BTL INDUSTRIES INC v. REJUVA FRESH LLC

1
UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
BTL INDUSTRIES INC., 	)
)
Plaintiff 	)
)
v. 	) 	Nos. 	1:23-cv-00032-SDN
) 	1:24-cv-00139-SDN
REJUVA FRESH LLC et al., 	)
)
Defendants 	)
ORDER ON MOTIONS TO CONSOLIDATE
In these two cases, BTL Industries Inc., brings intellectual property claims
against Rejuva Fresh LLC, and its sole owner and shareholder Polly Jacobs.
See No. 1:23-cv-00032-SDN (“BTL 1”); No. 1:24-cv-00139-SDN (“BTL 2”). Jacobs and
Rejuva Fresh now move to consolidate the two cases, which BTL opposes. See Motion
to Consolidate (ECF No. 85); Opposition (ECF No. 88).1 Because I conclude that the
two cases share common questions of law and that it would be more efficient to try
them together, I will grant Jacobs and Rejuva Fresh’s request for consolidation.
I. Background
BTL, a Massachusetts-based corporation, develops and sells noninvasive
body-contouring 	devices 	for 	use 	in 	the 	United 	States 	aesthetics 	industry.
See 	BTL 	1 	Second 	Amended 	Complaint 	(ECF 	No. 	93) 	¶¶ 	4, 	12;
BTL 2 Complaint (ECF No. 1) ¶¶ 5, 13. BTL recently launched a series of new devices
featuring 	its 	“proprietary 	technology 	that 	uses 	high-intensity 	electromagnetic
1 Because the parties’ briefing on the motions to consolidate is largely identical in both cases, I will
cite only the briefing in BTL 1 for efficiency’s sake.
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stimulation 	to 	tone 	and 	strengthen 	muscles 	in 	targeted 	areas.”
BTL 1 Second Amended Complaint ¶ 12; BTL 2 Complaint ¶ 13. 	Jacobs and
Rejuva Fresh, a Maine-based corporation, have begun competing against BTL in the
same market “by manufacturing and selling non-invasive body-contouring devices,
which 	utilize 	electromagnetic 	waves 	to 	generate 	muscle 	contractions.”
BTL 1 Second Amended Complaint ¶¶ 5-6, 28; BTL 2 Complaint ¶¶ 6-7, 24.
In its two complaints against Jacobs and Rejuva Fresh, BTL brings claims of
patent infringement; trademark infringement; unfair competition, false designation
of origin, and false advertising; violation of the Maine Uniform Deceptive Trade
Practices Act; and common law trademark infringement and unfair competition.
See BTL 1 Second Amended Complaint ¶¶ 55-171; BTL 2 Complaint ¶¶ 37-83.
BTL 1, which was filed in January 2023, concerns BTL’s product called the
EMSCULPT body-contouring device, which uses BTL’s proprietary technology to
generate “high-intensity electromagnetic energy” that “induce[s] powerful muscle
contractions 	in 	a 	patient” 	to 	noninvasively 	tone 	and 	sculpt 	the 	body.
BTL 1 Second Amended Complaint ¶¶ 12-14. 	The EMSCULPT device and its
technology are protected by federally registered trademarks, copyrights, and five
patents. See id. ¶¶ 2, 20-27. BTL alleges that the devices Jacobs and Rejuva Fresh
manufacture and sell infringe upon those trademarks and patents. See id. ¶¶ 28-54.
BTL 	2, 	which 	was 	filed 	in 	April 	2024, 	pertains 	to 	BTL’s 	EMFACE
facial-contouring device, another product featuring BTL’s proprietary technology,
which “applies a combination of synchronized radiofrequency [that] heats the dermis
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to 	stimulate 	collagen 	and 	elastin 	production” 	and 	“high-intensity 	facial
electromagnetic 	stimulation” 	that 	“selectively 	contracts 	facial 	muscles” 	to
noninvasively 	tone 	a 	patient’s 	muscles 	and 	sculpt 	their 	face.
BTL 2 Complaint ¶¶ 13-15. 	The EMFACE device and the technology it uses are
patented and protected by federally registered trademarks. 	See id. ¶¶ 3, 20-23.
