DCT
1:24-cv-00952
Brunsen Burner Co v. Grp NM LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Brunsen Burner Co (Arizona); Loud Cloud, LLC (New Mexico)
- Defendant: Grp NM, LLC (Oklahoma); EUGENIA SMITH (New Mexico); FREDRICK LAWERENCE (New Mexico); CUSTOMER DOES 1-10 (New Mexico)
- Plaintiff’s Counsel: ARTHUR D. HODGE, Professional Law Corporation
- Case Identification: 1:24-cv-00952, D.N.M., 09/25/2024
- Venue Allegations: Venue is based on Defendant Grp NM, LLC operating and employing the individual defendants within the District of New Mexico, where a substantial part of the alleged infringing acts are said to have occurred.
- Core Dispute: Plaintiffs allege that Defendants’ infused cannabis pre-roll products are manufactured using a patented method for infusing botanical matter with oil, thereby infringing two of Plaintiffs' patents.
- Technical Context: The technology addresses the need for cannabis products with consistent, controllable, and high-potency infusions of active ingredients like THC and CBD.
- Key Procedural History: The complaint alleges that individual defendants Eugenia Smith and Fredrick Lawerence are former employees of Plaintiff Loud Cloud, LLC, where they gained confidential knowledge of the patented technology before being recruited by Defendant Grp NM, LLC. This history suggests the patent infringement claims are closely tied to allegations of trade secret misappropriation and breach of non-disclosure agreements. The '623 Patent is a continuation-in-part of the application that issued as the '703 Patent, indicating a shared technological foundation.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-01 (approx.) | Plaintiff BBC begins selling "Caviar Products" |
| 2017-09-15 | Priority Date for '703 and '623 Patents |
| 2020-12-29 | U.S. Patent No. 10,874,703 ('703 Patent) Issued |
| 2023-04-01 (approx.) | Defendants Smith and Lawerence hired by Plaintiff Loud Cloud |
| 2023-11-01 (approx.) | Defendants Smith and Lawerence leave employment with Loud Cloud |
| 2023-11-24 | Defendant Smith allegedly accesses and deletes company files |
| 2024-01-01 (approx.) | Accused Products first offered for sale by Defendants |
| 2024-04-09 | U.S. Patent No. 11,950,623 ('623 Patent) Issued |
| 2024-09-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,874,703 - "Plant Product Infused with Oil and Method of Infusion"
- Patent Identification: U.S. Patent No. 10,874,703, "Plant Product Infused with Oil and Method of Infusion," Issued December 29, 2020.
The Invention Explained
- Problem Addressed: The patent's background describes the difficulty in creating infused botanical products, such as those with cannabis oil. Conventional methods of applying oil to dry plant matter result in an uneven external coating, which leads to inconsistent dosage, an inability to control potency, and an inconsistent burn that often requires re-lighting ( '703 Patent, col. 1:26-38; col. 2:54-65).
- The Patented Solution: The invention is a method that uses a combination of pressure and heat to infuse oil into the cellular structure of botanical matter, rather than just coating it. The process involves spraying the botanical matter (e.g., cannabis flower) with a mixture of oil and an organic solvent, placing it in a sealed container, pressurizing and heating the container for a set "development time," and then removing the residual solvent with a vacuum ('703 Patent, Abstract; FIG. 1).
- Technical Importance: This process claims to produce a more desirable end product with consistent oil dispersion and, critically, allows for the creation of products with a precise, controllable, and higher dosage of active ingredients (like THC or CBD) than is naturally present in the plant matter ('703 Patent, col. 2:45-53).
Key Claims at a Glance
- The complaint asserts at least one claim; independent method claim 1 is representative.
- The essential elements of Claim 1 are:
- Mixing an organic solvent (ethanol or propylene glycol) and Cannabis oil to create a mixture with a specific solvent-to-oil ratio.
- Spraying dried Cannabis botanical matter with the mixture.
- Placing the coated matter into a pressurizable container and pressurizing it to 65-75 psi.
- Heating the container to 125-175 degrees Fahrenheit.
- Leaving the matter in the container for 3 to 25 hours to create the final infused product.
- The complaint does not explicitly reserve the right to assert dependent claims but implies this by alleging infringement of "at least one claim" (Compl. ¶40).
U.S. Patent No. 11,950,623 - "Plant Product Infused with Oil and Method of Infusion"
- Patent Identification: U.S. Patent No. 11,950,623, "Plant Product Infused with Oil and Method of Infusion," Issued April 9, 2024.
