DCT

5:21-cv-02002

Original Resinator LLC v. TTT Innovations LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:21-cv-02002, C.D. Cal., 02/17/2022
  • Venue Allegations: Plaintiff alleges venue is proper because Defendant is a California company with its principal place of business within the district and has committed the alleged acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s plant matter trimming equipment and associated CO2 adapter kits infringe patents related to methods and apparatus for separating plant materials using a rotating chamber and cryogenic agents.
  • Technical Context: The technology relates to the automated separation of valuable resinous trichomes from plant matter, such as cannabis or hemp, a critical process in the production of botanical extracts and concentrates.
  • Key Procedural History: The complaint alleges that Plaintiff sent a letter to Defendant on June 21, 2021, providing notice of the asserted patents and the alleged infringement. The '938 Patent is identified as a continuation-in-part of the application that issued as the '223 Patent.

Case Timeline

Date Event
2016-07-06 Earliest Priority Date for '223 and '938 Patents
2017-12-05 '938 Patent Application Filed
2019-12-17 '223 Patent Issued
2019-12-24 '938 Patent Issued
2021-06-21 Plaintiff sent letter to Defendant regarding alleged infringement
2022-02-17 First Amended Complaint Filed

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

U.S. Patent No. 10,507,223 - “Horizontal Axis Rotary Separation Apparatus and Process”

The Invention Explained

  • Problem Addressed: The patent describes the difficulty in separating valuable resin-bearing trichomes from other plant matter. Conventional physical separation methods like sieving are often problematic because they generate plant fragments of a comparable size to the desired trichomes, making effective separation difficult, while solvent-based extractions can be expensive and introduce impurities (Compl. ¶7; ’223 Patent, col. 1:12-61).
  • The Patented Solution: The invention is a method for processing plant matter using a horizontal axis rotary separator. Plant material is tumbled within a rotating mesh container, and a liquid freezing agent, such as liquid carbon dioxide, is introduced. This rapid cooling is intended to freeze the residual moisture in less desirable plant parts (e.g., leaves and bracts), making them brittle. Continued tumbling causes these brittle parts to fragment into small pieces that pass through the mesh, while the more valuable and robust portions, such as flowers and buds, are retained. (’223 Patent, Abstract; col. 11:21-44).
  • Technical Importance: This process enables a rapid, solvent-less method for "trimming" plant matter, which can improve the efficiency of separation and help preserve the chemical integrity of the desired botanical compounds (’223 Patent, col. 10:11-15).

Key Claims at a Glance

  • The complaint asserts infringement of the '223 Patent generally, without specifying claims. The following independent claims are representative of the patented method:
  • Independent Claim 1:
    • Providing a first horizontal axis rotary separation apparatus having a chamber, rotating filter support frame, and filter member.
    • Admitting plant matter to the enclosed space of the apparatus.
    • Turning the rotating filter support frame.
    • Admitting at least one of water, dry ice, liquid carbon dioxide, and liquid nitrogen to the enclosed space.
    • Collecting a purified plant matter effluent from an outlet.
  • Independent Claim 8:
    • Providing a mixture of plant matter including flowers, buds, leaves, and bracts.
    • Placing the mixture in a closed space bounded by a mesh member.
    • Tumbling the mixture within the closed space.
    • Introducing a liquid freezing agent into the closed space.
    • Wherein residual moisture in the leaves and bracts freezes, causing fragmentation so that the fragmented matter traverses the mesh while a residual portion of the flowers is retained.

U.S. Patent No. 10,512,938 - “Rotary Separation Apparatus and Process”

The Invention Explained

  • Problem Addressed: As with the '223 Patent, the invention addresses the challenges of separating resinous materials from plants. It specifically addresses a problem that can arise when introducing a high-pressure freezing agent: the force of the jet can physically damage the desirable plant matter (e.g., flowers and buds), compromising the quality of the separation (’938 Patent, col. 17:21-34).
  • The Patented Solution: The patent discloses a rotary separation apparatus that includes a "fluid diverter means," such as a cap, positioned at the inlet for the freezing agent. This diverter is designed to intercept the direct, high-velocity jet of liquid or gas and redirect it, causing a broader, less forceful distribution within the processing chamber. This prevents the jet from directly striking and damaging the plant material while still achieving the desired rapid cooling. (’938 Patent, Abstract; Fig. 13A-C).
  • Technical Importance: The use of a fluid diverter allows for the benefits of rapid cryogenic processing while mitigating the risk of mechanical damage to the delicate, high-value portions of the plant material, thereby improving the quality of the separated product (’938 Patent, col. 18:35-42).

