DCT

5:22-cv-01874

CAO Group Inc v. Procter Gamble Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:22-cv-01874, C.D. Cal., 10/26/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement in the district and maintain regular and established places of business, including a more than one-million-square-foot warehouse and distribution center in Moreno Valley, California.
  • Core Dispute: Plaintiff alleges that Defendant’s Crest 3D Whitestrips and ARC brand whitening strips infringe a patent related to stable, high-concentration peroxide gel compositions for dental applications.
  • Technical Context: The technology concerns the chemical formulation of teeth whitening products to create a shelf-stable, flexible, and adhesive strip that effectively delivers a high concentration of peroxide to a user's teeth.
  • Key Procedural History: The complaint alleges a multi-year history between the parties, including prior litigation initiated by P&G against CAO in 2013 (dismissed in 2014), subsequent collaboration discussions and product sample sharing from 2015 to 2020, and specific notice from CAO to P&G regarding the patent family of the patent-in-suit. Plaintiff also notes that it filed a separate lawsuit against P&G on related patents in January 2022 and that P&G did not petition for a post-grant review of the patent-in-suit within the statutory nine-month window following its issuance.

Case Timeline

Date Event
2006-02-08 '582 Patent Priority Date
2013-05-20 P&G files suit against CAO in S.D. Ohio
2014-12-16 P&G's suit against CAO is dismissed
2017-04-12 CAO allegedly identifies grandparent patent application to P&G
2019-05-01 P&G begins operating its West Coast Mixing Center in Moreno Valley, CA
2022-01-11 '582 Patent issues
2022-01-25 CAO files prior lawsuit against P&G on related patents
2022-04-15 CAO allegedly notifies P&G of infringement of the '582 Patent
2022-10-26 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 11,219,582 - "Peroxide Gel Composition"

The "’582 Patent," issued January 11, 2022.

The Invention Explained

  • Problem Addressed: The patent describes several problems with prior art teeth whitening technologies. Liquid or fluidic gel compositions were messy, did not adhere well to teeth (particularly if uneven), and were easily diluted by saliva, reducing their effectiveness (Compl. ¶39; ’582 Patent, col. 2:50-3:50). Furthermore, compositions with higher, more effective peroxide concentrations were often unstable and would decompose, while more rigid, solid compositions were prone to cracking or breaking when flexed (Compl. ¶40; ’582 Patent, col. 3:51-4:19).
  • The Patented Solution: The invention is a dental treatment device comprising a flexible backing strip coated with a "gelatinous" peroxide composition. This composition uses specific thickening agents—Poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP)—that enable higher, more stable concentrations of peroxide in a highly viscous, shelf-stable form (’582 Patent, Abstract; Compl. ¶41). The resulting compound is described as "visco-elastic," with a flexibility and consistency similar to "gummi worms," allowing it to conform to a user's teeth without cracking while remaining adhered to the backing strip (Compl. ¶42; ’582 Patent, col. 8:15-23).
  • Technical Importance: The claimed formulation allows for a dental whitening strip that is both more potent (due to higher, stable peroxide concentrations) and more user-friendly (due to its adhesive and flexible nature) than prior art solutions (Compl. ¶41; ’582 Patent, col. 6:28-43).

Key Claims at a Glance

  • The complaint asserts independent Claim 1 and dependent Claim 2 (Compl. ¶88). Plaintiff also reserves the right to assert additional claims (Compl. ¶88).
  • Independent Claim 1 recites the following essential elements:
    • A strip of backing material that is flexible and planar with two flat sides.
    • A dental composition applied to at least a portion of one of the flat sides.
    • The composition comprises a peroxide bleaching agent, a solvent, and a thickening agent.
    • The thickening agent is selected from at least one of polyethyloxazoline and polyvinylpyrrolidone (PVP).
    • The dental composition has been dried to an extent that it no longer remains in a "state of fluidity."
    • The dried composition is "gelatinous, non-coalescent, and visco-elastic" such that it and the backing material can flex and conform to a user's dental arch "without cracking or breaking."

III. The Accused Instrumentality

Product Identification

The "P&G Infringing Products" include the Crest 3D Whitestrips product family and the ARC Whitestrip product family (Compl. ¶¶76, 83, 87).

Functionality and Market Context

  • The accused products are described as "thin, flexible strips that are coated with a tooth whitening gel containing peroxide" and are designed to conform to the shape of a user's teeth (Compl. ¶78). The complaint alleges that an examination of the product labels reveals the presence of Polyvinylpyrrolidone (PVP), water, and hydrogen peroxide (Compl. ¶84). The products are marketed with a "No-Slip Grip" feature, which allegedly allows the strips to "strongly adhere" to teeth (Compl. ¶79). A marketing graphic from the accused product's webpage highlights features including "NO-SLIP GRIP WHITENING STRIPS" and "NO MESSY TRAYS OR GELS" (Compl. ¶77).
  • The complaint alleges that the accused product lines generate annual U.S. sales in excess of $200 million (Compl. ¶85).

