Richard H.

Brown DAY PITNEY LLP One Jefferson Road Parsippany, New Jersey 07054 Telephone: (973) 966-6300 rbrown@daypitney.com Joseph J. Zito ZITO tlp 1250 Connecticut Ave, NW, Suite 200 Washington, DC 20036 Telephone: (202) 466-3500 jzito@zitotlp.com Attorneys for Plaintiff CLIO USA, Inc. UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW JERSEY __________________________________________ ) CLIO USA, Inc., ) ) Plaintiff, ) vs. ) ) THE PROCTER & GAMBLE COMPANY, ) ) Defendant. ) ) __________________________________________)

Civil Action No. _________

COMPLAINT FOR DECLARATORY JUDGMENT OF PATENT INVALIDITY AND NON-INFRINGEMENT Plaintiff CLIO USA, Inc. (CLIO), upon personal knowledge as to its own acts and upon information and belief formed after reasonable inquiry as to the acts of third parties, for its Complaint against Defendant THE PROCTER & GAMBLE COMPANY (P&G) hereby alleges as follows:

NATURE OF THE ACTION 1. This is an action for declaratory judgment of invalidity and non-infringement of

U.S. Patent Nos. 5,891,453 (the 453 patent); 5,894,017 (the 017 patent) and 7,122,199 (the 199 patent) (collectively "the patents in suit") pursuant to the Declaratory Judgment Act, 28 U.S.C. 2201-02, and the Patent Laws of the United States, 35 U.S.C. 1, et seq., and for such other relief as the Court deems just and proper. PARTIES 2. CLIO is a company organized and existing under the laws of the State of New

Jersey, having a place of business at 580 Sylvan Avenue, Englewood Cliffs, New Jersey 07632. CLIO manufactures products referred to generally as whitening dental strips, in New Jersey and markets the products in New Jersey and in other states. 3. Upon information and belief, P&G is a corporation organized and existing under

the laws of the State of Ohio that maintains its principal place of business at One Procter & Gamble Plaza, Cincinnati, Ohio 45201 and has substantial operations and sales throughout each of the fifty states of the United States of America. P&G Purports to be the owner of the '453, '017 and '199 patents which purport to relate to whitening dental strips. SUBJECT MATTER JURISDICTION 4. CLIO brings this action under the Patent Laws of the United States, 35 U.S.C.

1, et seq., and under the Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. The Court has subject matter jurisdiction over this action under 28 U.S.C. 1331 (federal question), 28 U.S.C. 1338 (action arising under any act of Congress relating to patents), and 28 U.S.C. 2201 (Declaratory Judgment Act). 2

5.

Beginning in or around June 2012, in-house counsel for P&G contacted a

distributor of CLIO's whitening dental strips, threatening suit against the distributor for patent infringement of P&G patents related to whitening dental strips. The distributor informed P&G that the manufacturer of the accused products had performed due diligence and had obtained legal opinions regarding the accused products. 6. Beginning prior to June 2012, and continuing through July 2012, CLIO identified

certain patents purportedly owned by P&G and related to whitening dental strips, including the patents in suit, investigated the assertions of P&G and determined the patents to be both invalid and not infringed by the accused whitening dental strips manufactured by CLIO. 7. On July 20, 2012, P&G filed suit in Ohio, asserting the 453, 017 and 199

patents against CLIO's distributor, Team Technologies. P&G elected not to proceed against CLIO directly, despite knowing that Team Technologies is not the manufacturer of the accused product. P&G's Complaint, among other things, also falsely asserts that: "Team Tech currently manufactures private label tooth whitening products called Oral Care Whitening Dental Strips." and that: "Team Tech also currently manufactures a private label tooth whitening product called Ultra Whitening Strips." 8. CLIO is the manufacturer of the accused products and contends that they do not

infringe any claims of any of the patents in suit, the 453, 017 and 199 patents. 9. As a result of P&Gs conduct, there is a case or actual controversy between the

parties under the Declaratory Judgment Act, 28 U.S.C. 2201, and jurisdiction is proper in this Court.

