IP Verse

Btl Industries, Inc. V. Bioskin Laser Llc - 1:23-cv-09104

Btl Industries, Inc. V. Bioskin Laser Llc (Case No. 1:23-cv-09104), filed on Oct 16, 2023 in the District Court, S.D. New York involving patent infringement. This case involves patent infringement claims between the parties. Explore details about the litigants, key filings, and major docket updates.

Case Details

Case Number: 1:23-cv-09104
Filing Date: Oct 16, 2023
Cause of Action: Patent Infringement
Status: -
Court: District Court, S.D. New York
Nature of Suit: Patent

Parties Involved

The following parties are involved in this case, with their respective legal representatives for the case.

Name	Represented By
Bioskin Laser II LLC	-
Santa Cohen	-
BTL Industries, Inc.	-

Patents Involved

There is a single patent involved in this case.

Application Number	Patent Number
-	US10478634B2

Docket Entries

The Docket Entries section provides a chronological list of all significant filings and court actions in this case.

Date	Docket Entry	Type
Set alerts for critical docket entry
Mar 22, 2024	ORDER OF DEFAULT FINAL JUDGMENT AND PERMANENT INJUNCTION: ORDERED, ADJUDGED and DECREED that: 1. The Court has subject matter and personal jurisdiction over this action and the parties. 2. Venue is proper before this District. 3. Judgment is entered on the Complaint brought by Plaintiff BTL Industries, Inc. against Defendants Bioskin Laser LLC, Bioskin Laser II LLC, and Santa Cohen on all causes of action brought against them, as follows: a. Judgment is entered for Plaintiff and against Defend ants on the first cause of action for infringement of U.S. Patent No. 10,478,634. b. Judgment is entered for Plaintiff and against Defendants on the second cause of action for trademark infringement under 15 U.S.C. § 1114. c. Judgment is enter ed for Plaintiff and against Defendants on the third cause of action for federal unfair competition, false designation of origin, and false advertising under 15 U.S.C. § 1125. d. Judgment is entered for Plaintiff and against Defendants on the fourth cause of action for common law trademark infringement and unfair competition. In addition, Plaintiff is further awarded a permanent injunction on the first and second causes of action for infringement of U.S. Patent No. 10,478,634 and BTL 9;s trademarks, as follows: Defendants and their officers, agents, employees, and all persons acting in concert with Defendants are enjoined from further infringement of BTL's patents and trademarks, including without limitation U.S. Patent No. 10,478,634 and the EMSCULPT and BTL trademarks. The Complaint (Dkt. 1) seeks injunctive relief and damages in connection with four claims arising out of Defendants' alleged infringement of Plaintiff's patent and trademarks. Service was mad e on Defendants on October 20, 2023 (Dkt. Nos. 10 & 11). Defendants have not appeared in this action or otherwise responded to the Complaint. Personal jurisdiction is proper as Defendants' business operations in New York State give rise to Plai ntiff's injuries. See CPLR 302(a)(1). "[A] defendant who defaults thereby admits all 'well-pleaded' factual allegations contained in the complaint" but "a district court need not agree that the alleged facts constitute a valid cause of action." City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir. 2011) (citations omitted). "[A] district court is required to determine whether the plaintiff's allegations establish the defendant' ;s liability as a matter of law." Id.; accord Jordan v. Books, No. 22 Civ. 6154, 2023 WL 4363003, at 2 (S.D.N.Y. July 6, 2023). The Complaint adequately alleges that Defendants have (1) unlawfully infringed Plaintiff's patent under 35 U.S. C. § 271(a), (2) unlawfully infringed Plaintiff's trademark in violation of 15 U.S.C. § 1114, (3) falsely advertised their products as being manufactured by the Plaintiff in violation 15 U.S.C. § 1125(a) and (4) committed trade mark infringement and unfair competition under New York State common law. For patent infringement, "whoever without authority makes, uses, offers to sell, or sells any patented invention... infringes the patent." 