DCT

1:23-cv-00301

BTL Industries Inc v. Pulse Performance LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00301, W.D. Tex., 03/17/2023
  • Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendants are residents of the District, have a regular and established place of business in the District, and have committed the alleged acts of infringement in the District.
  • Core Dispute: Plaintiff alleges that Defendants’ “EMS SCULPT” devices and related body-contouring services infringe six patents related to aesthetic treatments using magnetic fields.
  • Technical Context: The technology involves using high-intensity, time-varying magnetic fields to induce supramaximal muscle contractions for non-invasive aesthetic purposes, such as muscle toning and fat reduction.
  • Key Procedural History: Plaintiff alleges it sent a cease and desist letter to Defendant Pulse Performance on November 2, 2022, informing it of the alleged infringement and referring it to Plaintiff's patent portfolio. The complaint alleges that Defendants refused to comply with the demands.

Case Timeline

Date Event
2015-07-01 Priority Date for U.S. Patent No. 9,636,519
2016-07-01 Priority Date for U.S. Patent No. 10,695,575
2017-05-02 U.S. Patent No. 9,636,519 Issued
2017-05-22 Priority Date for U.S. Patent No. 10,596,386
2018-04-17 Priority Date for U.S. Patent No. 10,478,634
2018-06-01 Plaintiff BTL launches EMSCULPT® device (approx. date)
2019-02-01 Priority Date for U.S. Patent No. 11,266,852
2019-11-19 U.S. Patent No. 10,478,634 Issued
2020-03-24 U.S. Patent No. 10,596,386 Issued
2020-06-30 U.S. Patent No. 10,695,575 Issued
2021-12-18 Defendants allegedly begin infringing conduct via social media post
2022-03-08 U.S. Patent No. 11,266,852 Issued
2022-11-02 Plaintiff sends cease and desist letter to Defendant
2023-03-17 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,266,852 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 11,266,852, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued March 8, 2022.

The Invention Explained

  • Problem Addressed: The patent addresses the limitations of existing non-invasive aesthetic treatments, noting that mechanical and thermal methods are not able to provide satisfactory enhancement of a muscle's visual appearance, such as shaping or toning (ʼ852 Patent, col. 2:26-31). It also notes that existing magnetic methods are limited in key parameters and are inefficient (ʼ852 Patent, col. 2:32-46).
  • The Patented Solution: The invention proposes methods and devices that use a time-varying magnetic field to treat biological structures, inducing muscle contractions to enhance visual appearance (ʼ852 Patent, Abstract; col. 3:12-24). The solution involves specific configurations of magnetic field generating coils and operational parameters (e.g., repetition rates, magnetic flux density) to achieve targeted muscle remodeling and fat reduction, potentially with greater efficiency and better results than prior methods (ʼ852 Patent, col. 3:55-64).
  • Technical Importance: The technology aims to provide a non-invasive method for simultaneously strengthening muscle and reducing fat, a combination of effects not readily achievable with prior aesthetic devices (ʼ852 Patent, col. 2:26-31).

Key Claims at a Glance

  • The complaint asserts independent claim 9 (Compl. ¶63).
  • Essential elements of Claim 9 include:
    • A treatment device for enhancing a visual appearance of a patient.
    • Comprising a first and a second magnetic field generating coil, where both are planar.
    • A first applicator comprising the first coil.
    • The first coil is configured to generate a first time-varying magnetic field with a repetition rate of 1 Hz to 300 Hz and a magnetic flux density of 0.1 to 7 Tesla.
    • The second coil is configured to generate a second time-varying magnetic field with the same parameter ranges.
    • The first coil is configured to generate its field independently of the second.
    • Each coil is configured to generate a plurality of pulses, where the pulses comprise a first plurality with a first repetition rate and a second plurality with a different, second repetition rate.
    • The coils are configured to be placed proximate to a body region (buttocks or an abdomen) to cause muscle contraction.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 10,695,575 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 10,695,575, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued June 30, 2020.

