DCT
2:24-cv-00175
CAO Group Inc v. Walmart Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: CAO Group, Inc. (Utah)
- Defendant: Walmart, Inc. (Delaware)
- Plaintiff’s Counsel: LAHTI HELFGOTT LLC
- Case Identification: 2:24-cv-00175, D. Utah, 03/05/2024
- Venue Allegations: Venue is alleged to be proper based on Defendant’s commission of infringing acts within the District of Utah and its maintenance of regular and established places of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Equate" brand teeth whitening strips infringe five patents related to peroxide gel compositions for use in dental bleaching devices.
- Technical Context: The technology relates to at-home dental care, specifically improving the chemical stability and physical properties of teeth whitening strips to enhance user comfort and whitening efficacy.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with pre-suit notice of infringement of three of the patents-in-suit via a letter on August 29, 2023. Plaintiff also alleges its commercial products are marked with the patents-in-suit, providing constructive notice. The five asserted patents are part of the same patent family, descending from a common priority application.
Case Timeline
| Date | Event |
|---|---|
| 2006-02-08 | Earliest Priority Date for all Patents-in-Suit |
| 2010-01-01 | CAO Group, Inc. launches its Sheer White! Whitening Strips |
| 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 |
| 2023-08-29 | CAO sends notice letter to Walmart regarding three patents |
| 2023-09-11 | Walmart's counsel responds to notice letter |
| 2023-11-28 | U.S. Patent No. 11,826,444 Issues |
| 2023-11-28 | U.S. Patent No. 11,826,445 Issues |
| 2024-03-05 | 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 several issues with prior art teeth whitening technologies. Fluidic gels used in trays were messy, did not adhere well, allowed saliva to dilute the whitening agent, and did not conform well to variations in teeth anatomy (Compl. ¶21; ’259 Patent, col. 2:50-3:50). More rigid compositions avoided messiness but were prone to cracking when flexed and could not be stored as stable, pre-mixed formulations (Compl. ¶22; ’259 Patent, col. 3:51-4:19).
- The Patented Solution: The invention is a dental bleaching device featuring a flexible backing strip coated with a unique peroxide gel composition. The composition uses a specific thickening agent—poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP)—to create a "gelatinous" and "visco-elastic" material that can be pre-mixed, stored for months, and applied to the strip (Compl. ¶23; ’259 Patent, col. 6:28-43). This composition is designed to be flexible enough to conform to a user's dental arch without cracking or breaking, resembling the consistency of "gummi worms" (’259 Patent, col. 8:20-21).
- Technical Importance: This technology enabled the creation of a shelf-stable, single-component, at-home whitening strip that could deliver higher concentrations of peroxide while conforming closely and comfortably to a user's teeth (Compl. ¶11, ¶23).
Key Claims at a Glance
- Independent Claim 1 is asserted in the complaint (Compl. ¶64).
- Essential elements of Claim 1 include:
- A dental bleaching device with a dental composition on a flexible, water-insoluble strip of backing material, packaged.
- The composition comprises a peroxide bleaching agent, water as a first solvent, and a thickening agent of at least poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone.
- The thickening agent is included 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 multiple stages (after drying, during storage, after removal from package, and when on teeth).
- The composition has physical deformation properties allowing it to bend and conform to a dental arch while remaining on the backing strip.
- The complaint reserves the right to assert additional claims (Compl. ¶72).
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, as the complaint notes their specifications are "substantively identical" (Compl. ¶31). The focus is on creating a whitening strip that is effective, stable, and user-friendly (Compl. ¶31, incorporating ¶¶21-22).
- The Patented Solution: The solution is a dental bleaching device comprising a "flexible and planar" strip with two flat sides, where the gelatinous composition covers "substantially all of one side" (’419 Patent, col. 11:1-8). A key feature recited in the claims of this patent is that the composition has "adhesive properties" that allow it to adhere to the surfaces of teeth after being removed from its package (’419 Patent, col. 11:32-37). The underlying chemical composition and its physical properties are otherwise consistent with those described in the ’259 Patent.
- Technical Importance: This patent emphasizes the structural and adhesive characteristics that allow the whitening strip to be manufactured uniformly and adhere effectively during use, solving prior art problems of slippage and poor contact (Compl. ¶21).
