accused products outside the scope of the claim?