CAO Group, Inc. v. GD-Whitening et al.

I'll research this case across multiple sources before drafting.

Good initial grounding. Now let me verify the patent specifics, the severed-case docket, CAO's corporate profile, and any PTAB activity.

Now the severed-case docket details, the broader CAO enforcement campaign, and any validity challenges.

Case Overview

Parties. CAO Group, Inc. is a privately held Utah operating company headquartered at 4628 Skyhawk Drive, West Jordan, Utah — not an NPE. Founded in 2000 by Dr. Densen Cao (the inventor of the first commercial LED dental curing light), CAO designs and manufactures dental diode lasers, curing lights, forensic lights, cements, and — relevant here — professional and take-home tooth-whitening products, including its Sheer White! whitening strips. Its own site describes a 60,000 sq. ft. FDA-registered, ISO-certified facility plus a China joint-venture manufacturing arm, and a portfolio of "160+ patents"; CAO's complaints in this campaign describe "more than 190 issued and published patent applications worldwide" (caogroup.com/about; PitchBook lists CAO at ~103 employees and 146 granted US patents). The defendant, Zhuhai Jiashu Dianzishangwu Youxiangongsi d/b/a GD-SSS a/k/a GD-Whitening, is a Chinese e-commerce seller that marketed whitening strips through third-party marketplace storefronts (Amazon, eBay, Walmart) under seller aliases. It is a small foreign online seller, not a branded competitor — a distinction that matters throughout.

Accused technology. The accused instrumentality is unauthorized over-the-counter peroxide whitening strip products — flexible backing film coated with a pre-applied, dried, gelatinous peroxide gel — sold through online marketplaces into the United States, including Illinois. CAO's complaints in this campaign characterize such products as "Unauthorized Products" that mimic its Sheer White! line and note that its own retail packaging lists the patents-in-suit (i.e., the products are marked, supporting notice). The asserted family is a single peroxide-gel/strip family naming Dr. Cao and CAO chemist Steven D. Jensen, all claiming priority back to a February 8, 2006 application (24-cv-04903, Dkt. 1 ¶¶16–23):

• US 10,603,259 B2 ("Peroxide Gel Composition," issued Mar. 31, 2020) — dental bleaching device: flexible, water-insoluble backing strip carrying a peroxide/solvent/thickener gel (poly(2-ethyl-2-oxazoline) or PVP), shelf-stable ~6 months at room temperature, gelatinous and viscoelastic so it flexes with the strip without cracking.
• US 10,646,419 B2 (issued May 12, 2020) — same family; claim 1 adds a planar two-sided backing substantially covered by the composition and requires the dried composition to be adhesive enough to adhere to adjacent teeth after removal from the package.
• US 11,219,582 B2 ("Peroxide Gel Composition," issued Jan. 11, 2022) — dried, "gelatinous, non-coalescent, visco-elastic" composition that flexes and conforms to the arch without cracking or breaking.
• US 11,826,444 B2 and US 11,826,445 B2 ("Peroxide Gel Composition(s)," both issued Nov. 18, 2023) — near-identical twins to the '582, reciting the gelatinous/non-coalescent/visco-elastic composition with polyethyloxazoline or PVP. They are essentially duplicate claim sets from the same specification — a fact worth noting for any invalidity/obviousness-type double patenting or § 101 analysis.

A verification caveat: the parent case's default judgment order identifies only the '259, '419, and '582 (24-cv-01211, Dkt. 92 at 2); the five-patent list above, including the two '444/'445 twins, is the case-metadata list for 24-cv-5129 and matches CAO's contemporaneous 2024 filings (e.g., 24-cv-04903 against Karaka/Boka), but I could not retrieve the text of the 5129 second amended complaint to confirm each count.

