DCT
4:25-cv-00164
Erchonia Corp LLC v. Tulsa Body Sculpting Center LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Erchonia Corporation LLC (Texas)
- Defendant: Tulsa Body Sculpting Center, LLC (Oklahoma) and Kelsie Donahue (Oklahoma)
- Plaintiff’s Counsel: Cherry Johnson Siegmund James, PLLC
- Case Identification: 4:25-cv-00164, USDC ND/OK, 04/08/2025
- Venue Allegations: Venue is alleged to be proper based on Defendant TBSC having a regular and established place of business within the district and individual Defendant Donahue residing within the district.
- Core Dispute: Plaintiff alleges that Defendants' use of the "MaxLipo" laser system for non-invasive body contouring infringes two patents related to low-level laser therapy methods and the mechanical construction of laser scanning devices.
- Technical Context: The lawsuit concerns the field of low-level laser therapy (LLLT), a non-invasive technology used for aesthetic treatments such as fat reduction and body slimming.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendants with pre-suit notice of the patents-in-suit via a cease and desist letter, which may form the basis for a claim of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-02 | U.S. Patent No. 7,947,067 Priority Date |
| 2004-02-06 | U.S. Patent No. 9,149,650 Priority Date |
| 2011-05-24 | U.S. Patent No. 7,947,067 Issue Date |
| 2015-10-06 | U.S. Patent No. 9,149,650 Issue Date |
| c. 2024-02 | Accused Product Use Commenced |
| 2025-02-10 | Notice of Infringement via Cease and Desist Letter |
| 2025-04-08 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,149,650 - "Non-Invasive Method for Slimming a Human Body Using Laser Energy of Wavelengths Shorter Than 632 nm," issued October 6, 2015.
The Invention Explained
- Problem Addressed: The patent describes the market demand for body contouring and the drawbacks of existing methods. Surgical liposuction is described as invasive and risky, while previous non-invasive techniques using electromagnetic energy were believed to require high energy that could damage tissue through heating (’650 Patent, col. 1:31-53, col. 2:4-11). Furthermore, the LLLT industry was said to believe that wavelengths shorter than red light (approx. 632 nm) would either fail to penetrate skin sufficiently or would traumatize tissue, making them unsuitable for non-thermal fat reduction (’650 Patent, col. 2:31-59).
- The Patented Solution: The patent discloses a method of using monochromatic laser energy at wavelengths shorter than 632 nm (and more specifically, shorter than 570 nm) to slim a patient non-invasively (’650 Patent, col. 3:12-21). The method applies this energy at a low dose rate that causes no detectable temperature increase in the tissue, thereby avoiding the thermal damage associated with other energy-based treatments (’650 Patent, col. 8:1-6). The invention claims this approach is surprisingly effective and can reduce treatment time compared to methods using red laser light (’650 Patent, col. 4:1-3).
- Technical Importance: The invention proposed a counter-intuitive use of shorter, higher-energy wavelengths for a non-thermal, non-destructive biological effect, challenging the prevailing view that such wavelengths were only suitable for ablative treatments (’650 Patent, col. 2:45-59).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2-3 (Compl. ¶27).
- Independent Claim 1 requires:
- A method of slimming a patient, the method comprising
- applying monochromatic laser energy
- having a wavelength shorter than 570 nm
- externally to the patient at a targeted area
- in a dose rate that causes no detectable temperature rise of the treated tissue
U.S. Patent No. 7,947,067 - "Scanning Treatment Laser With Sweep Beam Spot and Universal Carriage," issued May 24, 2011.
The Invention Explained
- Problem Addressed: The patent identifies a need for a way to apply laser therapy over a large area of a patient's body without requiring either tedious manual manipulation of a hand-held device or the use of large, expensive, and cumbersome arrays of laser diodes (’067 Patent, col. 2:22-40, col. 2:61-65).
- The Patented Solution: The invention is a laser device with a scanning head that creates a large, apparent beam spot from a single laser source. A laser beam is directed through a hollow spindle to a "refractive optical element" (such as a rod lens) housed in a rotatable carriage (’067 Patent, col. 4:5-10, Fig. 2). This element shapes the beam into a line. As the carriage rotates 360 degrees, this line of light sweeps in a full circle, creating the appearance of a large, solid circular spot of light on the patient's skin, thereby treating a wide area efficiently (’067 Patent, col. 4:10-20).
