DCT
1:23-cv-09104
BTL Industries Inc v. Bioskin Laser LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: BioSkin Laser LLC, BioSkin Laser II LLC, and Santa Cohen (New York)
- Plaintiff’s Counsel: Chinta & Fratangelo LLP
- Case Identification: 1:23-cv-09104, S.D.N.Y., 10/17/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendants maintain principal places of business within the district and the alleged acts of infringement occurred there.
- Core Dispute: Plaintiff alleges that Defendants’ aesthetic muscle-toning services, which use a non-authentic device, infringe a patent related to methods of treating biological structures with magnetic fields.
- Technical Context: The technology concerns non-invasive aesthetic treatments that use high-intensity, focused electromagnetic energy to induce powerful muscle contractions for the purpose of body contouring and muscle toning.
- Key Procedural History: Plaintiff alleges it sent Defendants three notice letters regarding their infringing conduct, beginning on November 1, 2022, but Defendants did not respond and continued their activities.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-01 | ’634 Patent Priority Date |
| 2018-01-01 | Plaintiff launches its EMSCULPT® device (approximate date) |
| 2019-11-19 | U.S. Patent No. 10,478,634 Issues |
| 2022-11-01 | Alleged Infringement Begins; Plaintiff sends first notice letter |
| 2023-02-03 | Plaintiff sends second notice letter |
| 2023-07-19 | Plaintiff sends third notice letter |
| 2023-10-17 | 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.
The Invention Explained
- Problem Addressed: The patent describes a need for new non-invasive aesthetic treatments that can enhance the visual appearance of muscles through shaping and toning, an effect that conventional mechanical or thermal treatments were unable to provide. Existing magnetic methods were described as being limited in key parameters and energy efficiency. (’634 Patent, col. 2:26-36).
- The Patented Solution: The invention is a method that uses a time-varying magnetic field to treat a patient. An applicator containing a magnetic field generating coil is placed on a target body region, such as the abdomen or buttocks, and secured with a belt. The applicator generates a magnetic field with sufficient flux density to induce supramaximal muscle contractions, which are unachievable voluntarily, thereby remodeling the muscle tissue and surrounding structures for an improved aesthetic appearance. (’634 Patent, col. 19:18-24; col. 2:50-60).
- Technical Importance: This method provided a non-invasive way to directly target and stimulate deep muscle tissue for aesthetic improvement, distinct from surface-level treatments focused on skin or fat. (’634 Patent, col. 18:5-15).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1. (Compl. ¶29).
- Claim 1 of the ’634 patent recites the following essential elements for a method of toning muscles:
- 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 it 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.
- The applied magnetic field must have a magnetic flux density sufficient to cause a muscle contraction in the body region.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is a device advertised by Defendants as "EMSCULPT" and referred to in the complaint as the "Counterfeit Device." (Compl. ¶27).
Functionality and Market Context
- The complaint alleges the Counterfeit Device is used to provide muscle toning services to patients. (Compl. ¶27). Its alleged functionality involves an applicator containing a magnetic-field-generating coil that is held against a patient's skin by a flexible belt. This applicator generates a time-varying magnetic field that is applied to the patient to cause muscle contraction. (Compl. ¶27). The complaint includes an Instagram image showing a patient undergoing treatment on their legs with two applicators held in place by black straps. (Compl. p. 11). The device is advertised using Plaintiff's "EMSCULPT" trademark and BTL's logo, suggesting it is marketed to consumers as an authentic BTL product. (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, the method comprising: | Defendants advertise a service for toning muscles in a patient using a device that employs time-varying magnetic fields. | ¶27 | col. 2:50-52 |
| 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 Counterfeit Device uses an applicator with a magnetic-field-generating coil that is applied to a patient's skin. The complaint alleges the device is advertised for toning muscles, and the patent identifies the abdomen and buttock as primary treatment areas. | ¶27 | col. 23:43-47 |
| 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 held in place using a flexible belt attached to the applicator. An image from Defendants' Instagram account depicts applicators held to a patient's body with straps. | ¶27; p. 11 | col. 10:52-56 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; | The complaint alleges the Counterfeit Device's magnetic-field-generating coil generates a time-varying magnetic field. | ¶27 | col. 11:64-67 |
| and applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, | The complaint alleges on information and belief that the device applies a magnetic flux of 50 T cm² to 1,500 T cm². | ¶27 | col. 14:20-22 |
| 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 alleges the device causes muscle contraction. | ¶27 | col. 18:9-12 |
- Identified Points of Contention:
- Evidentiary Questions: A central question will be whether Plaintiff can produce evidence that the accused "Counterfeit Device" actually operates within the specific numerical range required for "magnetic fluence" (50 T cm² to 1,500 T cm²). The complaint makes this allegation "upon information and belief," suggesting discovery will be required to substantiate the claim.
