DCT
2:22-cv-07464
MPI LLC v. Sorting Robotics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: MPI LLC (Nevada)
- Defendant: Sorting Robotics, Inc. (Delaware)
- Plaintiff’s Counsel: Aronberg Goldgehn Davis and Garmisa; Loza & Loza, LLP
- Case Identification: 2:22-cv-07464, C.D. Cal., 11/16/2022
- Venue Allegations: Venue is alleged to be proper as Defendant resides in the judicial district, maintains its principal place of business there, and has committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s automated cannabis pre-roll infusion machine infringes a patent directed to a fluid injecting apparatus, and that the infused pre-rolls produced by the machine infringe a patent directed to a specific folded package structure.
- Technical Context: The technology relates to the automated manufacturing and packaging of pre-rolled cannabis and hemp cones, a segment of the consumer market focused on production efficiency and product consistency.
- Key Procedural History: The complaint alleges Plaintiff provided Defendant with notice of the '596 Patent on October 19, 2021, and of the '221 Patent on September 23, 2022, prior to filing the amended complaint.
Case Timeline
| Date | Event |
|---|---|
| 2018-04-26 | Earliest Priority Date for '596 and '221 Patents |
| 2021-08-02 | Alleged date of YouTube video upload by Custom Cones showing the accused Jiko Machine |
| 2021-09-28 | U.S. Patent No. 11,130,596 Issues |
| 2021-10-19 | Plaintiff sends notice letter to Defendant regarding the '596 Patent |
| 2022-08-16 | U.S. Patent No. 11,414,221 Issues |
| 2022-09-23 | Plaintiff sends notice letter to Defendant regarding the '221 Patent |
| 2022-11-16 | First Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,130,596 - Folded Package, Issued Sep. 28, 2021
The Invention Explained
- Problem Addressed: The patent’s background describes the problems with manually filling and closing paper cones with loose particulate matter, such as crumbled dried leaves. These methods result in non-uniform packing, inconsistent product weight, improper burn rates, and potential extinguishing of the product during use ('596 Patent, col. 1:13-60).
- The Patented Solution: The patent discloses a finished product—a folded package—with a specific closure at its distal (lighting) end. Instead of being simply twisted, a portion of the cone’s end is crimped and folded inward to cover the filling, forming a “circumferential lip of paper” held in place by the paper’s deformation ('596 Patent, col. 24:30-51). This structure is intended to securely contain the filling while, in some embodiments, leaving a central "access hole" that can improve airflow and facilitate lighting ('596 Patent, col. 18:45-50; Fig. 6P).
- Technical Importance: This specific fold provides a consistent, automated solution to sealing pre-rolled cones, aiming to improve the product's burning characteristics and user experience compared to inconsistently hand-sealed products ('596 Patent, col. 18:27-44).
Key Claims at a Glance
- The complaint asserts at least independent claim 9 (Compl. ¶38).
- The essential elements of independent claim 9 are:
- A hollow paper cone with a proximal end, a distal end, and a filling within.
- The distal end comprises approximately a quarter of the cone's length and terminates at a rim.
- A portion of the distal end is crimped in on itself and folded into the interior.
- The rim is held by "plastic deformation of the paper" within the cone's interior.
- The folded portion "substantially covers the filling" and forms a "circumferential lip of paper" at the distal end.
- The complaint also alleges features that map to dependent claims 10 and 11, such as an access hole and a filling comprising plant matter and a core of fluid (Compl. ¶¶37(f), 37(g)).
U.S. Patent No. 11,414,221 - Packaging Apparatus, System, and Method for Forming Filled Cones, Issued Aug. 16, 2022
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the '596 Patent, this patent addresses the same general challenges of automating cone packaging. It specifically focuses on the apparatus used to reliably inject a fluid, such as concentrated oil, into a cone already packed with loose particulate ('221 Patent, col. 1:13-24, col. 2:65-col. 3:2).
- The Patented Solution: The invention is a fluid injection apparatus comprising a reservoir for the fluid, a needle with an outlet, a "die" with cavities to hold the cones, a fluid pump, and an actuator to move the needle and die relative to one another for injection ('221 Patent, Abstract; Claim 1). The system is designed to automate the creation of "infused" pre-rolls by precisely depositing a core of fluid into the packed material ('221 Patent, Figs. 7A-7D).
- Technical Importance: Automating the infusion process allows for consistent dosing and placement of high-value fluid concentrates within pre-rolls, a critical factor for quality control and commercial production in the cannabis industry ('221 Patent, col. 21:36-53).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶122).
- The essential elements of independent claim 1 are:
- A reservoir.
- A needle with a length and a needle outlet.
