P&G Wages a Patent War Over White Teeth

The company shows no mercy in its defense of Crest Whitestrips

P&G Wages a Patent War Over White Teeth
The company shows no mercy in its defense of Crest Whitestrips (Illustration by 731)
Illustration by 731

Target used to sell its own brand of teeth whitener for $15 less than Crest 3D White Whitestrips, the market leader, which cost about $40 a box. Then came a phone call from Procter & Gamble. A lawyer for the company informed Target that P&G was suing Clio USA, the manufacturer of the private-label product, and two distributors for infringing patents on the strip of material used to apply whitener to teeth, says P&G General Counsel David Weirich. Target pulled the product from store shelves on April 20, according to Clio Vice President Peter Cho.

P&G, the world’s largest consumer-products company, spends about $2 billion a year on research and development and has never been shy about defending its more than 40,000 patents. It waged a seven-year “diaper war” in the 1980s to protect Pampers and Luvs against incursions by Kimberly-Clark, sued Coca-Cola in 2004 over the rights to calcium-enriched orange juice, and battled with Kraft in 2008 over the design of a plastic container for coffee.

Whitestrips, first sold in 2000, were “the largest product introduction in the history of Procter & Gamble,” the lead inventor, Paul Sagel, told a federal judge during a November hearing on the Clio case. Advertising Age put Whitestrips on a list of best products of the decade, alongside the Apple iPod music player.

In the 1980s, people who pined for whiter teeth endured hours in a dentist’s chair undergoing a painful procedure that cost $600 or more. Later, they were able to bleach their teeth at home overnight, using custom-made molds supplied by their dentists. Crest Whitestrips use a hydrogen peroxide-coated film that molds itself to the teeth and can be removed in as little as an hour.

Whitestrips now command 67 percent of the $386.6 million teeth-whitening market in North America, according to Euromonitor International. That’s in part because P&G has aggressively enforced its patents on the product. Johnson & Johnson discontinued its Listerine Whitening Quick Dissolving Strips as part of a 2008 settlement with P&G. Be Well Marketing, which made store-brand strips for Walgreen, exited the market under the terms of a 2012 settlement. Another case is pending against Cao Group, which supplies a product called Sheer White to dentists’ offices. Cao is challenging P&G’s patent infringement allegations and said in a statement that its teeth-whitening film is the result of its own research.

As for Clio, losing Target—its biggest customer—has been difficult. The five-year-old company has only about $3 million in annual sales. “They were satisfied with our product,” says Cho, who maintains P&G pushed Target’s management to discontinue it. Evan Miller, a spokesman for Target, says the retailer has no comment.

Cho says Clio had lawyers research two dozen patents, about half of them owned by P&G, before it launched its whitening strips and found information that could invalidate some of P&G’s. The Englewood (N.J.)-based company filed a petition in July 2013 asking the U.S. Patent and Trademark Office to initiate a review of P&G’s patents. P&G attempted to get the review halted, but an appeals court ruled on April 24 that it could go forward. Cho says his company has spent more than $1 million in legal bills so far and that settlement talks with P&G have gone nowhere. Both companies have summary judgment motions pending before federal District Judge Timothy Black in Cincinnati. Unless the judge grants either of the requests, a trial is scheduled for August.

P&G is fighting to safeguard what may be a wasting asset. Makers of toothpaste and mouthwash, including P&G, have started adding whiteners to those products. Given the choice between a $40 whitening kit and a $4 tube of toothpaste, consumers choose the latter, says Euromonitor analyst Tim Barrett, who says sales of Whitestrips have peaked. Weirich, the P&G lawyer, is not deterred: “We’ve spent a lot of money to get these patents,” he says. “If we don’t enforce them, why have them at all?”

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