Litigation

Ranir LLC v. CAO Group Inc.

closed

2:24-cv-00498

Court
D. Utah
Filed
2024-07-16

Patents at issue (5)

11826444
10603259
10646419
11219582
11826445

Plaintiffs (1)

Defendants (1)

Summary

Declaratory-judgment action under 28 U.S.C. § 2201 seeking non-infringement/invalidity of CAO's patents, including US 11,826,444. Docket reported closed.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

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

Case Overview: Ranir LLC v. CAO Group, Inc., No. 2:24-cv-00498-RJS (D. Utah)

The parties. This is a declaratory-judgment action brought by an operating company against an operating company — no NPE, no university, and no patent-assertion entity on either side. Plaintiff Ranir LLC is a Michigan LLC headquartered at 4701 E. Paris Ave. SE, Grand Rapids, and, per the complaint, an indirect wholly owned subsidiary of Perrigo Company plc (Dublin, Ireland) (Compl. ¶ 1, archive.org PDF). Ranir, founded in 1979, is one of the largest private-label/"store brand" oral-care manufacturers in the U.S., supplying manual and power toothbrushes, dental floss, interdental brushes and — critically here — teeth-whitening strips to retailers such as Walmart, CVS, Kroger, Walgreens, Meijer and Target (Compl. ¶¶ 6–9). Defendant CAO Group, Inc. is a Utah corporation based in West Jordan (Compl. ¶ 2) and is itself a dental-products company — founded by Dr. Densen Cao, holder of a large patent portfolio (CAO pleadings describe 190+ issued/published applications worldwide), and seller of the "Sheer White!" professional whitening strip line and the "Lumist" consumer brand through caogroup.com and distributor Henry Schein. So this is a supplier-versus-supplier fight in the same product category, with a long shared technical history: Ranir's complaint alleges it has used the same "Oral Care Layer" (OCL) formulation since 2002 and filed on it in July 2002 (U.S. App. 10/187,666, published as 2004/0005277) — i.e., Ranir claims its own products are prior art to CAO's patents (Compl. ¶¶ 12–22).

The accused technology. The dispute is over hydrogen-peroxide teeth-whitening strips: a flexible plastic backing film coated with a dried, "gelatinous, non-coalescent, visco-elastic" peroxide gel thickened with poly(2-ethyl-2-oxazoline) or PVP. The accused products are Ranir's store-brand strips — Equate UltraWhite / Timeless White / Professional (Walmart), CVS Health Brilliant, Classic, Sensitive and Professional, Kroger Wonderfully White / Deluxe / Ultra, Walgre

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically, starting with the docket and party/patent details.

The docket shows a July 2025 stipulated dismissal. Now let me pin down the counterclaims, any substantive motions, and parallel PTAB/other litigation.

Now let me check for PTAB challenges to CAO's whitening patents and any related co-pending litigation.

Case: Ranir LLC v. CAO Group Inc., No. 2:24-cv-00498-RJS (D. Utah) — closed

Bottom line: This was a declaratory-judgment "race to the courthouse" by Ranir (a Perrigo subsidiary) against a serial patent enforcer, CAO Group, over five related peroxide-gel whitening-strip patents. The case never produced a substantive ruling — no motion to dismiss, transfer, stay, summary-judgment motion, Markman order, or trial. Everything on the docket is pleadings, PHV admissions, stipulated extensions, and a stipulated dismissal with prejudice on 2025-07-30.

