DCT

1:26-cv-20186

Natural Extraction Systems LLC v. Trulieve Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:26-cv-20186, S.D. Fla., 01/12/2026
  • Venue Allegations: Plaintiff alleges venue is proper as to Defendant Trulieve Inc. because it maintains numerous physical and established places of business in the Southern District of Florida and has allegedly committed acts of infringement within the district. Venue over Defendant Trulieve Cannabis Corp. is alleged on the basis that it maintains a place of business through its subsidiary and alter ego, Trulieve Inc., and directed infringing acts in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ processes for producing cannabis distillate, and the resulting products, infringe four patents related to methods for chemically modifying cannabinoids through gas-phase decarboxylation.
  • Technical Context: The technology involves converting cannabinoid acids (e.g., THCA) into their active forms (e.g., THC) by vaporizing and then condensing them, a process central to creating purified concentrates for the legal cannabis market.
  • Key Procedural History: The complaint notes that each of the four asserted patents claims priority to the same U.S. provisional patent application filed in 2018, suggesting a common technical disclosure underlies the entire patent portfolio at issue.

Case Timeline

Date Event
2018-08-10 Earliest Priority Date for all Asserted Patents
2020-06-02 U.S. Patent No. 10,669,248 Issued
2023-05-09 U.S. Patent No. 11,643,402 Issued
2025-05-13 U.S. Patent No. 12,297,181 Issued
2025-09-23 U.S. Patent No. 12,420,214 Issued
2026-01-12 Complaint Filed

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

U.S. Patent No. 10,669,248 - *“Methods to Chemically Modify Cannabinoids”* (Issued June 2, 2020)

The Invention Explained

  • Problem Addressed: The patent's background section describes that traditional methods for decarboxylating cannabinoids (e.g., converting inactive CBDA to active CBD) require prolonged heating, which degrades the product and creates undesirable byproducts such as cannabinol (CBN) (ʼ248 Patent, col. 1:20-41).
  • The Patented Solution: The invention proposes a method to rapidly convert cannabinoid acids into their active forms by performing the decarboxylation reaction in the gas phase. This is achieved by vaporizing the cannabinoid composition and then immediately contacting the vapor with a heat sink to condense the final product. This process is described as lowering the reaction's activation energy, allowing for a more efficient conversion with fewer side products (ʼ248 Patent, col. 2:18-24, col. 5:8-11). The specification illustrates a theoretical self-catalyzed reaction mechanism that facilitates this gas-phase conversion (ʼ248 Patent, Fig. 1; col. 2:34-39).
  • Technical Importance: This approach professes to allow for simultaneous purification (via distillation) and decarboxylation, which could increase the efficiency and quality of cannabinoid distillate production compared to multi-step prior art processes (ʼ248 Patent, col. 6:1-3).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 2, 8, and 12 (Compl. ¶¶108-112).
  • Claim 1 (representative method claim):
    • Providing a composition comprising a native cannabinoid molecule having a carboxyl group in a liquid or solid phase;
    • Contacting the composition with sufficient energy to convert the native molecule into a carbon dioxide molecule and a modified cannabinoid molecule in a gas phase;
    • Contacting the modified molecule with a heat sink to condense it into a liquid distillate, wherein at least 95% of the native molecule is converted per mole; and
    • Collecting the liquid distillate.
  • Claim 8 (representative apparatus-linked method claim):
    • Providing a composition comprising a native cannabinoid molecule having a carboxyl group;
    • Coating a heated surface with the composition at a surface-area-to-volume ratio greater than 500 per meter;
    • Contacting the composition with sufficient energy to convert it into gas-phase products;
    • Contacting the modified molecule with a heat sink to condense it; and
    • Collecting the liquid distillate.

U.S. Patent No. 11,643,402 - *“Gas Phase Methods to Decarboxylate Cannabinoids”* (Issued May 9, 2023)

The Invention Explained

  • Problem Addressed: The patent addresses the need for improved methods of decarboxylation that avoid the undesirable chemical modifications caused by the prolonged heating typical of conventional processes (ʼ402 Patent, col. 1:21-24).
  • The Patented Solution: Like the ʼ248 Patent, this patent discloses methods for gas-phase decarboxylation. The invention emphasizes providing the initial cannabinoid composition with a high surface-area-to-volume ratio (specifically, greater than 1000 per meter) to facilitate rapid and efficient energy transfer for vaporization and the chemical conversion reaction (ʼ402 Patent, col. 2:30-34, col. 2:49-55).
  • Technical Importance: By quantifying a specific surface-area-to-volume ratio, the invention provides a discrete technical parameter for achieving efficient gas-phase decarboxylation at an industrial scale.

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 8, 14, 15, and 18 (Compl. ¶¶155-160).
  • Claim 1:
    • A method to chemically-modify a cannabinoid molecule, comprising:
    • Providing a composition comprising cannabinoids wherein the composition has a surface-area-to-volume ratio greater than 1000 per meter, and the cannabinoids include a native cannabinoid molecule with a carboxyl group;
    • Contacting the composition with sufficient energy to convert the native molecule into a carbon dioxide molecule and a modified cannabinoid molecule in a gas phase;
    • Contacting the modified molecule with a heat sink to condense it into a liquid distillate; and
    • Collecting the liquid distillate.

