DCT

2:26-cv-00029

Natural Extraction Systems LLC v. Surterra Texas LLC

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:26-cv-00029, E.D. Tex., 01/12/2026
  • Venue Allegations: Venue is alleged based on Defendant Goodblend maintaining physical, regular, and established places of business in the Eastern District of Texas, including a dispensary in Plano, and having committed acts of infringement in the district. Venue over parent company Parallel is alleged on an alter ego theory, asserting that Parallel ratifies and controls Goodblend’s Texas locations as its own.
  • Core Dispute: Plaintiff alleges that Defendants’ processes for making cannabis distillate, and the resulting consumer products, infringe four patents related to methods for chemically modifying cannabinoids.
  • Technical Context: The technology concerns methods for decarboxylating cannabinoid acids (e.g., THCA) into their active forms (e.g., THC) in the gas phase to improve efficiency and reduce the formation of undesirable byproducts.
  • Key Procedural History: The asserted patents all claim priority to a common provisional application filed in 2018. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

Date Event
2018-08-10 Earliest Priority Date for all Asserted Patents ('248, '402, '181, '214 Patents)
2020-06-02 U.S. Patent No. 10,669,248 Issues
2023-05-09 U.S. Patent No. 11,643,402 Issues
2025-05-13 U.S. Patent No. 12,297,181 Issues
2025-09-23 U.S. Patent No. 12,420,214 Issues
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 background describes traditional methods for producing therapeutic or psychoactive cannabinoids, which involve prolonged heating of cannabinoid carboxylic acids (e.g., THCA). This process is inefficient and often generates undesirable side products, such as cannabinol (CBN), which can cause drowsiness and degrade the final product. ('248 Patent, col. 1:21-41).
  • The Patented Solution: The invention proposes a method to rapidly decarboxylate cannabinoids by first converting them into a gas phase. The specification suggests that performing the reaction in the gas phase lowers the activation energy, allowing for a more efficient conversion. ('248 Patent, col. 5:6-10). The vaporized, decarboxylated cannabinoid is then immediately condensed on a "heat sink," a step designed to minimize the time the molecule spends at high temperature and thereby reduce the formation of undesirable byproducts. ('248 Patent, col. 6:15-18, col. 2:18-24).
  • Technical Importance: This gas-phase approach allows for near-stoichiometric conversion of inactive cannabinoid acids into their active forms at an industrial scale while avoiding degradation products common in traditional heating methods. (Compl. ¶9-10).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 2, 8, and 12. (Compl. ¶92).
  • Claim 1 recites a method with the essential elements of:
    • Providing a composition with 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.
    • Achieving a conversion of at least 95% of the native molecule into the condensed molecule per mole.
    • Collecting the liquid distillate.
  • Claim 2 is similar to claim 1 but omits the 95% conversion limitation and instead requires the final liquid distillate to comprise the condensed cannabinoid and cannabinol (CBN) at a molar ratio greater than 100:1.
  • Claim 8 adds a limitation of "coating a heated surface with the composition at a surface-area-to-volume ratio...greater than 500 per meter."
  • Claim 12 requires the initial composition itself to have a "surface-area-to-volume ratio greater than 1000 per meter."

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

The Invention Explained

  • Problem Addressed: The '402 patent, a continuation of the '248 patent, addresses the same technical problem: the inefficiency and creation of undesirable byproducts during traditional, prolonged heating-based decarboxylation of cannabinoids. ('402 Patent, col. 1:21-25).
  • The Patented Solution: The '402 patent claims a similar gas-phase decarboxylation method but focuses more specifically on the physical properties of the starting material and the method of heating. The claims emphasize providing the initial composition with a high surface-area-to-volume ratio, which facilitates efficient energy transfer for vaporization and decarboxylation. ('402 Patent, col. 2:31-34). The patent also explicitly claims conductive heating as the energy transfer mechanism. ('402 Patent, col. 6:5-7, Claim 8).
  • Technical Importance: By specifying a high surface-area-to-volume ratio for the input material, the invention aims to optimize the speed and efficiency of the gas-phase reaction, further distinguishing it from bulk heating methods. (Compl. ¶9).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claim 8. (Compl. ¶134).
  • Claim 1 recites a method with the essential elements of:
    • Providing a composition comprising a native cannabinoid molecule (with a carboxyl group), wherein the composition has a "surface-area-to-volume ratio that is greater than 1000 per meter."
    • Contacting the composition with "sufficient energy" to convert the native molecule into carbon dioxide and a modified cannabinoid molecule in a gas phase.
    • Contacting the modified molecule with a "heat sink" to condense it into a liquid distillate.
    • Collecting the liquid distillate.
  • The complaint also asserts dependent claim 8, which specifies that the step of "contacting the composition with the sufficient energy comprises conductively heating the composition."

