On April 17, 2019, Judge William J. Martinez denied an early motion for partial summary judgment for invalidity based patent-ineligible subject matter under 35 U.S.C. §101, in the first federal patent infringement case testing the patent claims of cannabinoid formulations. Judge Martinez, sitting in the District of Colorado, found the patent-at-issue, U.S. Patent No. 9,730,911 (‘911), was directed to a novel liquid cannabinoid formulation comprising 95% cannabis product and not a natural phenomenon, a patent-ineligible subject matter under §101.
United Cannabis Corporation (UCANN) owns the ‘911 patent, entitled “Cannabis extracts and methods of preparing and using the same.” UCANN sued Pure Hemp Collective Inc. for infringement of the ‘911 patent.
As Judge Martinez noted in his ruling, the ‘911 patent does not claim a stated use for the liquid cannabinoid formulation. Rather, the ‘911 patent’s novelty is the use of cannabis for pharmacological treatments of various illnesses and ailments. Pure Hemp had argued that the ‘911 claims were directed to natural phenomenon, namely, the cannabinoids, terpenes, and flavonoids used to grow a particular cannabis strain. UCANN countered that the liquid formulation of these cannabis components, taken together, were a synthetically-derived product involving an act of human intervention to create a “markedly different” product with different “physiological characteristics” in a “different state.” Judge Martinez agreed with UCANN, holding that:
It may be true, as Pure Hemp insists, that cannabinoids in nature can take the form of a resin; that a resin can be highly viscous; that a highly viscous substance may at time sbe considered a liquid; and therefore it is logically possible that cannabinoids in nature might appear in a form that could, in some sense, be deemed a “liquid.” Even accepting as much, the ‘911 patent specifies threshold concentrations of cannabinoids and related chemicals. Pure Hemp nowhere claims that these precise concentrations, or anything close to them, occur in liquid form in nature. Accordingly, UCANN’s claims are not restatements of “the handiwork of nature.”
The judge did mention that, at his early stage in litigation, while the ‘911 claims were not directed to a patent-ineligible subject matter under §101, factual and legal questions remain as to utility, novelty, and nonobviousness under §§101-103. These latter issues will no doubt be further litigated through the case of the case.
This case represents the first federal patent infringement suit involving a cannabis patent. Further, it is the first case in which the §101 patent-eligibility analysis was applied to the patent claims. §101 and Alice case law is a contentious and often confusing area for patent practitioners, namely because of the lack of proper guidance on how to apply the Alice ruling to the practical claims practice, resulting in mostly convoluted Fed Circuit rulings handling a proper §101 analysis. While §101 jurisprudence is currently a messy situation for the practitioner, the upside of this case is that it provides a roadmap §101 analysis for future cannabis patent infringement cases.