DCT

2:18-cv-08636

Undoo LLC v. Cgreen Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-08636, C.D. Cal., 10/08/2018
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant cGreen has a regular and established place of business in the district, individual defendants reside or do business in the district, and alleged acts of infringement occurred in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ oral spray products, which are marketed to reduce the effects of tetrahydrocannabinol (THC), infringe a patent covering a method for achieving the same result using the compound Olivetol.
  • Technical Context: The case arises in the rapidly expanding legal cannabis market, addressing a need for products that can mitigate the potentially undesirable psychoactive effects of THC for medical and recreational users.
  • Key Procedural History: The complaint alleges that Defendants had pre-suit knowledge of the patent-in-suit. This knowledge is based on specific interactions at two industry trade shows where Plaintiff’s founder allegedly discussed the patented technology with two of the individual defendants, who were also shown a booth banner displaying the patent number.

Case Timeline

Date Event
2015-11-23 Priority Date for ’947 Patent (Provisional Application Filing)
2018-02-XX Atlantic City CHAMPS Trade Show; Defendant Ingraham allegedly obtains product sample and literature
2018-03-20 U.S. Patent No. 9,918,947 Issues
2018-07-XX Las Vegas CHAMPS Trade Show; Defendant Bermudez allegedly discusses patent with inventor
2018-10-08 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

  • Patent Identification: U.S. Patent No. 9,918,947, Composition of Olivetol and Method of Use to Reduce or Inhibit the Effects of Tetrahydrocannabinol in the Human Body, issued March 20, 2018.
  • The Invention Explained:
    • Problem Addressed: The patent addresses the negative, unpleasant, or undesired psychotropic effects of cannabis consumption, which can be a barrier for medical patients and a source of negative experiences for inexperienced or heavy users (’947 Patent, col. 3:20-29, 3:44-48). The patent notes that at the time of the invention, no known antidote existed for THC overconsumption (’947 Patent, col. 3:52-54).
    • The Patented Solution: The invention is a method for reducing the psychoactive effects of THC by orally administering a therapeutically-effective dose of the compound Olivetol (’947 Patent, Abstract). The patent posits that Olivetol acts as a competitive inhibitor of the CB1 and CB2 cannabinoid receptors in the human body, binding more aggressively than THC and thereby dampening THC’s effects without activating the receptor itself (’947 Patent, col. 4:31-40).
    • Technical Importance: The invention provides a "safety net" for cannabis users, allowing them to moderate or curtail the effects of THC after consumption, which could make cannabis use more approachable for new or hesitant users (Compl. ¶35).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 1 and dependent claims 2, 3, and 6 (Compl. ¶76).
    • Independent Claim 1: The essential elements are:
      • A method of reducing the psychoactive effects of THC in humans
      • comprising the step of orally administering a therapeutically-effective dose of Olivetol
      • before or after the consumption of THC,
      • wherein said dose is between 4 mg and 200 mg.
    • The complaint reserves the right to assert other claims (Compl. ¶76, referring to "at least" the listed claims).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the accused instrumentalities as the "True Focus" spray and/or "Come Down Easy" spray (collectively, the "Infringing Products") (Compl. ¶62).
  • Functionality and Market Context:
    • The Infringing Products are oral sprays marketed to consumers to "quickly relieve the effects of THC over-consumption" and "control your high" (Compl. ¶67). The complaint alleges that the Infringing Products contain Olivetol (Compl. ¶63). A screenshot from the "True Focus" website promotes the product with bullet points such as "Come down fast and easy," "Control your high," and "Relieves THC anxiety and paranoia" (Compl. p.11).
    • The complaint alleges that Defendants are targeting the same market as the Plaintiff, with Defendant Bermudez allegedly stating, "We're going after the same market," and distinguishing the products by form factor: "yours is a pill, ours is a spray" (Compl. ¶61).

