“Highly” Patentable Subject Matter II: Colorado Court Rules Human Modified CBD Passes Alice Test

June, 11th, 2019

Categories: Articles, Blog Tags: litigation, patent, USPTO, whipgroup

By Mackenzie L. Long

On July 30, 2018 United Cannabis Corporation (“UCANN”) sued Pure Hemp Collective Inc. (“Pure Hemp”) for infringement of UCANN’s patent, U.S. Patent No. 9,730,911 (the “’911 patent”). The ’911 patent is for “an extract comprising a mixture of at least 95% total cannabinoids, and at least one terpene/flavonoid” and “specific formulations containing the extracts according to the invention.”

In November Pure Hemp filed a motion for summary judgment arguing that the patent claims asserted against it were invalid because the patent is directed to chemicals found naturally in cannabis plants. Pure Hemp further stated that “there is no difference between the CBD that can be found naturally within the cannabis plant, and the CBD that is the subject of the patent.”

UCANN argued in its response that “the claims are not directed to laws of nature or natural phenomena because they claim human-modified liquid formulations that require converting solid cannabinoids into a different stated with markedly different physiological characteristics.”

This April the District Court for the District of Colorado ruled that UCANN’s ‘911 patent was not invalid under 35 U.S.C. § 101. The Court only needed the first step Alice/Mayo framework to reach this conclusion.

The first step of the Alice/Mayo framework asks whether the claims are “directed to” a judicial exception. The District Court determined that Pure Hemp failed to establish a genuine dispute that a liquified version of cannabinoids and related chemicals at the concentrations specified in the ‘911 patent was directed to a natural phenomenon.

The District Court further determined that the ‘911 patent specifies concentrations of cannabinoids and related chemicals and that Pure Hemp failed to claim that these precise concentrations occur in liquid form in nature. Therefore, the claims are not “directed to” a natural product, and are not invalid under 35 U.S.C. § 101.

This result is not only a win for UCANN, but for the cannabis industry as a whole. This ruling both creates a test case for future cannabis patent enforcement and gives the green light for others in the industry to go forward with filing their cannabis patents.

Takeaways: This case demonstrates that properly written cannabis claims that are the result of human modification can overcome a validity challenge. This case further shows that even though cannabis is illegal under federal law, federal courts are not viewing these inventions in a negative light.

 

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