DCT
2:25-cv-00598
Global IP Holdings LLC v. Kria Botanicals LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Global IP Holdings, LLC (California)
- Defendant: Kria Botanicals LLC (Vermont)
- Plaintiff’s Counsel: Boxer Blake & Moore PLLC; DNL Zito
- Case Identification: 2:25-cv-00598, D. Vt., 06/26/2025
- Venue Allegations: Plaintiff alleges venue is proper in the District of Vermont because Defendant maintains a regular and established place of business in the district and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s cannabinoid extraction processes infringe patents related to methods that use chilled ethanol-based solvents to reduce the co-extraction of undesirable compounds like chlorophyll and lipids.
- Technical Context: The technology operates in the botanical extraction field, specifically for producing purified cannabinoid and terpene isolates from cannabis and hemp, a market that has grown with the legalization of such products.
- Key Procedural History: The asserted patents are related; U.S. Patent No. 10,814,248 is a continuation-in-part of the application that issued as U.S. Patent No. 10,507,407. The '248 patent is subject to a terminal disclaimer, which may link its enforceability to the term of the '407 patent.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-14 | Earliest Priority Date ('407 & '248 Patents) |
| 2019-12-17 | U.S. Patent No. 10,507,407 Issues |
| 2020-10-27 | U.S. Patent No. 10,814,248 Issues |
| 2025-06-26 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,507,407 - "Methods to reduce chlorophyll co-extraction through extraction of select moieties essential oils and aromatic isolates"
- Patent Identification: U.S. Patent No. 10,507,407, “Methods to reduce chlorophyll co-extraction through extraction of select moieties essential oils and aromatic isolates,” issued December 17, 2019.
The Invention Explained
- Problem Addressed: The patent describes that conventional methods of extracting cannabinoids from plant material using solvents often co-extract undesirable constituents like chlorophyll and lipids, which then require costly and complex post-extraction purification steps ('407 Patent, col. 1:21-44). Furthermore, some common solvents like hydrocarbons are volatile and hazardous ('407 Patent, col. 1:35-40).
- The Patented Solution: The invention proposes a method where a solvent (specifically described as ethanol) and the plant substrate are chilled to a very low temperature range, such as -30° C to -50° C, before and during the extraction ('407 Patent, col. 2:6-12). At these low temperatures, the desired cannabinoids and terpenes remain soluble in the ethanol, while undesirable lipids and chlorophyll, which have lower solubility at cold temperatures, are left behind. This produces a cleaner initial extract and reduces the need for subsequent purification ('407 Patent, col. 1:57-62; Fig. 1).
- Technical Importance: This approach provided a method to increase the purity of the initial cannabinoid extract, potentially streamlining the manufacturing process and avoiding the safety risks associated with hydrocarbon-based solvents ('407 Patent, col. 1:45-56).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶32).
- Claim 1 recites a five-step extraction process:
- (i) a pre-processing step of lowering a solvent’s temperature to a range of -30° C to -50° C;
- (ii) contacting the plant substrate with the solvent at -30° C to -50° C to create an emulsion;
- (iii) evaporating the solvent from the emulsion via atmospheric evaporation;
- (iv) recovering the solvent from the emulsion; and
- (v) purging the remaining extract so it is "substantially free of any lipids and chlorophyll."
U.S. Patent No. 10,814,248 - "Methods to reduce chlorophyll co-extraction through extraction of select moieties essential oils and aromatic isolates"
- Patent Identification: U.S. Patent No. 10,814,248, “Methods to reduce chlorophyll co-extraction through extraction of select moieties essential oils and aromatic isolates,” issued October 27, 2020.
The Invention Explained
- Problem Addressed: The patent addresses the same problem as its parent '407 patent: the undesirable co-extraction of chlorophyll and waxes when producing cannabinoid extracts ('248 Patent, col. 1:31-48).