Procedural Posture, Venue, and Significance

This was not a free-standing suit — it is a severed spin-off. CAO filed a Schedule A mass-defendant case, CAO Group, Inc. v. The Individuals … Identified on Schedule A, No. 1:24-cv-01211 (N.D. Ill.), before Judge Thomas M. Durkin. GD-Whitening was the rare defendant to appear (via Husch Blackwell's Dustin L. Taylor and Samantha R. Sweet) and moved to dismiss on two grounds. On June 14, 2024, Judge Durkin granted the motion in part: CAO conceded that its unjust-enrichment count was preempted by federal patent law, and the court held that joinder was improper under 35 U.S.C. § 299, following its own ruling in Tang v. Partnerships & Unincorporated Associations Identified on Schedule A, 2024 WL 68332 (N.D. Ill. Jan. 4, 2024) — reasoning that this was not "a swarm of counterfeiters" but "multiple sellers of the exact same type of product allegedly infringing on one seller's … patent." Rather than dismiss, the court severed under Rule 21 and directed the Clerk to open a new case against GD-Whitening alone, assigned to Judge Durkin (24-cv-01211, Dkt. 95; filing fee waived, Dkt. 97). That new case is 1:24-cv-05129, filed June 20, 2024, in the Eastern Division before Judge Durkin. The docket is idiosyncratic: CAO filed its second amended complaint on June 21, 2024 (Dkt. 2, with Exhibits A–G), a joint status report on June 28 (Dkt. 3), and defense counsel then moved to withdraw on July 8, 2024 (Dkt. 4), which was granted the next day (Dkt. 5) — leaving GD-Whitening unrepresented. The court entered a preliminary injunction at some point thereafter, and on August 6, 2025 entered a default judgment order (Dkt. 13): a permanent injunction plus marketplace/ payment-processor takedown and asset-restraint provisions, a $500,000 reasonable royalty, $50,000 in "expected transaction costs" for hypothetical license negotiation, trebled under § 284, for a total of $1,650,000, with authority to pursue Rule 69 supplemental proceedings and orders directing Amazon Pay, eBay, PayPal, Payoneer, and Walmart to restrain and release funds. Notably, this particular order did not include a § 285 fee award (the parent case's earlier default judgment did).

Why it matters. Three things make this docket analytically interesting beyond its small dollar value. First, it is a clean illustration of the "Schedule A" patent-enforcement model migrating from trademark counterfeiting into utility patents — score-of-defendants complaints, ex parte TROs, asset freezes, and default-judgment damages computed from declarations rather than adversary testing — and of the judiciary's growing resistance to it. GD-Whitening's own briefing in the parent case argued that Grupo Mexicano bars asset freezes for patent claims that sound only in damages and called the freeze "the nuclear weapon of the law" used for "extortive settlement leverage" (24-cv-01211, Dkt. 37). Judge Durkin's § 299 severance ruling is a meaningful check on aggregation, and later CAO waves drew further pushback in the same district: in No. 1:25-cv-08205 Judge Manish Shah denied sealing and held that "the public has a right to know what patents are the subject of litigation," and in No. 1:26-cv-06409 Judge Lindsay Jenkins questioned personal jurisdiction and flagged the Seventh Circuit's Kangol LLC v. Hangzhou Chuanyue Silk Import & Export Co. (7th Cir. May 29, 2026) holding on Hague Convention limits for email service on Chinese entities. Second, CAO is an operating company running a broad portfolio campaign, not a PAE — parallel actions include Procter & Gamble (Crest Whitestrips, '259/'419, C.D. Cal.), Ivoclar (VivaStyle, D. Del. No. 1

I'll research this case systematically, starting with the docket and core filings.

Now let me pull the actual docket for the severed case and check for any answer/counterclaims and PTAB proceedings.

