CAO Group Inc v. Individuals Corps Ltd

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: CAO Group Inc (Utah)
  • Defendant: The Individuals, Corporations, Limited Liability Companies, Partnerships, and Unincorporated Associates Identified on Schedule “A.” (Jurisdiction Undisclosed)
  • Plaintiff’s Counsel: Bishop Diehl & Lee LTD
• Case Identification: 1:24-cv-01211, N.D. Ill., 10/28/2024
• Venue Allegations: Venue is based on allegations that Defendants target consumers in the United States, including Illinois, through interactive e-commerce stores, thereby directing business activities to the forum.
• Core Dispute: Plaintiff alleges that Defendants’ unauthorized dental whitening strips infringe five U.S. patents related to stable, high-concentration peroxide gel compositions and the devices that deliver them.
• Technical Context: The technology concerns chemical formulations for at-home dental whitening strips, a product category within the larger consumer oral hygiene market.
• Key Procedural History: The operative pleading is a Third Amended Complaint targeting a network of unidentified e-commerce operators, a strategy often employed in anti-counterfeiting litigation. The patents-in-suit belong to a large family stemming from an application filed in 2006 and are subject to terminal disclaimers, a factor that can be relevant in assessing patent term and validity challenges.

Case Timeline

Date	Event
2006-02-08	Earliest Priority Date for all Patents-in-Suit
2020-03-31	U.S. Patent No. 10,603,259 Issued
2020-05-12	U.S. Patent No. 10,646,419 Issued
2022-01-11	U.S. Patent No. 11,219,582 Issued
2023-11-18	U.S. Patent No. 11,826,444 Issued
2023-11-18	U.S. Patent No. 11,826,445 Issued
2024-10-28	Third Amended Complaint Filed

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

U.S. Patent No. 10,603,259, "Peroxide Gel Compositions," Issued March 31, 2020

The Invention Explained

• Problem Addressed: The patent describes drawbacks with prior art tooth whitening products. Liquid or low-viscosity gel systems were messy, difficult to apply, and easily diluted by saliva. Furthermore, many thickening agents were incompatible with high concentrations of peroxide, causing the compositions to degrade and lose efficacy over time. (’259 Patent, col. 2:3-13, 24-48).
• The Patented Solution: The invention is a dental bleaching device comprising a flexible, water-insoluble backing strip coated with a specific dental composition. This composition uses a peroxide-stable thickening agent, such as poly(2-ethyl-2-oxazoline), which allows for higher concentrations of the bleaching agent. The composition is dried to a "gelatinous and viscoelastic" state that is shelf-stable for up to six months, yet becomes adhesive and can conform to the unique shape of a user's dental arch upon application without cracking or breaking. (’259 Patent, Abstract; col. 8:5-24).
• Technical Importance: This approach sought to create a more effective, user-friendly, and shelf-stable at-home whitening strip by solving the chemical instability and mechanical application problems of earlier products. (’259 Patent, col. 5:30-42).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶ 42).
• Essential elements of Claim 1 include:
  • A dental bleaching device with a dental composition on a flexible, water-insoluble strip of backing material, packaged in a package.
  • The composition comprises a peroxide bleaching agent, water as a first solvent, and a thickening agent that is at least one of poly(2-ethyl-2-oxazoline) and polyvinylpyrrolidone.
  • The thickening agent is present in an amount more by weight than the water.
  • The composition is dried after application to the strip.
  • The composition is "gelatinous and viscoelastic" at various stages (after drying, during storage, after removal from package, and when positioned on teeth).
  • The composition has "physical deformation properties" allowing it to be positioned, bent, and conformed to surfaces of adjacent teeth in a dental arch, while remaining on the backing strip during use.
• The complaint reserves the right to assert all other claims (Compl. ¶ 42).

U.S. Patent No. 10,646,419, "Peroxide Gel Compositions," Issued May 12, 2020

The Invention Explained

• Problem Addressed: The patent addresses the same technical problems as the ’259 Patent, including the instability of peroxide gels and the application challenges of prior art strips and trays. (’419 Patent, col. 2:3-48).
• The Patented Solution: The invention is a dental bleaching device with a "flexible and planar" backing strip having two flat sides. A dental composition containing a peroxide agent and a specific thickener (poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone) covers "substantially all of one side" of the strip. In addition to being gelatinous, viscoelastic, and conformable, this patent explicitly claims the composition has "adhesive properties" that allow it to adhere to teeth after being removed from a package. (’419 Patent, Abstract; col. 6:5-col. 7:2).
• Technical Importance: This patent builds on the core formulation by adding structural limitations to the strip (planar, two flat sides) and explicitly claiming the adhesive functionality, further defining the physical characteristics of the whitening device. (’419 Patent, col. 5:53-65).

