DCT
2:24-cv-00498
Ranir LLC v. CAO Group Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ranir LLC (Michigan)
- Defendant: CAO Group, Inc. (Utah)
- Plaintiff’s Counsel: Greenberg Traurig LLP
- Case Identification: 2:24-cv-00498, D. Utah, 07/16/2024
- Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant CAO Group, Inc. is a Utah corporation with its principal place of business located within the district.
- Core Dispute: Plaintiff Ranir seeks a declaratory judgment that its private-label teeth whitening strip products do not infringe five patents owned by Defendant CAO, and further that those patents are invalid.
- Technical Context: The lawsuit centers on the chemical formulation and manufacturing process for consumer teeth whitening products, specifically peroxide-based gels applied to flexible strips.
- Key Procedural History: The complaint alleges that Plaintiff’s technology predates the asserted patents and was disclosed in prior art that was not considered during the patents' prosecution. Plaintiff also notes that Defendant has sent infringement notices to Plaintiff’s major retail customers and has filed a patent infringement lawsuit against one of them, Walmart, in the same district.
Case Timeline
| Date | Event |
|---|---|
| 2002-07-02 | Plaintiff Ranir files U.S. Appl. No. 10/187,666 (later the '277 Publication). |
| 2004-01-01 | Plaintiff Ranir begins selling teeth whitening products using its "Corplex" OCL formulation (no later than 2004). |
| 2006-02-08 | Earliest priority date for all five 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. |
| 2023-06-06 | Defendant CAO sends email to Ranir alleging infringement of three patents. |
| 2023-07-01 | Ranir notifies CAO that its products predate the Asserted Patents (by July 2023). |
| 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 | Defendant CAO sues Ranir's customer, Walmart, for patent infringement. |
| 2024-07-16 | Complaint for Declaratory Judgment filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,603,259 - "Peroxide Gel Compositions" (’259 Patent)
The Invention Explained
- Problem Addressed: The patent describes drawbacks with prior art teeth whitening methods, noting that liquid and gel treatments applied in trays are messy and can be diluted by saliva, reducing efficacy (Compl. ¶ 7; ’259 Patent, col. 2:14-23). It further states that existing dried compositions on flexible strips can be brittle, tending to crack or break when flexed during application (Compl. ¶ 7; ’259 Patent, col. 3:8-9).
- The Patented Solution: The invention is a dental bleaching device comprising a flexible backing strip coated with a specific dental composition. This composition, which includes a peroxide agent and a thickener like poly(2-ethyl-2-oxazoline) or polyvinylpyrrolidone (PVP), is dried into a "gelatinous and visco-elastic" state that remains flexible and can conform to a user's dental arch without cracking ('259 Patent, Abstract, col. 6:42-60). The patent compares the resulting product's flexibility and consistency to "gummi worms" ('259 Patent, col. 8:20-22).
- Technical Importance: The technology aims to create a shelf-stable, conformable, and less messy whitening strip that can hold a higher concentration of peroxide for increased efficacy compared to prior art adduct-based gels ('259 Patent, col. 5:30-44).
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 14, and 27 (Compl. ¶ 76).
- Independent Claim 1 requires:
- A dental bleaching device with a composition on a strip of backing material.
- The composition includes a peroxide bleaching agent, water as a first solvent, and a thickener (poly(2-ethyl-2-oxazoline) or PVP).
- The thickener is present in a greater amount by weight than the water.
- The composition is "dried after being applied on the strip."
- The dried composition is "gelatinous and viscoelastic" and has physical deformation properties allowing it to bend, conform, and remain on the strip during use.
- The complaint does not specify any asserted dependent claims but makes a general declaration of non-infringement for all claims (Compl. ¶ 75).
U.S. Patent No. 10,646,419 - "Peroxide Gel Compositions" (’419 Patent)
The Invention Explained
- Problem Addressed: The ’419 Patent shares a common specification with the ’259 Patent and addresses the same technical problems of messiness, instability, and brittleness in prior art teeth whitening strips (’419 Patent, col. 2:1-col. 5:21).
- The Patented Solution: The solution is materially the same as that described in the ’259 Patent: a flexible, dried, "gelatinous and viscoelastic" peroxide composition on a backing strip designed for stability and conformability (’419 Patent, Abstract).
- Technical Importance: As with the '259 Patent, the invention aims to improve the usability, stability, and efficacy of consumer teeth whitening strips.
Key Claims at a Glance
- The complaint asserts non-infringement of independent claims 1, 16, and 28 (Compl. ¶ 95).
- Independent Claim 1 requires:
- A device with a flexible, planar backing strip with two flat sides.
- A dental composition on one of the flat sides.
- The composition includes a peroxide agent, water as a solvent, and a thickener (poly(2-ethyl-2-oxazoline) or PVP).
- The composition is "dried after being applied."
