By Patrick Miller
| February 2, 2018
GLO SCIENCE, INC. (“GLO SCIENCE”) recently asserted two design patents directed to mouthpieces against multiple parties in different jurisdictions. This is not the first time the two design patents have been asserted, however. The design patents have been asserted now at least eight times, leading to settlements in at least three of the cases. The multiple patent infringement suits and settlements, perhaps, underscore the valuable part design patents can play in a patent portfolio. As discussed before, some of the key advantages of design patents in the litigation context include that they are relatively difficult to invalidate, the alternative remedy of the “total profit” on an infringing “article of manufacture,” and injunction and exclusion order remedies.

Specifically, U.S. Patent Nos. D636,074 and D765,255 were asserted on January 30, 2018 against Oral Care Products, LLC in the U.S. District Court for the Southern District of New York (complaint) and against ANGELO DE SIMONE, TRUECOMPANY LIMITED, and MILLION DOLLAR SMILE, L.L.C in the U.S. District Court for the Southern District of California (complaint).

Provided below are representative FIG. 1 from U.S. Patent No. D636,074 and representative FIG. 2 from U.S. Patent No. D765,255.

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GLO SCIENCE’s complaint against Oral Care Products, LLC alleges that tooth whitening systems sold under the trademarks “PROLITE®” and “smileactives®” infringe U.S. Patent Nos. D636,074 and D765,255.

The California-based complaint alleges tooth whitening systems from the website www.true-company.com infringe U.S. Patent Nos. D636,074 and D765,255. Exhibits 6 through 9 accompanying the complaint show the alleged infringing products. A representative product from Exhibit 6 is shown below.

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As noted above, U.S. Patent Nos. D636,074 and D765,255 have been asserted now in at least the eight cases shown below:

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The earliest three cases settled (dismissal | dismissal | dismissal), so it will be interesting to see if other cases follow the same path or if the design patents are challenged in any way.
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