1. Filing and initial pleadings

  • 2024-07-16 — Complaint (ECF 1). Ranir LLC (Michigan LLC; indirect wholly owned subsidiary of Perrigo Company plc) sued CAO Group, Inc. (West Jordan, Utah) for declaratory judgment of non-infringement and invalidity of five patents: US 10,603,259 (’259), 10,646,419 (’419), 11,219,582 (’582), 11,826,444 (’444), and 11,826,445 (’445) — all titled "Peroxide Gel Composition(s)," all in one family claiming priority to a February 8, 2006 application, with substantively identical specifications. Jury demand; thirteen exhibits (A–M). Assigned to Judge Robert J. Shelby; same-day PTO report of filing (ECF 3). (Complaint, ECF 1; Justia docket)
  • The controversy alleged. CAO's Dr. Densen Cao emailed Ranir on 2023-06-06 demanding a license by 2023-07-15 and asserting the ’259, ’419 and ’582 patents (plus the two then-pending applications) against Rembrandt-branded and store-brand strips (Equate, Walgreens, CVS, Kroger, Amazon Basics). Ranir replied that its "Oral Care Layer" had been unchanged since 2002 and predated CAO's patents. CAO then sent letters to Ranir's retail customers — Walmart, CVS, Kroger, Meijer, Walgreens, Target, Albertsons — and on 2024-03-05 sued Walmart for infringement in the District of Utah. A late-May 2024 second round of cease-and-desist letters to retailers is what Ranir pleaded as ripening the DJ controversy. (Compl. ¶¶ 65–73.)
  • Infringement theory. Ranir's product is a two-step process: melt-extruded OCL film (PVP/PEG/Eudragit L100-55, 58-30-12), then a hydrogen-peroxide solution applied to the pre-formed film. Ranir alleges no drying step and no "gelatinous, non-coalescent, viscoelastic" composition as claimed — the primary non-infringement theories across all five patents. It also pleaded invalidity under §§ 102/103/112 and included bad-faith-enforcement allegations (that CAO knew the patents were invalid yet pursued Ranir and its customers), seeking damages and declaratory relief on that basis. (Compl. ¶¶ 43–46, 77–78, 110–117, 129–141.)
  • 2024-07-29/08-19 — Service. Summons issued (ECF 4); waiver of service returned executed 2024-08-19 (ECF 11).
  • Counsel. Ranir: Greenberg Traurig (John W. Huber, Nicholas Peterson, Marc T. Rasich; PHV Julie Bookbinder, Robert M. Azzi) and Warner Norcross + Judd (Vito A. Ciaravino, Matthew E. Sierawski) — admitted PHV 2024-07-31 (ECF 6–10). CAO: Brian E. Lahti, Lahti Helfgott LLC.
  • 2024-10-08 — CAO's Answer and Counterclaim (ECF 13). CAO denied the DJ claims and counterclaimed for infringement of all five patents (Exhibits A–F, including an "Approval of Correction" exhibit). Corporate disclosure filed same day (ECF 14). Critically, CAO's counterclaim converted the DJ action into a conventional infringement suit and — because Ranir's products already carried the accused labeling — preserved CAO's damages window.
  • 2024-10-09 — Referral. Case referred to Magistrate Judge Daphne A. Oberg for all non-dispositive pretrial matters under 28 U.S.C. § 636(b)(1)(A).
  • 2024-11-15 — Ranir's Answer to Counterclaim (ECF 19) (after a stipulated extension, ECF 17).

2. Pre-trial motions of substance

None were filed. The public docket contains no Rule 12(b) motion to dismiss, no § 1404(a)/1406 transfer motion (understandable — CAO is a Utah corporation and the case was filed in CAO's home district), no motion to stay pending IPR, and no summary-judgment motion. The only "motions" are pro hac vice applications and successive stipulated motions to amend the schedule (ECF 21, 23, 27, 29, 31). The one adverse ruling of any kind was procedural: on 2024-11-26 Judge Oberg denied without prejudice the parties' first stipulated scheduling motion because the proposed deadlines violated the District of Utah's Local Patent Rules (e.g., the initial non-infringement/invalidity contentions deadline exceeded LPR 2.4), ordering a compliant proposal by 2024-12-06 (ECF 22). She had already, on 2024-11-20, ordered the parties to move for a scheduling order under LPR 1.2.

3. Claim construction

The case did not reach Markman. A Scheduling Order issued 2024-12-04 (ECF 24) with a Discovery Management Order (ECF 25), and was amended three times (ECF 28, 2025-01-27; ECF 30, 2025-02-27; ECF 34, 2025-04-29). The final (third amended) schedule set amended pleadings to 2025-07-14, joinder to 2025-08-13, and fact discovery to 2026-01-31 — i.e., the case was still in the contention/fact-discovery phase, with claim construction and expert discovery still ahead, when it settled. No joint claim construction statement, opening claim construction brief, technical tutorial, or Markman hearing appears on the docket.

4. Discovery milestones of strategic significance

The docket discloses no contested discovery rulings, no motions to compel, and no protective-order fight — itself notable in a case where the plaintiff's case rested on 20-year-old formulation records and CAO's rested on the "drying" and "gelatinous/viscoelastic" limitations. The strategic milestones visible from the public record are:

  • Ranir's pre-suit tender of 2002–2004 product/packaging evidence of the same OCL — the invalidity/non-infringement theory it then carried into the complaint;
  • the four stipulated schedule amendments (Sept 2025 → Oct 2025 → Nov 2025 → Jan 2026 fact-discovery cutoffs), each pushing the case out, consistent with ongoing settlement pressure rather than a discovery-driven narrowing;
  • the accumulated cost/risk backdrop from CAO's parallel campaigns against Ranir's retail customers (below), which made a global resolution more valuable than a Utah merits ruling to both sides.