The Invention Explained
- Problem Addressed: Like its parent, the '623 Patent addresses the shortcomings of existing methods for adding oil to plant matter, which yield inconsistent products where potency cannot be reliably controlled ('623 Patent, col. 1:40-51; col. 3:5-13).
- The Patented Solution: The '623 Patent discloses a nearly identical process of using pressure and heat to achieve infusion. The method involves creating an oil/alcohol mixture, explicitly including an "additive," applying it to botanical matter, and processing it in a heated, pressurized environment ('623 Patent, Abstract; FIG. 1). The explicit inclusion of an "additive" in the mixture is a key distinction from the lead claim of the '703 Patent.
- Technical Importance: The technology aims to provide a reliable manufacturing process for producing infused botanical products with consistent quality and a therapeutically effective, controllable dosage of active compounds ('623 Patent, col. 3:20-29).
Key Claims at a Glance
- The complaint asserts at least one claim; independent method claim 1 is representative.
- The essential elements of Claim 1 are:
- Mixing an alcohol and an oil (with a specified ratio) and adding an additive to create a mixture.
- Applying the mixture onto dried botanical matter.
- Placing the coated matter into a pressurizable container.
- Pressurizing the container to 65-75 psi.
- Heating the container to 125-175 degrees Fahrenheit.
- Leaving the matter for a development time of 3 to 25 hours.
- Removing any residual portion of the mixture.
- Removing the final product from the container.
- The complaint's assertion of "at least one claim" suggests other claims may be asserted later (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are "infused" cannabis pre-roll products, including those named "TIGERS BLOOD," "BORED BANANA," "WATERMELON MOJITO," and "GRUNTZ," which are manufactured and sold by Defendant GRP under the "Pharmicated" brand (Compl. ¶29).
Functionality and Market Context
- The complaint alleges the accused products are "manufactured by the infusion method according to the Asserted Patents" (Compl. ¶36). This process is alleged to result in a product with a "consistent Cannabis oil distribution" that "burns dependably without having to be re-lit" and has a "THC or CBD potency (mg/g) of 25% or greater" (Compl. ¶¶35-36). The complaint provides a screenshot from the pharmicated.com website showing these products marketed as "INFUSED PRE-ROLLS" (Compl. Ex. 6). It also includes photographs of the accused "Bored Banana" product, showing loose, infused botanical matter (Compl. Ex. 8). The complaint alleges these products possess the same visual and physical characteristics as Plaintiffs' "Caviar Products," which are shown in photographs as well (Compl. ¶34; Compl. Ex. 7).
IV. Analysis of Infringement Allegations
The complaint alleges infringement in a conclusory manner, stating that the Accused Products are manufactured using the patented method. The chart below maps these general allegations to the elements of the representative independent claims.
'703 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) mixing an organic solvent and Cannabis oil to create an oil/solvent mixture having a ratio of said solvent to said Cannabis oil between 2.5 to 7.5 and 7.5 to 2.5... | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:45-52 |
| (b) spraying dried Cannabis botanical matter with said oil/solvent mixture... | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:53-56 |
| (c) placing said oil/solvent coated botanical matter into said pressurizable container and pressurizing said pressurizable container to a pressure of from 65 psi to 75 psi; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:57-col.8:2 |
| (d) heating said pressurizable container to a temperature of from 125 degrees to 175 degrees Fahrenheit; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 8:3-5 |
| (e) leaving said dried botanical matter and said oil/solvent mixture...for between 3 and 25 hours... | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 8:6-9 |
'623 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| mixing an alcohol and an oil...having a ratio of the alcohol to the oil between 2.5 to 7.5 and 7.5 to 2.5, wherein said mixing step further comprising the step of adding an additive to said oil/alcohol mixture; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:1-9 |
| applying said oil/alcohol mixture onto dried botanical matter... | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:10-12 |
| placing said oil/alcohol coated botanical matter into a pressurizable container; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 7:13-14 |
| pressurizing said pressurizable container to a pressure level between 65 and 75 psi; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 8:37-41 |
| heating said pressurizable container to a temperature in the range of 125 to 175 degrees Fahrenheit; | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 8:42-45 |
| leaving said dried botanical matter...for a development time period in a range of 3 hours to 25 hours... | The Accused Products are allegedly "manufactured by the infusion method according to the Asserted Patents." | ¶36 | col. 8:58-62 |
Identified Points of Contention
- Evidentiary Question: The complaint's infringement theory relies heavily on the allegation that the defendants' manufacturing process mirrors the patented method. A primary point of contention will be whether Plaintiffs can obtain evidence through discovery to prove that GRP's confidential process actually performs each claimed step, including the specific ratios, pressures, and temperatures required.
