DCT

1:24-cv-05129

CAO Group Inc v. GD Whitening

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-05129, N.D. Ill., 06/21/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant targets consumers in the United States, including Illinois, through interactive e-commerce stores, offers shipping to Illinois, and accepts payment in U.S. dollars.
  • Core Dispute: Plaintiff alleges that Defendant’s teeth whitening strips infringe five patents related to peroxide gel compositions for use in dental bleaching devices.
  • Technical Context: The technology concerns chemical formulations for at-home dental whitening strips designed to be more stable, conformable, and effective than prior art products.
  • Key Procedural History: The complaint notes that all five patents-in-suit are continuation applications stemming from the same parent patent application, resulting in substantively identical specifications across the patent family.

Case Timeline

Date Event
2006-02-08 Earliest Priority Date for all Asserted Patents
2020-03-31 U.S. Patent No. 10,603,259 Issues
2020-05-12 U.S. Patent No. 10,646,419 Issues
2022-01-11 U.S. Patent No. 11,219,582 Issues
2023-11-28 U.S. Patent No. 11,826,444 Issues
2023-11-28 U.S. Patent No. 11,826,445 Issues
2024-06-21 Complaint Filed

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

U.S. Patent No. 10,603,259 - "PEROXIDE GEL COMPOSITIONS"

  • Patent Identification: U.S. Patent No. 10,603,259, "PEROXIDE GEL COMPOSITIONS", issued March 31, 2020. (Compl. ¶17-18).

The Invention Explained

  • Problem Addressed: The patent describes problems with prior art dental bleaching products. It states that fluidic gels used in trays or on strips were messy, failed to adhere properly to teeth, and could be diluted by saliva. Conversely, more rigid or solidified compositions were prone to cracking or breaking when flexed, or required inconvenient two-part mixing immediately before use, precluding a shelf-stable product. (Compl. ¶22-23; ’259 Patent, col. 2:25-4:19).
  • The Patented Solution: The invention is a dental bleaching device comprising a flexible backing strip coated with a unique dental composition. This composition uses specific thickening agents—poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP)—to create a "gelatinous" and "visco-elastic" compound that can be formed into a strip, conform to a user's dental arch without cracking, and remain stable for long-term storage. The specification describes the resulting compound as having a consistency similar to "gummi worms." (Compl. ¶24-25; ’259 Patent, col. 8:16-24).
  • Technical Importance: This formulation allows for a pre-mixed, shelf-stable, single-part whitening strip that can hold higher concentrations of peroxide, adheres well, and conforms to the unique shape of a user's teeth for improved effectiveness. (Compl. ¶24; ’259 Patent, col. 6:28-43).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶27, ¶60).
  • Essential elements of claim 1 include:
    • A dental bleaching device with a dental composition on a flexible, water-insoluble backing strip, packaged for sale.
    • The composition comprises a peroxide bleaching agent, water as a first solvent, and a specific thickening agent (poly(2-ethyl-2-oxazoline) or PVP).
    • The thickening agent is present in an amount greater by weight than the water.
    • The composition is "dried" after application to the strip.
    • The composition is "gelatinous and viscoelastic" after being dried, during storage, after removal from the package, and when positioned on teeth.
    • The composition has "physical deformation properties" allowing it to bend, conform to adjacent teeth, and remain on the strip during use.
  • The complaint reserves the right to assert other claims from the patent. (Compl. ¶60).

U.S. Patent No. 10,646,419 - "PEROXIDE GEL COMPOSITIONS"

  • Patent Identification: U.S. Patent No. 10,646,419, "PEROXIDE GEL COMPOSITIONS", issued May 12, 2020. (Compl. ¶29-30).

The Invention Explained

  • Problem Addressed: As a continuation of the same parent application as the ’259 Patent, the '419 Patent addresses the same technical problems of prior art whitening strips being either too messy and non-adherent or too brittle and prone to cracking. (Compl. ¶32; ’419 Patent, col. 2:25-4:19).
  • The Patented Solution: The ’419 Patent discloses the same fundamental solution: a gelatinous, viscoelastic dental composition on a flexible strip. The claims of this patent add a specific requirement for the composition's adhesive properties after it is removed from its packaging and applied to the teeth. (Compl. ¶33).
  • Technical Importance: The invention provides a shelf-stable, conformable whitening strip that also possesses sufficient adhesive properties to remain securely positioned on the teeth during use, improving contact and user convenience. ('419 Patent, col. 11:32-37).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶33, ¶69).
  • Essential elements of claim 1 are similar to claim 1 of the ’259 Patent, but include the following distinguishing features:
    • A strip of backing material that is "planar" with "two flat sides."
    • The dental composition covers "substantially all of one side" of the backing material.
    • An additional limitation requiring that 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...the dental composition will adhere to surfaces of adjacent teeth."
  • The complaint reserves the right to assert other claims from the patent. (Compl. ¶69).

