CAO Group v. Karaka LLC: 10-Patent Teeth Whitening Suit Dismissed With Prejudice
CAO Group, Inc. asserted 10 patents covering dental teeth whitening technology against Karaka LLC’s Sheer White! Teeth Whitening Strips in the Northern District of Illinois. The plaintiff voluntarily dismissed all claims with prejudice after 188 days, with each party bearing its own attorneys’ fees and costs.
Ten-Patent Dental Whitening Suit Ends Before Defendant Responds
On June 13, 2024, CAO Group, Inc. — a dental technology company and holder of an extensive portfolio of teeth whitening patents — filed a patent infringement complaint in the U.S. District Court for the Northern District of Illinois against Karaka LLC, doing business as The DoubleY Brands. The suit targeted Karaka’s Sheer White! Teeth Whitening Strips product and asserted ten patents spanning dental whitening compositions, devices, and methods.
The case closed on December 18, 2024, when CAO Group filed a notice of voluntary dismissal with prejudice under Fed. R. Civ. P. 41(a)(1)(A)(i). Because Karaka had not yet filed an answer or a motion for summary judgment, unilateral voluntary dismissal was procedurally available to the plaintiff. The with-prejudice designation is significant: CAO Group is now barred from reasserting these same claims against Karaka on the same patents.
The 188-day duration and the pre-answer timing suggest the matter may have resolved through private negotiation — possibly a licensing arrangement or commercial settlement — though the public record is silent on any underlying terms. The mutual cost-bearing agreement, explicitly noted in the dismissal notice, is consistent with a negotiated resolution rather than a unilateral capitulation, but no settlement agreement has been made public.
Filing to Voluntary dismissal in 188 days
188 days — resolved before defendant filed any answer or summary judgment motion
Dismissed with prejudice: what the Rule 41 filing means for both parties
Rule 41(a)(1)(A)(i) allows unilateral exit — but with a permanent cost here
Under Fed. R. Civ. P. 41(a)(1)(A)(i), a plaintiff may dismiss its own action without a court order before the defendant serves an answer or a motion for summary judgment. CAO Group invoked this right, but chose to dismiss with prejudice — meaning the dismissal operates as a final adjudication on the merits. The plaintiff cannot refile these specific claims against Karaka on the same patents in any federal court.
Voluntary — no court order requiredWith prejudice bars refiling — a meaningful concession by the plaintiff
A dismissal with prejudice is the most permanent form of voluntary exit under Rule 41. Unlike a without-prejudice dismissal — which leaves the door open to refile — this filing extinguishes CAO Group’s ability to reassert all ten patents against Karaka on these claims. This distinction strongly suggests the parties reached some form of agreement, though the public record does not disclose any licensing terms or settlement consideration.
Claims permanently extinguishedKaraka exits litigation without filing a single defensive pleading
Karaka LLC never filed an answer, counterclaim, or motion for summary judgment. This pre-answer resolution means no invalidity defenses, no IPR petitions, and no claim construction record were developed in this case. Karaka avoids a costly merits battle, but the underlying question of whether its Sheer White! product infringes CAO Group’s whitening patents has not been adjudicated by any court.
No invalidity record createdCAO Group’s ten-patent portfolio remains untested and intact
Because no court ruled on validity or infringement, all ten CAO Group patents emerge from this case with their presumption of validity fully intact. For other teeth whitening product makers, this outcome provides no safe harbor: the patents were neither invalidated nor found non-infringed. The broad portfolio — spanning compositions, whitening devices, and treatment methods — continues to represent active enforcement risk across the dental whitening sector.
Portfolio validity unchallengedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | CAO Group, Inc. | Company | Dental technology company — holder of US10603259B2 and 9 further teeth whitening patentsSearch in Eureka ↗ |
| Defendant | Karaka LLC | Company | Karaka LLC d/b/a The DoubleY Brands — distributor of Sheer White! Teeth Whitening StripsSearch in Eureka ↗ |
| Plaintiff counsel | Benjamin Adam Campbell | Attorney | Counsel for CAO Group, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Edward L. Bishop | Attorney | Counsel for CAO Group, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Nicholas S. Lee | Attorney | Counsel for CAO Group, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Sameeul Haque | Attorney | Counsel for CAO Group, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Bishop Diehl & Lee, Ltd. | Law Firm | Representing CAO Group, Inc.Search in Eureka ↗ |
| Defendant counsel | Dana M. Zottola | Attorney | Counsel for Karaka LLCSearch in Eureka ↗ |
| Defendant counsel | Terance A Gonsalves | Attorney | Counsel for Karaka LLCSearch in Eureka ↗ |
| Defendant law firm | Alston & Bird, LLP | Law Firm | Representing Karaka LLCSearch in Eureka ↗ |
| Presiding judge | Judge Lindsay C. Jenkins | Judge | Illinois Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal notice explicitly invokes Rule 41(a)(1)(A)(i) and confirms the with-prejudice designation, meaning the court treats this as a final judgment on the merits for res judicata purposes. The mutual cost-bearing clause — departing from the default that costs follow a voluntary dismissal — is consistent with a negotiated exit. Notably, the filing does not reference any settlement agreement, leaving the commercial terms, if any, entirely outside the public record. The ten asserted patents retain their full presumption of validity.