- The composition is "gelatinous and viscoelastic" and has adhesive properties to adhere to teeth.
- The complaint does not specify any asserted dependent claims but makes a general declaration of non-infringement for all claims (Compl. ¶ 94).
U.S. Patent No. 11,219,582 - "Peroxide Gel Composition" (’582 Patent)
Technology Synopsis
Sharing a specification with the lead patents, the ’582 Patent is directed to a formable dental treatment tray made from a "gelatinous, non-coalescent, and visco-elastic" peroxide composition that has been dried to an extent that it no longer remains in a state of fluidity. The composition is designed to flex and conform to a user's dental arch without cracking (’582 Patent, col. 11:1-8).
Asserted Claims
Independent claims 1 and 2 (Compl. ¶ 114).
Accused Features
The complaint alleges Ranir’s products do not infringe because its manufacturing process is a two-step application rather than a simultaneous one, does not include a drying step, and does not result in a "gelatinous, non-coalescent, and viscoelastic" composition as claimed (Compl. ¶¶ 115-117).
U.S. Patent No. 11,826,444 - "Peroxide Gel Compositions" (’444 Patent)
Technology Synopsis
This patent, also from the same family, claims a dental whitening composition and a device using it. The invention focuses on a "gelatinous, non-coalescent, and visco-elastic" dental composition that is conjoined to a backing strip and has been dried so that it is no longer fluid, allowing it to flex and conform to teeth without breaking (’444 Patent, col. 11:1-11).
Asserted Claims
Independent claims 1, 2, and 3 (Compl. ¶ 133).
Accused Features
Non-infringement is argued on the basis that the Accused Products do not include the claimed "gelatinous, non-coalescent, and viscoelastic" composition and are not made with the claimed "drying" step (Compl. ¶¶ 134-136).
U.S. Patent No. 11,826,445 - "Peroxide Gel Compositions" (’445 Patent)
Technology Synopsis
This patent claims a dental bleaching device comprising a non-fluid, "gelatinous, non-coalescent, and visco-elastic" dental composition conjoined to a flexible backing strip. The claims emphasize the composition's flexible and conformable nature after removal from its packaging and during storage (’445 Patent, col. 11:12-30).
Asserted Claims
Independent claims 1 and 2 (Compl. ¶ 152).
Accused Features
The complaint alleges non-infringement because the Accused Products do not include the "gelatinous, non-coalescent, and viscoelastic" composition required by the claims (Compl. ¶ 153).
III. The Accused Instrumentality
Product Identification
The "Accused Products" are a range of store-brand and name-brand equivalent teeth whitening strips manufactured by Plaintiff Ranir, including products sold under the Equate, CVS Health, Kroger, Walgreens, and Meijer brands (Compl. ¶ 43).
Functionality and Market Context
- The complaint alleges the Accused Products are manufactured using a two-step process. First, an Oral Care Layer (OCL) film is created via melt extrusion, consisting of a 58-30-12 ratio of PVP, PEG, and Eudragit L100-55; this step allegedly does not include water or a peroxide agent (Compl. ¶ 44). Second, a hydrogen peroxide solution, which includes water, is added to the pre-formed OCL film to create an "activated" film (Compl. ¶ 45). The complaint explicitly states that neither step involves drying the OCL or the finished product (Compl. ¶ 46).
- The complaint provides visual evidence of an early product, the "Rite Aid Advanced Whitening" system from 2004, which is depicted as flat strips and lists ingredients including PVP, PEG 400, and Methacrylic Acid Co-polymer (Compl. ¶ 22 & p. 6).
- The complaint alleges that CAO targeted Ranir's commercially successful products and its major retail customers with infringement allegations, suggesting the products hold a significant market position (Compl. ¶¶ 53, 69).
IV. Analysis of Infringement Allegations
’259 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the dental composition, when applied on the strip of backing material, comprises a peroxide bleaching agent, a first solvent, and a thickening agent; | Ranir alleges its process is a two-step method where these components are not applied simultaneously; an OCL film is formed first, and the peroxide solution is added later. | ¶77 | col. 11:1-4 |
| wherein the dental composition is dried after being applied on the strip of backing material; | Ranir alleges its manufacturing process does not include a drying step. | ¶78 | col. 11:9-11 |
| wherein the dental composition is gelatinous and viscoelastic | Ranir alleges the Accused Products do not include a "gelatinous and viscoelastic" composition as claimed. | ¶79 | col. 11:12-13 |
’419 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein the dental composition, when applied on the strip of backing material, comprises a peroxide bleaching agent, a first solvent, and a thickening agent; | Ranir alleges its two-step process does not meet the requirement of applying these components simultaneously onto the backing material. | ¶96 | col. 11:4-8 |
| wherein the dental composition is dried after being applied on the strip of backing material; | Ranir alleges its process does not include the required drying step. | ¶97 | col. 11:12-13 |
| wherein the dental composition is gelatinous and viscoelastic | Ranir alleges its products do not possess the "gelatinous and viscoelastic" properties claimed in the patent. | ¶99 | col. 11:14-15 |
Identified Points of Contention
- Scope Questions: A central dispute may turn on the interpretation of claim phrases related to the manufacturing process. For instance, does the limitation "dried after being applied" require an active, intentional dehydration step (e.g., heating), which Ranir alleges it does not perform? Or could it be construed more broadly to cover any process that results in a certain moisture level, regardless of the specific steps?