The Invention Explained

  • Problem Addressed: The patent background describes a need for new aesthetic treatment methods that can provide improved results in shorter time periods, as existing thermal and mechanical treatments have drawbacks like pain, risk of panniculitis, and non-homogenous results (ʼ575 Patent, col. 3:1-9).
  • The Patented Solution: The invention describes a method for toning muscles by positioning two independent applicators on a patient, each housing a magnetic field generating coil ('575 Patent, col. 31:4-13). The method involves charging and discharging separate energy storage devices to the respective coils to generate time-varying magnetic fields with specific parameters (e.g., magnetic flux density, impulse duration) and includes a step for cooling the coils to enable sustained operation ('575 Patent, col. 31:14-43).
  • Technical Importance: This method provides a protocol for using a dual-applicator system to induce muscle contractions, potentially allowing for more efficient and targeted treatment of larger or bilateral body areas ('575 Patent, col. 31:1-13).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶83).
  • Essential elements of Claim 1 include:
    • A method for toning muscles of a patient.
    • Positioning a first applicator on the patient, the applicator housing a first magnetic field generating coil.
    • Independently positioning a second applicator on the patient, housing a second coil with the same inductance as the first.
    • Charging a first and second energy storage device.
    • Discharging the first storage device to the first coil to generate a first impulse of a magnetic field.
    • Discharging the second storage device to the second coil to generate a second impulse of a magnetic field.
    • The impulses must have a magnetic flux density between 0.1 and 7 Tesla and an impulse duration between 3 µs and 3 ms.
    • Establishing a pulse duration where the second coil's impulse is generated during the first coil's pulse duration.
    • Cooling each of the coils.
    • Applying pluralities of impulses from both coils to cause muscle contraction and toning.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

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.
  • Technology Synopsis: This patent describes a method for toning muscles by placing an applicator in contact with a patient's abdomen or buttock and coupling it with an adjustable belt (’634 Patent, col. 36:13-22). The method requires applying a specific magnetic fluence (50 T cm² to 1,500 T cm²) with sufficient flux density to cause muscle contraction (’634 Patent, col. 36:23-28).
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶104).
  • Accused Features: Defendants are accused of performing the method by placing the EMS SCULPT device's applicator on patients, securing it with an adjustable belt, and generating a time-varying magnetic field to tone muscles (Compl. ¶¶108-112). A promotional image showing an applicator held by a belt is provided as evidence (Compl. ¶109).

U.S. Patent No. 9,636,519 - "Magnetic Stimulation Methods and Devices for Therapeutic Treatments"

  • Patent Identification: U.S. Patent No. 9,636,519, "Magnetic Stimulation Methods and Devices for Therapeutic Treatments," issued May 2, 2017.
  • Technology Synopsis: This patent is directed to the structure of a magnetic stimulation device itself, focusing on thermal management. It describes a device with a coil and a casing, where at least one blower is arranged on the circumference of the coil to allow fluid to flow between the coil and casing for cooling (’519 Patent, col. 5:1-11; Abstract). This design aims to reduce unwanted thermal effects and improve efficiency.
  • Asserted Claims: Independent claim 1 is asserted (Compl. ¶119).
  • Accused Features: The complaint alleges the EMS SCULPT device includes the claimed components, such as a coil, energy source, and casing (Compl. ¶¶122-127). It alleges that ventilation holes on the accused device's applicators suggest the presence of a blower and that the plastic shells function as casings, creating a fluid flow path for cooling (Compl. ¶¶126-129).

U.S. Patent No. 10,596,386 - "Aesthetic Method of Biological Structure Treatment by Magnetic Field"

  • Patent Identification: U.S. Patent No. 10,596,386, "Aesthetic Method of Biological Structure Treatment by Magnetic Field," issued March 24, 2020.
  • Technology Synopsis: This patent describes a treatment device that uses a belt to hold an applicator in contact with a patient's buttocks or abdomen (’386 Patent, col. 43:18-22). The patent claims "means for discharging energy" that generate impulses with specific parameters (biphasic shape, repetition rate, duration, and magnetic flux derivative) and "means for cooling" the device with a fluid cooling media (’386 Patent, col. 43:24-44).
  • Asserted Claims: Independent claim 12 is asserted (Compl. ¶135).
  • Accused Features: The EMS SCULPT device is alleged to be held in contact with patients via a belt and to include an energy storage device (Compl. ¶¶138-139). The complaint alleges on information and belief that the device generates impulses with the claimed biphasic shape and parameter ranges and that it includes means for fluid cooling (Compl. ¶¶140-141).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "EMS SCULPT" devices and associated services imported, used, offered for sale, or sold by the Defendants (Compl. ¶14).

Functionality and Market Context

The complaint alleges the EMS SCULPT device is a "knockoff" of Plaintiff's EMSCULPT device that provides "non-invasive body-contouring" (Compl. ¶3, ¶41). It is advertised as a "targeted high intensity electromagnetic energy therapy that is used for body sculpting" (Compl. ¶7, ¶17). The device allegedly "harnesses the energies of both radio frequency and magnetic vibration, directing low-voltage electrical impulses deep into layers of muscle and fat" to burn fat and build muscle (Compl. ¶11, ¶41, ¶66). The complaint includes a screenshot from Defendants' website describing the device's concentrated electromagnetic field as permeating "through all layers of skin and fat to activate all four layers of muscle contraction" (Compl. p. 17). Defendants are alleged to market these devices and services through their own websites and social media, and also to encourage others to become franchisees (Compl. ¶42-43).

