DCT

2:23-cv-00282

Global IP Holdings LLC v. Root Sciences LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00282, W.D. Wash., 02/28/2023
  • Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business within the Western District of Washington.
  • Core Dispute: Plaintiff alleges that Defendant’s cryo-ethanol extraction systems infringe patents related to methods for extracting cannabinoids from plant material using super-cooled solvents to reduce the co-extraction of undesirable compounds like chlorophyll.
  • Technical Context: The technology addresses the need for producing high-purity cannabis and hemp extracts for the consumer and medical markets by selectively isolating desired compounds at low temperatures.
  • Key Procedural History: The patents-in-suit share a common priority date and are part of the same patent family. U.S. Patent No. 10,814,248 is a continuation-in-part of the application that led to U.S. Patent No. 10,507,407. A Certificate of Correction was issued for the ’407 Patent to clarify language in claim 1. No other prior litigation or administrative proceedings are mentioned in the complaint.

Case Timeline

Date Event
2016-04-14 Earliest Priority Date for '407 and '248 Patents
2019-12-17 U.S. Patent No. 10,507,407 Issued
2020-10-27 U.S. Patent No. 10,814,248 Issued
2020-10-31 Alleged Date of Defendant's Knowledge of Infringement
2023-02-28 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", issued December 17, 2019

The Invention Explained

  • Problem Addressed: The patent describes conventional methods for extracting cannabinoids and terpenes from plants like hemp and cannabis, such as hydrocarbon or CO2 extraction, as having significant drawbacks (Compl. Ex. A, '407 Patent, col. 1:21-44). These include the use of volatile or impure solvents and the co-extraction of undesirable constituents like plant lipids and chlorophyll, which then require costly and complex post-processing to remove (’407 Patent, col. 1:45-51).
  • The Patented Solution: The invention proposes a method using a super-cooled solvent, specifically 100% grain ethanol, to extract the desired compounds (’407 Patent, col. 2:4-5). By chilling both the solvent and the plant substrate to a very low temperature range (e.g., -30°C to -50°C), the process allows for the extraction of cannabinoids and terpenes while leaving the less soluble chlorophyll and lipids behind in the plant material (’407 Patent, col. 2:6-12; col. 3:45-50).
  • Technical Importance: This approach aims to yield a "clean cannabinoid/terpene extract devoid of plant lipids and chlorophyll" in a more direct process, potentially simplifying the manufacturing of high-purity cannabis products (’407 Patent, col. 2:59-62).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶18).
  • Essential elements of claim 1 include:
    • pre-processing comprising lowering the temperature of a solvent to a range of -30 degrees C. and -50 degrees C.
    • contacting at -30 degrees C. to -50 degrees C. between the plant substrate and the solvent to create an emulsion
    • evaporating for reduction of the emulsion
    • recovering the solvent from the emulsion
    • purging whereby a resultory extract is substantially free of any lipids and chlorophyll
  • The complaint reserves the right to assert other claims (Compl. ¶18). A Certificate of Correction was issued for this patent, clarifying that the contacting step occurs "at -30 degrees C. to -50 degrees C.," not "and" (’407 Patent, Cert. of Correction).

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 '248 Patent addresses the same technical problems as its parent, the ’407 Patent: the inefficiency and impurity issues associated with traditional cannabis extraction methods, particularly the co-extraction of chlorophyll and lipids (Compl. Ex. B, ’248 Patent, col. 1:31-57).
  • The Patented Solution: The solution is also a super-cooled solvent extraction process. The specification and claims of the ’248 Patent appear to broaden the scope of the invention, providing for a wider array of potential solvents beyond just 100% grain ethanol, including mixtures of ethanol with other non-ethanol solvents or alternative solvents like heptane or hexane (’248 Patent, col. 2:51-62). The core inventive concept of using very low temperatures to achieve selective extraction remains central (’248 Patent, col. 2:20-28).
  • Technical Importance: The ’248 Patent builds upon the earlier work by describing variations in the solvent composition, offering more flexibility in the extraction process while still aiming to produce a high-purity extract.

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶27).
  • Essential elements of claim 1 include:
    • pre-processing comprising lowering the temperature of a solvent to a range of -30 degrees C. to -50 degrees C.
    • contacting at -30 degrees C. to -50 degrees C. between a cannabis or hemp substrate and the solvent to create an emulsion
    • evaporating for reduction of the emulsion
    • recovering the solvent from the emulsion
    • purging under vacuum to remove remaining solvent, resulting in an extract substantially free of lipids and chlorophyll
    • The claim specifies that the process excludes the use of liquid carbon dioxide and includes optional solvent compositions.
  • The complaint reserves the right to assert other claims (Compl. ¶27).

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Instrumentalities" or "Accused Products" as "Root Science's cryo-ethanol extraction system" (Compl. ¶16).