Key Claims at a Glance

• The complaint asserts independent Claim 1 (Compl. ¶ 52).
• Essential elements of Claim 1 are largely similar to the ’259 Patent but add or refine the following:
  • The strip of backing material is "planar such that the strip of backing material has two flat sides."
  • The dental composition covers "at least substantially all of one side of the backing material."
  • The composition has "adhesive properties such that, after the dental bleaching device has been removed from a package and is then positioned on adjacent teeth in a dental arch, the dental composition will adhere to surfaces of adjacent teeth in a dental arch."
• The complaint reserves the right to assert all other claims (Compl. ¶ 52).

Multi-Patent Capsule: U.S. Patent No. 11,219,582, "Peroxide Gel Composition," Issued January 11, 2022

• Technology Synopsis: This patent claims a dental bleaching device having a flexible, planar strip with a dried dental composition. The composition is described as "gelatinous, non-coalescent, and visco-elastic" and uses polyethyloxazoline or polyvinylpyrrolidone (PVP) as a thickener. A key feature is that when the device is adhered to a user's dental arch, both the composition and the backing material "flex and conform to a user's dental arch without cracking or breaking." (’582 Patent, Abstract; Compl. ¶ 14).
• Asserted Claims: Claim 1 (Compl. ¶ 62).
• Accused Features: The "Unauthorized Products" sold by Defendants are alleged to embody the claimed device and its specific physical properties (Compl. ¶ 60).

Multi-Patent Capsule: U.S. Patent No. 11,826,444, "Peroxide Gel Compositions," Issued November 18, 2023

• Technology Synopsis: This patent is directed to a "dental whitening device" with claim language very similar to the ’582 Patent. It requires a flexible, planar strip with a "gelatinous, non-coalescent, visco-elastic" composition conjoined to it. The composition includes a tooth whitening agent and the same specified thickeners (polyethyloxazoline or PVP), and the device must "flex and conform to the user's dental arch without cracking or breaking." (’444 Patent, Abstract; Compl. ¶ 17).
• Asserted Claims: Claim 1 (Compl. ¶ 71).
• Accused Features: The "Unauthorized Products" are alleged to be infringing whitening devices (Compl. ¶ 70).

Multi-Patent Capsule: U.S. Patent No. 11,826,445, "Peroxide Gel Compositions," Issued November 18, 2023

• Technology Synopsis: This patent is nearly identical in scope to the ’444 Patent, claiming a "dental bleaching device" with the same core limitations. It requires a flexible, planar strip, a "gelatinous, non-coalescent, visco-elastic" composition with a peroxide bleaching agent and the specified thickeners, and the ability for the device to flex and conform to a user's dental arch without cracking or breaking. (’445 Patent, Abstract; Compl. ¶ 20).
• Asserted Claims: Claims 1 and 2 (Compl. ¶ 80).
• Accused Features: The "Unauthorized Products" are alleged to infringe (Compl. ¶ 79).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are identified as "Unauthorized Products," which are dental whitening strips (Compl. ¶ 3).

Functionality and Market Context

The complaint alleges these products are sold by Defendants through numerous e-commerce stores operating under "Seller Aliases" on platforms including Amazon, eBay, and Walmart (Compl. ¶ 26). The complaint frames these products as counterfeits intended to mimic Plaintiff's own "Sheer White! Teeth Whitening Strips" product line (Compl. ¶¶ 22, 32). The complaint provides an image of its own product's packaging, which lists the patents-in-suit, to establish context for its marking and notice allegations (Compl. Figure 1, p. 9). These "Unauthorized Products" are allegedly manufactured offshore and imported into the U.S. (Compl. ¶ 27).

IV. Analysis of Infringement Allegations

The complaint references claim charts in "Exhibit 7" to show infringement of the asserted patents (Compl. ¶¶ 42, 52, 62, 71, 80). As this exhibit was not attached to the filed complaint, the infringement theory is summarized below in prose.

The central infringement allegation is that the "Unauthorized Products" are dental whitening strips that embody the technology claimed in the patents-in-suit. Plaintiff's theory, based on a declaration from Dr. Denson Cao that is also not attached, is that Defendants’ products meet all limitations of the asserted claims (Compl. ¶ 42). This includes being structured as a flexible backing strip coated with a specific dental composition. The complaint alleges this composition contains the claimed ingredients: a peroxide bleaching agent, a solvent (water), and a specific thickening agent selected from poly(2-ethyl-2-oxazoline) and/or polyvinylpyrrolidone (PVP) (Compl. ¶¶ 8, 42, 51).