U.S. Patent No. 12,297,181 - *“Methods to Chemically Modify Cannabinoids”* (Issued May 13, 2025)

  • Technology Synopsis: The ’181 Patent discloses methods for chemically modifying cannabinoids from an extracted oil of the genus Cannabis. The claims focus on the step of coating a heated surface with the oil at a specified surface-area-to-volume ratio (>500 per meter) and detail specific purity outcomes for the resulting distillate, including limits on the conversion of native cannabinoids into cannabinol (CBN) and required molar ratios of the product to byproducts (Compl. ¶¶190, 191, 194).
  • Asserted Claims: Independent claims 1, 2, and 9 (Compl. ¶¶190, 191, 194).
  • Accused Features: The complaint accuses Defendants' wiped-film distillation systems, which are alleged to operate as thin-film evaporators that process extracted cannabis oil by coating a heated surface (Compl. ¶¶198-199, 204).

U.S. Patent No. 12,420,214 - *“Methods to Produce Products Comprising Cannabinoids”* (Issued September 23, 2025)

  • Technology Synopsis: The ’214 Patent is directed to methods for producing cannabinoid products using a thin-film evaporator or short-path distillation apparatus. The claims recite specific characteristics of the input composition (e.g., extracted oil from Cannabis, water content, THCA percentage) and process conditions (e.g., heating by conduction, applying a vacuum) to produce a final distillate, which is then used to fill a vaporizer cartridge (Compl. ¶¶207, 209, 214, 216).
  • Asserted Claims: Independent claims 1 and 18 (Compl. ¶¶207, 214).
  • Accused Features: The infringement allegations target Defendants' use of wiped-film distillation systems (identified as thin-film evaporators) to produce cannabis distillate, as well as the subsequent manufacture of Trulieve-branded vape carts filled with that distillate (Compl. ¶¶218-219, 233).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Defendants' processes for making cannabis distillate and the resulting commercial products. The complaint specifically identifies the use of "wiped-film distillation systems" and names resulting products such as "TruClear Distillate Syringe 1G" and various Trulieve-branded vape carts (Compl. ¶¶124, 131, 218).
  • Functionality and Market Context: The complaint alleges that Defendants employ "wiped-film distillation," which it characterizes as a type of short-path distillation, to refine cannabis extracts into high-purity distillates (Compl. ¶¶128-130). This process is alleged to involve spreading a thin film of liquid cannabis extract across a heated cylindrical surface under vacuum, which simultaneously vaporizes and decarboxylates the cannabinoids before they are condensed on a "cold trap" and collected (Compl. ¶¶139, 142, 149, 226). The complaint alleges that Defendants are the "largest cannabis retailer in the United States," generating over a billion dollars in annual revenue, with the accused distillates forming the basis for a "wide variety of finished products" (Compl. ¶¶11, 13, 128, 52). As evidence of product sales within the district, the complaint references a screenshot from the Trulieve.com website, submitted as a trademark specimen, depicting a product for sale at a dispensary in Miami (Compl. ¶59).

IV. Analysis of Infringement Allegations

10,669,248 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a composition comprising cannabinoids, in which the cannabinoids comprise a native cannabinoid molecule...and the native cannabinoid molecule is in a liquid phase or a solid phase; Defendants provide liquid cannabis extracts containing native cannabinoids, such as THCA and CBDA, as the input for their wiped-film distillation systems. ¶¶114, 135, 137 col. 7:1-6
contacting the composition with sufficient energy to convert the native cannabinoid molecule into... a modified cannabinoid molecule in a gas phase; Defendants' processes allegedly heat the liquid cannabis extract to an elevated temperature, causing the native cannabinoids to evaporate into a gas phase while also being chemically converted (decarboxylated) into THC and CBD. ¶¶139-141 col. 7:7-12
contacting the modified cannabinoid molecule with a heat sink to condense the modified cannabinoid molecule into a condensed cannabinoid molecule in a liquid distillate, in which at least 95% of the native cannabinoid molecule is converted...per mole; The wiped-film distillation systems allegedly use an internal "cold trap," which the complaint identifies as a "heat sink," to condense the gas-phase THC and CBD. The process is alleged to achieve at least 95% conversion of the starting cannabinoids. ¶¶142, 143, 147 col. 7:13-19
collecting the liquid distillate. Defendants allegedly collect the condensed liquid distillate from their systems to manufacture and sell consumer products. ¶144 col. 7:20

