DCT
1:23-cv-06059
Golden Products LLC v. Better & Better Co
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Golden Products, LLC (New York)
- Defendant: Better & Better Co. (Delaware)
- Plaintiff’s Counsel: Ruskin Moscou Faltischek, P.C.
- Case Identification: 1:23-cv-06059, S.D.N.Y., 07/14/2023
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant’s principal place of business is located within the district.
- Core Dispute: Plaintiff alleges that Defendant’s vitamin-infused toothpaste products infringe a patent related to non-fluoride, supplement-containing toothpastes designed for ingestion.
- Technical Context: The technology operates in the consumer oral care and dietary supplement markets, combining the daily routine of brushing teeth with the delivery of vitamins and minerals.
- Key Procedural History: The complaint alleges that Plaintiff sent a notice letter to Defendant on November 8, 2022, and that Defendant, through counsel, rejected the infringement claims on November 22, 2022. This pre-suit correspondence is cited as a basis for willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-05-21 | ’294 Patent Priority Date |
| 2017-05-30 | ’294 Patent Issue Date |
| 2022-11-08 | Plaintiff sends notice letter to Defendant |
| 2022-11-22 | Defendant's counsel rejects Plaintiff's infringement claims |
| 2023-07-14 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,662,294 - Non-Fluoride Containing Dietary Supplement Toothpaste and Methods of Using the Same
The Invention Explained
- Problem Addressed: The patent background identifies a need for a toothpaste that can serve as a "significant source" of dietary supplements (’294 Patent, col. 2:1-5). It notes that conventional fluoride toothpastes are not intended to be swallowed due to fluoride's toxicity, and existing vitamin-containing toothpastes fail to deliver a meaningful amount of supplements (’294 Patent, col. 1:21-29; col. 2:37-52).
- The Patented Solution: The invention is a method of using a non-fluoride toothpaste specifically formulated to be ingested as part of the brushing process. The toothpaste contains at least one dietary supplement in a concentration high enough that a serving provides more than 2% of the Reference Daily Intake (RDI), thereby supplementing a user's diet (’294 Patent, Abstract; col. 2:25-29). The formulation is explicitly designed to be "safe to swallow" (’294 Patent, col. 2:43-44).
- Technical Importance: This approach seeks to merge two distinct consumer habits—oral hygiene and taking daily vitamins—into a single action, leveraging the natural tendency for users to swallow a portion of toothpaste during brushing (’294 Patent, col. 2:61-64).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 3, 5, 7, 8, and 9 (Compl. ¶20).
- Independent Claim 1 recites a method with the following essential elements:
- A method for delivering at least one dietary supplement to a mammal.
- (a) Brushing the teeth of the mammal multiple times in a 24-hour period with a serving size of a non-fluoride, dietary supplement enriched toothpaste.
- The toothpaste comprises a dentally acceptable oral vehicle with a thickening agent and a dietary supplement.
- (b) Ingesting at least a portion of the serving size amount of the toothpaste during each brushing.
- The serving size is formulated so that after brushing and ingesting, at least 2 percent of the RDI of the dietary supplement is provided to the mammal.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant’s "Energy" and "Immunity" toothpastes (Compl. ¶12).
Functionality and Market Context
The complaint alleges these are vitamin-infused toothpastes marketed and sold on Defendant’s website, www.betterandbetter.com (Compl. ¶12). A key accused feature is the inclusion of an instruction to "swallow as normally" on the products' packaging, which Plaintiff alleges is a deliberate use of its own phraseology (Compl. ¶15). The complaint positions the accused products as direct competitors to Plaintiff's "Vitaminpaste®" product (Compl. ¶11-12).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint does not include the referenced Exhibit 2 claim chart (Compl. ¶20). The following table summarizes the infringement theory for the lead independent claim based on narrative allegations in the complaint.