IV. Analysis of Infringement Allegations

’582 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a strip of backing material, wherein the strip of backing material is flexible and planar such that the strip of backing material has two flat sides The accused products are whitening strips made with a flexible plastic backing, such as Polyethylene or Polypropylene (Compl. ¶84). ¶¶78, 84 col. 12:57-12:61
a dental composition being applied to at least a portion of one of the flat sides of the strip of backing material The accused strips are coated with a tooth whitening gel (Compl. ¶78). ¶78 col. 12:62-12:64
the dental composition being comprised of a peroxide bleaching agent, a solvent, and a thickening agent Product labels for the accused products allegedly list Hydrogen Peroxide (peroxide bleaching agent) and Water (solvent) as ingredients (Compl. ¶84). ¶84 col. 12:65-1:2
said thickening agent being at least one thickening agent selected from the set of thickening agents consisting of polyethyloxazoline and polyvinylpyrrolidone (PVP) The labels of the accused products allegedly list Polyvinylpyrrolidone (PVP) as an ingredient (Compl. ¶84). ¶84 col. 1:2-1:5
the dental composition having been dried to an extent that it no longer remains in a state of fluidity The accused products are sold as a stable gel on a strip, not as a fluid, which the complaint alleges meets this limitation (Compl. ¶88, Ex. D). The patent describes drying the gel to form the bleaching compound (Compl. ¶42). ¶¶78, 88 col. 11:1-11:2
wherein the dried dental composition is gelatinous, non-coalescent, and visco-elastic such that when adhered to a user's dental arch both the dental composition and the backing material flex and conform... without cracking or breaking The accused strips are marketed as "flexible" and "designed to conform to the shape of your teeth" (Compl. ¶78). They are advertised as having a "No-Slip Grip" and being unlike "messy trays or gels," suggesting the specific physical properties claimed (Compl. ¶77). ¶¶77, 78 col. 11:3-11:8
  • Identified Points of Contention:
    • Scope Questions: A primary dispute may concern the proper construction of "gelatinous." The patent provides its own detailed definition, requiring the compound to be "visco-elastic," have properties "between a solid and a fluid," and "not coalesce" when multiple samples are placed together (Compl. ¶43; ’582 Patent, col. 5:49-6:3). The core question for the court will be whether the accused product's gel, as formulated, meets this specific, multi-part definition or if it functions as a more conventional gel that would fall outside the claim scope.
    • Technical Questions: The infringement analysis will raise the evidentiary question of whether the accused products, which allegedly contain PVP but also other ingredients like "Acrylates Copolymer" (Compl. ¶84), actually exhibit the "non-coalescent" and "visco-elastic" properties required by Claim 1. The complaint relies on marketing statements ("flexible," "conform"), but a factual dispute may arise over whether the product's actual physical and chemical behavior matches the specific technical requirements defined in the patent's specification.

V. Key Claim Terms for Construction

  • The Term: "gelatinous"
  • Context and Importance: This term appears central to distinguishing the invention from the prior art. The patentee acted as its own lexicographer, providing a detailed definition that goes beyond the term's ordinary meaning (Compl. ¶43; ’582 Patent, col. 5:49-6:3). The outcome of the case may depend on whether the accused product's gel falls within this specific definition. Practitioners may focus on this term because its construction will likely determine the boundary between the claimed invention and conventional adhesive gels.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification first introduces the term by citing a dictionary definition: "resembling gelatin, viscous" (’582 Patent, col. 5:52-54). A party might argue this general definition should inform the overall meaning.
    • Evidence for a Narrower Interpretation: The specification immediately follows the dictionary definition with a highly specific one for the purposes of the application: "A gelatinous compound shall be a visco-elastic compound having physical deformation properties between a solid and a fluid... [it] will have some degree of flex and deformation... but will not coalesce so that a specific sample or portions thereof are still determinable" (’582 Patent, col. 5:54-6:3). This explicit redefinition suggests the patentee intended to be bound by this narrower, more technical meaning.

VI. Other Allegations

  • Indirect Infringement: The complaint's formal count is for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶87). However, the pleading contains factual allegations that could potentially support a claim for induced infringement, such as P&G providing products with instructions for use to consumers and selling through third-party distributors who resell to end-users (Compl. ¶¶78, 80-81).
  • Willful Infringement: The complaint alleges willful infringement based on extensive pre-suit knowledge (Compl. ¶89). The allegations state that P&G was aware of CAO's technology and related intellectual property for years due to prior litigation and business development discussions (Compl. ¶¶50-65). The complaint further alleges that P&G received specific notice of the '582 Patent's grandparent application as early as 2017 and direct notice of infringement of the issued '582 Patent on April 15, 2022, months before the complaint was filed (Compl. ¶¶55, 89).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of definitional scope: can the accused P&G whitening strips, which use a PVP-based gel, be proven to meet the patent’s highly specific, multi-part definition of "gelatinous"? This definition requires not just flexibility but also "non-coalescent" and "visco-elastic" properties that distinguish it from both fluid gels and brittle solids.
  • A key evidentiary question will be one of technical proof: beyond marketing claims of being "flexible" and having a "no-slip grip," what technical evidence can Plaintiff provide to demonstrate that the accused product's gel composition actually functions in the specific manner required by the claims, particularly the "non-coalescent" limitation which is a key feature in the patent's own definition?