IV. Analysis of Infringement Allegations

’947 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method of reducing the psychoactive effects of THC in humans Defendants' products are marketed as a way to "quickly relieve the effects of THC over-consumption" and are promoted to users for this purpose. ¶¶62, 67, 89 col. 4:26-29
comprising the step of orally administering a therapeutically-effective dose of Olivetol The Infringing Products are oral sprays that the complaint alleges contain Olivetol. ¶¶61, 63, 89 col. 4:30-40
before or after the consumption of THC, The marketing encourages use to "control your high," implying use after THC has already been consumed. ¶67, p.11 col. 4:45-47
wherein said dose is between 4 mg and 200 mg. The complaint alleges that use of the Infringing Products results in the administration of a dose of Olivetol that falls within the claimed range. ¶¶78, 89 col. 4:50-51
  • Identified Points of Contention:
    • Technical Questions: A central evidentiary question is whether the accused sprays actually contain Olivetol as alleged (Compl. ¶63). The complaint makes this allegation "on information and belief" without providing supporting evidence such as chemical analysis. A related question is what dosage of Olivetol, if any, is delivered by the accused sprays, and whether that amount is "therapeutically-effective" as required by the claim.
    • Scope Questions: The case may raise questions about the scope of "reducing the psychoactive effects." The parties may dispute what level of reduction is required to meet this limitation and what evidence (e.g., subjective user reports vs. objective clinical data) is needed to prove it.

V. Key Claim Terms for Construction

  • The Term: "therapeutically-effective dose"

  • Context and Importance: This term, appearing in the independent claim, is a term of degree and central to the infringement analysis. Its definition will determine what amount of Olivetol constitutes an infringing dose. Practitioners may focus on this term because the patent describes a very wide possible range (4 mg to 200 mg) and relies on subjective user reports of efficacy, creating ambiguity (’947 Patent, col. 4:50-51, Examples 1A-3I).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent specification includes numerous anecdotal examples where subjects reported a reduction in their "high" after taking a 30 mg dose, suggesting that a "therapeutically-effective" dose is one that produces a subjectively perceived benefit (’947 Patent, col. 5:23-6:49). This could support a lower threshold for what is considered "effective."
    • Evidence for a Narrower Interpretation: The patent discloses a "preferred range" between 30 mg and 60 mg, which a defendant might argue defines the scope of what the inventor considered truly "effective" (’947 Patent, col. 4:48-49). The claim itself recites a broad range, but a defendant could argue the specification narrows it to the preferred embodiment.

  • The Term: "reducing the psychoactive effects of THC"

  • Context and Importance: This term defines the purpose and outcome of the claimed method. The dispute will likely center on how much "reducing" is required and how it is measured. The patent's reliance on subjective descriptions like "lessening of frontal brain euphoria" or feeling "lots of clarity" makes the term susceptible to different interpretations (’947 Patent, col. 7:20-21, col. 12:17-19).

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patent describes a wide variety of subjective outcomes as successful results, such as "no headache, no melancholy," "heartbeat quiets," and feeling "centered" (’947 Patent, col. 5:39, col. 6:1-2, col. 11:11-12). This could support an argument that any perceived positive change in a user's state qualifies as "reducing" the effects.
    • Evidence for a Narrower Interpretation: A defendant might argue that the term requires a return to a baseline or near-baseline state, pointing to descriptions where users reported they "had returned to initial status" or were "back to normal" after using the invention (’947 Patent, col. 5:40-41, col. 7:41-42).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce infringement by providing promotional literature and online content (including websites and a Facebook page) that explicitly encourage and explain how to use the Infringing Products in a manner that practices the patented method (Compl. ¶¶86, 88). Contributory infringement is alleged on the basis that the Infringing Products are especially made for an infringing use and are not staple articles of commerce (Compl. ¶87).
  • Willful Infringement: The complaint alleges willful infringement based on Defendants' alleged pre-suit knowledge of the ’947 patent. The allegations are highly specific, citing conversations between Plaintiff's inventor and individual Defendants Ingraham and Bermudez at industry trade shows in February and July 2018 (Compl. ¶¶43-59). The complaint alleges Defendant Bermudez was shown a banner with the patent number, discussed the technology, asked if the "patent will hold up," and inquired about a "white label" licensing arrangement, all of which suggests actual knowledge of the patent and its relevance (Compl. ¶¶57-59, 98).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue will be one of factual evidence: can Plaintiff prove its allegation, made on information and belief, that Defendants' "True Focus" and "Come Down Easy" sprays contain Olivetol in a dosage that falls within the ranges specified by the asserted claims? The outcome of this evidentiary test during discovery could be dispositive.
  • A second key question will be one of intent: does the evidence support the complaint's detailed allegations of pre-suit knowledge and willful blindness? The resolution of the specific factual accounts of trade show conversations will be critical to the claim for willful infringement and potential enhanced damages.
  • Finally, the case will likely involve a battle over definitional scope: how will the court construe terms of degree such as "therapeutically-effective dose" and "reducing the psychoactive effects"? The patent's reliance on subjective, anecdotal evidence may create ambiguity that Defendants could use to argue their product's effects, if any, do not meet the limitations as properly construed.