DCT
2:24-cv-01659
BTL Industries Inc v. Muneca Curves LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: Muneca Curves, LLC (New York)
- Plaintiff’s Counsel: Chinta & Fratangelo LLP; Patterson Intellectual Property Law, P.C.
- Case Identification: 2:24-cv-01659, E.D.N.Y., 03/05/2024
- Venue Allegations: Venue is alleged to be proper because Defendant maintains its principal place of business in the district and the acts of infringement allegedly occurred there.
- Core Dispute: Plaintiff alleges that Defendant’s aesthetic body-contouring device and services infringe a patent related to using time-varying magnetic fields to tone muscles, in addition to claims of trademark infringement and unfair competition.
- Technical Context: The technology relates to non-invasive aesthetic treatments that use high-intensity, focused electromagnetic energy to induce powerful muscle contractions for body sculpting and muscle toning.
- Key Procedural History: The complaint alleges that Plaintiff’s counsel sent Defendant a letter on June 22, 2023, informing it of its allegedly infringing activities, followed by additional communications that were reportedly rebuffed, which may form the basis for allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2019-11-19 | ’634 Patent Issue Date |
| 2023-03-01 | Alleged Infringing Activity Begins (approx.) |
| 2023-06-22 | Plaintiff Sends First Letter Alleging Infringement |
| 2024-03-05 | 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 (the “’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) or non-homogenous results, and are not able to provide enhanced visual appearance of muscle, such as through shaping or toning (’634 Patent, col. 2:15-36).
- The Patented Solution: The invention proposes a method for aesthetic treatment, such as muscle toning, by applying a time-varying magnetic field to a patient (’634 Patent, Abstract). An applicator containing a magnetic field generating coil is placed on a body region, and energy is provided to the coil to generate a magnetic field with a flux density sufficient to induce muscle contractions, including "supramaximal" contractions not achievable voluntarily, thereby remodeling the underlying biological structure (’634 Patent, col. 1:52-58; col. 20:17-24).
- Technical Importance: This technology provided a method for non-invasively targeting and stimulating deep muscle tissue to achieve aesthetic improvements, an effect the patent asserts was not effectively provided by prior mechanical or thermal treatments (Compl. ¶13; ’634 Patent, col. 2:26-32).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶28).
- The essential elements of independent claim 1 are:
- A method for toning muscles in a patient using time-varying magnetic fields, the method comprising:
- 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;
- 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;
- providing energy to the magnetic field generating coil in order 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, 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 generally alleges infringement of "one or more claims" (Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is identified as the "Counterfeit Device," which Defendant allegedly advertises using the name "EMSCULPT" (Compl. ¶25).
Functionality and Market Context
- The complaint alleges that the Counterfeit Device is advertised for toning muscles and functions by using time-varying magnetic fields applied to a patient's skin (Compl. ¶25). A photograph included in the complaint shows the accused device’s applicator being held to a patient’s abdomen with a flexible belt (Compl. ¶23, p. 9).
- The functionality is alleged to include an applicator with a magnetic-field-generating coil that generates a time-varying magnetic field, applies a magnetic flux of 50 T cm² to 1,500 T cm², and causes muscle contraction (Compl. ¶25). Marketing materials cited in the complaint claim the service "BUILDS MUSCLE/BURNS FAT" and provides the equivalent of "20,000 CRUNCHES/SQUATS-30MINUTES" (Compl. ¶23, p. 10).
IV. Analysis of Infringement Allegations
- ’634 Patent 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 of the patient, wherein the body region is an abdomen or a buttock | Defendant’s Counterfeit Device is allegedly used with an applicator that includes a magnetic-field-generating coil and is applied to a patient’s skin for muscle toning. A visual shows application to the abdomen. | ¶25; ¶23, p. 9 | col. 28:15-18 |
| 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 Counterfeit Device is allegedly used with a flexible belt attached to the applicator that holds it in place. A visual shows a belt wrapped around the patient and applicator. | ¶25; ¶23, p. 9 | col. 10:51-62 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field | The complaint alleges that the magnetic-field-generating coil generates a time-varying magnetic field. | ¶25 | col. 11:62-12:3 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region | The device is alleged to apply a magnetic flux of 50 T cm² to 1,500 T cm². | ¶25 | col. 14:13-15 |
| 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 device is alleged to apply a magnetic field that causes muscle contraction. | ¶25 | col. 17:9-12 |
Identified Points of Contention
- Evidentiary Questions: The complaint’s infringement allegations closely track the language of Claim 1. A primary point of contention may be evidentiary. For example, a key question for the court will be what proof Plaintiff offers to demonstrate that the accused "Counterfeit Device" in fact generates a "magnetic fluence of 50 T cm² to 1,500 T cm²" as required by the claim, an allegation currently made "upon information and belief" (Compl. ¶25).
- Scope Questions: The term "coupling" may raise a scope question. The court may need to determine if the alleged use of a flexible belt to hold the applicator in place on the patient constitutes "coupling the first applicator to the patient with an... belt," as recited in the claim, or if a more direct mechanical connection is required by the patent's disclosure.
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
Context and Importance: This quantitative limitation is central to the infringement analysis for Claim 1. Proving that the accused device operates within the specific numerical range of "50 T cm² to 1,500 T cm²" will be critical for the Plaintiff. The definition and method of measurement for this term could become a key dispute.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent provides an explicit formula: "MF=BPP*AMFGD" (magnetic fluence equals maximal peak-to-peak magnetic flux density multiplied by the area of the magnetic field generating device) (’634 Patent, col. 14:1-4). A party may argue that any measurement consistent with this formula falls within the claim, and that the specified numerical range should be interpreted plainly.
- Evidence for a Narrower Interpretation: A party may argue that the term's scope should be informed by the preferred embodiments disclosed in the specification, which describe a "more preferably" range of "75 to 15000 T·cm²" and an "even more preferably" range of "80 to 2000 T·cm²" (’634 Patent, col. 14:13-15). This could be used to argue about the context of the claimed range.
The Term: "coupling the first applicator to the patient with an adjustable flexible belt"
Context and Importance: Practitioners may focus on this term because it requires a specific structural and functional relationship between the belt and the applicator. Infringement depends not just on the presence of a belt, but on its role in "coupling" the applicator to the patient.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes a "positioning member" that "may be e.g. an arm or an adjustable flexible belt" and which "may ensure tight attachment of the applicator" (’634 Patent, col. 10:51-56). This language may support an interpretation where any belt that secures the applicator in place satisfies the limitation.
- Evidence for a Narrower Interpretation: The specification also describes an embodiment where the applicator has a "concavity" that "may enable inserting a positioning member such as a length adjustable belt" (’634 Patent, col. 10:30-32). A party could argue that "coupling" requires this type of specific mechanical interface between the belt and the applicator, rather than simply wrapping a belt around both the patient and the applicator's exterior.
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. ¶29).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the ’634 Patent both before and after the complaint was filed (Compl. ¶30). The complaint cites BTL’s online patent marking and alleges that Defendant was directly informed of its infringement via a letter sent on June 22, 2023, but continued its activities (Compl. ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: can Plaintiff demonstrate, beyond the "upon information and belief" pleading standard, that the accused device generates the specific, quantitative "magnetic fluence" of 50 to 1,500 T·cm² required by the asserted claim, or will discovery reveal a technical mismatch?
- A second core question will relate to willfulness: given the complaint’s specific allegations of pre-suit notice via letter and subsequent communications, the court will likely examine whether Defendant’s alleged continuation of its activities after being notified rises to the level of willful and malicious conduct sufficient to justify enhanced damages.