IV. Analysis of Infringement Allegations

U.S. Patent No. 11,266,852 Infringement Allegations

Claim Element (from Independent Claim 9) Alleged Infringing Functionality Complaint Citation Patent Citation
A treatment device for enhancing a visual appearance of a patient... The accused device is marketed as a body sculpting device that "burns fat while also building muscle" and stimulates motor neurons to expand and contract muscles. ¶66 col. 2:1-4
...a first magnetic field generating coil and a second magnetic field generating coil, wherein both of the first and second magnetic field generating coils are planar; The device allegedly uses "magnetic vibration" and comes with at least two applicators. The complaint alleges the figures on Defendant's website show a "flat applicator which needs to include a flat coil." ¶67 col. 8:9-11
...a first applicator, wherein the first applicator comprises the first magnetic field generating coil, The device is alleged to come with at least two applicators, also referred to as handles, that house the magnetic field generating coils. ¶67-68 col. 10:20-22
wherein the first magnetic field generating coil is configured to generate a first time-varying magnetic field with a repetition rate in a range of 1 Hz to 300 Hz and a magnetic flux density in a range of 0.1 Tesla to 7 Tesla... The device is marketed as using "(HIFEM) high intensity focused magnetic vibration technology" that produces an "energy pulse" to stimulate muscle contractions. The complaint alleges discovery will confirm the parameters fall within the claimed ranges. ¶69 col. 4:1-3
wherein the first magnetic field generating coil is configured to generate the first time-varying magnetic field independently of the second time-varying magnetic field, Marketing materials and images allegedly represent that the device's two applicators can operate independently. ¶71 col. 15:47-50
wherein each of the plurality of pulses comprises a first plurality of pulses having a first repetition rate and a second plurality of pulses having a second repetition rate, wherein the first repetition rate differs from the second repetition rate, The complaint alleges, on information and belief, that the devices are configured to generate magnetic pulses at several different frequencies depending on treatment parameters. ¶73 col. 17:7-13
wherein the first and the second magnetic field generating coils are configured to be placed proximate to a body region of the patient...to cause a contraction of at least one muscle... Promotional images allegedly depict the applicators positioned proximate to various body regions, such as the abdomen, glutes, arms, calves, and thighs, to stimulate muscle contractions. ¶76 col. 18:35-40
wherein the body region comprises one of a buttocks or an abdomen. Promotional images allegedly depict applicators positioned on body regions including the abdomen and glutes. ¶77 col. 18:38-40
  • Identified Points of Contention:
    • Evidentiary Questions: The complaint alleges on "information and belief" that the accused device meets the specific numerical ranges for repetition rate (1-300 Hz) and magnetic flux density (0.1-7 Tesla), stating that "discovery will confirm" these facts (Compl. ¶69). A central point of contention will be whether objective technical evidence supports these allegations or if the device operates outside the claimed ranges.
    • Technical Questions: The claim requires that the pulses generated by each coil comprise pluralities of pulses with differing repetition rates. The complaint alleges the device generates pulses at "several different frequencies depending on the treatment parameters" (Compl. ¶73). It raises the question of whether this alleged multi-frequency operation meets the specific claim structure of generating distinct pluralities of pulses, each with its own rate, within a single treatment session.

U.S. Patent No. 10,695,575 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for toning muscles of a patient... Defendants offer services using the accused devices, which are advertised for "body sculpting" and to "build[] muscle." ¶86 col. 4:45-51
positioning a first applicator on the patient, the first applicator housing a first magnetic field generating coil having an inductance; Defendants allegedly perform services where they position the applicators of the EMS SCULPT device on a patient. The applicators are alleged to house magnetic field generating coils. ¶87 col. 13:51-54
independently positioning a second applicator on the patient, the second applicator housing a second magnetic field generating coil having the same inductance as the first... The complaint alleges Defendants' device has at least two applicators that can be operated independently and that they are used on patients as part of the accused services. ¶88, ¶89 col. 14:1-12
charging a first energy storage device and a second energy storage device; The complaint alleges on information and belief that the two applicators require separate energy storage devices that must be charged. ¶89 col. 13:55-56
discharging the first energy storage device to the first magnetic field generating coil such that a first impulse of a first time-varying magnetic field is generated, The complaint alleges on information and belief that the device includes an energy storage device that discharges energy to an applicator to generate a magnetic field. ¶90 col. 13:57-61
establishing a first pulse duration... wherein the first impulse generated by the second magnetic field generating coil is generated during the first pulse duration; The complaint alleges that online marketing materials represent that the two applicators can operate at the same time. ¶93 col. 14:13-20
cooling each of the first and the second magnetic field generating coils; The complaint alleges that promotional images show vents on the applicators that are "indicative of fluid cooling" and that discovery will confirm this step. A representative photo shows an applicator with vents being applied to a patient (Compl. p. 4). ¶94 col. 10:24-28
applying a first plurality of impulses generated by the first magnetic field generating coil... to muscle fibers... to cause muscles of the body region to contract such that the muscles are toned. Marketing materials allegedly state the device uses "(HIFEM) high-intensity focused magnetic vibration technology" to produce "strong muscle contractions." ¶69, ¶95 col. 4:45-51
  • Identified Points of Contention:
    • Scope Questions: The claim requires "cooling each of the first and the second magnetic field generating coils." The complaint's primary evidence is that applicator images show "vents that are indicative of fluid cooling" (Compl. ¶94). This raises a question of claim scope: does the mere presence of vents for ambient air circulation meet the "cooling" limitation, or does the patent specification require a more active cooling mechanism (e.g., a forced-air blower or liquid cooling circuit)?
    • Technical Questions: The claim requires the second coil to have the "same inductance" as the first. The complaint makes no specific factual allegation on this point. This presents a technical question of fact regarding the actual electrical properties of the accused device's applicators.