- Technical Questions: A key factual question is whether the physical and chemical properties of Ranir’s final "activated" OCL film fall within the scope of the term "gelatinous and viscoelastic" as used in the patents. The complaint's denial sets up a need for expert testimony and empirical testing to compare the accused products against the patent's description, which likens the invention to "gummi worms" ('259 Patent, col. 8:20-22).
- Scope Questions: The dispute also raises the question of whether Ranir's two-step manufacturing process (forming a film, then adding peroxide) meets the claim limitation of a composition "compris[ing]" the various agents "when applied on the strip." This may lead to arguments over whether the claim requires the components to be pre-mixed before application to the backing material.
V. Key Claim Terms for Construction
"dried after being applied" (’259 Patent, cl. 1; ’419 Patent, cl. 1)
- Context and Importance: This term is critical to Ranir's non-infringement argument, as it alleges its process involves no drying step (Compl. ¶¶ 78, 97). The definition will determine whether Ranir's two-step manufacturing process, which it claims avoids active drying, is outside the claim scope.
- Intrinsic Evidence for a Broader Interpretation: The specification states that drying "may also take place in any other suitable environment, including those of ambient air, room temperature, lower than room temperature, higher than room temperature, or vacuums" (’259 Patent, col. 8:11-15). This language may support a construction that is not limited to a specific heating process and could encompass various methods of moisture removal.
- Intrinsic Evidence for a Narrower Interpretation: The patent provides a specific example of drying "at temperatures of approximately 37° C. for 12 to 24 hours" (’259 Patent, col. 8:9-11). A party could argue this example cabins the term to an intentional, active process of removing solvent to achieve the final state, a step Ranir claims to omit.
"gelatinous and viscoelastic" (’259 Patent, cl. 1; ’419 Patent, cl. 1)
- Context and Importance: This term describes the required physical state of the final composition. Ranir's denial that its products have this property is a cornerstone of its non-infringement defense (Compl. ¶¶ 79, 99). The construction of this term may also be relevant to potential indefiniteness challenges under 35 U.S.C. § 112.
- Intrinsic Evidence for a Broader Interpretation: The specification provides a qualitative, functional description, defining "gelatinous" by referencing the dictionary ("resembling gelatin, viscous") and comparing the final product's flexibility to "the popular confection known as gummi worms" (’259 Patent, col. 5:48-52, col. 8:20-22). This may support a construction based on observable physical behavior rather than precise quantitative metrics.
- Intrinsic Evidence for a Narrower Interpretation: The patent also provides a more technical definition of a "gelatinous compound" as a "visco-elastic compound having physical deformation properties between a solid and a fluid," which will "not coalesce" when multiple units are placed together (’259 Patent, col. 5:52-65). This language could support a narrower construction requiring specific, measurable physical properties that Ranir may argue its products do not possess.
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaratory judgment of non-infringement both directly and indirectly (Compl. ¶¶ 75, 94). However, as a DJ complaint, it does not plead facts supporting an indirect infringement theory but rather denies any such liability.
- Willful Infringement: Willfulness is not alleged by Ranir. Instead, Ranir alleges that CAO has enforced the Asserted Patents in "bad faith" (Compl. ¶ 92). The complaint alleges that CAO knew or had reason to know the patents were invalid and/or not infringed as of July 2023, after Ranir provided it with invalidating prior art, but that CAO persisted in its enforcement campaign against Ranir's customers (Compl. ¶¶ 67-69, 91). These allegations form the basis for Ranir’s request for attorneys' fees under 35 U.S.C. § 285 (Compl. ¶ 167.D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of process interpretation: does Ranir’s two-step manufacturing process—which allegedly creates a polymer film first and adds a peroxide solution second, without a discrete "drying" step—fall outside the scope of patent claims that require a composition to be "dried after being applied on the strip"?
- A second central question will be one of compositional characterization: does Ranir's final product, an "activated" film of PVP/PEG/Eudragit and hydrogen peroxide, exhibit the physical properties of a "gelatinous and viscoelastic" composition as that term is defined and used within the Asserted Patents?
- A determinative validity question will be one of prior art impact: will the evidence presented by Ranir, particularly its own 2002 patent publication and its product sales from 2004, be found to anticipate or render obvious the claims of the Asserted Patents, which have a 2006 priority date and were allegedly prosecuted without consideration of this art?