PERSONAL JURISDICTION AND VENUE 10. P&G is a subject to jurisdiction in New Jersey because P&G has substantial

operations and sales in New Jersey and maintains substantial active and ongoing business within the State of New Jersey. In addition, P&G has substantial sales of products marked with the patents in suit in the State of New Jersey. P&G has availed itself of the laws of the State of New Jersey by entering into agreements to sell its products throughout the United States, including in the State of New Jersey, resulting in continuous and systematic contacts with this forum. 11. To the extent P&Gs contacts with this forum are alone insufficient to give rise to

personal jurisdiction in this forum, P&G is also subject to personal jurisdiction by operation of Fed. R. Civ. P. 4(k)(2). 12. 1400. THE PATENTS-IN-SUIT 13. United States Letters Patent No. 5,891,453 (the 453 patent) entitled Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b)-(d) and

Delivery System For A Tooth Whitener Using A Strip Of Material Having Low Flexural Stiffness, issued on April 6, 1999. P&G purports to be the current owner of the 453 patent. A true and correct copy of the 453 patent is attached to this Complaint as Exhibit A. 14. United States Letters Patent No. 5,894,017 (the 017 patent) entitled Delivery

System For An Oral Care Substance Using A Strip Of Material Having Low Flexural Stiffness, issued on April 13, 1999. P&G purports to be the current owner of the '017 patent. A true and correct copy of the 017 patent is attached to this Complaint as Exhibit B. 15. United States Letters Patent No. 7,122,199 (the 199 patent) entitled Methods

For Whitening Teeth, issued On October 17, 2006. P&G purports to be the owner of the 199 patent. A true and correct copy of the 199 patent is attached to this Complaint as Exhibit C. FACTUAL BACKGROUND 16. 17. Plaintiff incorporates all of the allegations set forth above. P&G's conduct, as alleged herein above, establishes a case or controversy between

the parties with respect to the patents in suit, '453, '017 and '199, and the accused products Oral Care Whitening Dental Strips and Ultra Whitening Strips sufficient to warrant declaratory relief. 18. suit. 19. below. 20. This is an exceptional case under 35 U.S.C. 285, entitling CLIO to an award of Each of the patents in suit is invalid and/or unenforceable for the reasons stated CLIO has not infringed, and does not infringe, any claims of any of the patents in

its attorneys fees incurred in connection with this action.

COUNT I (Non-infringement of the 453 Patent) 21. CLIO's accused products do not infringe, either directly, indirectly, contributorily

or by inducement, literally or under the doctrine of equivalence any claim of the '453 Patent because each of the claims of the '453 patent include elements and limitations which are not present in either of the accused products. 22. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment affirming 5

that none of the accused products infringes the 453 patent. COUNT II (Non-infringement of the 017 Patent) 23. CLIO's accused products do not infringe, either directly, indirectly, contributorily

or by inducement, literally or under the doctrine of equivalence any claim of the '453 Patent because each of the claims of the '017 patent include elements and limitations which are not present in either of the accused products. 24. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment affirming that none of the accused products infringes the 017 patent. COUNT III (Non-infringement of the 199 Patent) 25. CLIO's accused products do not infringe, either directly, indirectly, contributorily

or by inducement, literally or under the doctrine of equivalence any claim of the '453 Patent because each of the claims of the '199 patent include elements and limitations which are not present in either of the accused products. 26. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment affirming that none of the accused products infringes the 199 patent. COUNT IV (Invalidity of the '453 patent) 27. Upon information and belief, the '453 Patent is invalid for failure to comply with

the requirements of: 35 U.S.C. 101 because the patent claims are directed to non-statutory

subject matter; 35 U.S.C. 102 because the claims are anticipated by prior art; 35 U.S.C. 103 because the claims are obvious in view of prior art; and/or 35 U.S.C. 112 because the written description is inadequate and does not meet statutory requirements. 28. Upon information and belief, given the prior art existing at the time the alleged

invention of the '453 Patent was made, the subject matter as claimed in the '453 Patent would have been obvious to a person skilled in the art to which the alleged invention relates and does not constitute a patentable invention. 29. Upon information and belief, the subject matter of the '453 Patent is not directed to

patentable subject matter as the disclosed subject matter is non-statutory and as such does not qualify as patentable subject matter under 35 U.S.C. 101 and the claims are therefore invalid. 30. Upon information and belief, the claims of the '453 Patent are not directed to any

patentable combination but is directed to mere aggregations of parts which were matters of common knowledge in the art to which said patent relates before the alleged invention and more than one year prior to the date of the application for the patent and are therefore invalid. 31. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment that the '453 patent is invalid. COUNT V (Invalidity of the '017 patent) 32. Upon information and belief, the '017 Patent is invalid for failure to comply with

the requirements of: 35 U.S.C. 101 because the patent claims non-statutory subject matter; 35 U.S.C. 102 because the claims are anticipated by prior art; 35 U.S.C. 103 because the claims