- A fluid pathway connecting the reservoir to the needle.
- A die containing at least one cavity with a center axis.
- An actuator.
- A fluid pump.
- The needle is positioned such that its length is coaxial with or parallel to the cavity's center axis, and the actuator moves the needle and/or die so the needle enters and exits the cavity.
- The fluid pump is adapted to pump fluid through the needle outlet when it is within the cavity.
- The complaint reserves the right to assert other claims.
III. The Accused Instrumentality
Product Identification
- The complaint accuses two instrumentalities: (1) Defendant's "Automated Infused Pre-Roll Machine," which it markets as the "Jiko Machine" (Compl. ¶¶5, 12); and (2) the infused pre-rolled cones ("folded packages") that are manufactured by the Jiko Machine (Compl. ¶¶13, 37).
Functionality and Market Context
- The Jiko Machine is alleged to be an automated system that infuses pre-rolled cones with a concentrate material (Compl. ¶108). The complaint includes a diagram from a marketing website showing the machine's components, including a "Warmed Concentrate Reservoir," a "Specially Designed Injection Needle," and a "Pre-Roll Cartridge" for holding the cones (Compl. ¶30).
- The machine is marketed as being able to infuse "up to 800 Pre-Rolls Per Hour" by injecting "a rod of oil perfectly in the middle of the pre-roll" (Compl. ¶¶33, 35). The complaint includes an image from a marketing video showing the infusion of a "core of material" inside a finished cone, which is then broken apart to display the result (Compl. ¶¶120-121).
IV. Analysis of Infringement Allegations
'596 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a hollow paper cone having an exterior, an interior, a length, a width, and two ends opposite each other joined by a middle section, where one end is a proximal end, and the other end is a distal end and where the length is greater than the width; | The pre-rolls are described as being a hollow paper cone with these characteristics. | ¶37(a) | col. 2:16-25 |
| a filling within the cone; | The pre-rolls are alleged to have a filling. | ¶37(b) | col. 2:14-15 |
| wherein the distal end comprises approximately a quarter of the length of the cone; | The distal end of the accused pre-rolls allegedly comprises approximately a quarter of the cone's length. | ¶37(c) | col. 24:40-41 |
| wherein the distal end of the cone terminates at a rim; | The accused pre-rolls allegedly have a distal end that terminates at a rim. | ¶37(d) | col. 24:42-43 |
| and wherein a portion of the distal end is crimped in on itself and folded into the interior of the cone such that the rim of the distal end is held by plastic deformation of the paper within the interior of the cone such that the folded portion of the distal end substantially covers the filling within the cone and forms a circumferential lip of paper at the distal end. | The distal end of the accused pre-rolls is allegedly crimped and folded inward, with the rim held by "plastic deformation," to substantially cover the filling and form a "circumferential lip of paper." A still image from a video in the complaint depicts pre-rolls with a rim being used in the Jiko machine (Compl. ¶58). | ¶37(e) | col. 17:1-67 |
- Identified Points of Contention:
- Structural Questions: A primary factual question will be whether the cones produced by the Jiko Machine possess the specific structure claimed. This includes whether the closure creates a "circumferential lip of paper" and whether the fold is held by "plastic deformation of the paper," as opposed to simple creasing. Evidence will likely require physical examination and expert testimony on the properties of the paper.
- Scope Questions: The interpretation of "substantially covers the filling" may be disputed, particularly if the accused products have a central hole, as alleged in paragraph 37(f).
'221 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a reservoir; | The Jiko Machine allegedly includes a "thermally controlled and pressurized reservoir that may be filled with concentrate material." | ¶108 | col. 19:35-40 |
| a needle having a length and a needle outlet; | The Jiko Machine is alleged to include a "needle assembly that includes a hollowed canula with a single side port substantially near its tip." | ¶109 | col. 15:31-40 |
| a fluid pathway connecting the reservoir to the needle; | The reservoir is allegedly "connected via a heated tube to a dosing chamber on a baseplate," which is in turn connected to the needle assembly. | ¶110, ¶111 | col. 15:36-40 |
| a die containing at least one cavity having a center axis; | The Jiko Machine is alleged to have a "revolver" which is a "cylinder or carousel rotatable about an axis and is shaped to include a plurality of cavities or hollowed cylinders into which cigarettes or other containers are placed." | ¶113 | col. 7:21-39 |
| an actuator; a fluid pump; | The Jiko machine allegedly includes a "first motor assembly" (actuator) that moves the revolver, and a "pump assembly" (fluid pump) configured to exert pressure on the concentrate material. | ¶112, ¶114 | col. 22:1-22 |
| wherein the needle is positioned above the at least one cavity... and wherein the actuator is adapted to move one or more of the die and the needle relative to one another such that the needle moves into and out of the at least one cavity; | The actuator allegedly "moves the revolver toward the canula of the needle assembly such that the canula penetrates a cigarette" and the system allows for rotation between stations. | ¶114, ¶116 | col. 16:59-67 |
| wherein the fluid pump is adapted to pump fluid through the needle outlet when the needle outlet is within the at least one cavity. | When the cannula is inserted, a valve opens and the "pump assembly exerts a dosing pressure to the concentrate material," injecting it into the cigarette. | ¶115 | col. 22:12-22 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether the accused "revolver" or "Pre-Roll Cartridge" (Compl. ¶30) constitutes a "die" as that term is used in the patent. The defense may argue that the patent's preferred embodiments show a die with active clamping segments (e.g., '221 Patent, Fig. 3F), whereas the accused feature is a passive rotating holder.
