IP Law Daily, PATENT—D. Me.: Request for preliminary injunction against a drop-shipper denied, (May 9, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

BTL Industries failed to prove a likelihood of success on its claims of patent infringement and failed to prove irreparable harm if a preliminary injunction was denied.

The U.S. District Court for the District of Maine denied BTL Industries’ motion for preliminary injunction and motion to strike against a drop-shipper for alleged patent and trademark infringement claims. The district court held that BTL Industries failed to demonstrate a likelihood of success on the merits for patent infringement and had not submitted any evidence showing irreparable harm (BTL Industries, Inc. v. Rejuva Fresh LLC, No. 1:23-cv-00032-SDN (D. Me. May 7, 2025)).

Background. BTL Industries, Inc. (BTL) was the holder of patents related to the use of “focused electromagnetic technology in non-invasive aesthetic body-contouring devices” which BTL marketed under various trademarks including EMSCULPT and EMSCULPT NEO. BTL had brought a suit against Rejuva Fresh, LLC (Rejuva), a drop-shipper, and Rejuva’s sole member, Polly Jacobs, for infringement. Rejuva moved to dismiss claims of induced infringement for failure to state a claim and Jacobs moved to dismiss the claims against her personally because she claimed protection under Rejuva’s corporate veil. The court denied both motions to dismiss. BTL then filed a motion for a preliminary injunction to enjoin Rejuva from importing and selling the EMSCULPT aesthetic body contouring device and the technology used in the device in the United States. BTL also moved to strike portions of Rejuva’s opposition brief to BTL’s preliminary injunction motion.

Motion to strike denied. BTL moved to strike portions of Rejuva’s opposition brief and evidence, arguing that Rejuva’s attachment of an expert declaration and U.S. Patent No. 7,744,523 as prior art evidence of BTL’s U.S. Patent No. 9,636,519 (’519 patent) was untimely. Contrary to BTL’s assertions, allowing Rejuva to include this evidence will not prejudice BTL as expert discovery is ongoing in this matter, and the court has allowed the parties to submit additional claim construction briefs. Accordingly, the district court denied BTL’s motion to strike and allowed the evidence.

Preliminary injunction—likelihood of success. BTL’s preliminary injunction motion involved both patent and trademark claims.

In order to demonstrate a likelihood of success on the merits for patent infringement, BTL had to show: (1) Rejuva infringed upon BTL’s patented technology, either directly or contributorily, with products Rejuva sold on its dropshipping online shop, and (2) BTL’s infringement claim was likely to withstand Rejuva’s challenges to the validity and enforceability of BTL’s patents.

According to Rejuva, infringement occurs only if an end-user “sets up” the accused devices to operate. Therefore, as a drop-shipper, Rejuva contended that it could be liable for direct infringement because it does not obtain possession of the accused devices to configure or “set up” the devices. Rejuva also contended that it could not be liable for induced infringement since BTL could prove an end-user operated the accused devices. BTL argued that Rejuva was required, and was unable, to prove an invalidity defense by clear and convincing evidence. Rejuva argued that as the accused infringer it need only raise a substantial question of patent’s validity to defeat BTL’s likelihood of success on the merits and prevent a preliminary injunction. The court found that Rejuva raised a substantial question on indefiniteness and that BTL failed to carry its burden by showing that Rejuva’s invalidity defense lacked substantial merit. Thus, the district court concluded that BTL failed to show a likelihood of success on the issue of the merits for patent infringement.

To succeed on a claim of trademark infringement, BTL was required to establish (1) that its marks were entitled to trademark protection, and (2) that the allegedly infringing use was likely to cause consumer confusion. There was no dispute over whether BTL’s marks were entitled to trademark protections.

To determine the likelihood of consumer confusion, the district court considered the eight-factor Pignons test. However, of the eight likelihood of confusion factors established in Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1981), six factors weighed in favor of finding confusion. Four of these factors: actual confusion, similarity of marks, similarity of goods and services, and strength of marks are considered to be the “most critical” in determining a likelihood of confusion. Together, these factors demonstrated that Rejuva’s use of the “EM” mark was likely to cause consumer confusion due to the similarity in the products and the market in which the products are sold. Therefore, the evidence favored a finding of confusion between the parties’ devices, and BTL was likely to succeed in its trademark infringement claim.

Preliminary injunction—irreparable harm. However, the district court did not find irreparable harm for three reasons. First, BTL moved to enjoin Rejuva from using the alleged infringing marks nearly two years after filing suit, claiming that Rejuva is a foreign entity and that Ms. Jacobs commingles the business’s funds with her own personal funds. Thus, BTL’s delay in moving for a preliminary injunction weighed against issuing one in this matter.

Second, BTL asserted that there is a general consensus among the courts that a foreign defendant with no assets in the United States supports a finding of a likelihood of irreparable harm. The district court noted that as it is considering the risk of irreparable harm with respect to trademark infringement, as opposed to patent infringement, the Federal Circuit decisions are less persuasive than in the patent context.

Lastly, the district court found no merit in BTL’s unsubstantiated allegation that Rejuva will move its U.S. assets to an unrecoverable, foreign bank account upon a judgment in BTL’s favor because the evidence Rejuva submitted demonstrated that Ms. Jacobs made the transfer to satisfy her 2023 U.S. tax debt, which the Internal Revenue Service had collected from her. Therefore, Rejuva successfully rebutted the presumption of irreparable harm.

BTL’s request for a preliminary injunction was accordingly denied.

The Case is No. 1:23-cv-00032-SDN.

Judge: Neumann, S.

Attorneys: Kyle M. Noonan (Pierce Atwood LLP) for BTL Industries Inc. Brendan M. Shortell (Lambert Shortell & Connaughton Law Firm) for Rejuva Fresh LLC.

Companies: BTL Industries Inc.; Rejuva Fresh LLC

Cases: Patent Trademark MaineNews