DCT
1:19-cv-03336
Ultradent Products Inc v. French Transit Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ultradent Products, Inc. (Utah)
- Defendant: French Transit, Ltd. (California); French Transit, LLC (Colorado)
- Plaintiff’s Counsel: Wheeler Trigg O'Donnell LLP; Stoel Rives LLP
- Case Identification: 1:19-cv-03336, D. Colo., 11/25/2019
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendants maintain a regular and established place of business, including their corporate headquarters, within the district, and have allegedly committed infringing acts there.
- Core Dispute: Plaintiff alleges that Defendant’s dental whitening products infringe patents related to dental bleaching compositions that use sucralose as a sweetening agent to improve palatability.
- Technical Context: The technology addresses the consumer market for at-home teeth whitening systems, focusing on chemical formulations designed to be effective and tolerable for extended patient use.
- Key Procedural History: The complaint notes that Certificates of Correction were issued for both patents-in-suit, which may be relevant for clarifying the scope of the issued claims. No other procedural history is mentioned.
Case Timeline
| Date | Event |
|---|---|
| 1999-12-20 | Priority Date for '671 and '774 Patents |
| 2001-11-06 | U.S. Patent No. 6,312,671 Issued |
| 2001-11-27 | U.S. Patent No. 6,322,774 Issued |
| 2002-04-23 | Certificate of Correction Issued for '774 Patent |
| 2002-09-03 | Certificate of Correction Issued for '671 Patent |
| 2019-11-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,312,671 - "Dental Bleaching Compositions Containing Sucralose" (Issued Nov. 6, 2001)
The Invention Explained
- Problem Addressed: The patent’s background section states that patients often fail to complete home-use teeth whitening treatments because of the "bitter taste of the dental bleaching agent" (’671 Patent, col. 2:13-17). Prior sweeteners were described as inadequate: nutritive sugars are not sweet enough and can cause tooth decay; aspartame is unstable in the presence of bleaching agents; and sodium saccharine has potential health concerns and an "undesirable bitter after taste" (’671 Patent, col. 2:18-39).
- The Patented Solution: The invention uses the non-nutritive sweetener sucralose in a dental bleaching composition to mask the bitter taste of the active bleaching agents (’671 Patent, col. 2:55-58). The composition is preferably formulated as a "sticky and viscous" gel, which helps a dental tray adhere to the teeth for the duration of the treatment period (’671 Patent, Abstract; col. 2:47-51).
- Technical Importance: By improving the taste of the composition, the invention sought to increase patient compliance with bleaching regimens, thereby leading to better whitening results (’671 Patent, col. 2:60-64).
Key Claims at a Glance
- Independent Claim 16 (Composition): A dental bleaching composition comprising:
- a dental bleaching agent (e.g., carbamide peroxide) of at least 10% by weight;
- a non-nutritive sweetening agent "consisting essentially of sucralose";
- a carrier comprising a "sticky, viscous gel" with a thickening agent;
- wherein the composition is "substantially free of other non-nutritive sweetening agents besides sucralose" and "substantially free of abrasives."
- Independent Claim 28 (Method): A method for bleaching teeth by:
- providing a composition with the same core elements as claim 16; and
- "contacting the person's teeth with the dental bleaching composition for a desired treatment period."
- The complaint reserves the right to assert dependent claims (Compl. ¶¶ 22, 24).
U.S. Patent No. 6,322,774 - "Dental Bleaching Compositions Containing Sucralose" (Issued Nov. 27, 2001)
The Invention Explained
- Problem Addressed: Similar to the ’671 Patent, this patent addresses the "bitter or otherwise unpleasant taste of the dental bleaching agent," which discourages patients from completing treatments (’774 Patent, col. 2:25-28).
