CAO Group Inc v. Karaka LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: CAO Group, Inc. (Utah)
  • Defendant: Karaka LLC d/b/a The DoubleY Brands (Illinois)
  • Plaintiff’s Counsel: Bishop Diehl & Lee, LTD.
• Case Identification: 1:24-cv-04903, N.D. Ill., 06/13/2024
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant is an Illinois limited liability company with its principal place of business in Chicago and has targeted sales to consumers in Illinois through its e-commerce operations.
• Core Dispute: Plaintiff alleges that Defendant’s teeth whitening strips infringe five patents related to shelf-stable, conformable peroxide gel compositions for dental bleaching devices.
• Technical Context: The technology concerns chemical compositions for at-home teeth whitening strips, focusing on creating a gelatinous, viscoelastic peroxide gel that is flexible, adheres to teeth, and remains stable for long periods.
• Key Procedural History: The complaint notes that all five asserted patents are related, stemming from the same original parent application. This shared prosecution history and specification suggests that claim terms may be interpreted consistently across the patent family.

Case Timeline

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

U.S. Patent No. 10,603,259, PEROXIDE GEL COMPOSITION, issued March 31, 2020

The Invention Explained

• Problem Addressed: The patent describes issues with prior art teeth whitening methods, including that fluidic gels were messy, failed to adhere properly to teeth, and were easily diluted by saliva. More rigid compositions were often brittle, cracking when flexed, or required inconvenient two-part mixing immediately before use, limiting their shelf stability. (’259 Patent, col. 2:25-4:19; Compl. ¶21-22).
• The Patented Solution: The invention is a dental bleaching device comprising a flexible backing strip coated with a unique peroxide gel. The gel uses specific thickening agents—poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP)—to create a "gelatinous" and "visco-elastic" composition that is shelf-stable, flexible enough to conform to a user's dental arch without cracking, and adhesive when hydrated. This formulation allows for higher, more effective concentrations of peroxide in a convenient, single-part product. (’259 Patent, Abstract; col. 6:28-43; Compl. ¶23). The patent describes the resulting compound as having a consistency similar to "gummi worms." (’259 Patent, col. 8:16-24).
• Technical Importance: This technology sought to provide a more convenient and effective at-home teeth whitening system by creating a stable, high-concentration peroxide gel that could be pre-applied to a strip and would stay in place during use. (’259 Patent, col. 5:30-39).

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of all claims. (Compl. ¶59-60).
• Essential elements of independent claim 1 include:
  • A dental bleaching device with a dental composition on a flexible, water-insoluble backing strip, packaged in a package.
  • The composition comprises a peroxide bleaching agent, a first solvent which is water, and a thickening agent of at least one of poly(2-ethyl-2-oxazoline) and polyvinylpyrrolidone.
  • The thickening agent is included in an amount more by weight than the water.
  • The dental composition is dried after being applied to the strip.
  • The composition is "gelatinous and viscoelastic" after drying, during storage, after removal from the package, and when positioned on teeth.
  • The composition has physical deformation properties allowing it to bend and conform to adjacent teeth and remain on the strip during use.

U.S. Patent No. 10,646,419, PEROXIDE GEL COMPOSITIONS, issued May 12, 2020

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’259 Patent, this patent addresses the same technical problems of messy, ineffective, or brittle prior art whitening strips. The complaint notes that the specifications are "substantively identical." (’419 Patent, col. 2:25-4:19; Compl. ¶31).
• The Patented Solution: The solution is substantively the same as described for the ’259 Patent: a flexible strip with a pre-applied, dried, gelatinous, and viscoelastic peroxide gel composition that uses specific thickening agents for improved stability, flexibility, and adhesion. (’419 Patent, Abstract; col. 6:28-43).
• Technical Importance: This patent further protects the same core technological advance of a superior, shelf-stable, and conformable dental whitening strip.