are obvious in view of prior art; and/or 35 U.S.C. 112 because the written description is inadequate and does not meet statutory requirements. 33. Upon information and belief, given the prior art existing at the time the alleged

invention of the '017 Patent was made, the subject matter as claimed in the '017 Patent would have been obvious to a person skilled in the art to which the alleged invention relates and does not constitute a patentable invention. 34. Upon information and belief, the subject matter of the '017 Patent is not directed to

patentable subject matter as the disclosed subject matter is non-statutory and as such does not qualify as patentable subject matter under 35 U.S.C. 101 and the claims are therefore invalid. 35. Upon information and belief, the claims of the '017 Patent are not directed to any

patentable combination but is directed to mere aggregations of parts which were matters of common knowledge in the art to which said patent relates before the alleged invention and more than one year prior to the date of the application for the patent and are therefore invalid. 36. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment that the '017 patent is invalid. COUNT VI (Invalidity of the '199 patent) 37. Upon information and belief, the '199 Patent is invalid for failure to comply with

the requirements of 35 U.S.C. 101 because the patent claims are directed to non-statutory subject matter; 35 U.S.C. 102 because the claims are anticipated by prior art; 35 U.S.C. 103 because the claims are obvious in view of prior art; and/or 35 U.S.C. 112 because the written

description is inadequate and does not meet statutory requirements. 38. Upon information and belief, given the prior art existing at the time the alleged

invention of the '199 Patent was made, the subject matter as claimed in the '199 Patent would have been obvious to a person skilled in the art to which the alleged invention relates and does not constitute a patentable invention. 39. Upon information and belief, the subject matter of the '199 Patent is not directed to

patentable subject matter as the disclosed subject matter is non-statutory and as such does not qualify as patentable subject matter under 35 U.S.C. 101 and the claims are therefore invalid. 40. Upon information and belief, the claims of the '199 Patent are not directed to any

patentable combination but is directed to mere aggregations of parts which were matters of common knowledge in the art to which said patent relates before the alleged invention and more than one year prior to the date of the application for the patent and are therefore invalid. 41. Because there exists a substantial controversy sufficient to warrant the issuance of

relief under the Declaratory Judgment Act, CLIO is entitled to a declaratory judgment that the '199 patent is invalid. COUNT VII 42. Upon information and belief, P&Gs infringement claims related to the '453 Patent

are barred by the doctrine of estoppel, laches, and/or the doctrine of res judicata. 43. Upon information and belief, P&Gs infringement claims related to the '017 Patent

are barred by the doctrine of estoppel, laches, and/or the doctrine of res judicata. 44. Upon information and belief, P&Gs infringement claims related to the '199 Patent

are barred by the doctrine of estoppel, laches, and/or the doctrine of res judicata.

COUNT VIII 45. Upon information and belief, the '453 Patent is unenforceable due to a lack of

candor with the United States Patent & Trademark Office (USPTO) during the prosecution. 46. Upon information and belief, the '017 Patent is unenforceable due to a lack of

candor with the USPTO during the prosecution. 47. Upon information and belief, the '199 Patent is unenforceable due to a lack of

candor with the USPTO during the prosecution. PRAYER FOR RELIEF CLIO respectfully requests that the Court enter judgment that: A. CLIO's accused products do not infringe, either directly, indirectly, contributorily

or by inducement, literally or under the doctrine of equivalence any claim of the patents in suit. B. C. D. Each of the claims of the '453, '017 and '199 patents is invalid. Each of the '453, '017 and '199 patents is unenforceable due to a lack of candor. The assertion of claims of each of the '453, '017 and '199 patents against CLIO's

products is barred by the doctrines of estoppel, laches, and/or res judicata. E. Finding that this is an exceptional case under 35 U.S.C. 285, and awarding fees

and costs to Plaintiff incurred in connection with this action. F. Awarding CLIO such other relief as is proper. JURY TRIAL DEMAND Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, CLIO demands a trial by jury of all issues triable of right by jury.

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Dated: September 12, 2012

Respectfully submitted, /s/ Richard H. Brown DAY PITNEY LLP 1 Jefferson Road Parsippany, New Jersey 07054 Tel. (973)-966-6300 Fax (973)-206-6129 rbrown@daypitney.com

Of Counsel Joseph J. Zito ZITO tlp 1250 Connecticut Ave, NW, Suite 200 Washington, DC 20036 (202) 466-3500 jzito@zitotlp.com Attorneys for Plaintiff CLIO USA, Inc.

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Exhibit A

Exhibit B

Exhibit C