Key Claims at a Glance
- Independent Claim 1 is asserted in the complaint (Compl. ¶79).
- Essential elements of Claim 1 include:
- A strip of backing material that is flexible, planar, and has two flat sides.
- A dental composition covering substantially all of one flat side.
- The composition comprises a peroxide bleaching agent, water, and a specific thickening agent (poly(2-ethyl-2-oxazoline) or PVP).
- The composition is "dried" and is "gelatinous and viscoelastic" at multiple stages.
- The composition has physical deformation properties to conform to a dental arch.
- The composition has "adhesive properties" to adhere to teeth surfaces.
- The complaint reserves the right to assert additional claims (Compl. ¶87).
Multi-Patent Capsule: U.S. Patent No. 11,219,582
- Patent Identification: U.S. Patent No. 11,219,582, PEROXIDE GEL COMPOSITION, Issued January 11, 2022 (Compl. ¶35).
- Technology Synopsis: Continuing the same inventive theme, this patent claims a dental bleaching device with a flexible, planar backing strip. The claims focus on a "dried dental composition" that is "gelatinous, non-coalescent, and visco-elastic" and dried to an extent that it is no longer fluid, allowing it to flex and conform to a user's dental arch without cracking or breaking (Compl. ¶38; ’582 Patent, col. 11:1-12:30).
- Asserted Claims: Claim 1 is asserted as exemplary (Compl. ¶94). The patent contains two independent claims (Compl. ¶38).
- Accused Features: The accused Equate Whitening Strips are alleged to have a dried, gelatinous, non-coalescent, and visco-elastic composition containing PVP that conforms to a user's teeth without breaking (Compl. ¶¶98-100).
Multi-Patent Capsule: U.S. Patent No. 11,826,444
- Patent Identification: U.S. Patent No. 11,826,444, PEROXIDE GEL COMPOSITION, Issued November 28, 2023 (Compl. ¶41).
- Technology Synopsis: This patent claims a dental whitening device comprising a flexible, planar strip with a "gelatinous, non-coalescent, visco-elastic" dental composition conjoined to it. The key claimed feature is that when adhered to a user's arch, "both the dental composition and the backing material flex and conform to the user's dental arch without cracking or breaking" (Compl. ¶44; ’444 Patent, col. 11:1-11).
- Asserted Claims: Claim 1 is asserted as exemplary (Compl. ¶108). The patent contains three independent claims (Compl. ¶44).
- Accused Features: The Equate Whitening Strips are alleged to have a gelatinous, non-coalescent, and visco-elastic composition that, along with its backing, flexes to conform to a user's arch without cracking (Compl. ¶¶111, 113).
Multi-Patent Capsule: U.S. Patent No. 11,826,445
- Patent Identification: U.S. Patent No. 11,826,445, PEROXIDE GEL COMPOSITION, Issued November 28, 2023 (Compl. ¶47).
- Technology Synopsis: This patent's claims are very similar to those of the ’444 Patent. It claims a dental whitening device with a flexible, planar strip and a "gelatinous, non-coalescent, visco-elastic" dental composition. The claim language likewise focuses on the combined dental composition and backing material flexing and conforming to a user's dental arch without cracking or breaking (Compl. ¶50; ’445 Patent, col. 11:11-22).
- Asserted Claims: Claim 1 is asserted as exemplary (Compl. ¶120). The patent contains two independent claims (Compl. ¶50).
- Accused Features: The Equate Whitening Strips are alleged to have the claimed flexible strip and gelatinous composition that flexes and conforms without breaking when applied to teeth (Compl. ¶¶123, 125).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are a family of teeth whitening strip products sold under Walmart's "Equate" brand, specifically including "Equate Ultra White Whitening Strips," "Equate Timeless White Whitening Strips," and "Equate Professional Whitening Strips" (collectively, "Equate Whitening Strips") (Compl. ¶55).