- The Patented Solution: As a continuation-in-part, the '248 patent claims a similar low-temperature extraction process but explicitly broadens the types of solvents that can be used. Beyond pure ethanol, the claims cover solvent mixtures, such as 95% ethanol with 5% of another non-ethanol solvent, or alternatively, solvents such as heptane, hexane, or isopropyl alcohol ('248 Patent, col. 2:48-56; col. 24:1-6). The process is also distinguished by its exclusion of liquid carbon dioxide as a solvent ('248 Patent, col. 23:5-6).
- Technical Importance: The invention offers greater flexibility in solvent selection for the low-temperature extraction technique, expanding the process's applicability while still targeting a high-purity initial extract ('248 Patent, col. 2:38-48).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶38).
- Claim 1 recites a process that excludes liquid carbon dioxide and includes five core steps nearly identical to those in the '407 patent, but further specifies optional solvent compositions:
- Steps (i)-(v) describe pre-processing, contacting at -30° C to -50° C, evaporating, recovering, and purging under vacuum to yield an extract substantially free of lipids and chlorophyll.
- The claim adds an optional "wherein" clause specifying the solvent can be "(a) 95% ethanol and 5% of a solvent that is another solvent that does not comprise ethanol, or (b) at least one solvent-like material selected from the group consisting essentially of heptane, hexane, isopropyl alcohol, and menthanol."
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the "Accused Method," a process for cannabinoid extraction employed by Defendant Kria Botanicals (Compl. ¶¶20-21).
Functionality and Market Context
- The complaint alleges that Defendant uses an "ExtractionTek Cup 15 Ethanol Extraction System" to perform the Accused Method (Compl. ¶21). The functionality is described as a multi-step process that includes: chilling an ethanol-based solvent to a range of -30° C to -50° C; contacting the cold solvent with hemp substrate; using a falling film evaporator for atmospheric evaporation of the solvent; recovering the solvent for reuse; and using a wiped film distillation system to purge the extract under vacuum (Compl. ¶¶25-29). The complaint alleges this process results in an extract "substantially free of any lipids and chlorophyll" (Compl. ¶29). Plaintiff alleges Defendant offers for sale and sells products made using this process throughout the U.S. (Compl. ¶4). The complaint cites a Kria Botanicals Instagram post as publicly available material describing the Accused Method (Compl. ¶23).
IV. Analysis of Infringement Allegations
'407 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (i) pre-processing comprising lowering the temperature of a solvent to a range of -30 degrees C. and -50 degrees C. | Defendant’s Accused Method includes pre-processing by lowering the solvent temperature to a range of -30° C to -50° C. | ¶25 | col. 8:17-19 |
| (ii) contacting at -30 degrees C. to -50 degrees C. wherein there is a contacting time between the plant substrate and the solvent to create an emulsion | Defendant’s Accused Method brings the cooled solvent into contact with the plant substrate at a temperature between -30° C and -50° C. | ¶26 | col. 8:20-23 |
| (iii) evaporating for reduction of the emulsion by means of atmospheric evaporation of the solvent | Defendant’s Accused Method includes atmospheric evaporation using a falling film evaporator to reduce the emulsion. | ¶27 | col. 8:24-26 |
| (iv) recovering for recovery of the solvent from the emulsion | The equipment used in the Accused Method is advertised as recovering ethanol for future extractions. | ¶28 | col. 8:27-28 |
| (v) purging whereby a resultory extract is substantially free of any lipids and chlorophyll | Defendant’s Accused Method employs a wiped film distillation system to purge under vacuum, resulting in an extract substantially free of lipids and chlorophyll. | ¶29 | col. 8:29-31 |
'248 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (i) pre-processing comprising lowering the temperature of a solvent to a range of -30 degrees C. to -50 degrees C. | Defendant’s Accused Method includes pre-processing by lowering the solvent temperature to a range of -30° C to -50° C. | ¶25 | col. 23:7-9 |
| (ii) contacting at -30 degrees C. to -50 degrees C., wherein there is a contacting time between the cannabis plant substrate and the solvent to create an emulsion | Defendant’s Accused Method brings the cooled solvent into contact with the plant substrate at a temperature between -30° C and -50° C. | ¶26 | col. 23:11-14 |