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

Technology Synopsis

The '181 patent continues the theme of the parent patents, focusing on a method for decarboxylating cannabinoids extracted from Cannabis plants. The claims introduce specific requirements for the output distillate, including very low levels of byproducts like cannabinol (CBN) and delta-8-THC, and explicitly identify the use of a "thin-film evaporator." ('181 Patent, Claim 9; Compl. ¶145, ¶148).

Asserted Claims

Independent claims 1, 2, and 9. (Compl. ¶151, ¶145-148).

Accused Features

The accused process is alleged to use a thin-film evaporator (a type of wiped-film distillation system) on cannabis-extracted oils to produce a distillate with THC and minimal (0%) CBN and delta-8-THC, satisfying the claimed molar ratios. (Compl. ¶154-155, ¶158).

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

Technology Synopsis

The '214 patent claims a method to produce a cannabinoid product with a highly detailed set of requirements for the input composition and process conditions. The claims specify, among other things, the water content, oil composition, minimum percentages of specific cannabinoids (like THCA), and the use of a vacuum during the conversion step. ('214 Patent, Claim 1; Compl. ¶161).

Asserted Claims

Independent claims 1 and 18. (Compl. ¶167, ¶161, ¶165).

Accused Features

The complaint alleges that Defendants' wiped-film distillation systems are thin-film evaporators and short-path distillation apparatuses that operate under vacuum, use conduction heating, and process cannabis extracts matching the claimed compositional requirements to produce the final THC distillate. (Compl. ¶169, ¶171-172, ¶175, ¶178).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the processes Defendants use to manufacture cannabis distillate, specifically identified as "wiped-film distillation," and the resulting products sold to consumers, such as "Heights Dark Chocolate Bar" and "Heights Cannabis-Infused Gummies." (Compl. ¶106, ¶102, ¶120).

Functionality and Market Context

The complaint alleges Defendants use one or more wiped-film distillation systems purchased from Root Sciences and manufactured by VTA. (Compl. ¶107-108). These systems are alleged to comprise a mechanical wiper that spreads a cannabis extract into a thin film across a heated, cylindrical inner surface. (Compl. ¶126-128). This process allegedly heats the extract with sufficient energy to convert the native cannabinoid THCA into gas-phase THC (decarboxylation and vaporization) in a single, rapid step, which is then condensed using a cold trap. (Compl. ¶109, ¶113-114, ¶117). The complaint references a screenshot from Defendant Parallel's website, which lists "goodblend" with "3 Stores in Texas" as one of its retail brands, to support allegations of Defendants' business operations. (Compl. p. 8). The complaint alleges these products and processes generate hundreds of millions of dollars in annual revenue for Defendants. (Compl. ¶14, ¶20).

IV. Analysis of Infringement Allegations

'248 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method to chemically modify a cannabinoid molecule, comprising: providing a composition comprising cannabinoids, in which...the native cannabinoid molecule is in a liquid phase or a solid phase; Defendants provide extracted cannabis oil containing the native cannabinoid THCA as a liquid input for their wiped-film distillation systems. ¶105, ¶112 col. 7:1-7
contacting the composition with sufficient energy to convert the native cannabinoid molecule into (i) a carbon dioxide molecule and (ii) a modified cannabinoid molecule in a gas phase; Defendants heat the liquid cannabis extract on the surface of the distillation system to evaporate the cannabinoids and simultaneously convert the native THCA into gas-phase THC and carbon dioxide. ¶113-114 col. 7:8-13
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 gas-phase THC is condensed back into a liquid distillate by contacting it with a cold trap, which the complaint alleges is a heat sink. ¶116-117 col. 7:14-18
in which at least 95% of the native cannabinoid molecule is converted into the condensed cannabinoid molecule per mole; and The complaint alleges on information and belief that the process converts "at least 95%" of the initial THCA into the final condensed THC. ¶121 col. 13:15-19
collecting the liquid distillate. Defendants collect the resulting liquid distillate from their wiped-film distillation systems for use in consumer products. ¶118 col. 7:19-20
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the "cold trap" in Defendants' VTA systems meets the definition of a "heat sink" as contemplated by the patent. The construction of "sufficient energy" will also be critical, as it is the driving force of the claimed conversion.
    • Technical Questions: The complaint alleges "on information and belief" that the process achieves "at least 95%" conversion (for Claim 1) and a THC-to-CBN molar ratio "greater than 100:1" (for Claim 2). (Compl. ¶121, ¶124). A key evidentiary question will be whether Defendants' actual production processes meet these specific numerical limitations. Another question is whether the alleged "wiped-film distillation" process is functionally equivalent to the gas-phase conversion described in the patent, which focuses on lowering activation energy by introducing entropy.