Functionality and Market Context
- The complaint describes the accused products as thin, flexible strips coated on one side with a "whitening adhesive containing hydrogen peroxide" (Compl. ¶60). An examination of the product label is alleged to reveal ingredients including "PVP, WATER, PEG-8, HYDROGEN PEROXIDE," among others (Compl. ¶62). The products are marketed as featuring a "convenient EasyFit design which provides a comfortable fit, excellent adhesion, and easy application" (Compl. ¶¶57-59). Walmart is alleged to sell these products in its physical stores and online at Walmart.com (Compl. ¶56).
IV. Analysis of Infringement Allegations
’259 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a dental bleaching device comprising a dental composition on a strip of backing material, wherein the strip of backing material is flexible and insoluble in water | The accused strips consist of a dental composition on a thin, flexible strip that is insoluble in water. | ¶66 | col. 8:22-24 |
| wherein the dental bleaching device is packaged in a package | The accused strips are sold in commercial packaging. A provided image shows the outer box and the inner foil packet for an individual strip treatment (Compl. p. 16). | ¶67 | col. 8:5-9 |
| wherein the dental composition...comprises a peroxide bleaching agent, a first solvent, and a thickening agent; wherein the first solvent is water; wherein the thickening agent is at least one of poly(2-ethyl-2-oxazoline) and polyvinylpyrrolidone | The product's ingredient list is alleged to contain hydrogen peroxide (peroxide bleaching agent), water (first solvent), and PVP (thickening agent). | ¶68, ¶62 | col. 6:30-33 |
| wherein...the thickening agent is included in an amount more by weight of the dental composition than the water | The complaint alleges this is met because ingredients on cosmetic labels are listed in descending order of predominance, and the accused product lists PVP before Water. | ¶69 | col. 8:65-9:3 |
| wherein the dental composition is dried after being applied on the strip of backing material | The dental compositions are alleged to be dried after application to the strips. | ¶69 | col. 8:9-12 |
| wherein the dental composition is gelatinous and viscoelastic (a) after...dried, (b) during storage...up to six months in package, (c) after...removed from the package, and (d) when...flexibly positioned on teeth | The composition is alleged to be gelatinous and viscoelastic, supported by images showing its ability to deform and exhibit elasticity when manipulated with a glass capillary (Compl. p. 17). The complaint also includes images purporting to show the composition does not coalesce over 72 hours, consistent with the patent's definition of "gelatinous" (Compl. p. 18). | ¶70 | col. 5:49-6:3 |
| wherein the dental composition has physical deformation properties such that...the dental composition may be positioned on surfaces of adjacent teeth in a dental arch, bend and conform...and remain on the strip of backing material during use | The product's ability to conform is allegedly established by photographic evidence and by Walmart's own statements that the product is "designed to adhere to your upper and lower teeth." | ¶71 | col. 8:16-19 |
’419 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a strip of backing material, wherein the strip of backing material is flexible and planar such that the strip of backing material has two flat sides | The accused product is described as a "thin, flexible" strip. An image is provided showing the strip's flat sides (Compl. p. 21). | ¶81 | col. 8:22-24 |
| a dental composition on one of the flat sides...such that at least substantially all of one side...is covered solely by the dental composition | The product is described as "coated on one side with a whitening adhesive," and the "adhesive side" is alleged to contain the dental composition throughout the entire side of the strip. | ¶82 | col. 11:5-8 |
| wherein the dental composition...comprises a peroxide bleaching agent, a first solvent, and a thickening agent; ...[and other composition elements]...is dried after being applied | The allegations for the composition's ingredients (hydrogen peroxide, water, PVP) and its dried nature are incorporated by reference from the analysis of the '259 Patent. | ¶83 | col. 6:30-33 |
| wherein the dental composition is gelatinous and viscoelastic [at various stages] | The allegation that the accused composition is gelatinous and viscoelastic is incorporated by reference from the analysis of the '259 Patent, which relies on photographic evidence of the gel's physical properties. | ¶84 | col. 5:49-6:3 |
| wherein the dental composition has physical deformation properties such that...[it may] bend and conform to surfaces of adjacent teeth...and remain on the strip...during use | The allegation of physical deformation properties is incorporated by reference from the analysis of the '259 Patent. | ¶85 | col. 8:16-19 |
| wherein the dental composition has adhesive properties such that...the dental composition will adhere to surfaces of adjacent teeth in a dental arch | The adhesive properties are allegedly shown by the product's in-package instructions, which state the strip is "coated on one side with a whitening adhesive" and "designed to adhere to your upper and lower teeth." | ¶86 | col. 4:26-34 |
- Identified Points of Contention:
- Scope Questions: A principal dispute may arise over the term "gelatinous." The patents provide a specific definition that includes a negative limitation: the material "will not coalesce so that a specific sample or portions thereof are still determinable" ('259 Patent, col. 5:62-66). The case may turn on whether the accused product's gel, which contains PVP, meets this specific, multi-part definition, including the non-coalescence property which Plaintiff attempts to demonstrate with photographic evidence (Compl. p. 18).