35 U.S.C. § 271(a). The Complaint adequately alleges that Plaintiff holds a patent; that Defendants have been advertising a service utilizing the same patented technology since at least November 1, 2022; that Plaintiff has informed defendants of such infringement on a t least three occasions without response; and that Defendants continue to use Plaintiff's patented technology without permission. For trademark infringement under 15 U.S.C. § 1114, a plaintiff "must demonstrate that it has a valid ma rk entitled to protection and that the defendant's use of it is likely to cause confusion." Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113, 117 (2d Cir. 1999). The Complaint alleges that Plaintiff possesses valid trademarks rel ated to its patented technology and that Defendant uses a counterfeit of Plaintiff's trademark, which by its "very nature, cause confusion," Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp. 2d 284, 287 (S.D.N.Y. 2003). For fa lse advertising under 15 U.S.C. § 1125(a), a plaintiff must establish that the challenged advertisement: (1) is false; (2) misrepresents an inherent quality or characteristic of the product; (3) was placed in interstate commerce by the defend ant; and (4) caused injury to the plaintiff. See Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 255 (2d Cir. 2014). The Complaint alleges that Defendants falsely represent their product as being authentic and made by the Plaintiff. Defendants' ; advertisements contain Plaintiff's trademarks, misrepresenting an inherent characteristic of Defendants' product. See, e.g., C=Holdings B.V. v. Asiarim Corp., 992 F. Supp. 2d 223, 243 (S.D.N.Y. 2013). Defendants have advertised their prod uct on the internet, thereby placing the advertisement in interstate commerce. See, e.g., id. The Complaint also alleges that Defendants' advertisements negatively impact Plaintiff's business. For trademark infringement and unfair competi tion arising under New York State common law, a plaintiff "need only present evidence sufficient to establish a violation of" 15 U.S.C. § 1114. Pfizer Inc. v. Sachs, 652 F. Supp. 2d 512, 526 (S.D.N.Y. 2009). A plaintiff who success fully pleads a trademark infringement claim under common law also states a common law claim for unfair competition if they demonstrate the Defendant acted with bad faith or intent. Id. "Under New York law, a presumption of bad faith attaches t o the use of a counterfeit mark," which Defendants use here. Philip Morris USA Inc. v. Felizardo, No. 03 Civ. 5891, 2004 WL 1375277, at 6 (S.D.N.Y. June 18, 2004). Default judgment is GRANTED. Plaintiff is entitled to permanent injunctive rel ief for its patent infringement claim pursuant to 35 U.S.C. § 283 and its trademark infringement claim pursuant to 15 U.S.C. § 1116(a). An order referring the case for a damages inquest will issue separately. "The common law right of public access to judicial documents is firmly rooted in our nation's history," this right is not absolute and courts "must balance competing considerations against" the presumption of access. Lugosch v. Pyramid Co. of Onondaga, 435 F.3d 110, 119-20 (2d Cir. 2006) (internal quotation marks omitted); see also Nixon v. Warner Commc'ns., Inc., 435 U.S. 589, 599 (1978) ("[T]he decision as to access is one best left to the sound discretion of the trial court, a discre tion to be exercised in light of the relevant facts and circumstances of the particular case."). Plaintiff's motion to seal narrow portions of its memorandum of law in support of its Order to Show Cause and supporting declarations (Dkt. Nos. 25, 26 and 27) is GRANTED for substantially the reasons stated in Plaintiff's letter at Dkt. No. 19. The Clerk of Court is respectfully directed to maintain the document at Dkt. Nos. 25, 26 and 27 under seal, and to close the letter motio n at Dkt. No. 19. Motions terminated: 19 LETTER MOTION to Seal portions of documents ISO Plaintiffs motion for Default Judgment addressed to Judge Lorna G. Schofield from Padmaja Chinta dated 1-9-2024 filed by BTL Industries, Inc. (Signed by Judge Lorna G. Schofield on 3/22/2024) (mml)	PACER Document
Jun 11, 2024	ORDER denying 40 Motion to Seal. For the reasons set forth above, plaintiff's letter-motion seeking leave to redact portions of its Proposed Findings (Dkt. 40) is DENIED. No later than June 25, 2024, plaintiff must refile, on the public docket: (a) its Proposed Findings, in unredacted form; and (b) the Wooden Declaration, with P 9 unredacted. In the alternative, plaintiff may limit its damages request to statutory damages. SO ORDERED. (Signed by Magistrate Judge Barbara C. Moses on 6/11/2024) (ks)	PACER Document