Furthermore, the complaint alleges the accused products exhibit the specific physical and functional properties recited in the claims. These properties include being dried to a "gelatinous and viscoelastic" state that is shelf-stable, becomes adhesive upon wetting, and can "bend and form to surfaces of adjacent teeth in a dental arch" while remaining on the strip during use, all "without cracking or breaking" (Compl. ¶¶ 8, 11, 14). The complaint posits that infringement of Claim 1 of the ’259 Patent is representative and that its infringement would infer infringement of the similar claims in the other asserted patents (Compl. ¶¶ 51, 61).

• Identified Points of Contention:
  • Evidentiary Question: The primary point of contention will likely be evidentiary. What evidence can Plaintiff provide that the "Unauthorized Products," sourced from various anonymous online sellers, actually contain the specific chemical formulation required by the claims, particularly the use of "poly(2-ethyl-2-oxazoline)" or "polyvinylpyrrolidone" as the thickening agent? The case may depend heavily on the testing and analysis underlying the unattached "Cao Decl." (Compl. ¶ 42).
  • Technical Question: A key technical question concerns the claimed physical properties. Do the accused products function as claimed? For instance, what is the basis for the allegation that the accused strips are "gelatinous and viscoelastic" and "flex and conform... without cracking or breaking" in the specific manner defined and distinguished from the prior art in the patent specifications?

V. Key Claim Terms for Construction

Term: "gelatinous and viscoelastic" ('259 Patent, Claim 1)

• Context and Importance: This phrase describes the essential physical state of the dried dental composition, distinguishing it from prior art liquid gels and brittle solids. The outcome of the infringement analysis may depend on whether the accused products can be proven to possess this specific combination of properties.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification provides a dictionary-style definition for "gelatinous" as "resembling gelatin, viscous" (’259 Patent, col. 5:48-52). A party could argue this supports a broad, qualitative interpretation based on the plain and ordinary meaning of the terms.
  • Evidence for a Narrower Interpretation: The detailed description offers a specific, tangible example, stating the compound has "a flexibility and consistency similar to the popular confection known as gummi worms" (’259 Patent, col. 8:19-22). A party could argue this embodiment should be used to narrow the scope of the term to compositions exhibiting this particular characteristic.

Term: "physical deformation properties such that... the dental composition may be positioned on surfaces of adjacent teeth in a dental arch, bend and form... and remain on the strip of backing material during use" ('259 Patent, Claim 1)

• Context and Importance: This functional language is critical to defining the invention's performance. Infringement will require proof that the accused product's composition conforms to teeth and, crucially, "remain[s] on the strip" as claimed, rather than being displaced like prior art gels.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff may argue that this language simply requires the composition to be generally conformable and sufficiently adherent to avoid the large-scale displacement or run-off issues described for prior art gels.
  • Evidence for a Narrower Interpretation: The patent's background criticizes prior art gels for being "displaced or pumped out" during fitting and wear (’259 Patent, col. 3:34-36). A defendant may argue that to "remain on the strip... during use" requires a significantly higher level of performance with minimal material loss, setting a high standard for infringement.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead a separate count for indirect infringement but requests relief for "aiding, abetting, [and] contributing to" infringement (Compl., Prayer for Relief ¶ 1.b). The factual basis for such a claim may rest on allegations that Defendants operate as an interconnected network, working in "active concert" to manufacture and sell the accused products and using online platforms to coordinate and evade enforcement (Compl. ¶¶ 35-38).
• Willful Infringement: Willfulness is alleged for all asserted patents (Compl. ¶¶ 46, 56, 66, 75, 84). The complaint alleges pre-suit knowledge based on constructive notice, asserting that Plaintiff marks its commercial products and packaging with the numbers of the patents-in-suit and provides notice on its website (Compl. ¶¶ 23, 24). The complaint includes an image of Plaintiff's product packaging, which lists several of the patents-in-suit, as evidence of this marking practice (Compl. Figure 1, p. 9). Post-suit knowledge is based on the filing of the complaint.

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

• A central issue will be one of evidence and attribution: Given that the Defendants are a collective of anonymous e-commerce sellers, can the Plaintiff produce sufficient technical evidence (e.g., chemical analysis, physical testing) to prove that the "Unauthorized Products" sourced from these disparate storefronts contain the specific chemical compositions and exhibit the precise physical properties required by the asserted claims?
• A key question of claim scope and function will be: Do the accused products, even if chemically similar, actually perform as claimed? Specifically, does their dried composition exhibit the unique "gelatinous and viscoelastic" properties and the ability to "flex and conform... without cracking or breaking" that the patents describe as an improvement over the prior art?
• A significant procedural question underlies the litigation strategy: Can the Plaintiff effectively obtain jurisdiction and enforce a potential judgment against a shifting network of international e-commerce operators that are allegedly designed to conceal their identities and evade legal consequences?