- Technical Questions: A factual question exists regarding the '259 Patent's requirement that the "thickening agent is included in an amount more by weight... than the water" (Compl. p. 7). The complaint supports this by inference, based on the conventional ordering of ingredients by predominance on cosmetic labels (Compl. ¶69). A defendant could challenge this inference, raising the question of what direct evidence, such as chemical analysis, supports this claimed weight ratio.
V. Key Claim Terms for Construction
The Term: "gelatinous"
- Context and Importance: This term is central to the patents' claims of novelty over prior art fluidic gels and brittle solids. The patentee acted as a lexicographer by providing an explicit definition in the specification that is crucial for infringement analysis. Practitioners may focus on this term because its definition is technical, multi-faceted, and includes a "non-coalescence" test that will likely be a key point of evidentiary dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The definition begins with the dictionary-like phrase "resembling gelatin, viscous" ('259 Patent, col. 5:52), which a party might argue sets a general, less restrictive tone.
- Evidence for a Narrower Interpretation: The specification provides a highly detailed definition, defining "solid" and "fluid" via a specific 10-minute beaker test and stating that a "gelatinous" compound "will not coalesce so that a specific sample or portions thereof are still determinable" ('259 Patent, col. 5:49-6:3). The patent also provides a specific analogy, stating the composition has "flexibility and consistency similar to the popular confection known as gummi worms" ('259 Patent, col. 8:20-21), which suggests a specific, tangible physical state.
The Term: "dried"
- Context and Importance: This term appears in the independent claims of multiple asserted patents and defines the state of the composition on the strip. The degree of "dryness" is important because it relates to the composition's stability, non-fluidity, and ability to be rehydrated by the user. Practitioners may focus on this term because it is a term of degree whose construction could either broaden or narrow the scope of the claims.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The language in a related patent, "dried to an extent that it no longer remains in a state of fluidity" (’582 Patent, col. 11:4-5), suggests the key aspect is simply the absence of flow, not the complete absence of solvent.
- Evidence for a Narrower Interpretation: The specification describes a drying process at "approximately 37° C. for 12 to 24 hours" (’259 Patent, col. 8:10-12). A party could argue this preferred embodiment informs the meaning of "dried" and implies a specific, deliberate process of solvent removal, rather than just incidental drying.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a separate count for indirect infringement. However, it alleges facts that may support such a claim, specifically that the accused products' instructions direct end-users to perform the claimed method of applying the strip (e.g., "designed to adhere to your upper and lower teeth"), which could form the basis for an inducement theory (Compl. ¶60, ¶86).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged knowledge of the patents. This knowledge is purportedly based on actual notice via a letter sent on August 29, 2023, for the '259, '419, and '582 patents, and actual notice of the '444 and '445 patents by the filing of the complaint, coupled with constructive notice from Plaintiff's patent marking activities (Compl. ¶¶15, 73-74, 88-89, 102-103, 115, 127).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional proof: can Plaintiff present sufficient factual evidence to prove that the accused product’s PVP-based gel meets every element of the patent’s detailed definition for a "gelatinous" compound, particularly the specific "non-coalescence" property that distinguishes it from a fluid?
- A key evidentiary question will be one of compositional fact: does the accused product actually contain more thickening agent (PVP) than water by weight, as required by Claim 1 of the ’259 Patent, and can this be proven by means other than the potentially rebuttable inference from the ingredient list order?