Opinion
2:23-cv-04436-JAK (MRWx)
06-06-2024
BTL INDUSTRIES, INC., Plaintiff, v. DR. JUVENTAS, et al., Defendants.
JUDGMENT
JS6: CASE TERMINATED
John A. Kronstadt United States District Judge
Based on a review of the Joint Motion for Entry of Consent Judgment and Permanent Injunction (the “Motion”) filed by Plaintiff BTL Industries, Inc. (“BTL”) and Defendants Dr Juventas and Nastran Hashemi (“Defendants”) (collectively, the “Parties”), it is determined that:
1. On June 6, 2023, BTL filed Case No. 2:23-CV-04436 in the United States District Court for the Central District of California.
2. BTL brought this action seeking injunctive relief and monetary damages against Defendants for patent infringement in violation of the patent laws of the United States (35 U.S.C. § 1 et seq.); and trademark infringement, unfair competition, false designation of origin, and false advertising under the Lanham Act (15 U.S.C. §§ 1114 and 1125(a)) and common law of the state of California.
3. The Parties have agreed to terms and conditions representing a negotiated resolution of the above-captioned matter. Defendants now stipulate and consent to this Consent Judgment and Permanent Injunction, to its prompt entry, and to each and every provision, order, and decree herein.
4. There is jurisdiction over the subject matter of this case and jurisdiction over Defendants.
5. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b).
6. BTL uses, owns, and exclusively licenses registered and unregistered trademarks and trade dress for its brand of aesthetic equipment and treatments, including the following valid and subsisting federally registered trademarks (collectively, the “BTL Trademarks”):
Reg. No.
Mark
Reg. Date
First Use in Commerce or Priority Date
Goods/Services
5,572,801
EMSCULPT
Oct. 2, 2018
Sept. 29, 2017
Class 10: Medical apparatus and instruments for the treatment of cellulite; medical apparatus and
| instruments for body toning and body shaping; medical apparatus and instruments for the removal of fat, circumference reduction, tightening of skin, reduction of wrinkles, reduction of scars, reduction of stretch marks, rejuvenation of skin, and treatment of pigmentation spots; above medical apparatuses with exception for the treatment of the nasopharynxes including inhalers and nasal irrigators; massage apparatus; medical apparatus and instruments for aesthetic skin treatment procedures; medical apparatus generating electromagnetic, magnetic, electrical, mechanical or thermal energy for use in skin treatment procedures; medical apparatus particularly apparatus for pain management, elimination of muscle spasms; gynecological and urological apparatus and instruments, namely, for genital rejuvenation, treatment sexual dysfunction, gynecological treatment and pelvic floor treatment | ||||
| 6,069,279 | EMSCULPT | June 2, 2020 | Sept. 29, 2017 | Class 44: medical services; gynecology services; medical equipment rental; cosmetic and plastic surgery; beauty salons; liposuction services; removal of body cellulite |
| 6,206,098 | Stylized EM | Nov. 24, 2020 | July 2018 | Class 10: Physical therapy devices for treating muscle spasms and pain management; medical apparatus and instruments, in particular apparatus and instruments for the treatment of |
| cellulite, apparatus and instruments for body toning and body shaping, and apparatus and instruments for the removal of fat, circumference reduction; medical devices for use in treating gynecological disorders, pelvic area disorders, bladder disorders and incontinence Class 44: Health assessment services; medical services, namely, providing treatment for patients with gynecological disorders, pelvic area disorders, bladder disorders and incontinence; gynecological services; urology medical care services; rental of medical apparatus and equipment; cosmetic and plastic surgery; beauty salon services; liposuction and surgical body shaping services; medical services, namely, removal of body cellulite; physical therapy services | ||||
| 5,915,636 | EM | Nov. 19, 2019 | Jan. 8, 2019 | Class 10: Physical therapy devices for treating muscle spasms and pain management; medical apparatus and instruments, in particular apparatus and instruments for the treatment of cellulite, apparatus and instruments for body toning and body shaping, and apparatus and instruments for the removal of fat, circumference reduction; medical devices for use in treating gynecological disorders, pelvic area disorders, bladder disorders and incontinence Class 44: Health assessment services; medical services, namely, providing treatment for patients |
with gynecological disorders, pelvic area disorders, bladder disorders and incontinence; gynecological services; urology medical care services; rental of medical apparatus and equipment; cosmetic and plastic surgery; beauty salon services; liposuction and surgical body shaping services; medical services, namely, removal of body cellulite; physical therapy services
6,373,947
EMSCULPT NEO
June 1, 2021
Jan. 22, 2020
Class 10: Medical apparatus and instruments for the treatment of cellulite; medical apparatus and instruments for body toning and body shaping; medical apparatus and instruments for the removal of fat, circumference reduction, tightening of skin, reduction of wrinkles, reduction of scars, reduction of stretch marks, rejuvenation of skin, and treatment of pigmentation spots; medical apparatus and instruments for aesthetic skin treatment procedures; medical apparatus generating electromagnetic, magnetic, electrical, mechanical or thermal energy for use in skin treatment procedures; medical apparatus particularly apparatus for pain management, elimination of muscle spasms; gynecological and urological apparatus and instruments, namely, for genital rejuvenation, treatment of sexual dysfunction, gynecological treatment and pelvic floor treatment.