Key Claims at a Glance

  • The complaint asserts infringement of the '938 Patent generally. Independent claim 1 is representative of the patented apparatus:
  • Independent Claim 1:
    • A chamber for holding materials.
    • A filter container adapted to rotate within the chamber.
    • A container holding an inert freezing agent in fluid communication with the chamber via an inlet.
    • The inlet is configured to direct the agent as a jet that "impinges orthogonally on an inner wall of a fluid diverter cap."
    • The fluid diverter cap has openings on its sides to direct the agent to "flow outward laterally."

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant TTT’s "Liquid CO2 adapter kits" and "Toms Tumbler Liquid CO2 Infuser Kit," as well as the tumblers and industrial systems (e.g., "Python" series trimmers) with which the kits are designed to be used (Compl. ¶¶16, 28, 35). A screenshot provided in the complaint shows the "LIQUID CO2 ADAPTOR KIT" available for sale on Defendant's website (Compl. p. 4).

Functionality and Market Context

The complaint alleges that the accused kits provide the necessary components, including a "custom infusion axle" and a "low temp hose," to introduce liquid CO2 from a tank into Defendant’s plant trimming tumblers (Compl. Ex. E, p. 77). Defendant’s marketing materials allegedly state that the kit "gives you the power to speed up your bud trimming or kief extracting by flash freezing your flower" and "accelerates trimming exponentially" (Compl. p. 4). The complaint also points to Defendant’s marketing of industrial systems such as the "PYTHON 400 INDUSTRIAL BUD TRIMMER," which are allegedly used with the infringing kits (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint does not contain or reference a claim chart exhibit. The infringement theory is based on allegations that Defendant’s CO2 adapter kits, when used as instructed with its tumblers, practice the patented methods, and that the combination of the kit and tumbler constitutes the patented apparatus.

U.S. Patent No. 10,507,223 Infringement Allegations

Claim Element (from Independent Claim 8) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a mixture of plant matter that includes flowers and flower buds and at least one of leaves, bracts and bracteoles... Defendant's tumblers are agricultural machines designed to process plant matter, including flowers, buds, and leaves (Compl. ¶35). ¶35 col. 17:6-10
placing the mixture in a closed spaced bounded on at least one side by a mesh member... Defendant's tumblers are rotating drums constructed with mesh screens, into which users place plant matter for processing (Compl. ¶28, Ex. F). ¶28 col. 17:10-14
tumbling the mixture within the closed space, The tumblers operate by rotating the drum to tumble the plant matter inside (Compl. ¶28, Ex. F). ¶28 col. 17:15-16
introducing a liquid freezing agent into the closed space, The accused "Liquid CO2 Adaptor Kit" is sold for the express purpose of introducing liquid CO2 into the tumbler during operation (Compl. ¶16, p. 4). ¶16 col. 17:17-18
wherein residual moisture in the one or more of the leaves, bracts and bracteoles freezes causing the fragmentation thereof... Defendant's marketing allegedly promotes the kit for "flash freezing your flower" to "speed up your bud trimming," which is the functional result of the patented cryogenic fragmentation process (Compl. p. 4). ¶16 col. 17:19-24

