"[T]he Proper Application of the Supreme Court's Alice Standard is an Evolving and Sometimes Hazy Area of Law"

April 29, 2019 – Article

        Marijuana, for medical purposes and recreational purposes, is an area of great political, social and legal interest. By some accounts (https://www.forbes.com/sites/thomaspellechia/2018/03/01/double-digit-billions-puts-north-america-in-the-worldwide-cannabis-market-lead/#6d925dd76510), the industry is rapidly growing leaps and bounds. Not surprisingly, patents and disputes centered on patents for this industry are increasing in numbers. One such recent case, United Cannabis Corp. v. Pure Hemp Collective, Inc., (U.S. District Court for the District of Colorado) addressed the patent eligibility question under 35 USC 101 of marijuana derived compositions.

        United Cannabis Corporation sued Pure Hemp Collective Inc. for infringement of U.S. Patent No. 9,730,911. The patent focused on cannabinoids derived from the cannabis sativa plant where “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.”

         Pure Hemp challenged eligibility under 35 USC 101 in an early summary judgement motion: “Pure Hemp argues that these claims are “directed to” the unpatentable natural phenomenon of the specified chemical compounds (cannabinoids, terpenes, and flavonoids), as if UCANN is trying to secure a monopoly on use of these compounds.”

        The Court acknowledged the legal precedent of Alice and discussed various cases such as Funk Brothers, Diamond v. Chakrabarty, Mayo, and Ariosa to set up the background of the ruling on the motion commenting:

As the foregoing summary of case law suggests, the proper application of the Supreme Court’s Alice standard is an evolving and sometimes hazy area of law. Deciding whether a patent claim is “directed to” a law of nature is not as straightforward as the Supreme Court makes it sound in Alice itself. Moreover, the Federal Circuit itself has remarked on the difficulty, at times, of distinguishing the first Alice inquiry from the second . . .

        Despite the lack of clarity in the law, the Court held that the specific limitations in the claims as to the concentration and form (i.e., liquid) along with the processing (not claimed) to get to the compositions was enough to deny the summary judgement motion:

Pure Hemp has failed to establish beyond genuine dispute that a liquefied version of cannabinoids and related chemicals at the concentrations specified in the 911 Patent is anything like a natural phenomenon. It may be true, as Pure Hemp insists, that cannabinoids in nature can take the form of a resin; that a resin can be highly viscous; that a highly viscous substance may at times be considered a liquid; and therefore it is logically possible that cannabinoids in nature might appear in a form that could, in some sense, be deemed a “liquid.” (ECF No. 38 at 6–7.) Even accepting as much, the 911 Patent specifies threshold concentrations of cannabinoids and related chemicals. Pure Hemp nowhere claims that these precise concentrations, or anything close to them, occur in liquid form in nature.