V. Key Claim Terms for Construction

For U.S. Patent No. 11,266,852

  • The Term: "planar"
  • Context and Importance: This term defines the fundamental physical structure of the magnetic field generating coils. Its construction is critical because if the accused device's coils are found not to be "planar" within the patent's meaning, there would be no literal infringement of this element. Practitioners may focus on this term because the shape of the coil dictates the shape of the resulting magnetic field and its therapeutic effect.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the magnetic field generating device as having a "planar magnetic field generating device shape" (ʼ852 Patent, col. 8:9-11) and refers to a "flat type magnetic field generating device" (ʼ852 Patent, col. 4:41-42), suggesting the term could broadly cover any generally flat or two-dimensional coil configuration.
    • Evidence for a Narrower Interpretation: Figure 20a of the patent depicts a specific embodiment of a flat, spirally-wound coil (ʼ852 Patent, Fig. 20a). A defendant might argue that "planar" should be construed more narrowly to be limited to such specific spiral configurations shown and described.

For U.S. Patent No. 10,695,575

  • The Term: "cooling each of the first and the second magnetic field generating coils"
  • Context and Importance: This is an active method step that is essential to the claimed invention. The infringement allegation rests on an inference from images showing vents (Compl. ¶94). The definition of "cooling" will determine whether passive air ventilation is sufficient or if an active cooling system is required by the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification mentions that the gap between the coil and casing can be used for "spontaneous or controlled cooling" ('575 Patent, col. 9:15-17), which could support an argument that passive or natural airflow (spontaneous) satisfies the limitation.
    • Evidence for a Narrower Interpretation: The specification repeatedly describes embodiments with a "blower" arranged to direct fluid (e.g., air) to cool the coil ('575 Patent, col. 9:40-46; col. 10:24-28). A defendant may argue that these specific disclosures of active components like blowers imply that "cooling" requires more than mere passive ventilation.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement against all Defendants. The basis is the allegation that Defendants "actively encourage, promote, distribute, provide instruction for, and support the use of the EMS SCULPT device by its franchise customers or employees in a manner that directly infringes" (Compl. ¶45). Specific allegations include encouraging customers to start franchises to use the device (Compl. ¶98) and distributing user manuals that instruct customers on infringing uses (Compl. ¶96, ¶114).
  • Willful Infringement: The complaint alleges willful infringement of all asserted patents. The primary basis for this allegation is Defendants' alleged knowledge of the patents since at least the November 2, 2022 cease and desist letter, which allegedly referred Defendants to a website listing the patents-in-suit (Compl. ¶79, ¶100, ¶115, ¶131, ¶144). The complaint alleges that Defendants' infringement continued after this notice.

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

  • A central issue will be one of evidentiary proof versus allegation: The complaint relies heavily on marketing materials and "information and belief" to allege that the accused device meets specific, quantitative claim limitations (e.g., magnetic flux density, repetition rates, impulse durations). A key question for the court will be whether the technical evidence obtained during discovery confirms that the accused "EMS SCULPT" device actually operates within these claimed numerical ranges.
  • A key legal question will be one of definitional scope: The infringement theory for the "cooling" step in the ’575 patent is based on an inference from images of "vents" on the accused device. This will likely lead to a dispute over claim construction, raising the question of whether the term "cooling" as used in the patent can be broadly construed to cover passive air ventilation, or if it is limited to the active cooling systems (e.g., with blowers) described in the specification's preferred embodiments.
  • A further question will be one of technical implementation: The asserted claims recite complex operational sequences, such as generating pulses with differing repetition rates within a treatment session ('852 patent) or generating an impulse from a second coil during the pulse duration of a first coil ('575 patent). The case may turn on whether the accused device's software and hardware are in fact configured to perform these specific, coordinated actions as required by the claims, or if there is a fundamental mismatch in their mode of operation.