BTL accused Rejuva Fresh and its sole owner of infringing a number of patents on non-invasive body-contouring devices that utilize “high-intensity electromagnetic stimulation to tone and strengthen muscles.” Following a Markman hearing, Magistrate Judge Wolf recommended the court invalidate the patent claims as indefinite.
Initially, Judge Wolf rejected Rejuva Fresh’s proposal that the “person of ordinary skill in the art” (from whose perspective the definiteness analysis is performed) be limited to one who had the knowledge and training necessary to operate the claimed devices. Judge Wolf found this to be too narrow, as it eliminated people who practiced and were knowledgeable in the relevant art but were not specifically trained on the BTL products.
Judge Wolf next looked to the construction of the terms “toned” and “enhance the visual appearance of the patient.” She agreed with REJUVA Fresh that these terms were indefinite, as they were subjective and the specification lacked sufficient guidance as to the boundaries of these terms. She rejected BTL’s argument that the objective baseline was that a magnetic field is applied to cause a contraction of the muscle, and the contraction would create the “toned” and “enhanced visual appearance” of the claims. She agreed that this was how the muscle was toned, but noted that it still did not establish the boundary of the term “toned” or otherwise indicate when one would fall within the scope of the claims. Absent an objective standard for the scope of those terms, the claims containing these limitations are indefinite.
The parties also disputed whether the phrase “configured to” required the device to be programmable to generate the claimed output or whether it meant that it could be set up to function as claimed. Judge Wolf determined that the use of the phrase in the claims, combined with other claim terms, for example the use of “configured to” in one claim and the claim of parameters being “set” by an operator in a different claim indicates that the term should mean that the device is designed to deliver energy at least within the claimed range, even if it is capable of delivering energy outside of the range (in other words, must be capable of meeting the limitation as opposed to incapable of not meeting the limitation). This appears to be of import because were the phrase construed the other way, Rejuva Fresh would not be a direct infringer.
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