Insectergy IP Holdings LLC v. Empire Hemp Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Insectergy IP Holdings LLC (Wyoming)
  • Defendant: Empire Hemp Co. (d/b/a Empire NY Cannabis) (Delaware)
  • Plaintiff’s Counsel: Pigott Law Group
• Case Identification: 1:25-cv-00762, W.D.N.Y., 09/04/2025
• Venue Allegations: Venue is alleged to be proper in the Western District of New York because Defendant has a regular and established place of business in the district and has allegedly committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s cannabis extraction processes and cannabinoid-containing foodstuff products infringe patents related to methods of extraction and standardized product compositions.
• Technical Context: The technology at issue addresses methods for separating and extracting valuable chemical compounds (terpenes and cannabinoids) from cannabis plant material and formulating them into consistent consumer products.
• Key Procedural History: The complaint alleges that the innovations of both patents-in-suit have been recognized in the industry and cited in over a dozen subsequent U.S. patents, which may be presented to suggest the foundational nature of the technology. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

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

U.S. Patent No. 11,986,005 - “Cannabis extraction methods”

• Patent Identification: U.S. Patent No. 11,986,005, entitled “Cannabis extraction methods,” issued May 21, 2024 (’005 Patent) (Compl. ¶7).
• The Invention Explained:
  • Problem Addressed: The complaint asserts that prior art methods extracted cannabinoids and terpenes from cannabis material simultaneously, which created challenges in achieving targeted dosages and resulted in inferior product quality and consistency (Compl. ¶11).
  • The Patented Solution: The invention is a method for separating terpenes and oils from cannabis plant material using supercritical carbon dioxide (CO2) in a two-step process. First, terpenes are extracted at a relatively low temperature and pressure. Subsequently, cannabinoid-containing oil is extracted from the same plant material at a higher temperature and pressure (Compl. ¶¶11, 22; ’005 Patent, col. 3:23-38). The resulting oil can then be distilled or mixed with other ingredients to create a final product (Compl. ¶11).
  • Technical Importance: The complaint alleges this method was innovative for introducing separate extraction steps, is now widely adopted by cannabis technology companies, and has been cited in numerous subsequent patents (Compl. ¶12).
• Key Claims at a Glance:
  • The complaint asserts infringement of at least Claim 1 (’005 Patent, ¶25).
  • Independent Claim 1 is a method claim comprising the following essential elements:
    • Extracting terpene and oil from cannabis plant material using supercritical CO2;
    • This extraction includes a first step (a1) of extracting terpene at a "first temperature and a first pressure" to produce a first, terpene-comprising extract;
    • This is followed by a second step (a2) of extracting oil at a "second temperature and a second pressure" to produce a second, oil-comprising extract;
    • The second temperature and pressure are "greater than" the first temperature and pressure; and
    • Producing a final product from the second extract, which can be a "distillate" or a "multifunctional composition" made by mixing the extract with an ingredient (’005 Patent, col. 15:5-37; Compl. ¶26).
  • The complaint reserves the right to assert infringement of dependent claims (Compl. ¶27).

U.S. Patent No. 11,180,781 - “Biosynthetic cannabinoid production methods”

• Patent Identification: U.S. Patent No. 11,180,781, entitled “Biosynthetic cannabinoid production methods,” issued November 23, 2021 (’781 Patent) (Compl. ¶8).
• The Invention Explained:
  • Problem Addressed: The complaint states that before this invention, cannabis-derived foodstuff compositions were not standardized, leading to a "hodge-podge of various ingredients" and making it impossible to ensure consistent, high-quality products (Compl. ¶14).
  • The Patented Solution: The patent describes foodstuff compositions that contain a "distilled composition comprising a... cannabinoid" (’781 Patent, col. 497:49-53). This key ingredient can be derived either biosynthetically from a genetically modified organism or non-biosynthetically from cannabis plants, providing a standardized component for use in a wide variety of foods (Compl. ¶13; ’781 Patent, col. 4:51-54).
  • Technical Importance: The complaint alleges that this technology for standardized compositions has been widely adopted in the industry and cited in over a dozen later patents (Compl. ¶14).
• Key Claims at a Glance:
  • The complaint asserts infringement of at least independent Claims 48, 50, 61, and 67 (Compl. ¶37).
  • Independent Claim 48 recites:
    • A foodstuff comprising a "distilled composition" containing a cannabinoid (either biosynthetic or derived from cannabis plants);
    • Wherein the foodstuff is selected from a large Markush group including items such as "candies," "baked goods," and "gelatin mixes" (’781 Patent, col. 497:48-498:26; Compl. ¶38).
  • Independent Claim 50 recites:
    • A "cooked food composition" that is cooked using an oven, dryer, or similar device;
    • The composition includes water, a distilled cannabinoid (biosynthetic or from cannabis), and at least two other ingredients selected from the group of "insects, a binding agent, and an acid" (’781 Patent, col. 498:27-499:17; Compl. ¶41).
  • Independent Claim 61 recites:
    • A "dehydrated food composition" that includes water, a distilled cannabinoid, and at least two ingredients selected from "insects, a binding agent, and an acid" (’781 Patent, col. 499:18-500:3; Compl. ¶47).
  • Independent Claim 67 recites:
    • An "extruded and cooked candy foodstuff composition" that includes water, a distilled cannabinoid, and at least two ingredients selected from "insects, a binding agent, an oil, and an acid" (’781 Patent, col. 500:4-501:21; Compl. ¶53).

