DCT

2:24-cv-00643

BTL Industries Inc v. Sincoheren US LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00643, D. Utah, 08/28/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Utah because Defendants are residents of the district, maintain regular and established places of business in the district, and have committed the alleged acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s aesthetic body-contouring devices infringe patents related to the design of magnetic stimulation devices and methods for using them for aesthetic muscle toning.
  • Technical Context: The technology involves using high-intensity, time-varying magnetic fields to induce supramaximal muscle contractions for non-invasive aesthetic treatments like body shaping and muscle firming.
  • Key Procedural History: The complaint alleges that Plaintiff BTL is the exclusive licensee of the two asserted patents and possesses the exclusive right of recovery for infringement. It also notes that BTL marks its products in compliance with 35 U.S.C. § 287 via an online patent listing.

Case Timeline

Date Event
2015-07-01 Earliest Priority Date Asserted (’519 and ’634 Patents)
2017-05-02 U.S. Patent No. 9,636,519 Issues
2019-11-19 U.S. Patent No. 10,478,634 Issues
2023-12-28 Defendant posts on Instagram announcing accused products "Coming in 2024"
2024-08-28 Complaint Filed

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

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.

The Invention Explained

  • Problem Addressed: The patent describes that prior art magnetic stimulation devices suffer from low efficiency and waste significant energy, which limits their use (U.S. Patent No. 9,636,519, col. 1:40-42). Induced "eddy currents" within the device’s own coil wiring generate unwanted heat, requiring substantial cooling and protective circuits that consume additional energy (ʼ519 Patent, col. 1:45-54).
  • The Patented Solution: The invention proposes a magnetic stimulation device with improved thermal management and electrical efficiency. A core feature is a coil constructed from individually insulated wires, which significantly reduces internal eddy currents and self-heating (ʼ519 Patent, col. 2:50-59). The design also specifies a cooling system where at least one blower is arranged on the circumference of the coil, allowing fluid to flow over both the upper and lower sides of the coil for more effective heat dissipation (ʼ519 Patent, col. 2:25-30; Fig. 2).
  • Technical Importance: This design's enhanced efficiency allows the device to achieve higher repetition rates of magnetic pulses and/or higher magnetic flux density without the overheating issues that limited prior devices ('519 Patent, col. 2:20-24).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶31).
  • Essential elements of Claim 1 include:
    • A magnetic stimulation device producing a time varying magnetic field for treatment, comprising: a connection to an energy source, a switch, a coil, an energy storage device, at least one blower and a casing;
    • with the blower arranged on a circumference of the coil; and
    • 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 does not explicitly reserve the right to assert dependent claims.

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 notes that conventional non-invasive aesthetic treatments were unable to provide enhanced visual appearance of a muscle, such as muscle shaping, toning, and/or volumization (U.S. Patent No. 10,478,634, col. 2:26-31).
  • The Patented Solution: The invention is a method for aesthetic muscle toning that uses a time-varying magnetic field. The method involves placing an applicator with a magnetic field generating coil on a specific body region (abdomen or buttock), coupling it to the patient with a belt, and applying a magnetic field with a specific "magnetic fluence" (50 T cm² to 1,500 T cm²) sufficient to cause a muscle contraction (ʼ634 Patent, col. 21:50-67). This approach is intended to induce supramaximal contractions that are unachievable voluntarily, leading to muscle strengthening and an improved aesthetic appearance (ʼ634 Patent, col. 20:18-24).
  • Technical Importance: The invention claims a specific method of using magnetic field technology for the targeted purpose of aesthetic body contouring, defining key treatment parameters and application sites ('634 Patent, col. 3:37-45).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶43).
  • Essential elements of Claim 1 include:
    • A method for toning muscles in a patient using time-varying magnetic fields, the method comprising:
    • 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;
    • 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;
    • providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field; and
    • applying a magnetic fluence of 50 T cm² to 1,500 T cm² to the body region, 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 does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The complaint accuses two categories of products. For the ’519 Patent, the "Infringing Devices" include the Embodi HI-EMT Body and Pelvic Floor Chair, the EMSKEGEL Chair, the Miracle Chair, the IntegraPelvix, and the Magic Chair (Compl. ¶21). For the ’634 Patent, the "Accused Product" is the Musculpt device (Compl. ¶22).

Functionality and Market Context

  • The accused devices are alleged to produce time-varying magnetic fields to stimulate muscle contractions for aesthetic body-contouring treatments (Compl. ¶23). The complaint alleges the "Infringing Devices" contain the structural components recited in the ’519 Patent, including a blower arranged on the circumference of the coil that blows air over its upper and lower sides for cooling (Compl. ¶¶24-25). A promotional image describes the "Magic Chair" as using "HIFEM" technology to stimulate pelvic floor muscles (Compl. p. 14). The Musculpt device is marketed for toning muscles in the abdomen and buttocks, with promotional materials showing it strapped to a patient in those locations (Compl. ¶26; Compl. p. 7). A marketing image for a related device lists technical specifications including a "MAX FREQUENCY" of "200 HZ" and "INTENSITY" of "16 Tesla" (Compl. p. 8). The complaint alleges the Musculpt device applies a magnetic fluence within the range claimed by the ’634 Patent (Compl. ¶27).