- Technical Importance: This mechanical solution offered a cost-effective and efficient alternative to then-existing laser application technologies, enabling broad and uniform coverage without a large number of laser sources or tiring manual operation (’067 Patent, col. 2:61-65).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶40).
- Independent Claim 1 requires:
- A laser comprising: a laser energy source and a scanning head.
- The scanning head comprises:
- a hollow spindle coaxial with the laser beam.
- a refractive optical element to produce a linear first beam spot.
- a rotatable carriage housing the optical element.
- rotation of the carriage creates an apparent solid circular second beam spot.
- means for continuously rotating the carriage through 360 degrees.
III. The Accused Instrumentality
Product Identification
- Defendants' "MaxLipo" service, which is alleged to use a device sold under the name "LuxMaster Slim" (Compl. ¶20).
Functionality and Market Context
- The service is advertised as a non-invasive method to "reduce fat & cellulite, tighten skin, & relieve joint pain & rheumatoid arthritis" using laser light (Compl. ¶ p.6). The complaint alleges the device is a "Chinese knockoff of Erchonia's patented Emerald Laser" (Compl. ¶20) and specifically identifies it as using a "532nm green laser" (Compl. ¶30(b)). Marketing materials cited in the complaint describe the device as having "10D Rotating Green Laser Lights" that provide "360° Scanning on Larger Area" (Compl. ¶ p.13, p.18). The complaint includes a screenshot from a supplier website describing the device as having "no heating or freezing to the skin" and "no downtime" (Compl. ¶ p.10).
IV. Analysis of Infringement Allegations
’650 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of slimming a patient, the method comprising applying monochromatic laser energy | Defendants provide a "MaxLipo" service using laser light to "reduce fat & cellulite." A photograph shows the device being used on a patient for a "maxLipo treatment." | ¶27, ¶30a | col. 8:1-2 |
| having a wavelength shorter than 570 nm | The accused device is alleged to use a "532nm green laser." An advertisement provided in the complaint specifies the wavelength as 532nm. | ¶30b, ¶32 | col. 8:9-11 |
| externally to the patient at a targeted area | The device is applied externally to the patient's skin to treat a targeted area. | ¶30c | col. 8:3-4 |
| in a dose rate that causes no detectable temperature rise of the treated tissue | Marketing materials for the accused device state it is "noninvasive and painless" with "no heating or freezing to the skin." | ¶30d | col. 8:5-6 |
- Identified Points of Contention:
- Technical Question: A central evidentiary question will be whether the accused method meets the limitation of "no detectable temperature rise." The complaint relies on marketing claims of "no heating" and being "painless" (Compl. ¶30d), but the court may require more objective, technical evidence to substantiate this claim element.
- Scope Question: The parties may dispute the definition of "slimming." The court will need to determine if the "fat & cellulite" reduction offered by Defendants (Compl. p.6) falls within the scope of "slimming" as used in the patent.
’067 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a laser comprising: at least one laser energy source for generating a laser beam | The accused device is advertised as having "10D Rotating Green Laser Lights." | ¶43a | col. 6:66-67 |
| a scanning head further comprising: a hollow spindle substantially coaxial with the laser beam and through which the laser beam is conveyed | The complaint provides a labeled diagram of the accused device's laser head identifying a "hollow spindle." | ¶43(b)(i) | col. 7:2-4 |
| a refractive optical element through which the laser beam is conveyed to produce a linear first beam spot whose centerpoint is along the axis of the hollow spindle | A diagram in the complaint purports to show the accused device's "refractive optical element" and illustrates how a laser beam is "converted to linear spot" by it. | ¶43(b)(ii) | col. 7:5-9 |
| a rotatable carriage housing the optical element...which, when rotated, creates an apparent solid circular second beam spot | The accused device is shown with a multi-diode head that rotates. A provided photograph shows the "rotating green laser lights" projecting linear beams onto a surface. | ¶43(b)(iii) | col. 7:10-15 |
| means for continuously rotating the carriage through 360 degrees | The complaint provides a diagram of the accused device showing a motor connected to the carriage assembly, which is labeled as being "used to rotate the carriage & optical element." | ¶43(b)(iv) | col. 7:16-18 |
- Identified Points of Contention:
- Means-Plus-Function: Claim 1(b)(iv) is a means-plus-function limitation. For literal infringement, the plaintiff must prove the accused structure (the motor assembly shown in Compl. ¶ p.18) is identical or structurally equivalent to the corresponding structure described in the ’067 patent specification (a "main drive gear," "minor drive gear," and "main drive motor") for performing the claimed function of rotation (’067 Patent, col. 4:21-34). The complaint also pleads infringement under the doctrine of equivalents as an alternative theory (Compl. ¶44).