- Technical Questions: The complaint alleges Sorting Robotics' website includes a disclaimer that the machine works on pre-rolls "except those with a lip and or rim," but then alleges that videos show the machine processing pre-rolls with a rim (Compl. ¶57). This raises factual questions about the machine's intended operation and capabilities, which is relevant to infringement.
V. Key Claim Terms for Construction
For the '596 Patent:
- The Term: "circumferential lip of paper"
- Context and Importance: This term defines the novel structure of the package's closure, distinguishing it from a simple twist or fold. The existence and nature of this "lip" on the accused products will be a critical factual and legal point for determining infringement of claim 9.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not provide a precise dimensional definition of the lip, potentially allowing for some variation in its size and shape.
- Evidence for a Narrower Interpretation: The specification describes the lip as being formed when "a portion of the paper cone protrudes beyond the level of the leaves" during the folding process ('596 Patent, col. 18:1-3). Figure 6P (element 1123) depicts this as a distinct, outward-projecting paper ring, which could support an argument that a mere folded edge without such a protrusion does not meet the limitation.
For the '221 Patent:
- The Term: "die"
- Context and Importance: The claim requires a "die containing at least one cavity." The infringement case hinges on whether the accused Jiko Machine's "revolver" or "Pre-Roll Cartridge" falls within the legal construction of this term. Practitioners may focus on this term because there appears to be a potential mismatch between the accused component and the patent's detailed embodiments.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the "cone conveyor" includes a "die-plate 301" and "dies 310, 320, 330, 340" ('221 Patent, col. 9:36-39), suggesting the term can refer to the cone-holding structures on a rotating carousel. The term's plain and ordinary meaning may be argued to simply be a device for holding a workpiece.
- Evidence for a Narrower Interpretation: The patent's detailed description of an exemplary die in Figures 3F-3G shows a device made of "two clamping segments 311 and 312" that are moved by an actuator to "open and close the clamping segments" ('221 Patent, col. 10:5-12). A defendant could argue this disclosure limits the term "die" to a structure with active clamping features, not a passive rotating wheel with fixed cavities.
VI. Other Allegations
- Indirect Infringement: The complaint asserts claims for both contributory and induced infringement of the '596 Patent against Sorting Robotics. The allegations are based on the sale of the Jiko Machine, which is alleged to be especially adapted for making the infringing folded packages with no substantial non-infringing use (Compl. ¶¶78-79). Inducement is alleged based on Defendant providing instructions, marketing materials, and videos that encourage and demonstrate the use of the Jiko Machine to produce the allegedly infringing packages (Compl. ¶88, ¶91).
- Willful Infringement: Willfulness is alleged for both patents. The claims are based on Defendant's alleged continued infringement after receiving actual notice via letters from Plaintiff’s counsel on October 19, 2021 (for the '596 Patent) and September 23, 2022 (for the '221 Patent) (Compl. ¶¶68, 77, 123).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "die," which is described in the '221 Patent's detailed embodiments as an active clamping mechanism, be construed to cover the accused Jiko Machine's rotating, multi-cavity "Pre-Roll Cartridge"? The outcome of this claim construction dispute will be pivotal for the infringement analysis of the apparatus patent.
- A key evidentiary question will be one of structural identity: do the pre-rolled cones produced by the Jiko Machine physically embody the specific structure of claim 9 of the '596 Patent, particularly the "circumferential lip of paper" held by "plastic deformation"? This will likely require expert analysis of the accused products.
- A central theme of the case will be knowledge and intent: given the allegations of pre-suit notice for both patents, a critical question will be whether Defendant’s continued sale and marketing of the Jiko Machine after being notified of the patents constitutes willful infringement, which could expose the defendant to enhanced damages.