United Cannabis Corp. v. Pure Hemp Collective Inc.

          ORDER DENYING DEFENDANT'S EARLY MOTION FOR PARTIAL SUMMARY JUDGMENT

          WILLIAM J. MARTINEZ, UNITED STATES DISTRICT JUDGE

         United Cannabis Corporation (which refers to itself as “UCANN”) sues Pure Hemp Collective Inc. (“Pure Hemp”) for infringement of UCANN's patent, U.S. Patent No. 9, 730, 911 (“911 Patent”), which issued on August 15, 2017. Currently before the Court is Pure Hemp's Early Motion for Partial Summary Judgment. (ECF No. 32.) Pure Hemp argues that all of the patent claims asserted against it are invalid, and therefore requests a ruling to that effect, “which will substantially reduce the number of issues before the Court in this case.” (Id. at 1.) Indeed it would-because it would end the case. For the reasons explained below, however, the Court finds that Pure Hemp is not entitled to summary judgment on this record.

         I. LEGAL STANDARD

         Summary judgment is warranted under Federal Rule of Civil Procedure 56 “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986). A fact is “material” if, under the relevant substantive law, it is essential to proper disposition of the claim. Wright v. Abbott Labs., Inc., 259 F.3d 1226, 1231-32 (10th Cir. 2001). An issue is “genuine” if the evidence is such that it might lead a reasonable trier of fact to return a verdict for the nonmoving party. Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir. 1997).

         In analyzing a motion for summary judgment, a court must view the evidence and all reasonable inferences therefrom in the light most favorable to the nonmoving party. Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998) (citing Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). In addition, the Court must resolve factual ambiguities against the moving party, thus favoring the right to a trial. See Houston v. Nat'l Gen. Ins. Co., 817 F.2d 83, 85 (10th Cir. 1987).

         II. BACKGROUND

         Per the undersigned's Revised Practice Standards, the parties submitted statements of material fact and responses and replies thereto. (See ECF No. 32 at 1-3; ECF No. 36 at 6-10; ECF No. 38 at 3-4.) However, the Court finds that the 911 Patent itself is the only evidence relevant to the challenges Pure Hemp raises in its current motion.

         The 911 Patent addresses itself to the field of cannabinoids-various chemicals derived from the cannabis sativa plant-for human consumption. The patent says that

[t]here presently exists the need to provide more effective and safer cannabis extracts for various medical uses, extraction methods that provide unique active compounds that are useful to treat pain and various medical conditions. Additionally, presently known extraction procedures do not provide the desired active ingredient(s) for the particular medical purpose. The present invention overcomes these limitations and provides other related advantages.

911 Patent at 1:32-39. To this end, the “Summary of the Invention” portion of the specification announces that the invention covers four areas:

1. “an extract comprising a mixture of at least 95% total cannabinoids, and at least one terpene/flavonoid, ” id. at 1:43-45;^[1]

2. “[specific] formulations containing the extracts according to the invention, ” id. at 1:63-64;

3. “a method for preparing cannabis juice, ” id. at 3:4-5; and

4. “a method of relieving symptoms associated with” various medical conditions, id. at 3:15-19.

         However, it appears the Patent was substantially narrowed during its prosecution without a corresponding update in the specification, because the Patent ultimately claims only the first two types of inventions. See Claims 1-36.

         As to those claims, every independent claim describes “[a] liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is” a specified cannabinoid or combination of them. See Claims 1, 5, 10, 16, 20, 25. The dependent claims mostly add requirements for terpenes and/or flavonoids. See Claims 2-4, 6-9, 11-15, 17-19, 21-24, 27-30. Claim 33 addresses itself to any of the independent claims and adds that the required liquid is “formulated for oral, sublingual, buccal, or topical administration.”

         III. ANALYSIS

         Through infringement contentions, Pure Hemp learned that UCANN accuses Pure Hemp of infringing Claims 10, 12, 14, 20-22, 25, 27, 28, 31, and 33 of the 911 Patent. (ECF No. 32 at 1.) Pure Hemp attacks all these claims under one theory of invalidity, and then alternatively attacks Claim 31 alone under a separate theory of invalidity. The Court will first address the argument against all of the asserted claims, and then address the separate argument against Claim 31.

         A. All Asserted Claims

         1. The “Alice” Patentability Test

         Pure Hemp's motion raises a “patentability” challenge to the asserted claims of the 911 Patent, i.e., whether those claims are directed at something the Patent Act deems patent-protectable. See 35 U.S.C. §§ 1 et seq. The following principles are therefore relevant.

         The Patent Act provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court has “long held, ” however, “that this [broadly worded] provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (internal quotation marks omitted).

         “[D]istinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts” first requires a court to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. at 217. If the answer is no, the inquiry ends; but if the answer is yes, a court must then determine whether the claims in question nonetheless offer “an inventive concept-i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Id. at 217-18 (internal quotation marks omitted; alterations incorporated). This second inquiry requires the court to “consider the elements of each ...