- Technical Question: What evidence does the complaint provide that the "infusion" in the accused products is achieved through the specific combination of pressure and heat as claimed, rather than through another process? The allegations regarding former employees with knowledge of the process will be central to Plaintiffs' attempt to answer this (Compl. ¶¶ 25, 28).
- Scope Question: Does the term "spraying" in the '703 Patent read on the defendant's method of applying the oil/solvent mixture? If GRP uses another technique, such as dipping or pouring, it may raise a question of literal infringement.
V. Key Claim Terms for Construction
The Term: "additive" ('623 Patent, Claim 1)
Context and Importance: Infringement of the asserted independent claim of the '623 Patent requires proof that an "additive" is part of the defendant's manufacturing process. The definition of this term is therefore critical to determining infringement of this patent.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a non-limiting list of potential additives, including "terpenes, cannabinoids, or entourage chemicals from the Cannabis plant," as well as flavorings, vitamins, and nutraceuticals ('623 Patent, col. 9:21-44). Plaintiffs may argue this supports a broad construction covering substances that may even be naturally derived from the primary cannabis materials.
- Evidence for a Narrower Interpretation: A defendant might argue that the claim structure—"mixing an alcohol and an oil...and...adding an additive"—implies that the "additive" must be a third component, distinct from the oil and alcohol. They may contend that inherent components of the cannabis oil itself, such as terpenes, do not constitute a separately "added" additive as required by the claim language.
The Term: "organic solvent...selected from the group consisting of ethanol and propylene glycol" ('703 Patent, Claim 1, as corrected)
Context and Importance: The scope of this claim is limited to a process using one of two specific solvents. Practitioners may focus on this term because if the defendant uses any other solvent, it would have a direct, dispositive defense against literal infringement. A Certificate of Correction changed "polyethylene glycol" to "propylene glycol," a material change that narrows the claim scope from the originally issued version ('703 Patent, Ex. 1, p. 26).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification mentions other solvents like butane and chloroform in the context of oil extraction but not for the claimed infusion process ('703 Patent, col. 5:26-28). The claim language itself, however, is a closed "consisting of" group, offering little room for a broader interpretation under literal infringement. Plaintiffs' only path to cover other solvents would be through the doctrine of equivalents.
- Evidence for a Narrower Interpretation: The claim language "selected from the group consisting of" is strongly limiting language in patent law, typically interpreted to exclude any unlisted elements. A defendant will argue this term unambiguously restricts the claim to processes using only ethanol or propylene glycol.
VI. Other Allegations
- Indirect Infringement: The complaint pleads inducement and contributory infringement (Compl. ¶40). The factual basis for inducement appears to be GRP's alleged acts of selling the accused products to retailers and encouraging their purchase and use by end-customers (Compl. ¶¶ 30, 37). The allegations also suggest that the individual defendants, Smith and Lawerence, induced GRP to infringe by using their confidential knowledge of the patented process (Compl. ¶¶ 25, 28, 48).
- Willful Infringement: Willfulness is alleged based on the defendants' infringement being "willful and deliberate" (Compl. ¶41). The factual predicate appears to be pre-suit knowledge obtained through the hiring of Plaintiffs' former employees, who were allegedly privy to the confidential and patented technology (Compl. ¶¶ 22-28).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof: Given the "bare bones" nature of the pleading, can Plaintiffs uncover evidence in discovery to demonstrate that GRP’s proprietary manufacturing process meets every specific parameter of the asserted method claims—particularly the claimed temperature, pressure, and solvent limitations? The case's strength may depend heavily on the testimony of the former-employee defendants.
- A second central question will be one of claim scope: For the '623 Patent, does the defendant's process involve "adding an additive" as the court construes that term? For the '703 Patent, does the defendant use one of the two specific solvents required by the claim? These definitional questions may be dispositive for infringement.
- A key strategic question will be the interplay between patent and trade secret law: To what extent will this case proceed as a straightforward patent dispute versus a case centered on trade secret misappropriation and breach of contract? The answer will shape discovery battles and the ultimate narrative presented to the court.