Procter & Gamble Co. may lose patent protection on Crest Whitestrips

Patent litigation strategy could backfire on P&G

CINCINNATI - Procter & Gamble Co. could soon lose patent protections on Crest Whitestrips, a teeth-whitening product that was launched in 2000 that still commands a 67 percent market share. 

It’s a high-margin product that delivers about $250 million in annual revenue to the Cincinnati-based consumer products company, according to figures supplied by Euromonitor International.

But now it appears that the global company could lose all that, which would be bad for P&G but good for consumers.

It's a high-stakes drama that is largely playing out in federal courtrooms. 

P&G has vigorously defended its patents on Crest Whitestrips, forcing Johnson & Johnson out of the market in 2008 and shooing away Be Well Marketing in 2012. But it’s having a tougher time against Clio USA, a small, private-label manufacturing company that has supplied store-branded whitening strips to CVS, Rite Aid and Target.

P&G sued Clio and its distributors for patent infringement in U.S. District Court for the Southern District of Ohio in July, 2012. Clio responded with a petition for an inter partes review (IPR) before the U.S. Patent and Trademark Office in 2013. Clio claimed P&G’s patents are “based on prior art,” meaning they could be deemed invalid because they violate other patents. In January, the Patent Trial and Appeal Board granted Clio’s petition with a ruling that said there is “a reasonable likelihood that Clio will prevail” on three of its claims.

Columbus attorney Joseph Dreitler, who worked at P&G for 10 years ending in 1993, said Clio’s January win is unusual and puts P&G patents at risk.

 “Any time you bring a lawsuit and put your patents in play there is always a chance that you will not only lose the case but wind up with a ruling that your patents are invalid,” said Dreitler, founder of the trademark and copyright firm, Dreitler True LLC. “If these patents go down, anybody and their brother can make this product that is basically using the claims that are knocked out … Clearly, they both have a lot to lose.”

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