I have not been able to verify what written discovery, contention interrogatories, or expert work was actually exchanged before dismissal; that would require the underlying ECF filings.

5. Trial, verdict, post-trial motions

None. No trial setting, no verdict, no JMOL/new-trial motion, and no § 285 fee motion was filed (the fee/exceptional-case theory existed only as an allegation in Ranir's complaint).

6. Final disposition

  • 2025-07-30 — Stipulation of Dismissal With Prejudice (ECF 35), filed by CAO (i.e., the counterclaim plaintiff).
  • Same day, the Court issued a Notice (ECF 36): under Fed. R. Civ. P. 41(a)(1)(A)(ii) the dismissal is self-effectuating, the case "is dismissed with prejudice per the terms of the stipulation," and "No order will follow." Case terminated the same day; Magistrate Judge Oberg's referral ended. (ECF 37, report of final decision to the USPTO, filed 2025-07-30.)
  • No appeal was taken; there is no Federal Circuit proceeding.
  • Consequence: a dismissal with prejudice is an adjudication on the merits for claim-preclusion purposes as to Ranir's DJ claims and CAO's infringement counterclaims, but it produced no validity or infringement ruling and no written opinion. The stipulation's substantive terms (license, payment, covenants, or walk-away) are not in the public record — I could not confirm whether a license or payment changed hands.

7. Parallel PTAB proceedings

  • No IPR or PGR was filed against any of the five asserted patents

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel appearances for this case.

Good initial leads. Let me pull the complaint caption and verify each attorney's firm.

Now let me identify the remaining pro hac vice attorneys' firms (Azzi, Sierawski, Ciaravino) and confirm office locations.

Counsel of Record for Plaintiff Ranir LLC — Ranir LLC v. CAO Group, Inc., No. 2:24-cv-00498-RJS (D. Utah)

Bottom line: Ranir's representation is a single-firm team from Greenberg Traurig LLP — the national patent-litigation group out of GT's New York office (led by Scott J. Bornstein), plus GT's Salt Lake City office acting as local counsel, plus one Grand Rapids, Michigan patent attorney admitted pro hac vice (Robert M. Azzi). Every appearance of record is public — nothing on the docket is sealed as to counsel.

1. Appearing attorneys (complaint signature block, Dkt. 1)

The complaint's signature block reads "GREENBERG TRAURIG LLP /s/ John W Huber — John W. Huber, Marc T. Rasich, Nicholas Peterson" (Dkt. 1 at 28, filed 07/16/2024).

Attorney Role Firm / Office Note
John W. Huber Local counsel / Utah lead of record — the filer and ECF account on nearly all Ranir filings (Dkts. 1, 5, 6–9, 17, 21, 23) Greenberg Traurig LLP, Salt Lake City, UT Former U.S. Attorney for the District of Utah (2015–2021), the longest-tenured active U.S. Attorney during that period; 25+ years of trial litigation. Also GT's Utah counsel to Walmart in the companion case CAO Group Inc. v. Walmart Inc., No. 2:24-cv-00175-DAK (D. Utah) (Dkt. 10 there, 03/19/2024).
Marc T. Rasich Of counsel / Salt Lake City team (signed complaint; no separate ECF activity retrieved) Greenberg Traurig LLP, Salt Lake City, UT Utah IP/commercial litigator; listed on the complaint caption but I found no motion, notice of appearance, or PHV order specifically in his name on the retrieved docket.
Nicholas Peterson Local counsel team; handled service waiver (Dkt. 11) and Ranir's answer to CAO's counterclaim (Dkt. 19) Greenberg Traurig LLP, Salt Lake City, UT D. Utah bar; same role for Walmart in CAO v. Walmart (Notice of Appearance, Dkt. 11 there). Law360 lists four D. Utah patent/contract matters for him, including this case and CAO v. Walmart.

2. Pro hac vice counsel (admitted by Dkt. 10, 07/31/2024)

Order granting Dkts. 6–9: "ORDER granting #6, #7, #8 and #9 Motions for Admission Pro Hac Vice of Attorney Julie Bookbinder, Matthew E. Sierawski, Robert Michael Azzi, Vito Anthony Ciaravino for Ranir LLC," signed by Judge Robert J. Shelby, 07/30/2024.