U.S. Patent No. 11,219,582 - "PEROXIDE GEL COMPOSITION"

  • Patent Identification: U.S. Patent No. 11,219,582, "PEROXIDE GEL COMPOSITION", issued January 11, 2022. (Compl. ¶35-36).
  • Technology Synopsis: Based on a substantively identical specification, this patent addresses the same problems as the lead patents. (Compl. ¶38). The invention is a dental bleaching device comprising a flexible and planar backing strip with a dried, "gelatinous, non-coalescent, and visco-elastic" dental composition that conforms to a user's dental arch without cracking or breaking. (Compl. ¶39).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶39, ¶78).
  • Accused Features: The "Gloridea Teeth Whitening Strips" are alleged to have the claimed features. (Compl. ¶78).

U.S. Patent No. 11,826,444 - "PEROXIDE GEL COMPOSITION"

  • Patent Identification: U.S. Patent No. 11,826,444, "PEROXIDE GEL COMPOSITION", issued November 28, 2023. (Compl. ¶41-42).
  • Technology Synopsis: Based on a substantively identical specification, this patent addresses the same problems as the lead patents. (Compl. ¶44). The invention is a dental whitening device with a flexible, planar backing strip conjoined with a "gelatinous, non-coalescent, visco-elastic" dental composition that flexes and conforms to a user's dental arch without cracking. (Compl. ¶45).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶45, ¶86).
  • Accused Features: The "Gloridea Teeth Whitening Strips" are alleged to have the claimed features. (Compl. ¶86).

U.S. Patent No. 11,826,445 - "PEROXIDE GEL COMPOSITION"

  • Patent Identification: U.S. Patent No. 11,826,445, "PEROXIDE GEL COMPOSITION", issued November 28, 2023. (Compl. ¶47-48).
  • Technology Synopsis: Based on a substantively identical specification, this patent addresses the same problems as the lead patents. (Compl. ¶50). The invention is a dental whitening device comprising a flexible, planar backing strip conjoined with a "gelatinous, non-coalescent, visco-elastic" dental composition that flexes and conforms to a user's dental arch without cracking. (Compl. ¶51).
  • Asserted Claims: The complaint asserts independent claim 1. (Compl. ¶51, ¶94).
  • Accused Features: The "Gloridea Teeth Whitening Strips" are alleged to have the claimed features. (Compl. ¶94).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as "Gloridea Teeth Whitening Strips." (Compl. ¶16).

Functionality and Market Context

  • The complaint alleges that Defendant manufactures, imports, offers for sale, and sells the accused products through an e-commerce store on the Amazon Marketplace. (Compl. ¶14, ¶59). The complaint does not provide specific technical details about the accused product's operation or composition, instead alleging that it embodies the patented inventions. (Compl. ¶60-61). Plaintiff alleges that Defendant's sales have caused loss of market share and erosion of its patent rights. (Compl. ¶57).

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibit G, which was not filed with the public docket, to support its infringement allegations for each asserted patent. (Compl. ¶60, ¶69, ¶78, ¶86, ¶94). The narrative infringement theory is summarized below.

'259 Patent Infringement Allegations

  • The complaint alleges that the Gloridea Teeth Whitening Strips are dental bleaching devices that meet all limitations of at least claim 1 of the ’259 Patent. (Compl. ¶60). The theory suggests the accused product consists of a dental composition on a flexible, water-insoluble strip that is sold in a package. (Compl. ¶27, ¶59). It further alleges the product's composition contains a peroxide agent, water, and one of the two claimed thickening agents in a weight ratio where the thickener exceeds the water, has been dried, and possesses the claimed "gelatinous and viscoelastic" properties that allow it to conform to teeth. (Compl. ¶27, ¶61).

'419 Patent Infringement Allegations

  • The complaint alleges the Gloridea Teeth Whitening Strips also meet all limitations of at least claim 1 of the ’419 Patent. (Compl. ¶69). This infringement theory largely mirrors that for the ’259 Patent but additionally alleges that the accused product's composition has "adhesive properties" that cause it to "adhere to surfaces of adjacent teeth" after being removed from its package and positioned in the mouth, as required by the final limitation of claim 1 of the '419 Patent. (Compl. ¶33, ¶70).