Functionality and Market Context

The complaint alleges these are systems for cryo-ethanol extraction, which are developed, designed, manufactured, and sold by the Defendant (Compl. ¶3). The name of the product itself, "cryo-ethanol extraction system," suggests its function aligns with the patented technology, which is centered on using cold (cryo) ethanol for extraction (Compl. ¶16). The complaint alleges these products are available to businesses and individuals throughout the United States (Compl. ¶23, ¶32). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim charts in Exhibits C and D that describe how the Accused Products allegedly infringe claim 1 of the '407 and '248 patents, respectively (Compl. ¶25, ¶34). As these exhibits were not publicly available with the complaint, a claim chart summary cannot be constructed.

The narrative infringement theory for both patents is that Defendant’s "cryo-ethanol extraction system" directly infringes at least claim 1 of each patent by being made, used, sold, or offered for sale in the United States (Compl. ¶18, ¶27). The core allegation is that these systems perform or are used to perform the patented method of using super-cooled ethanol to extract cannabinoids from plant matter while minimizing the uptake of chlorophyll and lipids.

  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the operational parameters of the accused systems fall within the scope of the claims. For example, does the term "purging whereby a resultory extract is substantially free of any lipids and chlorophyll" (’407 Patent, Claim 1) describe the output of Defendant's system? The definition of "substantially free" will be a critical issue for claim construction and infringement analysis.
    • Technical Questions: What evidence does the complaint provide that Defendant’s system operates within the claimed temperature range of "-30 degrees C. to -50 degrees C."? The case may turn on factual evidence regarding the precise temperatures, contact times, and solvent compositions used by the accused systems and whether the resulting extract meets the purity levels required by the claims.

V. Key Claim Terms for Construction

  • Term: "substantially free of any lipids and chlorophyll" (appearing in Claim 1 of both the '407 and '248 Patents)

    • Context and Importance: This term defines the required outcome of the entire process and is a critical limitation for proving infringement. Practitioners may focus on this term because its inherent subjectivity makes it a likely candidate for a dispute over indefiniteness under 35 U.S.C. § 112, and its definition will determine the standard of proof for infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The abstract of the ’407 Patent states that the methods provide an extract "with a concentration of chlorophyll that is below 1%" (’407 Patent, Abstract). A party could argue this provides a clear, objective benchmark for what "substantially free" means in the context of the patent.
      • Evidence for a Narrower Interpretation: The claim uses the word "any," suggesting a very high degree of purity. A party could argue that the absence of a more precise quantitative definition in the detailed description renders the term subjective and that the "below 1%" figure from the abstract should not be imported into the claim.

  • Term: "contacting at -30 degrees C. to -50 degrees C." (appearing in Claim 1 of both the '407 and '248 Patents)

    • Context and Importance: This temperature range is presented as the key to the patented solution for preventing chlorophyll co-extraction. Infringement will depend on whether the accused process operates within this specific range.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification mentions this range is "preferabl[e]" but also discusses a broader range of "-1 C and -50 C" in other contexts, which might suggest the claimed range is not an absolute cliff (’407 Patent, col. 4:42-44). A party might argue for applying the doctrine of equivalents if an accused process operates at a temperature just outside this range but achieves the same result.
      • Evidence for a Narrower Interpretation: The claims explicitly recite the "-30 degrees C. to -50 degrees C." range. A party will argue that this represents a deliberate choice by the patentee to limit the claim to this specific operational window, and any deviation, such as operating at -29°C, would constitute non-infringement.

VI. Other Allegations

  • Indirect Infringement: The complaint makes passing references to indirect and induced infringement (Compl. ¶3, ¶6). However, the formal counts for infringement (Counts I and II) are explicitly for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶18, ¶27).
  • Willful Infringement: The complaint alleges that Defendant’s infringement has been willful for both patents (Compl. ¶19, ¶28). The alleged basis is pre-suit knowledge of the patents and the infringing activities "since at least October 31, 2020" (Compl. ¶20, ¶29). The complaint further alleges that Defendant made no attempt to design around the patents and had no reasonable basis to believe the patents were invalid (Compl. ¶21-22, ¶30-31).

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

  • A core issue will be one of definitional scope: can the term "substantially free of any lipids and chlorophyll," be construed with sufficient certainty to be definite? If so, does the "below 1% chlorophyll" concentration mentioned in the abstract provide the governing standard, and can Plaintiff produce evidence that the accused systems meet this standard?
  • A key evidentiary question will be one of operational overlap: does the accused "cryo-ethanol extraction system" actually operate under the conditions—specifically the temperature range of "-30 degrees C. to -50 degrees C."—recited in the independent claims, or is there a factual mismatch in technical operation that would support a non-infringement defense?