Key Claims at a Glance

• The complaint asserts independent claim 1 and alleges infringement of all claims. (Compl. ¶69-70).
• Essential elements of independent claim 1 include:
  • A dental bleaching device with a flexible, planar backing strip having two flat sides.
  • A dental composition covers "at least substantially all of one side" of the strip.
  • The composition comprises a peroxide agent, a solvent (water), and a thickening agent (poly(2-ethyl-2-oxazoline) or PVP).
  • The composition is dried, gelatinous, and viscoelastic at various stages of use.
  • The composition can bend and conform to teeth and remain on the strip.
  • The composition has "adhesive properties" to adhere to tooth surfaces after removal from the package.

Multi-Patent Capsule: U.S. Patent No. 11,219,582

• Patent Identification: 11,219,582, PEROXIDE GEL COMPOSITION, issued January 11, 2022. (Compl. ¶35).
• Technology Synopsis: This patent, also part of the same patent family, covers a dental bleaching device with a flexible backing strip and a dried, "gelatinous, non-coalescent, and visco-elastic" dental composition designed to flex and conform to a user's teeth without cracking. The composition uses specific thickening agents to achieve these properties. (Compl. ¶37; '582 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶79).
• Accused Features: The accused Boka Bright + White Sensitive Smile Whitening Strips are alleged to embody the claimed invention. (Compl. ¶79).

Multi-Patent Capsule: U.S. Patent No. 11,826,444

• Patent Identification: 11,826,444, PEROXIDE GEL COMPOSITION, issued November 28, 2023. (Compl. ¶41).
• Technology Synopsis: As another continuation in the family, this patent discloses a dental whitening device comprising a flexible backing strip and a "gelatinous, non-coalescent, visco-elastic" dental composition containing a whitening agent, a solvent, and a specific thickening agent (PVP or polyethyloxazoline), which allows the device to conform to a user's dental arch without cracking. (Compl. ¶43; '444 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶87).
• Accused Features: The accused Boka Bright + White Sensitive Smile Whitening Strips are alleged to infringe. (Compl. ¶87).

Multi-Patent Capsule: U.S. Patent No. 11,826,445

• Patent Identification: 11,826,445, PEROXIDE GEL COMPOSITION, issued November 28, 2023. (Compl. ¶47).
• Technology Synopsis: This patent is also a continuation in the same family and covers a dental whitening device with a flexible backing strip and a "gelatinous, non-coalescent, visco-elastic" dental composition using the same class of specified thickening agents to enable flexing and conforming to a user's teeth without breaking. (Compl. ¶49; '445 Patent, Claim 1).
• Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶95).
• Accused Features: The accused Boka Bright + White Sensitive Smile Whitening Strips are alleged to infringe. (Compl. ¶95).

III. The Accused Instrumentality

Product Identification

The accused products are the "Boka Bright + White Sensitive Smile Whitening Strips." (Compl. ¶59).

Functionality and Market Context

The complaint alleges that the accused whitening strips are sold through interactive e-commerce stores that target consumers in the United States, including Illinois. (Compl. ¶2). The complaint does not provide an independent technical description of the accused product's functionality, but rather alleges that it embodies the features recited in the asserted patent claims. These allegations are made with reference to claim charts in an attached Exhibit G, which was not publicly filed with the complaint. (Compl. ¶59, ¶69). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint alleges that the Defendant's "Boka Bright + White Sensitive Smile Whitening Strips" infringe at least Claim 1 of each of the five asserted patents. (Compl. ¶59, ¶69, ¶79, ¶87, ¶95). The specific factual basis for these allegations is contained in claim charts attached as Exhibit G to the complaint. (Compl. ¶59). As this exhibit was not included in the public filing, a detailed, element-by-element analysis based on Plaintiff's specific theories is not possible.

The narrative infringement theory is that the accused whitening strips constitute a dental bleaching device that meets all limitations of the asserted claims. This includes the strip having a flexible backing material coated with a dental composition that is gelatinous, viscoelastic, and contains a peroxide bleaching agent and one of the specific thickening agents recited in the claims. (Compl. ¶59, ¶68). Plaintiff alleges infringement of all claims of the asserted patents, not just the representative independent claims. (Compl. ¶60, ¶70, ¶80, ¶88, ¶96).