Identified Points of Contention

  • Scope Questions: A primary issue will be whether the accused product's gel meets the specific definition of "gelatinous" provided in the patents' shared specification. This definition includes a "non-coalescence" test, which may significantly narrow the scope of the term. (Compl. ¶26; ’259 Patent, col. 5:49-6:3). Further questions concern whether the accused product actually uses one of the two claimed thickening agents and whether it is present in an amount "more by weight" than water.
  • Technical Questions: The central technical question is the precise chemical and physical nature of the accused product's gel. Evidence from testing or discovery will be needed to determine its composition, its physical properties (e.g., elasticity, viscosity), and whether it behaves in the specific "non-coalescent" manner described in the patent specification. For the '419 Patent, a key question will be whether the product's ability to conform to teeth is distinct from the separately claimed "adhesive properties."

V. Key Claim Terms for Construction

The Term: "gelatinous and viscoelastic"

  • Context and Importance: This phrase describes the core physical characteristic of the inventive dental composition and appears in the independent claims of all asserted patents. Its construction is critical because it distinguishes the invention from prior art liquid gels and brittle solids.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue for a general, dictionary-based meaning of the terms, suggesting any composition that is both gel-like and elastic falls within the scope.
    • Evidence for a Narrower Interpretation: The patentee appears to have acted as its own lexicographer by providing a detailed, multi-part definition. The specification explicitly defines a "gelatinous compound" as a "visco-elastic compound" that has "physical deformation properties between a solid and a fluid" and, critically, "will not coalesce so that a specific sample or portions thereof are still determinable...they will bend as they contact the container but will not merge into one body." (’259 Patent, col. 5:49-6:3). This express definition, particularly the non-coalescence test, may support a narrower construction.

The Term: "dried"

  • Context and Importance: This term, found in the independent claims of the ’259 and ’419 patents, distinguishes the invention from wet-gel strips. The extent of "drying" required by the claim will be a point of dispute.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue "dried" simply means the composition is no longer in a state of free-flowing fluidity, without requiring the complete removal of all solvents.
    • Evidence for a Narrower Interpretation: The specification describes a specific drying process (e.g., "at temperatures of approximately 37° C. for 12 to 24 hours"). (’259 Patent, col. 8:9-11). Furthermore, the specification for the related ’582 Patent clarifies the term as "dried to an extent that it no longer remains in a state of fluidity," which could be used to inform the meaning of "dried" in the parent patents. (Compl. ¶39).

VI. Other Allegations

Indirect Infringement

  • The complaint makes boilerplate allegations of indirect infringement. (Compl. ¶59, ¶68). The prayer for relief also requests an injunction against aiding and abetting infringement. (Compl., p. 24, ¶1(b)). However, the complaint does not plead specific facts to support a claim for either induced or contributory infringement, such as identifying specific acts of inducement or the sale of a non-staple component.

Willful Infringement

  • Plaintiff alleges that Defendant's infringement "has been and continues to be willful." (Compl. ¶64, ¶73, ¶82, ¶90, ¶98). The complaint alleges that CAO provides notice of its patent rights by marking its own "Sheer White!" products with the asserted patent numbers. (Compl. ¶12, ¶55). Figure 1 from the complaint shows an image of product packaging with a list of U.S. Patent numbers, including several of the patents-in-suit. (Compl. p. 14, Fig. 1). The packaging also directs consumers to a website for a full patent list, a screenshot of which is provided as Figure 4. (Compl. p. 15, Fig. 4). These allegations of marking under 35 U.S.C. § 287 may be used to support a claim of pre-suit knowledge and willful infringement.

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

  • A central evidentiary question will be one of chemical composition: can Plaintiff demonstrate, through reverse engineering or discovery, that the accused "Gloridea" strips contain one of the two specific thickening agents recited in the claims (poly(2-ethyl-2-oxazoline) or PVP) and that it is present in the claimed proportion relative to water?
  • The case will likely turn on a core issue of definitional scope: does the accused product's gel meet the patent's highly specific, multi-part definition of "gelatinous," particularly the requirement that discrete units of the material "will not merge into one body" (the non-coalescence test)?
  • A key distinction for the ’419 Patent will be one of functional properties: does the accused product’s composition exhibit "adhesive properties" that are separate and distinct from the general property of "conforming" to teeth, as the claim structure may suggest?