DCT
3:16-cv-01062
Udoxi Scientific LLC v. Precision Extraction Corp
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Udoxi Scientific, LLC (Oregon)
- Defendant: Precision Extraction Corporation (Michigan)
- Plaintiff’s Counsel: Mohr Intellectual Property Law Solutions, P.C.
- Case Identification: 3:16-cv-01062, D. Or., 06/10/2016
- Venue Allegations: Plaintiff alleges venue is proper in the District of Oregon because Defendant transacts and solicits business in the district, including offering to sell the accused products. Additionally, the inventors reside in Oregon, the technology was conceived and reduced to practice there, and Plaintiff's principal place of business is in Oregon.
- Core Dispute: Plaintiff alleges that Defendant’s PX40 extraction systems, and the methods of using them, infringe two patents related to closed-loop systems for extracting oils from plant matter.
- Technical Context: The technology involves systems for botanical oil extraction using solvents, focusing on improving efficiency and product purity through continuous processing with multiple canisters and integrated solvent reclamation.
- Key Procedural History: The complaint notes that at the time of filing, Defendant had filed a complaint for declaratory judgment regarding the same patents in the Eastern District of Michigan but had not yet served process on Plaintiff. Subsequent to the filing of this complaint, both patents-in-suit underwent Inter Partes Review (IPR). In IPR proceedings for the ’751 Patent, asserted claim 13 survived while other claims were cancelled. In IPR proceedings for the ’532 Patent, all claims, including asserted claim 9, were found patentable.
Case Timeline
| Date | Event |
|---|---|
| 2013-11-04 | Priority Date for ’751 and ’532 Patents |
| 2015-09-29 | U.S. Patent No. 9,144,751 Issued |
| 2015-09-29 | U.S. Patent No. 9,145,532 Issued |
| 2016-02-XX | Udoxi sent letter to Precision Extraction re: patents |
| 2016-03-22 | Precision Extraction responded to internet inquiry re: shipping to Oregon |
| 2016-04-05 | Udoxi counsel provided Precision Extraction counsel with related patent application |
| 2016-04-25 | Date of website screenshot showing Defendant's Oregon client |
| 2016-05-02 | Date of Facebook screenshot showing Defendant's "west coast rep" |
| 2016-05-31 | Patents-in-suit assigned to Udoxi Scientific, LLC |
| 2016-06-10 | Complaint Filed |
| 2022-04-13 | IPR Filed against ’532 Patent |
| 2022-05-26 | IPR Filed against ’751 Patent |
| 2024-01-26 | Inter Partes Review Certificate Issued for ’532 Patent |
| 2024-01-26 | Inter Partes Review Certificate Issued for ’751 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,144,751 - "Systems for Extracting Solute from a Source Material"
- Patent Identification: U.S. Patent No. 9,144,751, issued September 29, 2015.
The Invention Explained
- Problem Addressed: The patent identifies inefficiencies in conventional extraction systems, such as bottlenecks caused by single-container processing, the inability to perform closed-loop solvent reclamation, and the time-consuming nature of manual solvent reuse (’971 Patent, col. 1:15-33).
- The Patented Solution: The invention is a closed-loop system designed for greater efficiency and parallelism (’971 Patent, col. 1:24-28). As illustrated in Figure 1, the system uses multiple detachable canisters (150, 163, 164) that can be processed in parallel or in series, a heating element (178) to separate the solvent from the extract solution in an extract container (170), and a condensing system (105) to reclaim the evaporated solvent for reuse, thereby improving throughput and solvent efficiency (’971 Patent, col. 2:5-12; col. 3:25-35).
- Technical Importance: The claimed system architecture enables continuous or semi-continuous extraction operations, addressing the throughput limitations and high operational costs associated with single-batch extraction methods (’971 Patent, col. 1:20-23).
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶60).
- The essential elements of independent claim 13 are:
- A solvent source container configured to store a solvent;
- A canister detachably connected in fluid communication with the solvent source container and configured to store the source material and receive the solvent to produce an extract solution;
- An extract container in fluid communication with the canister, configured to receive the extract solution;
- An extract container heating element thermally coupled with the extract container, configured to heat the extract solution to a distilling temperature to produce a post-extraction portion of the solvent; and
- A canister interface configured to removably support the canister and configured to detachably support a supplemental canister in fluid communication with the system.
- The complaint notes that claims 14-16 depend from claim 13 and reserves the right to assert other claims (Compl. ¶31).
U.S. Patent No. 9,145,532 - "Methods for Extracting Solute from a Source Material"
- Patent Identification: U.S. Patent No. 9,145,532, issued September 29, 2015.
