WASHINGTON — Dollar Tree Stores Inc. and OraLabs Inc. have agreed to settle a patent infringement case involving certain lip-balm products before the U.S. International Trade Commission, according to motions filed with the ITC.
The Kind Group LLC and its wholly-owned subsidiary, EOS Products, filed the complaint in June against Dollar Tree, OraLabs and other major retailers, including CVS Health Corp. and Walgreen Co., accusing them of infringing on certain lip-balm products and containers. The ITC initiated an investigation of the complaint in July.
The complainants alleged that the companies violated section 337 of the Tariff Act of 1930 in the importation into the U.S. and sale of certain lip-balm products they said infringe on one of their patents.
Others named in the complaint include Five Below Inc.; CVS Pharmacy Inc., a subsidiary of CVS; Walgreens Boots Alliance Inc., the parent company of Walgreens, and Wuxi Sunmart Science and Technology Co.
EOS, or Evolution of Smooth, lip-balm products have distinctive, spherical-shaped containers, and come in a variety of colors and flavors, such as strawberry, sorbet, sweet mint and honeysuckle, and have been featured in print and digital media and on television, according to the complaint.
The patent at issue relates to a lip-balm applicator product composed of an upper and lower portion often connected with interconnecting threads. Lip balm is mounted in the lower portion of the applicator on a support platform and the receptacle is “substantially spherical, substantially cylindrical with rounded surfaces, egg-shaped, ovate or the like.”
The Kind Group and EOS are requesting that the ITC impose a limited exclusion order on the alleged infringing products and a cease-and-desist order from importing the products into the U.S. EOS has also filed a separate patent infringement lawsuit in U.S. District Court for the District of Delaware against the companies named in the ITC complaint.
According to ITC filings, Dollar Tree Stores agreed to discontinue making, using, selling and importing the products accused in the litigation, with the exception of lip-balm products obtained from EOS or licensed by EOS. The settlement agreement also allows Dollar Tree a phase-out period of 30 calendar days from the effective date to sell its remaining stock of lip-balm products named in the complaint and does not represent an admission of liability.
In its separate settlement agreement, OraLabs agreed it will not make, use, sell, advertise, market, distribute or export or import any “substantially egg-shaped primary packaging or components of any size; any mounded lip-balm products or components” around the world. OraLabs has until Dec. 31 to discontinue selling the prohibited products and must destroy all of the molds used to make the prohibited primary packaging, according to the filings.
The administrative law judge presiding over the case issued two separate initial determinations granting the motion to terminate the case with Dollar Tree and OraLabs. They will now be subject to review or possible modification by the commission.
When companies settle ITC cases, the accompanying lawsuits are also typically dismissed.