June 23, 2022
Authored and Edited by Jordan M. Gringauz; Jeffrey D. Smyth
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.
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.
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.
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.
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.
Copyright © 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
June 10-12, 2024
San Francisco
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.