As promised, hereās an update on the first ever cannabis patent infringement case, which weāve previously written about here and here.Ā Since itās been a little while ā plaintiff United Cannabis Corporation (āUCANNā) owns the ā911 Patent,ā which generally covers liquid cannabinol formulations of a purified CBD and/or THC greater than 95%. Last July, UCANN sued defendant Pure Hemp Collective, Inc. (āPure Hempā), alleging that Pure Hemp had infringed on the 911 Patent. UCANN is hoping to secure a permanent injunction against Pure Hemp from infringing on its patent, as well as damages and attorneysā fees.
As we noted in our last update, Pure Hemp previously filed a motion for partial summary judgment back in November, which if granted, would have ruled some of UCANNās patent claims invalid. The premise of Pure Hempās motion was that UCANNās claims arenāt actually patentable and such āsubstantially pure liquid CBD products are ubiquitousā in the marketplace. The defendantās attempt to invalidate some of the claims was based on an interpretation of Supreme Court cases about āproducts of natureā being unpatentable. This led the Court to the āAliceā Patentability Test, which requires the Court to go through the below analysis:
- Are the claims at issue directed to a patent-ineligible concept (i.e., laws of nature, natural phenomena, abstract ideas)?
- No: inquiry ends, the claims may be patentable!
- Yes: go to question 2.
- Do the claims in question nonetheless offer āan inventive concept ā i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itselfā?
At this early stage, if a court gets to the second question, itās faced with a āfact questionā that requires extensive evidence to be resolved. If thereās a genuine dispute of material fact, the Court wonāt be inclined to grant the motion.
Unfortunately for Pure Hemp, U.S. District Judge William Martinez didnāt buy their argument. In his 16-page Order denying Pure Hempās motion on April 17, 2019, Judge Martinez acknowledged that there were certain ambiguities in the case law regarding patentability, but ultimately wrote he was āconvinced under the current state of the case law that the challenged claims of the 911 Patent are not directed at unpatentable subject matter.ā Judge Martinez went on to explain why the 911 Patent passed step one of the Alice Patentability Test:
Pure Hemp has failed to establish beyond genuine dispute that a liquefied version of cannabinoids and related chemicals at the concentrations specified in the 911 Patent is anything like a natural phenomenon. ⦠But, as far as the Alice inquiry goes, the 911 Patent is not ādirected toā an unpatentable law of nature, a natural phenomenon, or an abstract idea. It is instead ādirected toā a non-naturally occurring delivery method of naturally occurring chemicals in (as far as the record reveals) non-naturally occurring proportions and concentrations. Because the 911 Patent does not fail at step one of the Alice inquiry, the Court need not address step two.ā
Now that Pure Hempās motion is denied, the case will proceed as normal toward a jury trial. Itās likely that there will be more motion practice, and weāll keep posting regular updates on this case as we receive them.