DCT

1:23-cv-04360

BTL Industries Inc v. Beauty Queen BY IRINA Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-04360, E.D.N.Y., 06/13/2023
  • Venue Allegations: Venue is alleged to be proper as Defendant Body Spa has its principal place of business in the district, and Defendant Irina Khaimov is a resident of the district.
  • Core Dispute: Plaintiff alleges that Defendants' aesthetic body-contouring services, which utilize devices purported to be counterfeit versions of Plaintiff's products, infringe a patent directed to methods for toning muscles using time-varying magnetic fields.
  • Technical Context: The technology involves non-invasive aesthetic treatments that use high-intensity focused electromagnetic energy to induce supramaximal muscle contractions for the purpose of body sculpting.
  • Key Procedural History: The complaint alleges that Plaintiff's attorneys sent Defendants three letters apprising them of the alleged infringement, with the first dated more than a year prior to the complaint's filing, which may be relevant to the allegation of willful infringement.

Case Timeline

Date Event
2015-07-01 ’634 Patent Priority Date
2018-01-01 Plaintiff launches EMSCULPT device
2019-11-19 ’634 Patent Issue Date
2022-05-24 Plaintiff sends first notice letter to Defendants
2022-09-06 Plaintiff sends second notice letter to Defendants
2023-04-17 Plaintiff sends third notice letter to Defendants
2023-06-13 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"

  • Patent Identification: U.S. Patent No. 10,478,634, “Aesthetic Method of Biological Structure Treatment by Magnetic Field,” issued November 19, 2019. (Compl. ¶19).

The Invention Explained

  • Problem Addressed: The patent’s background section notes that common aesthetic treatments based on mechanical or thermal energy can have drawbacks such as pain, overheating, or non-homogenous results, and are generally not capable of enhancing the visual appearance of muscle. (’634 Patent, col. 2:4-32). Existing magnetic methods are described as being limited in key parameters, which prevents satisfactory enhancement of visual appearance. (’634 Patent, col. 2:32-35).
  • The Patented Solution: The invention is a method for aesthetic treatment that uses a time-varying magnetic field with a high magnetic flux density sufficient to induce muscle contractions. (’634 Patent, Abstract). The method is intended for focused remodeling of a patient’s body, such as targeted muscle contraction, which can enhance the visual appearance of the treated body region. (’634 Patent, col. 3:36-64).
  • Technical Importance: This approach claims to enable stronger muscle contractions at higher repetition rates than previously available, making the treatment more efficient for reducing adipocytes and enhancing the visual appearance of muscles. (’634 Patent, col. 3:55-61).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶33).
  • The essential elements of Claim 1 are:
    • A method for toning muscles in a patient using time-varying magnetic fields, comprising:
    • placing a first applicator with a magnetic field generating coil in contact with a patient's skin or clothing at an abdomen or a buttock;
    • coupling the applicator to the patient with an adjustable flexible belt to hold it to the patient's skin or clothing;
    • providing energy to the coil 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, with a magnetic flux density sufficient to cause muscle contraction. (Compl. ¶32; ’634 Patent, col. 95:52-96:67).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is the method of providing aesthetic services using devices that Defendants advertise as "EMSCULPT" and "EMSCULPT NEO," which the complaint labels "Counterfeit Devices." (Compl. ¶¶27, 29).

Functionality and Market Context

  • The complaint alleges, upon information and belief, that the accused method involves using devices that generate time-varying magnetic fields via an applicator held to a patient's skin with a flexible belt. (Compl. ¶29). The image provided in the complaint shows an applicator with "EMSCULPT neo" branding strapped to a patient's abdomen. (Compl. p. 11). The complaint further alleges that the method involves applying a magnetic flux of 50 T cm² to 1,500 T cm² to cause muscle contraction, directly mapping the accused functionality to the language of the asserted patent claim. (Compl. ¶29). Defendants are alleged to promote these services online through their own website and via Groupon postings under various business names. (Compl. ¶¶26-27).

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... 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' method uses an applicator with a magnetic-field-generating coil that is applied to a patient's skin for toning muscles. ¶29 col. 30:52-62
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 method uses a flexible belt attached to the applicator to hold it in place on the patient. ¶29 col. 10:56-57
providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field The accused devices allegedly generate a time-varying magnetic field from the magnetic-field-generating coil. ¶29 col. 11:60-67
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 Upon information and belief, the accused method applies a magnetic flux within the claimed range, causing muscle contraction. ¶29 col. 14:1-21

Identified Points of Contention

  • Technical Questions: A primary evidentiary question will be one of proof. The complaint alleges "upon information and belief" that the accused method meets the specific numerical limitation of applying a "magnetic fluence of 50 T cm² to 1,500 T cm²" (Compl. ¶29). This raises the question of what technical evidence Plaintiff will produce to demonstrate that the so-called "Counterfeit Devices" actually operate within this claimed range, an issue that will likely require device testing and expert testimony.
  • Scope Questions: The infringement analysis may raise a question regarding the functional scope of the "coupling" limitation. The claim requires the belt to be coupled "so that the belt holds the first applicator." A potential dispute could arise over whether the belts used in the accused method perform this specific function of "holding" the applicator, or if they serve a different, potentially non-infringing purpose, such as simple stabilization while an operator provides the primary positioning and holding force.

V. Key Claim Terms for Construction

  • The Term: "magnetic fluence"
  • Context and Importance: This term is central to the dispute as it is defined by a specific numerical range (50 T cm² to 1,500 T cm²) that the accused method must meet. Its construction, and particularly the methodology for measuring it on an accused device, will be critical for determining infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent provides a specific formula for calculating magnetic fluence: MF=BPP*AMFGD, where BPP is the maximal peak to peak magnetic flux density and AMFGD is the area of the magnetic field generating device. (’634 Patent, col. 14:1-6). A party could argue this explicit definition should be applied straightforwardly to any device that generates a magnetic field.
    • Evidence for a Narrower Interpretation: The context surrounding the definition, including the detailed description of the magnetic field generating device's construction from specific types of insulated wires, could be used to argue that the "magnetic fluence" must be measured in a manner consistent with the particular device structures disclosed in the patent. (’634 Patent, col. 8:9-14).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct customers to use the accused devices in an infringing manner. (Compl. ¶34).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’634 Patent. The complaint specifically identifies three notice letters sent to Defendants, with the first dated May 24, 2022, more than a year before the suit was filed. (Compl. ¶¶24, 35). The complaint also alleges that Plaintiff’s products are marked with a reference to an online patent listing. (Compl. ¶35).

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

  • A core issue will be one of evidentiary proof: can Plaintiff produce technical evidence, likely through expert testing, to demonstrate that the accused "Counterfeit Devices" actually generate a "magnetic fluence of 50 T cm² to 1,500 T cm²" as required by Claim 1? The "information and belief" pleading for this specific technical limitation highlights it as a central factual battleground.
  • A key legal question will be one of willfulness: given the specific allegation that Defendants were notified of their potential infringement on three separate occasions starting more than a year before the lawsuit, the court will have to evaluate whether any continuing infringement after such notice was willful, which could expose Defendants to enhanced damages.