United States District Court, D. Colorado
UNITED CANNABIS CORPORATION, a Colorado Corporation, Plaintiffs,
PURE HEMP COLLECTIVE INC., a Colorado Corporation, Defendant.
ORDER DENYING DEFENDANT'S EARLY MOTION FOR
PARTIAL SUMMARY JUDGMENT
WILLIAM J. MARTINEZ, UNITED STATES DISTRICT JUDGE
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.
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).
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.
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.
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;
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
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.
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
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.
All Asserted Claims
The “Alice” Patentability Test
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
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).
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 ...