The Invention Explained
- Problem Addressed: The patent addresses the same problems as its sister ’751 Patent: the "bottleneck" of single-container extraction, wasteful solvent usage in open-loop systems, and the inefficiency of manual solvent reclamation (’532 Patent, col. 1:15-33).
- The Patented Solution: The invention is a method for extracting solute that leverages a system with a "detachable canister interface." The method allows for placing material in a canister, removably attaching it to the system, performing the extraction, and crucially, allows for a second canister to be attached and brought into the process while the first remains in fluid communication, facilitating continuous operation (’532 Patent, col. 9:35-62; Fig. 7).
- Technical Importance: This method provides a workflow for continuous extraction, which can significantly increase the volume of material processed over time compared to traditional, discrete batch-based methods (’532 Patent, col. 1:20-23).
Key Claims at a Glance
- The complaint asserts independent claim 9 (Compl. ¶68).
- The essential elements of independent claim 9 are:
- Placing a source material in a canister;
- Removably and fluidly attaching the canister to an extract container and a solvent source container via a "detachable canister interface";
- Introducing a solvent into the canister;
- Exposing the source material to the solvent to create an extract mixture;
- Communicating the extract mixture to the extract container;
- Separating the solute from the mixture by heating the extract container to evaporate the solvent;
- Wherein the "detachable canister interface" is configured to receive the canister and be manipulated by a user to selectively release it.
- The complaint notes that claims 10-13 depend from claim 9 (Compl. ¶¶ 39-41).
III. The Accused Instrumentality
Product Identification
- The complaint identifies "at least the PX40 extraction systems" sold by Defendant Precision Extraction (Compl. ¶7).
Functionality and Market Context
- The complaint alleges, on information and belief, that the PX40 system is a closed-loop extraction system that comprises components analogous to those in the patented invention (Compl. ¶44). These allegedly include a solvent tank, multiple canisters for holding plant material, an extraction container, and a heating element for boiling off solvent for reclamation (Compl. ¶44). The complaint further alleges the PX40 system includes an "interface" that enables the use of multiple canisters, allowing at least one to be detached while others remain in use, thereby facilitating a continuous extraction process (Compl. ¶¶45, 50). Figure 1 from the ’751 Patent is included in the complaint to depict a system the complaint alleges is similar in function to the accused PX40 (Compl. ¶28).
IV. Analysis of Infringement Allegations
’971 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a solvent source container configured to store a solvent | The PX40 system comprises a "solvent tank." | ¶44 | col. 3:36-38 |
| a canister detachably connected in fluid communication with the solvent source container... and configured to store the source material... | The PX40 system comprises a "canister in fluid communication with the tank and into which plant material is placed." | ¶44 | col. 4:45-50 |
| an extract container in fluid communication with the canister, the extract container being configured to receive the extract solution from the canister | The PX40 system comprises an "extraction container in fluid communication with each canister and which receives from each canister solvent with solute from the plant material." | ¶44 | col. 5:51-54 |
| an extract container heating element... configured to heat the extract solution... to produce a post-extraction portion of the solvent | The PX40 system comprises a "heating element coupled to the extraction container that can boil off the solvent." | ¶44 | col. 8:1-10 |
| a canister interface configured to removably support the canister... and configured to detachably support a supplemental canister in fluid communication with the solvent source container and extract container | The PX40 system comprises an "interface that... removably supports a canister... and that detachably supports a second canister." | ¶45 | col. 6:1-5 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the meaning of "canister interface." The analysis will question whether the accused PX40's component for connecting canisters meets the claim's specific functional requirements of not only "removably support[ing] the canister" but also being "configured to detachably support a supplemental canister" in a way that enables continuous operation as described in the patent.
- Technical Questions: The complaint alleges the PX40's functionality on "information and belief." A key technical question will be what evidence demonstrates that the accused system's interface actually performs the dual supporting and detaching functions for multiple canisters as required by the claim, rather than simply being a manifold for connecting multiple canisters.