U.S. Patent No. 10,512,938 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a chamber having at least one or more opening for adding and removing materials, Defendant's tumblers provide the external chamber for processing (Compl. ¶35, Ex. F). ¶35 col. 21:8-12
a filter container adapted to rotate about an axis within the chamber, Defendant's tumblers include a rotating mesh drum that serves as the filter container (Compl. ¶35, Ex. F). ¶35 col. 21:49-51
a container holding an inert freezing agent in fluid communication with the chamber via an inlet... The accused kit provides the "custom infusion axle" (the inlet) and hose to connect to a CO2 tank (the container holding the agent) (Compl. Ex. E, p. 77). ¶35 col. 22:5-8
wherein the inlet is configured to direct the inert freezing agent into the chamber as a jet that impinges orthogonally on an inner wall of a fluid diverter cap... Defendant's kit is marketed as including a "Patented liquid CO2 spin flow adaptor for optimal CO2 infusion," which Plaintiff alleges functions as the claimed fluid diverter cap (Compl. Ex. E, p. 77). ¶35 col. 21:52-57
  • Identified Points of Contention:
    • Scope Questions: A central question for the '938 patent will be whether Defendant’s "spin flow adaptor" meets the specific structural and functional limitations of the claimed "fluid diverter cap," particularly the requirements for a jet that "impinges orthogonally" and causes fluid to "flow outward laterally."
    • Technical Questions: For the '223 patent, a question for the court may be whether the process enabled by Defendant's kit results in the selective fragmentation described in the patent (i.e., fragmentation of leaves and bracts while retaining flowers), or if it performs a more general freezing function. The complaint does not provide sufficient detail for analysis of the precise technical operation of the accused system.

V. Key Claim Terms for Construction

  • The Term: "liquid freezing agent" (’223 Patent)

  • Context and Importance: This term is fundamental to the claimed method. The infringement analysis will depend on whether the liquid CO2 introduced by the accused kit performs the specific function claimed in the patent. Practitioners may focus on this term because the patent links its introduction to the functional result of causing "fragmentation thereof" by freezing "residual moisture" in specific plant parts.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification lists "liquid carbon dioxide and liquid nitrogen" as examples, as well as other compressed gases such as "argon, helium, neon and the like," suggesting the term covers a class of cryogenic substances (’223 Patent, col. 11:25-26, col. 12:66-67).
    • Evidence for a Narrower Interpretation: The claims and specification repeatedly tie the "liquid freezing agent" to the specific outcome of freezing moisture to cause selective fragmentation of leaves and bracts while leaving flowers intact (’223 Patent, claim 8). A party could argue the term is functionally limited to agents used in a manner that achieves this differential brittleness.

  • The Term: "fluid diverter cap" (’938 Patent)

  • Context and Importance: This term appears to be the primary point of novelty in the asserted apparatus claim of the '938 Patent. The infringement case for this patent may depend entirely on whether Defendant’s "spin flow adaptor" is construed to fall within the scope of this term.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The Summary of the Invention refers more broadly to a "fluid diverter means disposed in front of an inlet," which could support a construction not strictly limited to a "cap" structure (’938 Patent, col. 2:20-22).
    • Evidence for a Narrower Interpretation: Independent claim 1 recites highly specific functional requirements for the "fluid diverter cap," namely that a jet "impinges orthogonally on an inner wall" and that the cap has openings causing the agent to "flow outward laterally." The specification’s figures show specific conical and curved structures that a party could argue limit the scope of the term (’938 Patent, claim 1; Figs. 14A-14D).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on allegations that Defendant sells the CO2 adapter kits with instructions and advertisements that encourage customers to use them with TTT tumblers in a way that directly infringes the '223 and '938 patents (Compl. ¶¶28, 35). The complaint points to Defendant’s marketing materials as evidence of intent to induce (Compl. p. 4).
  • Willful Infringement: The complaint alleges willful infringement based on Defendant's alleged continuation of infringing activities after receiving Plaintiff’s notice letter dated June 21, 2021 (Compl. ¶¶13, 15, 30, 37). This letter allegedly provided Defendant with pre-suit knowledge of the patents and its alleged infringement.

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

  • A core issue will be one of technical and definitional scope: does Defendant’s "spin flow adaptor" possess the specific structure and perform the "orthogonal impingement" and "lateral outflow" functions required by the "fluid diverter cap" limitation in the '938 patent, or is there a fundamental mismatch in its technical operation?
  • A key evidentiary question will be one of induced infringement: does the evidence show that Defendant’s marketing and instructions for its "Liquid CO2 Adaptor Kit" not only enable but specifically encourage and instruct customers to perform the complete, multi-step cryogenic separation method claimed in the '223 patent?