’294 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for delivering at least one dietary supplement to a mammal said method comprising: (a) brushing the teeth... with a serving size amount of a non-fluoride, dietary supplement enriched toothpaste... | Defendant sells and markets vitamin-infused "Energy" and "Immunity" toothpastes, which are used for brushing and allegedly practice the patented method. | ¶12, ¶20 | col. 11:1-8 |
| (b) ingesting at least a portion of said serving size amount of said toothpaste during each brushing, | Defendant's product packaging and marketing materials allegedly instruct customers and end users to "swallow as normally." | ¶15, ¶21 | col. 11:10-12 |
| and wherein said serving size amount of said toothpaste is formulated so that... at least 2 percent of the reference daily intake (RDI) of the dietary supplement is provided... | The complaint makes a general allegation that Defendant's products infringe Claim 1, which contains this limitation, but provides no specific facts regarding the RDI percentage of supplements in the accused products. | ¶20 | col. 11:13-18 |
Identified Points of Contention
- Technical Question: The complaint does not provide specific evidence that the accused "Energy" and "Immunity" toothpastes are "formulated so that... at least 2 percent of the reference daily intake (RDI) of the dietary supplement is provided," as required by Claim 1. The case may turn on whether Plaintiff can produce evidence, such as chemical analysis or Defendant's own formulation data, to prove this quantitative limitation is met.
- Scope Questions: A potential dispute may arise over whether the instruction to "swallow as normally" (Compl. ¶15) is sufficient to meet the claim limitation of "ingesting at least a portion" (Claim 1(b)). The analysis, particularly for induced infringement, will question whether this instruction encourages the specific actions required by the claim.
V. Key Claim Terms for Construction
Term: "formulated so that... at least 2 percent of the reference daily intake (RDI) ... is provided"
- Context and Importance: This quantitative limitation is a cornerstone of the patent's asserted novelty over prior art. Practitioners may focus on this term because the complaint lacks specific factual allegations showing the accused products meet this threshold. The definition of "formulated so that" and "is provided" will be critical to determining infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification suggests that providing a "significant source" is the goal, defining this as "more than about 2 percent of the reference daily intake" (’294 Patent, col. 2:25-29). A party could argue "is provided" means the supplement is made available in the formulation for potential absorption, not that a specific amount must be verifiably absorbed by the user.
- Evidence for a Narrower Interpretation: The claim language "formulated so that... at least 2 percent... is provided" could be interpreted to require a specific, measurable outcome. A party could argue this requires proof that the formulation, when used as directed, necessarily results in the delivery of this amount to the user's system, not just that the amount is present in the toothpaste.
Term: "ingesting"
- Context and Importance: This term is central to the method claim and the inducement allegations. The dispute will center on what actions constitute "ingesting" and what level of proof is required to show Defendant induced this action.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent repeatedly discusses its formulation as being "safe to swallow" and notes that a portion of toothpaste is swallowed "even if not intended" (’294 Patent, col. 2:43-44, col. 2:61-62). This could support an interpretation where any swallowing, intentional or not, meets the "ingesting" limitation.
- Evidence for a Narrower Interpretation: Dependent claims are not asserted here, but the overall context focuses on a deliberate method of supplementation. A party might argue "ingesting" in the context of Claim 1 implies an intentional act of swallowing for the purpose of supplementation, which may be a higher bar than the incidental swallowing that occurs with all toothpastes.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement under 35 U.S.C. § 271(b) (Compl. ¶20). The factual basis is the allegation that Defendant's packaging, labels, and marketing materials instruct end users to perform the patented method, specifically by encouraging them to "swallow as normally" (Compl. ¶15, ¶21).
Willful Infringement
Willfulness is alleged based on both pre-suit and post-suit conduct. The complaint alleges Defendant had knowledge of the ’294 patent "as early as the founding of Defendant" (Compl. ¶13), deliberately copied Plaintiff's "swallow as normal" phrasing (Compl. ¶15), and continued to infringe after receiving a notice letter on November 8, 2022 (Compl. ¶16, ¶18).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of quantitative proof: can the Plaintiff demonstrate that the accused "Energy" and "Immunity" toothpastes are, in fact, "formulated so that... at least 2 percent of the reference daily intake (RDI)" of a supplement is provided to the user, as the complaint currently lacks specific factual allegations on this critical claim element?
- A central issue will be one of induced infringement: does the alleged instruction to "swallow as normally" on Defendant's packaging constitute active inducement of every step of the patented method, and did Defendant possess the requisite specific intent for its customers to infringe the ’294 patent?
- The case may also turn on a question of willful conduct: can the Plaintiff substantiate its allegation that the Defendant deliberately copied product phrasing and had knowledge of the patent prior to the formal notice letter, or will the willfulness inquiry be confined to post-notice conduct?