III. The Accused Instrumentality

• Product Identification: The complaint identifies vape cartridges ("Accused Carts"), cannabinoid-infused gummies ("Accused Gummies"), and cannabinoid-infused pre-rolled cigarettes ("Accused Pre-Rolls") (Compl. ¶25).
• Functionality and Market Context:
  • The complaint alleges, upon information and belief, that Defendant uses a CO2 extraction process to manufacture its products (Compl. ¶19). It cites a blog post from Defendant’s website which states that CO2 extraction is a "precise and efficient method" because "CO2 can be manipulated to act as a solvent at specific temperatures and pressures, allowing for targeted extraction of specific compounds" (Compl. ¶29).
  • The complaint further cites ingredient lists from Defendant's product pages to identify components relevant to the infringement allegations. For example, the Accused Carts allegedly contain "CO2 Full spectrum cannabis extract, cannabis derived terpenes," and the Accused Gummies allegedly contain "Cannabis distillate" along with ingredients such as "Corn Syrup, sugar, gelatin," and "citric acid" (Compl. ¶¶30, 31).
  • Plaintiff alleges the products are commercially available in at least a dozen dispensaries in the Western New York region and that their success is based, in part, on the unauthorized use of the patented technologies (Compl. ¶19).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

'005 Patent Infringement Allegations

• Identified Points of Contention:
  • Evidentiary Questions: The complaint's theory of a two-step, differential temperature process appears to rely on inference from Defendant's marketing material. A central question will be what factual evidence demonstrates that Defendant's process actually includes separate extraction steps for terpenes and oil where the oil extraction occurs at a higher temperature and pressure than the terpene extraction, as required by the claim.
  • Scope Questions: The complaint alleges that mixing extracted oil with "cannabis derived terpenes" for its vape carts constitutes mixing with an "ingredient." The court may need to consider whether re-introducing a substance (terpenes) that was previously part of the source material qualifies as an "ingredient" in the context of the patent.

'781 Patent Infringement Allegations

• Identified Points of Contention:
  • Evidentiary Questions: Claims 50, 61, and 67 require specific manufacturing steps such as "cooked," "dehydrated," and "extruded." The complaint alleges these steps occur "on information and belief" (Compl. ¶¶42, 48, 54). A point of contention may be the evidence Plaintiff provides to prove these specific process steps are used to manufacture the Accused Gummies.
  • Scope Questions: The term "distilled composition" in Claim 48 and related terms in other asserted claims will be critical. The dispute may turn on whether the "Cannabis distillate" used by Defendant meets the technical definition of that term as understood in the patent, which could raise questions of purity, processing method, or chemical profile.

V. Key Claim Terms for Construction

’005 Patent

• The Term: "extracting... at a first temperature and a first pressure... [and] at a second temperature and a second pressure... wherein said second temperature is greater than said first temperature and said second pressure is greater than said first pressure"
• Context and Importance: This two-step, differential condition limitation is the central inventive concept asserted from the patent. Practitioners may focus on this term because the infringement allegation hinges on inferring this specific sequence from general marketing language, creating a potential mismatch between the claim requirements and the accused process.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not recite specific temperature or pressure values, only a relative relationship (i.e., "greater than"), which may support a broad construction covering any two-stage process with such a differential.
  • Evidence for a Narrower Interpretation: The specification describes separating "terpenes" from "cannabis oil and/or wax" (’005 Patent, col. 3:23-26). A party could argue that these terms imply a process that achieves a specific, measurable degree of separation between these distinct chemical classes, potentially narrowing the claim beyond just any process involving two different temperature settings.

’781 Patent

• The Term: "distilled composition" / "distilled... cannabinoid"
• Context and Importance: The infringement theory relies on equating the accused ingredient, "Cannabis distillate," with this claim term. The definition of "distilled" will be critical to determining if the accused ingredient, as sourced and used by Defendant, falls within the scope of the claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent frequently refers to creating a "distillate" without specifying a required method or level of purity, suggesting the term could be construed by its plain and ordinary meaning to cover a wide range of commercially available distillates (’781 Patent, col. 4:26-28).
  • Evidence for a Narrower Interpretation: The specification mentions producing a distillate using "spinning band distillation" (’781 Patent, col. 5:54-56). A party may argue that this specific embodiment limits the scope of "distilled" to products created by particular, high-purity distillation techniques, potentially excluding the process used to create Defendant’s ingredient.

VI. Other Allegations

• Indirect Infringement: The complaint alleges direct infringement under 35 U.S.C. § 271(a) and infringement for the importation of products made by a patented process under 35 U.S.C. § 271(g) (Compl. ¶¶63, 64). The complaint does not plead specific facts to support claims of induced or contributory infringement.
• Willful Infringement: The complaint alleges that "Defendant is aware, or should be aware" that its products and processes infringe the patents-in-suit (Compl. ¶20). This allegation may form the basis for a willfulness claim based on knowledge acquired at least upon service of the complaint.

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

• A primary issue will be one of evidentiary proof for process claims: For the ’005 patent, can Plaintiff produce factual evidence beyond marketing language to demonstrate that Defendant's CO2 extraction method practices the specific two-step, differential temperature-and-pressure sequence required by Claim 1? Similarly, for the ’781 patent, can Plaintiff prove the Accused Gummies are manufactured using the claimed "cooked," "dehydrated," or "extruded" steps?
• A second core issue will be one of definitional scope: Can the commercial ingredient "Cannabis distillate" used in the Accused Gummies be shown to meet the technical requirements of the term "distilled composition" as it is used and defined within the '781 patent, particularly if the patent's specification is argued to limit the term to specific distillation methods or purity levels?