'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 spread the cannabis extract into a thin film of 100 to 500 microns on the cylindrical surface of the wiped-film distillation system, which is alleged to result in a surface-area-to-volume ratio greater than 1000 per meter. ¶128-130, ¶139 col. 2:31-34
contacting the composition with sufficient energy to convert the native cannabinoid molecule into...a modified cannabinoid molecule in a gas phase; The thin film of cannabis extract is heated on the system's surface to convert THCA into gas-phase THC. ¶113-114, ¶140 col. 2:39-44
contacting the modified cannabinoid molecule with a heat sink to condense the modified cannabinoid molecule into a condensed cannabinoid molecule in a liquid distillate; and The gas-phase THC is condensed into a liquid distillate using a cold trap, which is alleged to function as a heat sink. ¶116-117 col. 2:45-49
collecting the liquid distillate. Defendants collect the final liquid distillate from the distillation system. ¶118 col. 2:50
  • Identified Points of Contention:
    • Scope Questions: As with the ’248 Patent, the definitions of "heat sink" and "sufficient energy" will be important. The term "conductively heating" from dependent claim 8 may also be disputed, raising the question of whether the heating in a wiped-film system is purely conductive or involves other heat transfer mechanisms.
    • Technical Questions: The allegation that the thin film created in Defendants' process has a surface-area-to-volume ratio "greater than 1000 per meter" is a specific technical assertion made "on information and belief" that will require factual evidence to substantiate. (Compl. ¶139).

V. Key Claim Terms for Construction

  • The Term: "sufficient energy" (asserted in '248 and '402 patents)

    • Context and Importance: This term is central to the infringement analysis because it defines the core process step that causes the chemical conversion. The amount and method of energy transfer distinguish the patented invention from simple heating. Practitioners may focus on this term because its scope will determine whether the thermal conditions within the accused wiped-film distillation systems fall within the claims.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification describes "irradiating," "convectively heating," and "conductively heating" as suitable methods, suggesting the term is not limited to a single mode of energy transfer. ('248 Patent, col. 11:35-42). It also provides a wide range of energy amounts (e.g., "2 kJ to 50 kJ per gram") and power levels. ('248 Patent, col. 11:21-22).
      • Evidence for a Narrower Interpretation: The specification emphasizes that the energy should be optimized to favor vaporization and decarboxylation over pyrolysis, which might suggest that "sufficient energy" implies a controlled application that avoids temperatures or durations that cause degradation. ('248 Patent, col. 6:20-24).

  • The Term: "heat sink" (asserted in '248 and '402 patents)

    • Context and Importance: The "heat sink" is the claimed element for condensing the modified cannabinoid, a critical step for minimizing byproduct formation. The dispute may turn on whether the accused "cold trap" qualifies as a "heat sink" under the patent's definition.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification provides several examples of a heat sink, including passive cooling, fluid-cooled condensers, and colloids like an aerosol or spray, suggesting the term encompasses a variety of structures that absorb thermal energy. ('248 Patent, col. 13:30-47).
      • Evidence for a Narrower Interpretation: The description emphasizes "rapid condensation" to minimize the time cannabinoids spend as vapor, which could support a narrower construction requiring a structure capable of achieving condensation within a specific, short timeframe (e.g., less than 240 seconds as recited in a non-asserted claim). ('248 Patent, col. 6:15-18, col. 13:60-64).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendant Parallel induced infringement by its subsidiary, Goodblend. The factual basis for this allegation includes Parallel's alleged control over the manufacture and sale of products, its direction to subsidiaries to use standard operating procedures that allegedly infringe, and its marketing of the resulting products under its own proprietary brands. (Compl. ¶190-191, ¶195-196).
  • Willful Infringement: The complaint alleges that Defendants had "actual knowledge" of the asserted patents and their infringement "at least as of the filing date of this complaint." (Compl. ¶188, ¶204, ¶220, ¶236). This pleading basis suggests an allegation of post-filing willfulness rather than pre-suit knowledge. The prayer for relief seeks a judgment that infringement has been willful and requests enhanced damages. (Compl. p. 45).

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

  • A core issue will be one of technical and functional equivalence: Does the accused "wiped-film distillation" process, which relies on spreading a liquid film on a heated surface under vacuum, operate in the same way and achieve the same result as the "gas phase" decarboxylation method described in the patents, which emphasizes introducing entropy to lower the reaction's activation energy?
  • A second central issue will be evidentiary proof: Can the Plaintiff substantiate, beyond "information and belief," that the Defendants' commercial-scale processes meet the precise numerical limitations recited in the claims, such as the >95% conversion rate ('248 patent, Claim 1), the >100:1 THC-to-CBN molar ratio ('248 patent, Claim 2), and the >1000 per meter surface-area-to-volume ratio ('402 patent, Claim 1)?
  • A key question of claim construction will be the scope of functional terms like "sufficient energy" and structural terms like "heat sink," and whether the ordinary operation of the accused VTA distillation systems falls within a reasonable interpretation of those terms as defined by the patent's specification.