- Technical Question: It will be a key factual dispute whether the accused device's "refractive optical element" actually produces a "linear first beam spot" that, upon rotation, creates an "apparent solid circular second beam spot," as required by the claims. The complaint's visual evidence, including a labeled diagram of the accused device's optical path (Compl. ¶ p.16), directly alleges this functionality.
V. Key Claim Terms for Construction
For the ’650 Patent
- The Term: "no detectable temperature rise"
- Context and Importance: This term is critical for distinguishing the claimed method from prior art thermal treatments and defines the non-destructive nature of the invention. The case may turn on whether the accused device's operation meets this standard, and how "detectable" is defined.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the related ’067 patent, which discusses the underlying LLLT technology, describes the treatment as causing "no immediate detectable temperature rise of the treated tissue and no macroscopically visible changes in tissue structure" (’067 Patent, col. 2:37-40). A party could argue this suggests a standard based on what is humanly perceptible or visibly apparent, rather than a sensitive instrumented measurement.
- Evidence for a Narrower Interpretation: A party could argue that "detectable" implies detection by scientific instruments (e.g., a thermal camera or thermocouple) and that any measured increase, however small, would fall outside the claim scope. The patent does not, however, specify a measurement methodology or a quantitative threshold.
For the ’067 Patent
- The Term: "apparent solid circular second beam spot"
- Context and Importance: This term describes the resulting visual and functional effect of the claimed scanning mechanism. Infringement will depend on whether the pattern created by the accused device's rotating multi-diode head is properly characterized as an "apparent solid circular" spot.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explains that the rapid rotation of a linear beam causes it "to appear to create a substantially circular beam spot" and that this is the result of the "scanning light diameter sweeping from location to location at a speed that makes the motion nearly imperceptible to the human eye" (’067 Patent, col. 4:15-19). This language focuses on the perceived effect, which could support a broader construction covering any mechanism that produces a similar visual result.
- Evidence for a Narrower Interpretation: A party might argue that the claim requires the creation of the spot via a "rotating diameter" (’067 Patent, col. 4:12), implying a single line sweeping through the center, and that a pattern created by multiple, separate diodes rotating around a circumference does not meet this structural requirement.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, it alleges that individual defendant Kelsie Donahue has "sole decision-making authority regarding the purchase, importation and use of the infringing device" and operates the co-defendant LLC "in her individual capacity," which are facts that could potentially support claims for induced infringement or alter ego liability (Compl. ¶19).
- Willful Infringement: The complaint alleges willful infringement based on Defendants' continued use of the accused device after being "placed on notice" of the patents-in-suit via a cease and desist letter sent on or about February 10, 2025 (Compl. ¶21, ¶34, ¶46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical proof and definition: For the ’650 patent, can Erchonia prove, beyond the marketing claims cited, that the accused "MaxLipo" method operates with "no detectable temperature rise"? The resolution will depend heavily on how the court construes "detectable" and what level of evidence is required to meet that standard.
- A key question for the ’067 patent will be one of structural correspondence: Do the internal components of the accused "LuxMaster Slim" device—specifically its rotating, multi-diode laser head—meet the claim limitations of a "refractive optical element" creating a "linear first beam spot" that sweeps to form an "apparent solid circular second beam spot"? This analysis will involve a detailed, element-by-element comparison of the accused device's structure and function against the patent's claims.
- Finally, the case raises a question of means-plus-function infringement: Will the motor assembly in the accused device be found to be structurally equivalent to the gear-and-motor drive system disclosed in the ’067 patent's specification for performing the function of continuous rotation, a determination critical for infringement of the patent's final claim element?