Case: CAO Group, Inc. v. GD-Whitening, No. 1:24-cv-05129 (N.D. Ill., Judge Thomas M. Durkin)

Important structural note before the chronology: this case number is a severed case. GD-Whitening was originally Defendant No. 8 in CAO's mass "Schedule A" e-commerce suit, CAO Group, Inc. v. The Individuals, Corps., LLCs, Partnerships & Unincorporated Ass'ns Identified on Schedule "A," No. 1:24-cv-01211 (N.D. Ill.). Judge Durkin severed CAO's claims against GD-Whitening on 2024-06-14 and directed the Clerk to open a new, related case, which became 1:24-cv-05129. Several of the most substantive rulings "in" this case are therefore docketed in 24-cv-01211 and appear here only as Dkt. 1 (the severance minute entry). Most public mirrors of 24-cv-05129 are stale as of 2024-07-09, and the default-motion papers (roughly Dkt. 6–12) are not reproduced in free sources; I flag that gap below rather than guess at their contents.

Sources: Justia docket, 1:24-cv-05129 (https://dockets.justia.com/docket/illinois/ilndce/1:2024cv05129/[460423](/patent/460423)); CourtListener docket, 1:24-cv-01211 (https://www.courtlistener.com/docket/68245479/cao-group-inc-v-the-individuals-corporations-limited-liability/); full text of the 2025-08-06 default judgment order as quoted verbatim by Patsnap (https://www.patsnap.com/resources/blog/litigation/cao-group-v-gd-whitening-teeth-whitening-patent-default-judgment-patsnap/).

---

1. Pre-severance pleadings and injunctive relief (2024-03-22 → 2024-05-20)

Analytical point: the May 20 order dissolving the asset restraints was the defendants' single biggest pretrial win, built on the Grupo Mexicano-plus-preemption theory in GD-Whitening's April papers. It was effectively reversed seven months later by the default judgment's third-party-provider restraint language (see §5), though no merits opinion ever addressed the Grupo Mexicano argument.

2. The dispositive pretrial motion: § 299 joinder and severance (2024-06-14)

Judge Durkin's 2024-06-14 minute entry (#95, which is Dkt. 1 of 24-cv-05129) resolved GD-Whitening's motion in split fashion:

• Unjust enrichment (Count IV): dismissed — CAO conceded preemption.
• § 299 joinder: improper. Applying his own Tang v. Partnerships & Unincorporated Ass'ns Identified on Schedule A, 2024 WL 68332, at *3 (N.D. Ill. Jan. 4, 2024) — "[the] case [does] not involve a swarm of counterfeiters passing off their products as those of a single plaintiff… [but rather] multiple sellers of the exact same type of product allegedly infringing on one seller's… patent" — the court held GD-Whitening was improperly joined.
• Remedy: severance, not dismissal. Over Tang's dismissal approach, the court chose Rule 21 severance (a point GD-Whitening itself argued at #93, at 5): dismissal denied as to Counts I–III (the patent counts), claims severed, Clerk directed to open a new related case before Judge Durkin, filing fee waived (2024-06-20).

This is the case's only reasoned merits-adjacent ruling, and it is the procedural genesis of 24-cv-05129. Notably, the substantive § 299 ruling favored the infringer, yet the structural consequence — a one-defendant case with full per-defendant discovery and damages exposure — is what ultimately produced the seven-figure judgment.

I'll research plaintiff-side counsel for this docket and CAO's broader enforcement campaign.

Plaintiff counsel are identified in the joint status report. Let me verify each attorney's profile, role, and admission.

Important lead: a March 2025 withdrawal/transfer motion. Let me pin down who actually represented CAO when the default judgment was taken.

Counsel of Record for Plaintiff CAO Group, Inc.

Bottom line: CAO was represented exclusively by a single Chicago-area IP boutique — Bishop Diehl & Lee, Ltd. (since renamed Bishop & Diehl, Ltd.), 1475 E. Woodfield Road, Suite 800, Schaumburg, IL 60173, main line (847) 969-9123 / fax (847) 969-9124. Four attorneys from that firm are recorded for CAO: Edward L. Bishop, Nicholas S. Lee, Benjamin Adam Campbell, and Sameeul Haque. No in-house CAO lawyer, no second outside firm, and no local-counsel-only arrangement appears on this docket during the life of the case. The firm's Rule 26(f) report in the related parent action lists exactly these four and no one else (Joint Status Report, 24-cv-01211 Dkt. 103).