Attorney Role Firm / Office Note
Julie P. Bookbinder National patent litigation team (PHV, Dkt. 6; granted Dkt. 10) Greenberg Traurig LLP, New York, NY (One Vanderbilt Ave.; bookbinderi@gtlaw.com per Dkt. 1 caption) GT IP litigation shareholder; co-counsel with Bornstein for Walmart in CAO v. Walmart (PHV granted 04/30/2024, Dkt. 21 there).
Matthew E. Sierawski PHV (Dkt. 7; granted Dkt. 10) Firm not verified — GT connection not confirmed in the sources I could access Admitted PHV for Ranir on the D. Utah docket; I could not confirm his firm/office from public sources. Flagging rather than guessing.
Robert Michael Azzi Michigan counsel for Ranir (PHV, Dkt. 8; granted Dkt. 10) Warner Norcross + Judd LLP, Grand Rapids, MI (USPTO Reg. No. 66628) Registered patent attorney in Ranir's home city; patent litigation experience including UV Partners, Inc. v. Proximity Systems, Inc. (S.D. Tex. 2020). Consistent with Ranir's Grand Rapids HQ at 4701 E. Paris Ave. SE (Compl. ¶ 1).
Vito Anthony Ciaravino PHV (Dkt. 9, filed 07/30/2024; granted Dkt. 10) Firm not verified Admitted PHV for Ranir; firm association not confirmed from accessible sources. Flagging rather than guessing.

3. Named on the complaint caption but no PHV motion or admission located

  • Scott J. Bornstein — Greenberg Traurig LLP, New York, NY (One Vanderbilt Ave.; bornsteins@gtlaw.com per Dkt. 1 caption).
    • Role: In practice, the lead national patent litigator on the Ranir relationship — he is co-chair of GT's global patent litigation and ITC practices, ranked in Legal 500 for patent litigation and Section 337 work (clients: Moderna, Samsung, LG, Chewy, Teva). He led Walmart's defense in CAO Group Inc. v. Walmart Inc., D. Utah No. 2:24-cv-00175 (PHV granted 04/30/2024, Dkt. 22 there).
    • Caveat: Dkt. 2 (07/16/2024) is the Notice of Requirements for PHV mailed to Bornstein, Bookbinder, Presvelis and Azzi — i.e., a to-do, not an admission. The only PHV motions actually filed were Dkts. 6–9 (Bookbinder, Sierawski, Azzi, Ciaravino). I could not locate a PHV motion or admission order for Bornstein in this case. He may have appeared administratively, been omitted as a formality, or simply not entered an appearance here. Do not assume he is counsel of record in this docket without a PACER check.
  • Jonathan P. Presvelis — Greenberg Traurig LLP, New York, NY (presvelisj@gtlaw.com per Dkt. 1 caption). Same caveat: named in the caption and in Dkt. 2's PHV-requirements notice, but no PHV motion/admission order found in the retrieved docket. He was admitted PHV for Walmart in CAO v. Walmart (Dkt. 20 there).

Context useful to your analysis

  • Same GT team, both fronts. The Ranir DJ action and CAO's earlier infringement suit against Walmart in the same court (2:24-cv-00175-DAK, filed 03/05/2024) are staffed by an identical GT group — Huber, Peterson, Bornstein, Bookbinder, Presvelis. Ranir's complaint expressly targets CAO's "maintenance of its lawsuit against Walmart" and demands on Ranir's retail customers (Compl., Request for Relief ¶¶ D–E).
  • Not a typical local-counsel arrangement. Because GT has a Salt Lake City office (Huber, Rasich, Peterson), the D. Utah local-counsel function was performed in-house by the same firm rather than by an outside Utah boutique.
  • Docket coverage gap. Published dockets (Justia, UniCourt, PacerMonitor) only surface events through early December 2024 (latest seen: Dkt. 23, stipulated motion for amended scheduling order, with a scheduling order entered granting it). Your metadata says the case is closed, but I could not retrieve the dismissal/closing entry (no stipulation of dismissal or judgment located in accessible sources). A PACER pull of the full docket is required to confirm the closing document and whether any additional appearances were filed between December 2024 and closure.
  • Nothing sealed as to counsel. The only potentially sensitive items are the PHV applications (Dkts. 6–9, Attachments 1), which are routinely filed under restricted access in D. Utah; the attorneys' names and firms are nonetheless public through Dkt. 10 and the complaint caption.

Sources

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel appearances for this case.

Let me dig into the specific defense counsel and verify with additional sources.

Let me verify the full defense-side appearance list and check for any additional counsel (including pro hac vice or in-house).

Defendant's Counsel of Record — CAO Group, Inc.

Bottom line: CAO Group was represented by a single attorney of record throughout this case — Brian E. Lahti of Lahti Helfgott LLC — who served as lead counsel and local counsel (he is Utah-admitted and the firm maintains a Salt Lake City office). No pro hac vice motions, no separate local-counsel firm, and no in-house/appearing-house-counsel entries appear on the docket. The case is closed (stipulated dismissal with prejudice, Dkt. 35–36, July 30, 2025), so the appearance list is effectively final.