- The Patented Solution: The invention is a dental bleaching composition that includes sucralose, which is described as stable, effective at masking bitterness, and free of the aftertaste or safety concerns associated with other sweeteners like sodium saccharine (’774 Patent, col. 4:35-44). Unlike the asserted claims of the ’671 Patent, the carrier in the ’774 Patent’s asserted claims is more broadly defined as a "liquid or a gel," without the explicit "sticky, viscous" limitation (’774 Patent, col. 11:34).
- Technical Importance: The invention provided a safe and palatable dental bleaching formulation that could encourage consistent use and thus more effective teeth whitening (’774 Patent, col. 3:6-12).
Key Claims at a Glance
- Independent Claim 1 (Composition): A dental bleaching composition comprising:
- at least one dental bleaching agent in an amount from about 5% to 85% by weight;
- a non-nutritive sweetening agent "consisting essentially of sucralose";
- a carrier comprising a "liquid or a gel";
- wherein the composition is "substantially free of other non-nutritive sweetening agents besides sucralose."
- Independent Claim 24 (Method): A method for bleaching teeth by:
- providing a composition with the same core elements as claim 1; and
- contacting a person's teeth with the composition.
- The complaint reserves the right to assert dependent claims (Compl. ¶¶ 33-37, 39).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Luster Premium White Pro Light Dental Whitening System," "Luster Premium White 2 Minute White Dental Whitening Treatment," and "Luster Premium White Power White Pro Sonic Dental Teeth Whitening System" as the Accused Products (Compl. ¶15).
Functionality and Market Context
- The complaint alleges these products are multi-step, at-home dental whitening systems that include a bleaching composition applied to the user's teeth (Compl. ¶15). The complaint includes an image from Defendant's marketing materials showing the packaging for these systems. This image depicts kits that promise to whiten teeth by up to six shades (Compl. ¶15, pg. 4). The products are allegedly sold through retail and e-commerce outlets such as Walgreens and Amazon.com (Compl. ¶17).
IV. Analysis of Infringement Allegations
'671 Patent Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a dental bleaching agent... in an amount of at least about 10% by weight of the dental bleaching composition; | The Accused Products allegedly include a bleaching agent, such as carbamide peroxide, in an amount of at least 10% by weight. | ¶21 | col. 11:47-54 |
| a non-nutritive sweetening agent consisting essentially of sucralose and included in an amount sufficient to disguise any bitter taste... | The Accused Products allegedly include sucralose in an amount sufficient to disguise the bitter taste of the bleaching agent. | ¶21 | col. 11:55-59 |
| a carrier comprising a sticky, viscous gel that includes at least one of an organic polymer thickening agent... | The Accused Products allegedly include a sticky viscous gel with an organic polymer thickening agent, such as hydroxypropyl cellulose or methyl hydrogenated rosinate. | ¶21 | col. 11:60-62 |
| wherein the dental bleaching composition (i) is substantially free of other non-nutritive sweetening agents besides sucralose and (ii) is substantially free of abrasives. | The complaint alleges the bleaching composition in the Accused Products is substantially free of other non-nutritive sweetening agents and of abrasives. | ¶21 | col. 11:63-65 |
- Identified Points of Contention:
- Scope Questions: A central issue may be the interpretation of "consisting essentially of sucralose" and "substantially free of other non-nutritive sweetening agents." The litigation will likely focus on whether the accused formulations contain other sweeteners and, if so, whether their presence removes the products from the claim's scope.
- Technical Questions: The complaint alleges the chemical composition of the Accused Products "on information and belief" (Compl. ¶21). A key question for discovery will be what evidence supports the specific allegations regarding the percentage of bleaching agent, the presence and role of sucralose, and the absence of other sweeteners and abrasives.