Sources for the appearances: Justia docket for 1:24-cv-05129 lists the representation as "Sameeul Haque / Nicholas S. Lee / Edward L. [Bishop]" (Justia); Patsnap's docket digest adds Campbell (Patsnap); the names, emails, direct dials and street address are confirmed in the parties' Rule 26(f) report filed in both 24-cv-01211 and 24-cv-05129 (Dkt. 103 at 1).

---

Verification gaps and cautions

• The handoff to Dickinson Wright is not confirmed on the 24-cv-05129 docket itself. The withdrawal motion (Dkt. 138, Mar. 7, 2025) was filed and granted in the parent case, 24-cv-01211, where the minute order terminates "Attorneys Edward L. Bishop and Benjamin Adam Campbell." I could not retrieve a corresponding withdrawal order, or any Dickinson Wright appearance, on the 24-cv-05129 docket. Free mirrors of 24-cv-05129 are stale after 2024-07-09, so it is unverified whether the substitution was formally papered in the severed case. Since the default judgment motion and order came in August 2025 — five months after the transfer — the identity of the signing attorney on those papers (Dkt. 6–13) is a genuine open question. The Patsnap summary, which quotes the judgment verbatim, still lists Bishop/Campbell/Lee/Haque, suggesting its attorney field was populated from the pre-2025 docket.
• A caution on Lee: Bishop & Diehl, Ltd. subsequently sued Nicholas Lee in N.D. Ill. (No. 1:25-cv-05395, before Judge John F. Kness), and Lee moved to compel arbitration of that dispute (Justia docket). That is a firm-versus-former-partner matter, not a fact about this case, but it explains why the client relationship was formally "transferred" rather than smoothly transitioned, and it is worth knowing if successor counsel's conduct or fee entitlement is ever at issue.
• One data artifact to disregard: the Ex Parte case mirror for 1:24-cv-05129 shows "Attorney: No Attorneys" (link). That is a parsing failure, not a real absence of counsel — the CM/ECF filings (Dkt. 2 by Bishop, Dkt. 3 by Haque) refute it.
• No PACER pull was possible; the above rests on Justia, CourtListener/RECAP, the archived PDFs of Dkts. 103 and 138, and firm/bar profiles. Docket entries 6–12 (the default-motion papers) are not in free sources.

---

Practitioner notes (why the staffing matters)

Three observations that flow from who signed the papers:

1. This was a boutique-run, declaration-driven default campaign, not a BigLaw patent case. The same four lawyers from one 1475 Woodfield Road address ran the March 2024 TRO, the April 2024 PI, the § 299 briefing, and — apparently — the August 2025 default judgment motion. That staffing profile fits the damages model: a $500,000 reasonable royalty plus $50,000 in "expected transaction costs" supported by CAO declarations rather than an adversary's financial discovery, trebled to $1,650,000. There was no opposing damages expert and no Georgia-Pacific cross-examination.
2. Bishop's personal specialty is the injunction, and it shows. His bio foregrounds TRO/PI hearings, which is precisely the lever that generated the asset restraints the defense attacked under Grupo Mexicano — and precisely the lever the default judgment resurrected against Amazon Pay, eBay, PayPal, Payoneer, and Walmart in August 2025. The May 20, 2024 order dissolving those restraints as to all defendants was thus undone by the same firm through a different procedural door.
3. The mid-2025 move to Dickinson Wright is the strategically significant fact for enforcement. A $1.65M judgment against a Chinese marketplace seller is worth little without sophisticated post-judgment and cross-border collection work; a 30-lawyer Schaumburg IP boutique is not built for that, while Dickinson Wright is. If you are tracing satisfaction of the judgment, or looking for the template CAO reused in its later waves (including the 2025–26 cases before Judges Shah and Jenkins), the Lee/Dickinson Wright period is where to look — with the caveat that nothing on the 24-cv-05129 docket confirms it.

I'll research counsel of record on the severed docket and the underlying parent-case appearances.