11,643,402 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a composition comprising cannabinoids wherein the composition has a surface-area-to-volume ratio that is greater than 1000 per meter... Defendants' wiped-film distillation systems operate by spreading the liquid cannabis composition into a thin film with an alleged thickness of 100 to 500 microns across a heated cylindrical surface. This thin film is alleged to create a surface-area-to-volume ratio greater than 1000 per meter. ¶¶162, 164, 165 col. 2:50-55
contacting the composition with sufficient energy to convert the native cannabinoid molecule into...a modified cannabinoid molecule in a gas phase; Energy is transferred from the heated surface of the wiped-film system to the thin film of liquid via conductive heating, which allegedly provides sufficient energy to decarboxylate and vaporize the native cannabinoids. ¶¶166-168 col. 2:56-60
contacting the modified cannabinoid molecule with a heat sink to condense the modified cannabinoid molecule into a condensed cannabinoid molecule in a liquid distillate; The systems are alleged to employ a "cold trap" that functions as a heat sink to condense the gas-phase modified cannabinoids (e.g., THC and CBD) back into a liquid state. ¶184 col. 2:61-64
collecting the liquid distillate. Defendants collect the resulting liquid distillate from the wiped-film distillation systems. ¶188 (referencing ¶144) col. 2:65
  • Identified Points of Contention:
    • Scope Questions: A central dispute may arise over whether the term "heat sink" as used in the patents, which describes embodiments like aerosol sprays, can be construed to read on the "cold trap" component of a conventional wiped-film distillation system, as the complaint alleges (Compl. ¶143).
    • Technical Questions: The infringement case for the ’402 Patent will depend on factual evidence and expert analysis to determine if the thin film created in Defendants' distillation process actually achieves a "surface-area-to-volume ratio that is greater than 1000 per meter" (Compl. ¶165). Similarly, the allegation of "at least 95%" conversion efficiency for the ’248 Patent is a technical assertion that will require evidentiary support beyond the inference that the final products lack detectable starting material (Compl. ¶147).

V. Key Claim Terms for Construction

  • The Term: "surface-area-to-volume ratio"

  • Context and Importance: This term appears in asserted claims of multiple patents and is a key technical limitation used to define the efficiency of the claimed process. The infringement allegation for the ’402 Patent, for instance, is predicated on the calculation that Defendants' wiped-film process creates a composition with a ratio "greater than 1000 per meter" (Compl. ¶165). Practitioners may focus on this term because its definition and the methodology for its calculation in a dynamic liquid film process will be central to the infringement analysis.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification suggests the ratio is important for its function of ensuring efficient energy transfer to favor vaporization and decarboxylation (ʼ248 Patent, col. 6:11-17). This functional description may support a broader application of the term to any process configuration that achieves this result.
    • Evidence for a Narrower Interpretation: The specification provides an example of achieving a high ratio by grinding and sifting solid plant material to a specific particulate size (ʼ248 Patent, col. 17:1-4). A defendant could argue that the term, as defined by the patent's own examples, is properly understood in the context of solid particles and may not apply, or may be indefinite, when applied to a dynamic liquid film on a heated surface.

  • The Term: "heat sink"

  • Context and Importance: The complaint alleges that the "cold trap" in Defendants' apparatus is a "heat sink" (Compl. ¶143). The construction of this term will determine whether a standard component of a short-path distillation system falls within the literal scope of the claims.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The patents describe the function of the "heat sink" as condensing the modified cannabinoid molecule from a gas into a liquid distillate (ʼ248 Patent, col. 7:13-16). This functional language could support construing the term to cover any component that performs this condensation function, including a cold trap.
    • Evidence for a Narrower Interpretation: The specification discloses specific embodiments of a "heat sink" that include colloids, aerosols, foams, or sprays of volatile liquids like ethanol (ʼ248 Patent, col. 13:31-42). A defendant may argue that the term should be limited to these disclosed examples and does not extend to the cooled solid surface of a conventional condenser found in a wiped-film distillation apparatus.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that the parent company, Trulieve Cannabis Corp., induces infringement by its subsidiary, Trulieve Inc. The allegations state that the parent company directs and controls its subsidiary's operations, dictates standard operating procedures, and requires the manufacture of products using the allegedly infringing processes (Compl. ¶¶242, 247–249).
  • Willful Infringement: The complaint alleges that Defendants have had actual knowledge of the asserted patents and their infringement "at least as of the filing date of this complaint" (Compl. ¶¶240, 256). This allegation appears to lay the groundwork for a claim of post-suit willful infringement, as no specific facts supporting pre-suit knowledge are pleaded.

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

  • A core issue will be one of technical scope and measurement: Can the specific, quantified limitations in the patent claims, such as a "surface-area-to-volume ratio greater than 1000 per meter" and a conversion rate of "at least 95%," be proven to describe the actual operational parameters of a standard commercial wiped-film distillation process? The outcome may depend heavily on competing expert testimony regarding the physics and chemistry of the accused systems.
  • A second key question will be one of definitional equivalence: Does the term "heat sink," which the patents illustrate with examples like aerosol sprays, properly extend to cover the "cold trap" component of a conventional short-path distillation apparatus? This claim construction issue may significantly impact the infringement analysis for all asserted patents.
  • The case also presents a question of corporate liability: Will the plaintiff be able to establish that the Canadian parent company, Trulieve Cannabis Corp., exercised sufficient direction and control over its Florida-based subsidiary to be held liable for induced infringement, or to be treated as an alter ego for purposes of direct infringement and venue?