DCT
1:25-cv-06916
BTL Industries Inc v. Berejuved Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: BTL Industries, Inc. (Delaware)
- Defendant: BeRejuved Inc. (New York), Jane Sodol, and Lev Zak
- Plaintiff’s Counsel: Dunnington Bartholow & Miller LLP
- Case Identification: 1:25-cv-06916, S.D.N.Y., 08/22/2025
- Venue Allegations: Venue is alleged to be proper as Defendants regularly conduct business in and have their principal place of business within the Southern District of New York.
- Core Dispute: Plaintiff alleges that Defendant’s aesthetic body- and face-contouring services, offered under the names "EMSculpting," "EMS Chair," and "EMS Non-Surgical Lift Face," infringe four patents related to electromagnetic stimulation technology for therapeutic and aesthetic treatments.
- Technical Context: The technology at issue involves the application of high-intensity, focused electromagnetic fields and radiofrequency energy to non-invasively tone muscle, sculpt body parts, and improve skin appearance.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with pre-suit notice of infringement via email and FedEx on April 30, 2025, and followed up via email on May 16, 2025, without receiving a response; this forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2015-07-01 | ’519 Patent Priority Date |
| 2016-07-01 | ’634 Patent Priority Date |
| 2016-12-DD | Plaintiff’s EMSELLA receives FDA clearance |
| 2017-05-02 | ’519 Patent Issue Date |
| 2018-06-DD | Plaintiff launches EMSCULPT device |
| 2019-11-19 | ’634 Patent Issue Date |
| 2020-05-04 | ’255 and ’167 Patents Priority Date |
| 2022-03-DD | Plaintiff’s EMFACE receives FDA clearance |
| 2022-09-DD | Plaintiff launches EMFACE device |
| 2023-06-20 | ’255 Patent Issue Date |
| 2024-01-23 | ’167 Patent Issue Date |
| 2025-02-08 | Alleged first advertisement of Accused "EMS Non-Surgical Lift Face" |
| 2025-04-30 | Alleged first advertisement of Accused "EMSculpting" & "EMS Chair" |
| 2025-04-30 | Plaintiff sends pre-suit notice letter to Defendants |
| 2025-08-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,636,519 - Magnetic Stimulation Methods and Devices for Therapeutic Treatments (Issued May 2, 2017)
The Invention Explained
- Problem Addressed: The patent addresses the engineering challenge of unwanted heat generated by the large electrical currents required in magnetic stimulation devices, which can limit efficiency and performance ('519 Patent, col. 1:39-49).
- The Patented Solution: The invention provides a magnetic stimulation device with a specific cooling architecture. It comprises a coil and a blower housed within a casing, where the blower is arranged on the circumference of the coil to enable a fluid, such as air, to flow over both the upper and lower sides of the coil, thereby cooling it during operation ('519 Patent, col. 8:1-13; Fig. 2). This configuration is designed to dissipate heat more effectively.
- Technical Importance: This cooling method allows the device to operate more efficiently, potentially enabling higher repetition rates or longer treatment durations without overheating, which were limitations of prior art devices ('519 Patent, col. 2:20-24).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶66).
- The essential elements of Claim 1 are:
- A magnetic stimulation device producing a time varying magnetic field for treatment.
- The device comprises a connection to an energy source, a switch, a coil, an energy storage device, at least one blower, and a case.
- The blower is arranged on a circumference of the coil.
- The coil and casing are arranged so that fluid can flow between them, cooling the coil on at least its upper and lower sides.
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 background describes a need for new non-invasive aesthetic methods that can enhance the visual appearance of muscles, such as through muscle shaping and toning, an effect not adequately provided by existing mechanical or thermal treatments (’634 Patent, col. 2:27-35).
- The Patented Solution: The invention is a specific method for toning muscles. The method involves placing an applicator containing a magnetic coil on a patient's abdomen or buttock, securing it with a flexible belt, and then applying a time-varying magnetic field with a specified magnetic fluence (50 T cm² to 1,500 T cm²) sufficient to induce muscle contractions (’634 Patent, col. 95:50-96:3).
- Technical Importance: The method provides a targeted, non-invasive protocol for aesthetic muscle treatment, aiming to achieve specific visual outcomes like toning and shaping in key body areas (’634 Patent, col. 2:50-54).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶76).
- The essential elements of Claim 1 are:
- A method for toning muscles using time-varying magnetic fields.
- Placing an applicator with a magnetic coil on a patient's abdomen or buttock.
- Coupling the applicator to the patient with an adjustable flexible belt.
- 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 cause muscle contraction.
U.S. Patent No. 11,679,255 - "Device and Method for Unattended Treatment of a Patient" (Issued June 20, 2023)
- Patent Identification: U.S. Patent No. 11,679,255, "Device and Method for Unattended Treatment of a Patient," issued June 20, 2023 (Compl. ¶42).