- Scope Questions: The infringement analysis may raise the question of whether the visual evidence of straps holding applicators to a patient's legs (Compl. p. 11) supports the claim limitation requiring treatment of an "abdomen or a buttock." While the device may be capable of treating the claimed regions, the provided evidence shows a different application, which may require further proof from the plaintiff.
V. Key Claim Terms for Construction
The Term: "magnetic fluence"
Context and Importance: This term is critical because it introduces a specific, quantitative limitation into the claim (50 to 1,500 T cm²). The infringement case depends on Plaintiff proving that the accused method operates within this precise range. Practitioners may focus on this term because its definition and measurement methodology will be dispositive.
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 peak-to-peak magnetic flux density and AMFGD is the area of the magnetic field generating device. A party could argue that any device meeting the numerical outcome of this formula, regardless of its specific design, falls within the claim's scope. (’634 Patent, col. 14:1-7).
- Evidence for a Narrower Interpretation: A party could argue that the term must be understood in the context of the specific device configurations that generate it, such as the circular planar device described in Figure 6 and the associated text. This could suggest that the "magnetic fluence" is not just a number, but a characteristic of a specific type of device disclosed in the patent. (’634 Patent, col. 13:12-15; Fig. 6).
The Term: "coupling the first applicator to the patient with an adjustable flexible belt"
Context and Importance: This term defines the physical means by which the applicator is secured. Infringement requires showing that the accused method uses a structure that meets this definition. Practitioners may focus on this term to determine if the straps used with the accused device perform the same function in the same way as the claimed "belt."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the belt as a type of "positioning member" that "may ensure tight attachment of the applicator." This suggests a functional definition, where any adjustable and flexible member that secures the applicator would meet the limitation. (’634 Patent, col. 10:51-56).
- Evidence for a Narrower Interpretation: The patent also states the positioning member "may include a buckle for adjusting the length of the belt" and can be inserted into a "concavity" on the applicator. A party might argue that "belt" implies a more specific structure than a simple strap, potentially one incorporating features like buckles or specialized attachment points as described in the specification. (’634 Patent, col. 10:65-67; col. 11:1-2).
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants encourage, promote, and instruct customers to use the Counterfeit Device in a manner that directly infringes the ’634 patent. (Compl. ¶31).
- Willful Infringement: The willfulness allegation is based on alleged pre-suit knowledge. The complaint asserts that BTL informed Defendants of their infringement via letters on three separate occasions, starting on November 1, 2022, and that Defendants continued their conduct despite this notice. The complaint also alleges Defendants were aware of BTL's products and its online patent listings. (Compl. ¶¶24, 32).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Can the Plaintiff, through discovery and expert analysis, demonstrate that the accused "Counterfeit Device" generates a "magnetic fluence" that falls within the specific numerical range of 50 T cm² to 1,500 T cm² as required by Claim 1?
- A second key question will be one of contributory conduct and damages: Given that Defendants are alleged to be using Plaintiff's own trademark ("EMSCULPT") to advertise an infringing service with a "Counterfeit Device," how will this alleged "passing off" influence the court's analysis of infringement, willfulness, and the appropriate measure of damages?
- A final question will be one of claim scope: Does the structure used to secure the accused device's applicators, as depicted in the complaint's visual evidence, constitute an "adjustable flexible belt" that "couples" the applicator to the patient in the manner claimed by the patent?