| (iii) evaporating for reduction of the emulsion by means of atmospheric evaporation of the solvent | Defendant’s Accused Method includes atmospheric evaporation using a falling film evaporator to reduce the emulsion. | ¶27 | col. 23:15-17 |
| (iv) recovering for recovery of the solvent from the emulsion | The equipment used in the Accused Method is advertised as recovering ethanol for future extractions. | ¶28 | col. 23:18-20 |
| (v) purging under vacuum to remove remaining solvent from the extract whereby a resu tory extract is substantially free of any lipids and chlorophyll | Defendant’s Accused Method employs a wiped film distillation system to purge under vacuum, resulting in an extract substantially free of lipids and chlorophyll. | ¶29 | col. 23:21-24 |
| wherein optionally, (a) the solvent is 95% ethanol and 5% of a solvent that is another solvent that does not comprise ethanol... | On information and belief, Defendant’s Accused Method utilizes an ethanol solvent comprised of 95% ethanol and 5% of a solvent that does not comprise ethanol. | ¶30 | col. 24:1-3 |
- Identified Points of Contention:
- Technical Questions: A factual dispute may arise over whether the Defendant's process, which allegedly uses a wiped film distillation system, actually achieves an extract that is "substantially free" of lipids and chlorophyll as required by the claims (Compl. ¶29). The degree of purity in Defendant's final product will be a key evidentiary issue.
- Scope Questions: The primary infringement question for the '407 patent may concern the scope of the term "solvent." If the court construes "solvent" in the '407 patent as being limited to pure ethanol, Defendant's alleged use of a 95/5 mixture may fall outside the claim's scope (Compl. ¶30).
V. Key Claim Terms for Construction
Term 1: "solvent" (as used in the '407 Patent)
- Context and Importance: The definition of this term is critical for the '407 patent infringement analysis. The complaint alleges Defendant uses a 95/5 ethanol-based mixture (Compl. ¶30). Whether this mixture meets the "solvent" limitation of the '407 patent will depend on construction. Practitioners may focus on this term due to strong intrinsic evidence that could be argued to limit its scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 itself uses the general term "a solvent," which, standing alone, is not explicitly limited to a single substance ('407 Patent, col. 8:17).
- Evidence for a Narrower Interpretation: The specification contains what may be construed as an explicit definition: "The term solvent as used herein should be understood to describe 100% grain ethanol" ('407 Patent, col. 2:4-5). This statement could be argued to be a lexicographical disclaimer that strictly limits the term to pure grain ethanol for all claims of the '407 patent.
Term 2: "substantially free of any lipids and chlorophyll"
- Context and Importance: This term of degree is central to the invention's purpose and defines the required quality of the final product. Infringement will depend on whether Defendant's extract meets this purity standard.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The detailed description of the '407 patent does not provide a precise numerical value for "substantially free," which could support a more qualitative, functional definition based on the goal of bypassing "undesired constituents" ('407 Patent, col. 1:24-26).
- Evidence for a Narrower Interpretation: The abstract of both the '407 and '248 patents states that the methods provide an extract "with a concentration of chlorophyll that is below 1%" ('407 Patent, Abstract; '248 Patent, Abstract). This language may be used to argue for a specific, quantitative threshold for what qualifies as "substantially free."
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement based on Defendant's knowledge of the patents "since at least the date of the filing of this complaint" (Compl. ¶¶36, 42). This allegation is directed at potential post-filing conduct and does not allege pre-suit knowledge.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of lexicography and disclaimer: does the statement in the '407 patent specification that "The term solvent as used herein should be understood to describe 100% grain ethanol" operate as a binding definition that limits the scope of Claim 1 of that patent to pure ethanol only, thereby placing the Defendant's alleged 95/5 solvent mixture outside its reach?
- A central evidentiary question will be one of technical proof: can Plaintiff provide sufficient evidence, likely through chemical analysis, to demonstrate that the extract produced by Defendant's "Accused Method" is in fact "substantially free of any lipids and chlorophyll," as that term will be construed by the court?