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: a connection to an energy source, a switch, a coil, an energy storage device, at least one blower and a casing The Infringing Devices are magnetic stimulation devices that produce time-varying magnetic fields and include a blower, casing, capacitor (energy storage), converter (energy source), coil, and switch. ¶¶23, 24, 33 col. 2:50-54
with the blower arranged on a circumference of the coil The blower in each of the Infringing Devices is arranged on a circumference of the coil. ¶¶25, 33 col. 4:1-3
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 blower blows air over the upper and lower sides of the coil, implying an arrangement where fluid can flow between the coil and casing for cooling. ¶¶25, 33 col. 3:55-64
  • Identified Points of Contention:
    • Evidentiary Question: The complaint's allegations regarding the internal structure of the Infringing Devices are made on "information and belief" (Compl. ¶¶23-25). A central question will be factual: what is the actual internal configuration of the accused devices? Discovery will be necessary to determine if they contain a blower that is spatially "arranged on a circumference of the coil" and cools the coil by blowing fluid "over at least upper and lower sides" as specifically required by the claim.

’634 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for toning muscles...placing a first applicator comprising a magnetic field generating coil in contact with a patient's skin or clothing at a body region...wherein the body region is an abdomen or a buttock Defendants direct customers to use the Musculpt device to treat muscles in patients, including on the abdomen and the buttock. A promotional image shows the device being applied to a patient's abdomen (Compl. p. 11). ¶¶26, 45(a) col. 23:37-46
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 Musculpt device being held in place on patients with a flexible belt. ¶45(b); Compl. p. 11 col. 10:51-67
providing energy to the magnetic field generating coil in order to generate a time-varying magnetic field The Accused Product produces time-varying magnetic fields to treat patients. ¶¶23, 45(c) col. 11:5-10
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 Devices allegedly apply a magnetic fluence of 50 T cm² to 1,500 T cm² sufficient to cause contractions in the muscles treated. ¶¶27, 45(d) col. 14:8-15; col. 18:49-54
  • Identified Points of Contention:
    • Technical Question: The complaint alleges on "information and belief" that the accused devices apply a magnetic fluence within the specific numerical range of 50 to 1,500 T cm² (Compl. ¶27). A key technical dispute will be whether the plaintiff can produce evidence, through testing or technical documentation obtained in discovery, that the accused method actually meets this quantitative limitation.
    • Scope Question: The claim recites "placing a first applicator...in contact with a patient's skin or clothing." The evidence of infringement will need to show that the accused method involves this step, which may raise questions about what constitutes "contact" if, for instance, a gel or other medium is used.

V. Key Claim Terms for Construction

For the ’519 Patent

  • The Term: "with the blower arranged on a circumference of the coil"
  • Context and Importance: This term defines a specific spatial relationship between the cooling element (blower) and the heat-generating element (coil). The infringement analysis for Claim 1 will turn on whether the accused devices embody this exact structural layout. Practitioners may focus on this term because alternative cooling configurations, such as a remote blower in a console unit that ducts air to the applicator, may not meet this limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of evidence supporting a broader interpretation.
    • Evidence for a Narrower Interpretation: Figure 2 of the patent depicts blower elements (4) positioned around the outer periphery of the coil (10). The specification states, "At least one blower 13 can be placed around the circumference of the coil" ('519 Patent, col. 4:18-19), directly linking the term to a specific location illustrated in the patent's own figures. This suggests the term describes a specific, localized arrangement.

For the ’634 Patent

  • The Term: "applying a magnetic fluence of 50 T cm² to 1,500 T cm²"
  • Context and Importance: This quantitative limitation is a critical boundary of the claimed method. Proving infringement requires demonstrating that the accused method operates within this specific numerical range. Practitioners may focus on this term because the defendant could argue their device operates outside this range or that the plaintiff's methodology for measuring "magnetic fluence" is inconsistent with the patent's definition.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself defines a range, which a plaintiff may argue is infringed by any operation falling anywhere within its bounds.
    • Evidence for a Narrower Interpretation: The patent provides a precise formula for calculating magnetic fluence: MF=BPP*AMFGD (Equation 4, col. 14:1-7). This explicit definition provides a specific framework for measurement and calculation, potentially limiting how the term can be applied to an accused product's performance data.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for both patents. It asserts that Defendants encourage, promote, and instruct customers to use the accused devices in a manner that infringes (Compl. ¶¶34, 44). For the ’634 method patent, this is supported by allegations that Defendants direct customers to use the devices on the abdomen and buttock (Compl. ¶26), which are the body regions specified in Claim 1.
  • Willful Infringement: Willfulness is alleged for both patents, based on "actual and constructive notice" of the patents as of the complaint's filing date (Compl. ¶¶37, 46). The complaint also references BTL’s online patent marking list as a potential basis for pre-suit knowledge (Compl. ¶¶37, 46).

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

  • A core issue will be one of structural correspondence: can the plaintiff produce evidence that the internal cooling systems of the accused "chair" and "body" devices meet the specific spatial limitation of a "blower arranged on a circumference of the coil" as required by the ’519 patent, or will discovery reveal a fundamentally different design?
  • A key evidentiary question will be one of quantitative proof: does the accused "Musculpt" device, when operated as instructed for aesthetic treatments, actually generate and apply a "magnetic fluence" that falls within the specific numerical range of 50 to 1,500 T cm² claimed by the ’634 patent?