Global Patent Prosecution - June 2019: A Useful Roadmap for Claiming Cannabis Inventions

Sterne, Kessler, Goldstein & Fox P.L.L.C.

On April 17, 2019, U.S. District Judge William Martinez of the District of Colorado upheld the subject matter eligibility of United Cannabis Corporation’s (“UCANN”) patent claims covering liquid cannabinoid formulations. UCANN is the first company to enforce a cannabis patent in federal court and its infringement suit against Pure Hemp has been closely monitored as a test case for those investing in cannabis intellectual property. In that suit, UCANN faced an early challenge when Pure Hemp moved for summary judgment of invalidity under 35 U.S.C. § 101 arguing that UCANN’s claims were directed to patent-ineligible natural phenomena.

In 2018, UCANN asserted its U.S. Patent No. 9,730,911 against Pure Hemp. The ’911 patent claims liquid cannabinoid formulations wherein “at least 95% of the total cannabinoids” are one or more specified cannabinoids (e.g., CBD, THC, CBD/THC). In seeking to invalidate the patent, Pure Hemp argued that the claimed cannabinoids occur naturally in the cannabis plant and are therefore patent-ineligible. UCANN countered that its claims are directed to human-engineered liquidized formulations that contain threshold-amounts of cannabinoids that do not occur in nature. Judge Martinez agreed with UCANN, explaining that even if it were “logically possible” that cannabinoids in nature might appear in a form that could be deemed a “liquid,” the claims nonetheless specify threshold concentrations of cannabinoids and related chemicals that do not occur naturally in liquid form. Thus, UCANN’s claims are not “the handiwork of nature.”

As the first of its kind, this decision is an important development for those who own, or are pursuing, patent claims in the cannabis space. Notably, the claims at issue in the UCANN litigation are not process or method-of-use claims. Meaning, they do not require a particular process for extracting or making cannabinoids. Nor do they claim a particular method of using cannabinoids to treat a particular disease, condition, or symptom. Rather, they claim cannabinoid formulations. While process and method-of-use claims may be independently patent-eligible for entirely different reasons, Judge Martinez’s decision illustrates that, properly claimed, cannabis formulations that are the result of human modification can stand on their own. For example, as in the UCANN patent, cannabis compositions that require converting natural cannabinoids into a different state could, in combination with other non-natural characteristics, be patent-eligible.

In terms of the broader implications, the District of Colorado’s decision offers a helpful roadmap for how to navigate subject-matter eligibility in the emerging cannabis technology space. And since UCANN’s patent survived this initial validity challenge, the suit remains a valuable test case for patent enforcement actions in a jurisdiction where cannabis patent suits are likely to be brought in the future; namely, Colorado. We expect the UCANN decision to drive further interest in this technology space and will continue to report on important developments.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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