US10603259B2 and nine further patents — dental teeth whitening technology
CAO Group’s asserted portfolio spans ten U.S. patents with application dates ranging across multiple filing generations, suggesting a sustained R&D and prosecution strategy in the dental whitening space. The patents collectively cover teeth whitening compositions, strip-based delivery systems, device-assisted whitening methods, and associated treatment protocols. US10603259B2, US11826445B2, US11826444B2, and US11219582B2 represent the more recently issued grants, while US7485116B2 and US8337097B2 reflect earlier-generation filings, indicating depth across whitening technology vintages.
For the broader dental consumer products sector, a ten-patent portfolio of this breadth — covering both product formulations and application methods — creates substantial freedom-to-operate complexity. Any company commercialising peroxide-based whitening strips, tray systems, or light-activated whitening devices in the U.S. market should treat this portfolio as an active enforcement asset. The pre-answer resolution with Karaka, without any validity challenge on the record, means none of these patents has faced adversarial scrutiny in court, sustaining their enforceability posture fully intact.
Should you run an FTO against CAO Group’s whitening patent portfolio?
Any organisation developing, manufacturing, or distributing teeth whitening strips, peroxide-based whitening compositions, or light-activated dental whitening devices in the U.S. market should treat CAO Group’s ten-patent portfolio as a live freedom-to-operate concern. This case demonstrates the company’s willingness to assert multiple patents simultaneously against commercial whitening products — and the absence of any invalidity ruling means all ten patents carry full presumptive validity.
PatSnap Eureka’s FTO Search Agent can map your whitening product’s formulation, delivery mechanism, and method claims against each of the ten asserted patents simultaneously, identifying claim overlap and prosecution history disclaimers. Eureka’s AI-assisted claim charting surfaces the specific independent claims most likely to read on strip-based whitening products, enabling your R&D and legal teams to prioritise design-around work before litigation exposure materialises.
Run a freedom-to-operate analysis on US10603259B2 to assess your product’s exposure
Run FTO in Eureka →Similar dental whitening patent infringement cases in U.S. district courts
Cases involving teeth whitening patent assertions in U.S. district courts, including multi-patent portfolio complaints against consumer dental care product makers.
What this case signals for the dental whitening IP landscape
A ten-patent assertion that ends pre-answer raises important questions for any company commercialising teeth whitening products.
Pre-answer dismissals often mask private licensing outcomes
When a plaintiff with a large patent portfolio voluntarily dismisses with prejudice before the defendant even files an answer, a private resolution — licensing, royalty, or cross-deal — is a common driver. Competitors in the teeth whitening space should consider whether CAO Group is building a licensing program rather than seeking court-adjudicated damages.
Ten asserted patents signal a portfolio enforcement strategy
Asserting ten patents in a single complaint is consistent with a portfolio licensing posture designed to maximise settlement leverage. No single patent needs to survive invalidity scrutiny when ten are in play. R&D teams developing whitening strip formulations or light-activated whitening devices should map their products against CAO Group’s full portfolio, not just the lead patent.
CAO v Karaka — key questions answered
CAO Group, Inc. filed a ten-patent infringement complaint against Karaka LLC in the Northern District of Illinois on June 13, 2024, targeting the Sheer White! Teeth Whitening Strips product. After 188 days, CAO Group voluntarily dismissed all claims with prejudice under Rule 41(a)(1)(A)(i), before Karaka filed any answer. Each party bears its own costs.
A dismissal with prejudice under Rule 41 bars CAO Group from refiling the same claims against Karaka on the same ten patents. However, the patents themselves are unaffected — they retain their full presumption of validity and remain enforceable against other parties. No court ruled on infringement or validity in this case.
CAO Group asserted ten U.S. patents: US10603259B2, US11826445B2, US7485116B2, US11826444B2, US8834457B2, US10646419B2, US9967883B2, US11219582B2, US8961040B2, and US8337097B2. These patents collectively cover teeth whitening compositions, strip-based delivery systems, and whitening treatment methods.
The public record does not disclose CAO Group’s reasoning. A with-prejudice dismissal is typically consistent with a negotiated resolution — such as a licensing agreement — in which the patent holder agrees to permanently release its claims against the defendant as part of agreed terms. However, no settlement agreement or license has been made public in this case.
No. Because the case was dismissed before any merits ruling, no court adjudicated validity, infringement, or claim scope. CAO Group’s ten patents are fully intact and presumptively valid. Companies making or distributing teeth whitening strips cannot rely on this dismissal as any form of clearance against CAO Group’s portfolio.
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