- Technology Synopsis: The ’255 Patent is directed to a device that uses a flexible, adhesive pad for unattended patient treatment. The pad contains an electrode configured to apply radiofrequency energy to cause heating and a pulsed electric current to cause muscle contraction, with a control unit managing both energies for treatment of the face, neck, or submentum (Compl. ¶87).
- Asserted Claims: Independent Claim 16 (Compl. ¶88).
- Accused Features: The "EMS Non-Surgical Lift Face" device, which allegedly uses flexible adhesive pads on a patient's face to deliver both radiofrequency energy for heating and pulsed electric current for muscle stimulation (Compl. ¶61, 90-91).
U.S. Patent No. 11,878,167 - "Device and Method for Unattended Treatment of a Patient" (Issued January 23, 2024)
- Patent Identification: U.S. Patent No. 11,878,167, "Device and Method for Unattended Treatment of a Patient," issued January 23, 2024 (Compl. ¶43).
- Technology Synopsis: The ’167 Patent claims a device for patient treatment comprising two separate generators—one for electromagnetic energy and one for electric current. These generators are coupled via a conductive lead to an electrode on a treatment pad, which has specific claimed surface area ranges for both the pad and the electrode, to simultaneously cause heating and muscle contractions (Compl. ¶104).
- Asserted Claims: Independent Claim 1 (Compl. ¶105).
- Accused Features: The "EMS Non-Surgical Lift Face" device, which is alleged to use two separate power sources governed by a control unit to power a flexible treatment pad that delivers both electromagnetic energy and electric current to the patient's skin (Compl. ¶62, 108, 109).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are three services/devices marketed by Defendants: “EMSculpting,” “EMS Chair,” and “EMS Non-Surgical Lift Face” (Compl. ¶47).
Functionality and Market Context
- The “EMSculpting” service is alleged to use an applicator, held by a flexible belt, to apply time-varying magnetic fields to a patient's skin to induce muscle contractions for body sculpting (Compl. ¶59).
- The “EMS Chair” is a device alleged to use time-varying magnetic fields to treat patients for conditions like urinary incontinence. The complaint alleges it contains an energy source, coil, casing, and at least one blower for cooling the coil (Compl. ¶60, 67). A screenshot from Defendant's website shows the chair used for "EMS Incontinence Treatment" (Compl. p. 29).
- The “EMS Non-Surgical Lift Face” device is alleged to use a flexible pad with an electrode to apply both radiofrequency energy (for heating) and pulsed electric currents (for muscle contraction) to a patient's face, neck, or submentum (Compl. ¶61). A promotional image shows flexible pads applied to a patient's face, conforming to its contours (Compl. p. 41). The complaint alleges these accused devices are not FDA-cleared and are marketed using names confusingly similar to Plaintiff’s products (Compl. ¶5, 63).
IV. Analysis of Infringement Allegations
’519 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A magnetic stimulation device producing a time varying magnetic field for treatment, comprising: | The Accused "EMS Chair" device is advertised as delivering "high-intensity electromagnetic waves" to stimulate muscles, which constitutes a magnetic stimulation device producing a time-varying magnetic field for treatment. | ¶67 | col. 8:1-3 |
| a connection to an energy source, a switch, a coil, an energy storage device, at least one blower and a case; | The device has a power cord (energy source connection), an external casing, and visible holes indicating the presence of a blower. The complaint alleges on information and belief that discovery will reveal the internal coil, switch, and energy storage device. | ¶68 | col. 8:4-6 |
| with the blower arranged on a circumference of the coil; | The complaint alleges on information and belief that a blower is arranged on the circumference of the coil, inferred from holes seen around the circumference of the chair's casing. | ¶69 | col. 8:7-8 |
| wherein the coil and the casing are arranged in a manner that fluid can flow in-between them and wherein the coil is cooled by fluid flow over at least upper and lower sides of the coil. | The complaint alleges that the holes around the device's circumference indicate that air (a fluid) is used to cool internal coils by flowing over their upper and lower sides. | ¶70 | col. 8:9-13 |
- Identified Points of Contention:
- Evidentiary Question: The complaint's allegations regarding the internal components of the "EMS Chair"—specifically the coil, switch, energy storage device, and the precise arrangement of the blower relative to the coil—are based on external observation and "information and belief" (Compl. ¶68-70). A central issue will be whether discovery confirms the internal architecture matches the specific structural limitations of Claim 1.
- Scope Question: The analysis may turn on the construction of "arranged on a circumference of the coil." The question for the court could be whether this requires a specific physical mounting or if proximity and functional relationship are sufficient, as suggested by the complaint’s reliance on visible air vents on the chair's exterior (Compl. p. 29).
