A Brief Summary of Patent Proceedings Involving Cannabis Patents

To date, there have been relatively few patent proceedings relating to cannabis patents and no court has issued a finding of infringement. With the interest in potential utility of cannabis to develop treatments for a variety of medical conditions and the continued issuance of cannabis patents, the number of cannabis patent proceedings is likely to increase as well. Four cannabis-related patent proceedings are outlined briefly in this post.

United Cannabis Corporation v. Pure Hemp Collective, Inc., Case No. 1:18-cv-01922 (D. Colo.)

In July of 2018, United Cannabis Corporation (“UCANN”) filed an infringement action against Pure Hemp Collective (“Pure Hemp”) in the United States District Court District of Colorado. UCANN alleged that Pure Hemp sold several cannabis products that infringed UCANN’s U.S. Patent[1], which claims various liquid formulations of enriched extracts of plant cannabinoids. Pure Hemp filed an early motion for partial summary judgment seeking to invalidate the claims of the patent as directed to ineligible subject matter under 35 U.S.C. § 101. The Court applied the two-part Alice test and denied the motion, finding no indication that the precise concentrations of cannabinoids and related chemicals form in nature in liquid form. Thus, the court found the claims were not directed to an unpatentable law of nature, a natural phenomenon, or an abstract idea. The case was ultimately dismissed with prejudice before validity of the patent was determined on the merits.

Canopy Growth Corporation v. GW Pharma Limited and GW Research Limited, Case No. 6:20-cv-01180 (W.D. Tex.)

In December 2020, Canopy Growth Corporation (“Canopy”) filed a complaint for patent infringement against GW Pharmaceuticals PLC (“GW”) in the United States District Court for the Western District of Texas. Canopy alleged that GW’s anti-epileptic CBD therapeutic, Epidiolex, infringed Canopy’s U.S. Patent[2] which relates to a process of extracting CBD using carbon dioxide. The parties’ disputed the correct construction of the term “CO2 in liquified form under subcritical pressure and temperature conditions” in the asserted claims of the patent.  After the Court issued its Claim Construction Order, finding that the plain language of the claims supported the defendants’ proposed claim construction, the parties agreed that Canopy could not prevail, and the parties stipulated that Canopy could not prevail, and the Court entered a final judgment of non-infringement in favor of GW.

Insys Development Company, Inc. v. GW Pharma Limited Co., Case No. IPR2017-00503

In December of 2016, Insys Development Company, Inc. (“Insys”) petitioned for IPR seeking cancellation of a U.S. Patent[3] assigned to GW Pharma Limited (“GW”) and Otsuka Pharmaceutical Co., Limited (“Otsuka”). The patent is directed to methods of treating seizures using CBD. Insys argued that all claims of the patent were unpatentable as obvious over the prior art because the use of CBD to treat seizures was well known prior to the invention. GW and Otsuka countered that treating seizures with CBD was, at best, a promising candidate for further study and a person of ordinary skill had no expectation that CBD would treat seizures. In its final written decision, the Board struck down claims 1 and 2 as obvious but upheld the remaining 11 dependent claims because Insys failed to identify where any of the claim limitations were disclosed in the prior art. The PTAB’s decision indicates that the PTAB does not intend to treat patents related to cannabis differently than other patents based on the subject matter alone. 

The Original Resinator, LLC v. TTT Innovations LLC, Case No. 5:21-cv-02002

In November of 2021, The Original Resinator (“TOR”) filed a complaint for both patent and trademark infringement against TTT Innovations (“TTT”) in the United States District Court for the Central District of California. TOR alleges that TTT is selling certain products which infringe two of TOR’s U.S. patents[4]. The patents are related to methods of extracting resin and trichomes from plants such as cannabis. This case is scheduled to go to trial at the end of 2022 and could turn out to be the first time a jury considered a case of infringement of a cannabis patent.

[1] U.S. Patent No. 9,730,911.

[2] U.S. Patent No. 10,870,632.

[3] U.S. Patent No. 9,066,920.

[4] U.S. Patent Nos. 10,507,233 and 10,512,938.