BTL alleges that the devices Jacobs and Rejuva Fresh manufacture and sell infringe
upon its EMFACE-related trademarks and patent. See id. ¶¶ 24-36.
Jacobs and Rejuva Fresh filed their motions to consolidate the two cases in
May 2024. See generally Motion to Consolidate.
II. Legal Standard
Federal Rule of Civil Procedure 42(a)(2) provides that courts may consolidate
pending actions that “involve a common question of law or fact.” 	The purpose of
Rule 42(a) “is to give the district court broad discretion to decide how cases on its
docket are to be tried so that the business of the court may be dispatched with
expedition and economy while providing justice to the parties.” 9A Arthur R. Miller,
Federal Practice and Procedure § 2381, Westlaw (database updated June 2024).
The First Circuit uses a two-step framework to determine consolidation.
See 	Seguro 	de 	Servicio 	de 	Salud 	de 	P.R. 	v. 	McAuto 	Sys. 	Grp., 	Inc.,
878 F.2d 5, 8 (1st Cir. 1989). 	“The threshold issue is whether the two proceedings
involve a common party and common issues of fact or law.” Id. If so, “the trial court
has broad discretion in weighing the costs and benefits of consolidation to decide
whether that procedure is appropriate.” 	Id. 	Consolidation is typically “granted
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unless the party opposing it can show ‘demonstrable prejudice.’” Id.
III. Discussion
Because BTL 1 and BTL 2 involve the same parties, my first inquiry turns on
whether the two cases share common questions of law or fact. In the patent context,
questions of law pertain to the construction of a patent claim while questions of fact
concern whether patent infringement occurred. 	See 26 Julianna Frisch Kittelson
et al., Federal Procedure, Lawyers Edition § 60:1053, Westlaw (database updated
Nov. 2024). Overlapping legal claims alone are insufficient to justify consolidation.
See 	DynaEnergetics 	Europe 	GmbH 	v. 	Hunting 	Titan, 	Inc., 	No. 	H-17-3784,
2021 WL 3022435, at *6 (S.D. Tex. July 16, 2021) (denying consolidation where both
cases concerned patent infringement, but the movant failed to show that there were
common questions of fact or law involved in determining that legal claim).
Considering this framework, I conclude that the two cases share common
questions of law.2 	As Jacobs and Rejuva Fresh point out, the term “configured to”
appears in the patent at issue in BTL 2 and the parties have already fully briefed
that term’s construction in BTL 1. 	See Reply (ECF No. 89) at 5; BTL 2 Patent
(ECF No. 1-2) at 39-41; BTL 1 Joint Term Construction Chart (ECF No. 54) at 13-14
(outlining the parties’ disputed construction of the term “configured to”). 	The
construction of the term “pulse” is also at issue in both cases. 	See BTL 2 Patent at
39-41; BTL 1 Joint Term Construction Chart at 10 (providing the parties’ undisputed
2 Because I conclude that BTL 1 and BTL 2 share common questions of law, I need not determine
whether they also share common questions of fact. 	See Seguro de Servicio de Salud de P.R.,
878 F.2d at 8 (requiring a finding of “common issues of fact or law” (emphasis added)).
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construction of the term “pulse”). Because both actions require the Court to construe
these terms, common questions of law exist. Compare DynaEnergetics Europe GmbH,
2021 WL 3022435, at *6 (holding that consolidation was improper where there were
similarities between the allegedly infringed patents but no overlapping claim terms),
with Paxonet Commc’ns., Inc. v. TranSwitch Corp., 303 F. Supp. 2d 1027, 1029
(N.D. Cal. 2003) (consolidating two patent cases that each required the court to
construe the same claim terms in multiple patents).
Jacobs and Rejuva Fresh also correctly note that the technological similarities
between 	the 	patents 	and 	accused 	devices 	in 	each 	case 	favor 	consolidation.
See Reply at 3-5. 	BTL disputes this, maintaining that the underlying technologies
differ because the BTL 1 patented technology produces time-varying magnetic fields
that tone muscles such as the abdomen or buttocks using electromagnetic pulses,
while the BTL 2 patented technology produces a combination of electric current and
radiofrequency 	energy 	that 	stimulates 	and 	heats 	facial 	muscles.