Attorney Role Firm / Office Notes
Brian E. Lahti Lead counsel and attorney of record (also satisfies D. Utah local-counsel requirement; no separate local firm retained) Lahti Helfgott LLC — 299 S. Main St., Suite 1300, Salt Lake City, UT 84111 (Denver office: 1624 Market St., Suite 202 / 1580 Logan St., Fl. 6, Denver, CO) Utah (2017) and California (2011) bars; admitted in D. Utah, E.D. Tex., N.D./C.D./S.D. Cal., and the 9th, 10th and Federal Circuits. Described by his firm as having "successfully defended a … company against claims of patent infringement that was affirmed by the Federal Circuit," and as "the architect of offensive patent enforcement strategies" — which is precisely his role for CAO, where he is the company's outside IP enforcement counsel across its teeth-whitening strip campaign (CAO v. Walmart, No. 2:24-cv-00175 (D. Utah); CAO v. Procter & Gamble, No. 5:22-cv-01874 (C.D. Cal.); CAO v. Ivoclar, No. 1:25-cv-01430 (D. Del.); CAO v. GD-Whitening, No. 1:24-cv-05129). B.A. Westminster College (summa cum laude, 2008); J.D. UC Berkeley (2011); former Berkeley Tech. L.J. articles editor; Mountain States Rising Stars 2020–2025.

Docket basis for the above

  • Dkt. 13 — CAO's Answer to Complaint with Jury Demand and Counterclaim against Ranir, filed by Brian E. Lahti (Oct. 8, 2024) (asserting the '259, '419, '582, '444 and '445 patents; Exs. A–F).
  • Dkt. 14 — FRCP 7.1 Corporate Disclosure Statement filed by Counter-Claimant/Defendant CAO Group Inc. (Lahti) (Oct. 8, 2024).
  • Dkt. 27, 29, 31 — Stipulated motions to amend the case schedule filed on behalf of "Counter Claimant CAO Group Inc, Defendant CAO Group Inc" by Lahti (Jan. 24, Feb. 26, Apr. 24, 2025).
  • Dkt. 35 — Stipulation of Dismissal With Prejudice filed by CAO Group Inc. (Lahti) (July 30, 2025); Dkt. 36 — court notice that dismissal is self-effectuating under Rule 41(a)(1)(A)(ii), no order to follow; Dkt. 37 — PTO report on final decision. Same-day dismissal in the companion CAO v. Walmart case (No. 2:24-cv-00175) strongly suggests a global resolution of the whitening-strip dispute.

Sources: PACER docket via PacerMonitor, No. 2:24-cv-00498; Justia docket; UniCourt docket; firm bio pages at Lahti Helfgott and Super Lawyers; signature block in CAO's Ivoclar complaint (D. Del., Nov. 24, 2025) confirming both SLC and Denver office addresses.

One likely co-counsel, flagged as unconfirmed in this case

Jonathan A. Helfgott (name partner, Lahti Helfgott LLC — Denver, CO; jhelfgott@lhlitigation.com; (303) 376-6160) is CAO's co-counsel in the related CAO v. Walmart action, where D. Utah's clerk issued a Notice of Pro Hac Vice Requirements addressed to him for CAO (No. 2:24-cv-00175, Dkt. entry of Mar. 5, 2024), and he is listed alongside Lahti on CAO's 2025 Delaware pleadings. However, my search of the No. 2:24-cv-00498 docket and third-party docket mirrors did not surface any appearance, pro hac vice motion, or signature by Helfgott in the Ranir case — CAO's filings there appear over Lahti's signature only. I would characterize him as "probable co-counsel on the CAO-side team, not an attorney of record in this docket." That conclusion rests on third-party docket aggregators rather than a live PACER pull; sealed filings would not appear in any event.

Explicit caveats

  • No sealed or unrecorded appearances identified, but I could not run a live PACER docket report; the aggregator snapshots (last full pull April 2026) show only Lahti entering appearances for CAO. Nothing in the record indicates CAO used a second local firm, which is consistent with Lahti Helfgott having a Salt Lake City office.
  • No member of the bar of record for CAO on the patent-prosecution side (e.g., CAO's in-house patent counsel, Densen Cao's prosecution team) appears in this litigation; CAO is self-represented in prosecution per PTO records ("Prosecution counsel: CAO Group, Inc.").
  • No IPR/PGR petitions against the five asserted patents appear in the record, so there is no PTAB-side counsel to report.