'774 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one dental bleaching agent in an amount in a range from about 5% to about 85% by weight... | The Accused Products allegedly include a bleaching agent, such as carbamide peroxide, in an amount between about 5% and 85% by weight. | ¶32 | col. 11:28-31 |
| a non-nutritive sweetening agent consisting essentially of sucralose and included in an amount so as to substantially disguise any bitter taste... | The Accused Products allegedly include sucralose in an amount sufficient to disguise the bitter taste of the bleaching agent. | ¶32 | col. 11:32-34 |
| a carrier comprising a liquid or a gel, | The Accused Products allegedly include a carrier comprising a liquid or a gel. | ¶32 | col. 11:34 |
| wherein the dental bleaching composition is substantially free of other non-nutritive sweetening agents besides sucralose. | The complaint alleges the bleaching composition in the Accused Products is substantially free of other non-nutritive sweetening agents. | ¶32 | col. 11:35-38 |
- Identified Points of Contention:
- Scope Questions: As with the ’671 Patent, the meaning of "substantially free of other non-nutritive sweetening agents" will be critical. The broader claim term "liquid or a gel" (compared to the ’671 patent's "sticky, viscous gel") suggests a potentially lower bar for infringement on that element, but the negative limitation regarding other sweeteners remains a primary hurdle.
- Technical Questions: What is the precise chemical formulation of the Accused Products? The complaint’s allegations regarding the composition are foundational to the infringement case and will require evidentiary support (Compl. ¶32).
V. Key Claim Terms for Construction
- The Term: "consisting essentially of sucralose" (from ’671 Claim 16 and ’774 Claim 1)
- Context and Importance: This is a transitional phrase with a specific legal meaning that is narrower than "comprising" but broader than "consisting of." Its construction is critical because it will determine whether the presence of other non-nutritive sweeteners in the Accused Products, even in small amounts, would defeat the infringement claim. Practitioners may focus on this term because the factual question of the accused product's exact formulation is tied directly to this legal standard.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification of the ’671 patent mentions that "Other sweeteners can also be added including xylitol, mannose, mannitol, sucrose, aspartame, sodium saccharin and fructose" (’671 Patent, col. 5:6-9). A party could argue this passage suggests the patentee contemplated the presence of other sweeteners, and thus "consisting essentially of" should not be read to entirely exclude them.
- Evidence for a Narrower Interpretation: Both patents' background sections heavily criticize prior art sweeteners like aspartame and saccharin for instability and taste issues, suggesting an intent to exclude them (’671 Patent, col. 2:26-39; ’774 Patent, col. 2:40-53). Furthermore, both asserted independent claims explicitly add the limitation that the composition must be "substantially free of other non-nutritive sweetening agents besides sucralose," which strongly supports a narrow interpretation that permits only impurities or components that do not materially affect the basic and novel properties of the sucralose-based invention.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendants provide instructions that teach and encourage users to apply the Accused Products in a manner that directly infringes the method claims (e.g., ’671 claim 28) (Compl. ¶¶ 18, 23). The complaint also alleges contributory infringement, asserting that the Accused Products have no substantial non-infringing use and are a material part of the invention (Compl. ¶¶ 26, 41).
- Willful Infringement: The complaint alleges that Defendants' infringement has been willful. The basis for this allegation is that Plaintiff's own commercial products (Ultradent Whitening Products) have been marked with the asserted patent numbers, thereby allegedly providing Defendants with pre-suit knowledge of the patents (Compl. ¶¶ 27, 42).
VII. Analyst’s Conclusion: Key Questions for the Case
This dispute centers on the specific chemical formulations of dental whiteners. The outcome will likely depend on the answers to two primary questions:
A central issue will be one of compositional fact and claim scope: Does the chemical formulation of the Accused Products fall within the scope of the claims, particularly the negative limitation requiring the composition to be "substantially free of other non-nutritive sweetening agents besides sucralose"? This requires both a legal construction of the claim term and factual evidence from testing of the accused formula.
A key evidentiary question will be one of knowledge and intent: What evidence can Plaintiff produce to support its allegations of willfulness? The claim rests on constructive notice via patent marking on Plaintiff's own products, and the court will have to determine if this is sufficient to establish the "subjective willfulness" prong required under the Halo standard.