’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 perform the "EMSculpting" method, which is advertised as a procedure that "uses High Intensity Focused Electromagnetic energy (HIFEM) to strengthen, firm, and tone muscle." | ¶77 | col. 95:50-52 |
| 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; | Defendants' promotional materials depict placing applicators, which allegedly contain magnetic coils, on the skin of a patient's abdomen or buttocks. A website image shows an applicator applied to a patient's abdomen (Compl. p. 33). | ¶78 | col. 95:53-57 |
| 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; | Promotional images show the applicators are attached to patients using an adjustable flexible belt. An image shows a black adjustable belt holding two applicators to a patient's abdomen (Compl. p. 35). | ¶79 | col. 95:58-61 |
| providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and | The complaint alleges that the "EMSculpting" method includes a power supply that transmits energy to the applicators, which in turn generate the time-varying magnetic fields. | ¶80 | col. 95:62-64 |
| applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, | The complaint alleges that the accused "EMSculpting" device applies a magnetic flux within this specified range to cause muscle contractions. | ¶59, 81 | col. 95:65-66 |
| 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. | Defendants' advertising promotes the device's ability to "induce[] muscle contractions at the rate of approximately 20,000 contractions per session." | ¶82 | col. 96:1-3 |
- Identified Points of Contention:
- Technical Question: A key factual dispute will likely concern the claimed numerical range of "magnetic fluence." The complaint alleges the accused device operates within the 50 T cm² to 1,500 T cm² range (Compl. ¶59, 81), but this is a technical parameter that will require measurement and expert analysis of the accused device to verify.
- Scope Question: Claim 1 is limited to a method applied to an "abdomen or a buttock." While Defendants advertise treatment for these areas, they also mention "arms, and thighs" (Compl. p. 33). The question for the court, though likely straightforward, is whether performing the claimed steps on a claimed body part constitutes infringement, regardless of whether the method is also applied elsewhere.
V. Key Claim Terms for Construction
For the ’519 Patent
- The Term: "blower arranged on a circumference of the coil"
- Context and Importance: This term defines the spatial relationship between the cooling mechanism and the heat-generating coil. Infringement depends on whether the accused "EMS Chair," with its external vents, meets this structural limitation. Practitioners may focus on this term because the complaint's evidence is inferential, based on external product photos rather than direct knowledge of the internal layout.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "At least one blower 4 can be placed around the circumference of the magnetic field generating device" ('519 Patent, col. 4:32-34). The use of "around" may support a construction that does not require direct physical mounting "on" the circumference, but rather a functional placement in the circumferential area.
- Evidence for a Narrower Interpretation: A defendant might argue that the term "on a circumference" implies a more direct and specific geometric arrangement than merely being in the general vicinity. However, the patent figures do not depict an arrangement so specific as to strongly support a narrowly limiting construction ('519 Patent, Fig. 2).
For the ’634 Patent
- The Term: "toning muscles"
- Context and Importance: This term, located in the preamble of a method claim, describes the method's purpose. Its construction is important because if "toning" is construed to mean a specific aesthetic outcome that is distinct from general muscle strengthening or fat reduction, a defendant could argue their method does not meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the magnetic treatment may cause "muscle volumization, toning, strengthening and/or remodeling" ('634 Patent, col. 35:20-22). Listing "toning" alongside "strengthening" suggests the terms are related and could be interpreted broadly to cover general improvements in muscle quality and appearance.
- Evidence for a Narrower Interpretation: The background section distinguishes the invention from prior art by noting the prior art's inability to provide "muscle shaping, toning and/or volumization effect" ('634 Patent, col. 2:28-30). This could support an argument that "toning" is a specific aesthetic effect central to the invention's novelty, requiring a narrower definition than mere strengthening.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants "actively encourage, promote, distribute, provide instruction for, and support the use of the Accused Devices by their customers" in a manner that infringes (Compl. ¶52).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge of the asserted patents. This knowledge is purportedly based on direct notice from Plaintiff's counsel via email and FedEx on April 30, 2025, as well as constructive notice from Plaintiff's public patent marking website (Compl. ¶51, 71, 83, 100, 117).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical measurement: does the accused "EMSculpting" method operate within the specific, numerically-defined "magnetic fluence of 50 T cm² to 1,500 T cm²" as required by the ’634 patent, an issue that will likely be decided through expert testing and analysis of the accused device.
- A key evidentiary question will be one of internal structure: does the accused "EMS Chair" possess the specific cooling architecture claimed in the ’519 patent, particularly a "blower arranged on a circumference of the coil" that cools both its upper and lower sides, a fact Plaintiff alleges based on inference from external product features.
- A central dispute for the "EMS Non-Surgical Lift Face" device will be its mode of operation: does the device, as alleged, utilize two separate generators for electromagnetic energy and electric current as claimed in the ’167 patent, and does its control unit manage the simultaneous application of heating and muscle contraction as claimed in the ’255 patent? A screenshot of the device's control screen suggests an operator can modify both radiofrequency and pulsed electric current (Compl. p. 49).