We have now been carefully monitoring the primary ever cannabis patent infringement case, between plaintiff United Hashish Company (“UCANN”) and defendant Pure Hemp Collective, Inc. (“Pure Hemp”). UCANN owns the “911 Patent,” which usually covers liquid cannabinol formulations of a purified CBD and/or THC higher than 95%. For the previous yr, UCANN has fought to safe a everlasting injunction towards Pure Hemp from infringing on its patent, in addition to damages and attorneys’ charges. For our earlier protection, see right here, right here and right here.
Issues haven’t been going nicely for Pure Hemp, and it not too long ago struck out once more. Final month, Pure Hemp had filed a Movement for Go away to Transient the Invalidity of the Certificates of Correction for the 911 Patent. UCANN filed a Response in Opposition on Might 3, 2019 and Pure Hemp filed its Reply on Might 22, 2019. The Justice of the Peace Decide, Nina Y. Wang, issued her Order denying Pure Hemp’s Movement for Go away the identical day.
As related right here, recall in our earlier publish that in Pure Hemp’s Movement for Partial Abstract Judgment (the “MPSJ”), Pure Hemp had claimed that Declare 31 of the 911 Patent is invalid as a result of “it’s a a number of dependent declare that improperly depends upon one other a number of dependent declare.” Basically, Pure Hemp had argued that Declare 31 of the 911 Patent incorrectly covers: “The formulation of any one of many continuing claims, whereby the formulation is infused in a medium chain triglyceride (MCT).” In response to this argument, UCANN had filed a Movement to Appropriate Declare 313 of the 911 Patent, searching for to change Declare 31 by changing “continuing claims” with “previous claims,” arguing that the previous building is solely an error the court docket might appropriate.
The Court docket denied UCANN’s Movement to Appropriate on February 19, 2019, discovering that the error, if any, could be extra appropriately addressed by proceedings earlier than the USPTO. Three days later, UCANN did file a Request for Certificates of Correction with the USPTO, indicating it had made an “inadvertent typographical error” and arguing that the correction didn’t “contain new matter or require reexamination.”
“The usual for issuing a certificates of correction is specified by 35 U.S.C. 255:Each time a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Workplace, seems in a patent and a exhibiting has been made that such mistake occurred in good religion, the Director might, upon cost of the required payment, difficulty a certificates of correction, if the correction doesn’t contain such adjustments within the patent as would represent new matter or would require reexamination. Such patent, along with the certificates, shall have the identical impact and operation in regulation on the trial of actions for causes thereafter arising as if the identical had been initially issued in such corrected type.”
On April 17, 2019, UCANN filed a discover indicating that the USPTO had agreed and issued a Certificates of Correction on April 9, 2019, amending “continuing” to “previous” in Declare 31 of the 911 Patent. This was comparatively fast, cost-effective manner that resulted in a giant win for UCANN – that very same day, Decide Martinez denied Defendant’s MPSJ. In his Order, Decide Martinez famous that UCANN had obtained the correct Certificates of Correction and due to this fact, Pure Hemp’s argument that Declare 31 was invalid as a result of it didn’t comprise a reference to a earlier declare was moot.
Pure Hemp’s newest Movement for Go away argued that the Certificates of Correction is a broadening modification, which isn’t correct, and that it didn’t have the chance to transient the difficulty as a part of its MPSJ because of the timing of the issuance of the Certificates. Pure Hemp additionally argued that the issuance of whether or not the Certificates of Correction is a broadening modification is a matter of declare building, and that it needs to be permitted to transient the difficulty along with the identical.
In response, UCANN made two easy arguments: (1) Pure Hemp’s movement violates the bounds on the variety of motions for abstract judgment a celebration might file (on this case, one), and (2) the Patent Native Guidelines restrict declare building briefing to resolving problems with declare interpretation. Decide Wang agreed and denied Pure Hemp’s Movement for Go away in its entirety. This simply goes to indicate: generally, actually complicated points are resolved on actually easy procedural grounds.
Now that the validity of Declare 31 has been put to relaxation, the events have proceeded to the declare building section of all patent litigation (the topic of a future publish!). It is going to undoubtedly embrace extra complicated arguments, so keep tuned.