See Opposition at 1-4. 	BTL’s two complaints, however, do not draw such sharp
distinctions. 	Compare BTL 1 Second Amended Complaint ¶¶ 13-14 (describing the
EMSCULPT 	device 	as 	using 	“high-intensity 	electromagnetic 	energy 	to 	induce
powerful muscle contractions” that noninvasively tone a patient’s body), with BTL 2
Complaint ¶¶ 14-15 (describing the EMFACE device as using a combination of
“high-intensity facial electromagnetic stimulation” that “selectively contracts facial
muscles” and radiofrequency that “heats the dermis to stimulate collagen and elastin
production” to noninvasively tone a patient’s muscles and sculpt their face).
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Indeed, BTL characterizes the EMFACE device as a continuation of its
innovation in the field of noninvasive body-contouring devices using the proprietary
high-intensity, focused electromagnetic technology that it originally developed in
connection 	with 	the 	EMSCULPT 	device. 	See 	BTL 	2 	Complaint 	¶¶ 	2-3.
Thus, although the devices in BTL 1 and BTL 2 target different areas of the body, the
jury in both cases will be required to understand their underlying technology and the
same witnesses could be used to establish their common scientific background and
demonstrate the evolution of BTL’s proprietary technology. See Paxonet Commc’ns.,
Inc., 303 F. Supp. 2d at 1029 (consolidating two patent cases in part because each
would 	“require 	a 	jury 	to 	understand 	the 	same 	underlying 	technology”);
Hooker Chems. & Plastics Corp. v. Diamond Shamrock Corp., 96 F.R.D. 46, 49
(W.D.N.Y. 1982) (consolidating two patent cases that involved the same parties where
“the patents share[d] a common scientific background” and the same witnesses could
be used to establish the theories behind and evolution of the patented technology).
Finally, I am not persuaded that BTL would be prejudiced by consolidation.
BTL insists that consolidating BTL 1 and BTL 2 would unreasonably delay resolution
of the former because the two cases are at different stages of discovery—claim
construction briefing is complete in BTL 1 and has yet to begin in BTL 2—and adding
another patent and accused device from BTL 2 would complicate the BTL 1 trial,
which already involves five patents, multiple trademarks, and several accused
devices. 	See Opposition at 4-5. 	This delay in adjudication, BTL contends, would
cause it substantial harm and prejudice by perpetuating the injury caused by Jacobs
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and Rejuva Fresh continuing to sell the BTL 1 accused devices. 	See id. at 3-5.
However, any discovery misalignment between the two cases can be cured by setting
new deadlines, and the delay in adjudication is likely minimal because BTL 2
concerns only one additional patent and accused device. 	See Sea Salt, LLC v.
Bellerose, Nos. 2:18-cv-00413-JAW, 2:20-cv-00099-JAW, 2021 WL 1431064, at *5
(D. Me. Apr. 15, 2021) (concluding that discovery issues were manageable considering
neither case was ready for trial and any delay resulting from consolidation was
counterbalanced by the streamlined efficiency of resolving like cases together).
Moreover, BTL has already filed a motion to preliminarily enjoin Jacobs and Rejuva
Fresh from selling the BTL 1 accused devices, see BTL 1 Motion for Preliminary
Injunction (ECF No. 100), and can seek damages to remedy any sales that have
occurred or continue to occur while that motion is resolved.
IV. Conclusion
On 	balance, 	the 	aforementioned 	costs 	and 	benefits 	favor 	consolidation.
Accordingly, Jacobs and Rejuva Fresh’s motions to consolidate are GRANTED.
NOTICE
In accordance with Federal Rule of Civil Procedure 72(a), a party may
serve and file an objection to this order within fourteen (14) days after being
served with a copy thereof.
Failure to file a timely objection shall constitute a waiver of the right
to review by the District Court and to any further appeal of this order.
Dated: November 27, 2024
/s/ Karen Frink Wolf
United States Magistrate Judge
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