’532 Patent Infringement Allegations
| Claim Element (from Independent Claim 9) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| placing a source material having a solute in a canister | The accused method involves "plant material is put in a canister." | ¶46 | col. 11:15-17 |
| removably and fluidly attaching the canister to an extract container via connecting the canister to a detachable canister interface | The accused method involves the canister being "removably and fluidly attached to an extract container... via a detachable canister interface." | ¶46 | col. 12:11-15 |
| removably and fluidly attaching the canister to a solvent source container via connecting the canister to the detachable canister interface | The accused method involves the canister being "removably and fluidly attached... to a solvent source container via a detachable canister interface." | ¶46 | col. 12:6-10 |
| introducing a solvent into the canister | The accused method involves "putting solvent into the canister from the source container." | ¶46 | col. 12:26-27 |
| exposing the source material to the solvent... to create an extract mixture | The accused method involves "soaking the plant material for a predetermined time." | ¶46 | col. 13:5-8 |
| communicating the extract mixture to the extract container | The accused method involves "communicating the resulting extract mixture to an extract container." | ¶46 | col. 13:31-35 |
| separating the solute... by heating the extract container to evaporate the recycled solvent | The accused method involves "boiling off the solvent by heating the extract container." | ¶46 | col. 14:8-13 |
| wherein the detachable canister interface is configured to... selectively release the canister when the detachable canister interface is manipulated by a user | The accused method uses an interface "that the user can manipulate to selectively release the canister." | ¶46 | col. 12:6-10 |
- Identified Points of Contention:
- Scope Questions: For this method claim, the dispute may focus on whether the standard, intended use of the PX40 system necessarily performs every claimed step. The "wherein" clause adds a structural limitation on the interface used in the method, raising the question of whether the PX40's interface is "configured to" be "manipulated by a user" for "selective release" in the specific manner envisioned by the patent.
- Technical Questions: Proving direct infringement will require evidence of the PX40 system actually being operated in the infringing manner. What evidence does the complaint provide that the PX40's interface possesses the specific user-manipulable release mechanism, and that users are instructed or encouraged to operate it in the claimed sequence?
V. Key Claim Terms for Construction
’751 Patent
- The Term: "canister interface"
- Context and Importance: This term is the structural linchpin of the invention's continuous-operation capability. Its definition is critical because infringement of claim 13 hinges on whether the accused PX40 system has a component that meets the dual requirements of supporting an active canister while being configured to support a "supplemental" one. Practitioners may focus on this term because it appears to be the primary point of novelty over prior art systems.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification refers to the component generally as the "detachable canister system 140" and describes its function as directing solvent to canisters and extract solution from them (’971 Patent, col. 4:43-60). This could support a functional definition not tied to a specific structure.
- Evidence for a Narrower Interpretation: Figure 2 and the accompanying text describe a specific two-part structure with an "upper canister attachment device 153" and a "lower canister attachment device 159," including handles (155) and gaskets (157). A defendant could argue this detailed embodiment limits the scope of the term "canister interface" to this or a similar mechanical structure (’971 Patent, col. 6:6-40).
’532 Patent
- The Term: "detachable canister interface"
- Context and Importance: As in the ’751 Patent, this term is central. In method claim 9, the interface is defined by its configuration: it must be able to "receive the canister" and "selectively release the canister when... manipulated by a user." The interpretation of what constitutes such a "manipulated" release will be key to determining whether the use of the PX40 system performs the claimed method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is functional, focusing on the ability of a user to manipulate the interface to release a canister. This could support an interpretation covering any user-actuated detachment mechanism.
- Evidence for a Narrower Interpretation: The shared specification describes the interface with specific mechanical features, such as an "over-center securing lever" (handle 155) that is "pulled to lock" the device (’532 Patent, col. 6:12-24). This specific embodiment of user "manipulation" could be used to argue for a narrower construction limited to lever-actuated or similarly complex mechanical release mechanisms.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The factual basis for inducement is the allegation that Precision Extraction had pre-suit knowledge of the patents via a February 2016 letter and subsequent communications, and that it encourages its customers to use the PX40 systems in an infringing manner (Compl. ¶¶ 54-55, 61, 70).
- Willful Infringement: The complaint alleges willful infringement based on pre-suit notice. It specifically pleads that Udoxi notified Precision Extraction of the patents and its infringement concerns in February 2016, four months before filing the lawsuit, and that the parties' counsel discussed the matter (Compl. ¶¶ 54-55, 67, 76).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: can the term "canister interface," described in the specification with specific mechanical levers and gaskets, be construed broadly enough to read on the accused PX40's mechanism for connecting multiple canisters, or will its meaning be confined to the disclosed embodiment? The survival of claim 13 in IPR may suggest the patentee can defend a reasonable scope for this term.
- A second central issue will be one of evidentiary proof for the method claims: can the Plaintiff, who bases its allegations on "information and belief," produce sufficient evidence to demonstrate that the ordinary and intended operation of the PX40 system by end-users meets every step of the asserted method claim from the ’532 Patent?
- A third question concerns the impact of the IPR proceedings: how will the fact that the asserted claims in both patents survived IPR challenges—while other claims in the ’751 Patent were cancelled—shape the litigation? This history may strengthen the presumption of validity for the asserted claims and focus the court's attention squarely on infringement and damages.