7. The BTL Trademarks have been used exclusively and continuously by BTL and have never been abandoned. The above U.S. registrations for BTL's Trademarks are valid and subsisting in full force and effect.
8. The registrations for the BTL Trademarks constitute prima facie evidence of their validity and of BTL's exclusive right to use the trademarks pursuant to 15 U.S.C. § 1057(b).
9. BTL exclusively licenses patents claiming proprietary magnetic stimulation technology and methods of treatment, which are embodied in BTL's aesthetic equipment and treatment protocols, including the following valid and enforceable patent:
• U.S. Patent No. 10,478,634, entitled “Aesthetic Method of Biological Structure Treatment by Magnetic Field,” which was duly and legally issued by the U.S. Patent and Trademark Office on November 19, 2019 (the “ '634 Patent”).
10. BTL has not licensed or authorized Defendants to use any of the BTL Trademarks or the '634 Patent.
11. BTL alleges that Defendants used a body-contouring aesthetic device that infringed the '634 Patent (the “Knockoff Device”) and in connection with the BTL Trademarks, and marks confusingly similar thereto, including “EMSlim Neo,” “EMSlim,” and “EMSHIF.”
12. BTL has not licensed or authorized Defendants to sell devices that infringe the '634 Patent or use any of the BTL Trademarks or confusingly similar versions thereof.
13. Defendants hereby waive any and all right to appeal from this Consent Judgment and Permanent Injunction.
14. This Consent Judgment and Permanent Injunction constitutes a final judgment on the merits of BTL's claims for purposes of res judicata, collateral estoppel, issue preclusion, and claim preclusion.
Therefore, JUDGMENT IS HEREBY ENTERED, upon consent of the Parties hereto, in favor of BTL Industries, Inc. as follows:
1. Pursuant to Fed.R.Civ.P. 65, IT IS HEREBY ORDERED that Defendants, including any current officers, agents, employees, independent contractors, representatives, successors in interest, and all other persons, firms, or companies in active concert or participation with Defendants are permanently enjoined and restrained from directly or indirectly:
a. Using, or enabling others to use, the BTL Trademarks or any reproductions, copies, colorable imitations, and confusingly similar versions thereof, including but not limited to “EMSlim,” “EMSlim Neo,” and “EMSHIF,” in any manner in connection with the promotion, marketing, advertising, offering for sale, or sale of any device that is not a genuine BTL device, or any service that is not a BTL service offered by a genuine new BTL device, or a pre-owned BTL-recertified device;
b. committing any acts calculated to cause consumers to believe that Defendants' device(s) or services are sold under the authorization, control, or supervision of BTL, or are sponsored by, approved by, or otherwise connected with BTL, including, but not limited to, using BTL-owned promotional materials or BTL-sponsored clinical study results to advertise, promote, offer for sale, or sell such devices or services;
c. making, importing, using, offering to sell, or selling-without BTL's authorization-the Knockoff Device or any similar magnetic body sculpting device;
d. making, using, offering to sell-without BTL's authorization-any service implementing or utilizing the Knockoff Device or any similar magnetic body sculpting device; and
e. encouraging, promoting, recommending, or instructing-without BTL's authorization-any third party to make, use, offer to sell, or sell the Knockoff Device or any similar magnetic body sculpting device, or any services related thereto.
2. IT IS FURTHER HEREBY ORDERED that Defendants shall pay BTL the total damages agreed upon by the Parties, which amount is subject to a confidentiality clause.
3. IT IS FURTHER HEREBY ORDERED that this Consent Judgment and Permanent Injunction shall be binding upon and shall inure to the benefit of the Parties and their respective successors, assigns, and acquiring companies.
4. IT IS FURTHER HEREBY ORDERED that the Court retains jurisdiction of this matter for the purpose of enforcing the terms of this Consent Judgment and Permanent Injunction.
5. IT IS FURTHER HEREBY ORDERED that the permanent injunction shall remain in full force and effect unless and until modified by order of this court.
6. IT IS FURTHER HEREBY ORDERED that all claims and demands in the above-captioned matter are hereby dismissed without prejudice and without costs, disbursements, or attorneys' fees to any party. This is a final order and judgment.
IT IS SO ORDERED.