A patent for a liquid cannabinoid formulation has survived its first court challenge on the road to enforcement. USPN 9,730,911 (read here), is directed toward what it’s patentees, the United Cannabis Corp. of Denver, called the “extraction of pharmacologically active materials from plant materials.” The Pure Hemp Collective challenged on summary judgment, asking that the patent be invalidated on 35 U.S.C. Sec. 101 grounds, charging that the patent disclosed only a “law of nature,” and therefore covered non-patent eligible material.
As we have written before, Section 101 summary judgment motions have become an increasingly popular means for patent infringement defendants to try to strike quick knock-out blows. If a patent can be invalidated on the pleadings at an early stage, vast amounts of money can be saved in discovery and trial costs
But U.S. District court Judge William Martinez was not buying the “product of nature” argument. He wrote, “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…. 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” (read full decision here).
But before cannabis advocates celebrate too hard, Judge Martinez was careful to draw many limits on the breadth of the ruling. He opined that the patent might still fail for lack of adequate written disclosure under 35 U.S.C. Sec. 112, as well possibly failing to disclose anything “novel, useful, or nonobvious,” implicating 35 U.S.C. Sections 102, 101 and 103, respectively.
My feeling is that the big decision to be made is in the term, “useful” as required by Sec. 101. Is an invention that is illegal in the United States under federal law “useful?” Recall that long ago, before the advent of legal gaming, patents for things like slot machines were denied as having no “legal use.”
THE BUSINESS TAKE-AWAY: A very preliminary decision, much too early to forecast a change in the patenting of cannabis products. Since it was essentially unarguable that the products patented did legitimately exist in nature, it was an easy win for Unite Cannabis. Tough decisions lie ahead, but at least the first federal district court has signaled that for now, this patent infringement action is headed towards trial. By the way, Judge Martinez’s decision contain an excellent short analysis of Section 101 considerations in light of the Supreme Court’s Alice decision, at pps. 4-5 and 11-13 of his decision (read here).