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over the proper construction of "gelatinous." The patents provide a detailed, multi-part definition that distinguishes a "gelatinous" compound from both a "solid" and a "fluid" based on its non-coalescing property. (’259 Patent, col. 5:49-6:3). The case may turn on whether the accused product's composition meets this specific definition or if it functions more like a conventional fluidic gel.
  • Technical Questions: A primary factual question will be the chemical composition of the accused strips. Does the composition contain one of the two thickening agents required by the claims: poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP)? Furthermore, for Claim 1 of the ’259 Patent, does the accused product contain the thickening agent in an amount "more by weight... than the water"? These are quantitative questions that will require discovery and expert chemical analysis.

V. Key Claim Terms for Construction

For U.S. Patent No. 10,603,259 and related patents:

• The Term: "gelatinous"

• Context and Importance: This term is critical as it defines the physical state of the dental composition, which is the core of the invention. Its construction will determine whether the accused product's physical properties fall within the scope of the claims, distinguishing it from prior art liquids and brittle solids.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: A party might focus on the initial part of the patent's explicit definition, "resembling gelatin, viscous," to argue for a more general meaning. (’259 Patent, col. 5:52-53).
  • Evidence for a Narrower Interpretation: The patent provides a highly detailed definition, stating a "gelatinous compound... will have some degree of flex and deformation... but will not coalesce so that a specific sample or portions thereof are still determinable." It further clarifies this by contrasting it with a "fluid," which will coalesce, and provides an example of discrete units bending but not merging. This language strongly supports a narrow construction tied to the specific non-coalescing property. (’259 Patent, col. 5:56-6:3).

• The Term: "dried after being applied on the strip of backing material"

• Context and Importance: This is a key process step in the claims, and the resulting "gelatinous and viscoelastic" properties are defined as existing after this step. The interpretation of "dried" is therefore crucial to the infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes "typical" drying conditions (37° C. for 12 to 24 hours) but does not mandate them, suggesting some flexibility. (’259 Patent, col. 8:10-11). A party might argue "dried" does not require the complete removal of solvent, but merely reaching a non-liquid state.
  • Evidence for a Narrower Interpretation: The purpose of drying is to achieve the claimed "gelatinous and viscoelastic" properties. A party could argue that "dried" must be construed to mean dried to the extent necessary to achieve the specific non-coalescing physical state that distinguishes the invention from prior art fluidic gels. The specification of the related '582 patent, for instance, claims a composition "dried to an extent that it no longer remains in a state of fluidity," which may inform the interpretation here. ('582 Patent, Claim 1).

VI. Other Allegations

• Indirect Infringement: The complaint's prayer for relief seeks to enjoin aiding and abetting or contributing to infringement. (Compl., Prayer for Relief ¶1(b)). However, the factual allegations in the body of the complaint focus on Defendant's direct infringement through its own manufacture, sale, and importation of the accused products. (Compl. ¶58, ¶67, ¶77, ¶87, ¶95).
• Willful Infringement: The complaint alleges that Defendant's infringement has been and continues to be willful. (Compl. ¶63, ¶73, ¶83, ¶91, ¶99). The asserted basis for pre-suit knowledge appears to be constructive notice. Plaintiff alleges that its own commercial products ("Sheer White! Teeth Whitening Strips") are marked with the Asserted Patents and that the patents are listed on its website, thereby providing notice to the public and competitors. (Compl. ¶13, ¶54-55).

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

1. A central issue will be one of definitional scope: can the term "gelatinous," as explicitly defined in the patents with a specific "non-coalescent" property, be read to cover the physical composition of the accused whitening strips? The outcome of this claim construction and the subsequent factual analysis will be critical.

2. A key evidentiary question will be one of chemical composition: does the accused product's formulation include one of the two specific thickening agents (poly(2-ethyl-2-oxazoline) or PVP) recited in the claims, and, for certain claims, is it present in the required proportion relative to water? This will likely be resolved through discovery and competing expert testimony.

3. The viability of the willfulness claim will depend on whether Plaintiff can establish that Defendant had pre-suit knowledge of the patents. The question will be whether Plaintiff's patent marking on its own products and website is sufficient to prove that this specific Defendant was aware of the patents prior to the lawsuit.