DCT

1:23-cv-08617

BTL Industries, Inc v. Versalini Beauty & Spa Salon

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-08617, S.D.N.Y., 09/29/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant having principal places of business within the Southern District of New York.
  • Core Dispute: Plaintiff alleges that Defendant’s body-contouring service, which utilizes a device advertised as "EMSCULPT," infringes a patent related to aesthetic treatment using magnetic fields.
  • Technical Context: The technology at issue involves non-invasive aesthetic body contouring through the application of high-intensity, time-varying magnetic fields to induce supramaximal muscle contractions.
  • Key Procedural History: The complaint alleges that Plaintiff sent pre-suit notice letters to Defendant regarding the infringing conduct on November 2, 2022, and August 28, 2023, which may be relevant to the allegation of willful infringement.

Case Timeline

Date Event
2016-07-01 ’634 Patent Priority Date
2019-11-19 ’634 Patent Issue Date
2022-01-04 Date of Defendant's social media post showing Accused Device
2022-07-05 Date of Defendant's social media post showing Accused Device
2022-11-02 Plaintiff sends first pre-suit notice letter to Defendant
2023-08-28 Plaintiff sends second pre-suit notice letter to Defendant
2023-09-29 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 Invention Explained

  • Problem Addressed: The patent’s background section notes that common non-invasive aesthetic methods based on mechanical or electromagnetic waves have drawbacks, such as the risk of overheating, non-homogenous results, and an inability to provide muscle shaping, toning, or volumization. (’634 Patent, col. 2:15-32). Existing magnetic methods are described as being limited in key parameters that prevent satisfactory enhancement of visual appearance. (’634 Patent, col. 2:32-36).
  • The Patented Solution: The invention proposes a method of using a time-varying magnetic field with a high magnetic flux density sufficient to induce strong muscle contractions. (’634 Patent, Abstract; col. 18:32-51). This approach claims to remodel biological structures by, for example, reducing adipose tissue and increasing muscle volume and strength, thereby enhancing the visual appearance of a treated body region. (’634 Patent, col. 17:56-64; col. 19:54-61).
  • Technical Importance: This technology provided a non-invasive method for concurrently affecting both muscle and adipose tissue for aesthetic purposes, addressing shortcomings of prior treatments that targeted these structures separately. (’634 Patent, col. 18:5-15).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 1. (Compl. ¶28).
  • The essential elements of 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 applicator to the patient with an adjustable flexible belt that holds it to the patient's skin or clothing.
    • 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 with a magnetic flux density sufficient to cause muscle contraction.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The accused instrumentality is a service offered by Defendant that uses a device advertised as "EMSCULPT" (the "Accused Device"). (Compl. ¶22). The complaint alleges, upon information and belief, that the Accused Device is not an authentic BTL product. (Compl. ¶25).

Functionality and Market Context

  • The complaint alleges that the Accused Device uses time-varying magnetic fields applied to a patient's skin via an applicator containing a magnetic-field-generating coil. (Compl. ¶25). This applicator is allegedly held in place by a flexible belt. (Compl. ¶25). A screenshot from Defendant's website describes the treatment as using "high-intensity focused electromagnetic energy to target and stimulate muscle contractions" and shows an applicator strapped to a patient's abdomen (Compl. p. 9). The complaint further alleges, on information and belief, that the device generates a magnetic fluence within a specific numerical range and causes muscle contraction. (Compl. ¶25). The service is advertised for toning muscles in various body regions, including the abdomen and buttocks. (Compl. p. 9).

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... an abdomen or a buttock; The Accused Device is alleged to use an applicator with a coil that is placed on the patient's skin in regions including the abdomen and buttocks. ¶25, p. 9 col. 18:32-37
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 Device is alleged to be held to the patient's skin using a flexible belt attached to the applicator. ¶25 col. 10:51-54
providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and The coil in the Accused Device is alleged to generate a time-varying magnetic field. ¶25 col. 11:62-12:2
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 a muscle contraction in the body region. The Accused Device is alleged, on information and belief, to apply a magnetic flux of 50 T cm² to 1,500 T cm² and to cause muscle contraction. ¶25 col. 14:7-16
  • Identified Points of Contention:
    • Technical Question: The complaint's allegation that the Accused Device applies a "magnetic fluence of 50 T cm² to 1,500 T cm²" is made "on information and belief." (Compl. ¶25). A primary evidentiary question for the court will be what proof Plaintiff can produce to demonstrate that the Accused Device, as used by Defendant, actually operates within this specific, numerically-defined range required by the claim.
    • Scope Questions: The complaint's allegations regarding the technical operation of the Accused Device (e.g., use of a flexible belt, application of a time-varying field) are also made "on information and belief." (Compl. ¶25). While the Defendant's advertising materials appear to corroborate the general function, discovery will be required to confirm whether the device's actual components and method of operation meet the specific claim limitations, such as the function of the "adjustable flexible belt."

V. Key Claim Terms for Construction

  • The Term: "magnetic fluence"

    • Context and Importance: This term, with its specific numerical range of "50 T cm² to 1,500 T cm²," is a critical limitation of Claim 1. The infringement analysis for this element will depend entirely on a factual determination of whether the Accused Device operates within this range. While the term itself is defined in the patent, its application to the accused device will be a central point of dispute.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides a formula for calculating magnetic fluence (MF=BPP*AMFGD) and discloses a very broad potential range of "5 to 60000 T·cm²." (’634 Patent, col. 14:3-10). Plaintiff may argue that the term should be understood in the context of this broad disclosure, with the claim simply reciting one operative embodiment of that range.
      • Evidence for a Narrower Interpretation: Defendant’s arguments may focus less on claim construction and more on non-infringement, asserting that its device operates outside the specific range recited in the claim. The claim language itself provides the narrow definition, and the dispute will likely center on whether the facts support a finding that the accused device meets that definition.

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

    • Context and Importance: The precise meaning of "coupling" and the structural requirements of the "adjustable flexible belt" could become points of contention. Practitioners may focus on this term because infringement will depend on whether the physical strap used with the Accused Device performs the claimed function of "coupling" and "holding" the applicator.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes a "positioning member" that can be an "adjustable flexible belt" and states its purpose is to "ensure tight attachment" or "direct contact." (’634 Patent, col. 10:51-58). Plaintiff may argue that any flexible strap that secures the applicator in its functional position meets this limitation.
      • Evidence for a Narrower Interpretation: The specification also discloses specific embodiments, such as an applicator with a concavity for inserting the positioning member. (’634 Patent, col. 10:29-32). A defendant could argue that the term "coupling" implies a more integrated or specific connection than merely strapping a device to a patient.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendant encourages, promotes, and instructs customers to use the Accused Device in a manner that infringes the ’634 patent. (Compl. ¶29).
  • Willful Infringement: Willfulness is alleged based on pre-suit knowledge of the ’634 patent. The complaint cites two notice letters sent to Defendant on November 2, 2022, and August 28, 2023, as well as constructive notice via Plaintiff's online patent marking. (Compl. ¶¶22, 30).

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

  • A central issue will be one of technical proof: what evidence can Plaintiff produce during discovery to substantiate its "information and belief" allegation that the Accused Device generates a "magnetic fluence" that falls within the specific numerical range of "50 T cm² to 1,500 T cm²" recited in Claim 1?
  • A key legal question will be one of willfulness and intent: given the two alleged pre-suit notice letters, can Plaintiff demonstrate that Defendant’s continued offering of the accused service constituted willful infringement, which could form the basis for an award of enhanced damages?