DCT
3:23-cv-05169
Capna IP Capital LLC v. Helderpad LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Capna IP Capital LLC (California)
- Defendant: Helderpad LLC (Washington)
- Plaintiff’s Counsel: Lowe Graham Jones PLLC
- Case Identification: 3:23-cv-05169, W.D. Wash., 02/28/2023
- Venue Allegations: Venue is alleged to be proper based on Defendant having a principal and established place of business within the Western District of Washington and having committed alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s ethanol-based botanical extraction processes infringe patents related to methods that use super-cooled solvents to reduce the co-extraction of undesirable compounds like chlorophyll.
- Technical Context: The technology operates in the field of botanical extraction, a critical process for producing purified oils, such as cannabinoids and terpenes from hemp and cannabis, for the consumer and pharmaceutical markets.
- Key Procedural History: The U.S. Patent No. 10,814,248 is a continuation-in-part of the application that resulted in U.S. Patent No. 10,507,407. This shared prosecution history may be relevant to future arguments regarding claim scope and interpretation.
Case Timeline
| Date | Event |
|---|---|
| 2016-04-14 | Priority Date ('407 & '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"
- 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 drawbacks of prior art botanical extraction methods. Hydrocarbon-based solvents (e.g., butane) are volatile and dangerous, while lipid-based solvents require expensive and complex post-extraction purification to remove the desired compounds from the lipid emulsion (’407 Patent, col. 1:26-47).
- The Patented Solution: The invention claims a process that uses a super-cooled solvent, specifically 100% grain ethanol, to extract target compounds like cannabinoids and terpenes from plant material. By chilling both the solvent and the plant substrate to a temperature range of -30°C to -50°C, the process selectively dissolves the desired molecules while leaving behind undesired, less-soluble constituents like plant lipids and chlorophyll (’407 Patent, Abstract; col. 2:6-14).
- Technical Importance: This approach allows for the use of a food-grade solvent (ethanol) to produce a "clean cannabinoid/terpene extract devoid of plant lipids and chlorophyll" with minimal investment and without extensive post-processing (’407 Patent, col. 1:61-64).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶20).
- Claim 1 of the ’407 Patent requires, in combination:
- A pre-processing step of lowering a solvent's temperature to a range of -30°C to -50°C.
- Contacting the solvent with plant substrate at that same temperature range to create an emulsion.
- Evaporating the solvent to reduce the emulsion.
- Recovering the solvent from the emulsion.
- Purging the extract so that it is "substantially free of any lipids and chlorophyll."
- The complaint reserves the right to assert additional claims (Compl. ¶25).
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 identifies the same problems as its parent '407 Patent: the volatility and safety issues of hydrocarbon solvents and the difficulty of purifying extracts made with lipid-based solvents (’248 Patent, col. 1:47-55).
- The Patented Solution: The ’248 Patent claims a similar super-cooled extraction process but broadens the types of solvents covered. While still focused on the -30°C to -50°C temperature range to prevent chlorophyll co-extraction, the claims explicitly contemplate the use of solvent mixtures (e.g., 95% ethanol and 5% of another solvent) or alternative solvents like heptane, hexane, or isopropyl alcohol (’248 Patent, Abstract; col. 2:48-62).
- Technical Importance: The invention extends the applicability of the core super-cooling technique to a wider variety of solvent formulations, offering greater process flexibility.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶27).
- Claim 1 of the ’248 Patent requires, in combination:
- A process that excludes the use of liquid carbon dioxide.
- A pre-processing step of lowering a solvent's temperature to a range of -30°C to -50°C.
- Contacting the solvent with the plant substrate at that temperature range to create an emulsion.
- Evaporating to reduce the emulsion.
- Recovering the solvent.
- Purging the extract under vacuum so it is substantially free of lipids and chlorophyll.
- An optional clause stating the solvent is either a 95% ethanol mixture or another material from a specific group (heptane, hexane, isopropyl alcohol, or methanol).
- The complaint reserves the right to assert additional claims (Compl. ¶34).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is "Helderpads's Ethanol Extraction, Solvent Recovery, & Short Path Distillation process" (Compl. ¶16).
Functionality and Market Context
- The complaint identifies the accused instrumentality as a process involving ethanol extraction, referencing a URL on the Defendant's website for "Ethanol Extraction" (Compl. ¶16). The complaint alleges that this process is used to create products available to businesses and individuals throughout the United States (Compl. ¶¶ 23, 32). The complaint does not provide further technical detail regarding the specific operating parameters, such as temperature, of the accused process. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references, but does not include, claim chart exhibits (Compl. ¶¶ 25, 34). The infringement allegations are summarized below based on the complaint's assertion that the Accused Process infringes the elements of the asserted claims.
'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. to -50 degrees C. | The Accused Process is alleged to include a step of chilling its ethanol solvent to the claimed temperature range prior to extraction. | ¶18 | col. 2:6-10 |
| (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 | The Accused Process allegedly involves contacting the chilled ethanol solvent with plant material within the claimed temperature range to create an extract emulsion. | ¶18 | col. 2:10-14 |
| (iii) evaporating for reduction of the emulsion by means of atmospheric evaporation of the solvent | The Accused Process is alleged to include a step of reducing the emulsion via atmospheric evaporation. | ¶18 | col. 2:18-20 |
| (iv) recovering for recovery of the solvent from the emulsion | The Accused Process allegedly includes a step for recovering the ethanol solvent from the extract emulsion. | ¶18 | col. 2:21-23 |
| (v) purging whereby a resultory extract is substantially free of any lipids and chlorophyll | The Accused Process allegedly includes a final purging step that results in an extract that is substantially free of lipids and chlorophyll. | ¶18 | col. 2:24-26 |
'248 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A...process for extracting cannabinoids...wherein the process excludes use of liquid carbon dioxide | The Accused Process is alleged to be a cannabinoid extraction method that does not use liquid CO2. | ¶27 | col. 8:3-6 |
| (i) pre-processing comprising lowering the temperature of a solvent to a range of -30 degrees C. to -50 degrees C. | The Accused Process is alleged to include a step of chilling its solvent to the claimed temperature range prior to extraction. | ¶27 | col. 8:7-10 |
| (ii) contacting at -30 degrees C. to -50 degrees C....to create an emulsion | The Accused Process allegedly involves contacting the chilled solvent with plant material within the claimed temperature range. | ¶27 | col. 8:11-14 |
| (v) purging under vacuum to remove remaining solvent from the extract whereby a resultory extract is substantially free of any lipids and chlorophyll | The Accused Process allegedly includes a final vacuum purging step resulting in an extract that is substantially free of lipids and chlorophyll. | ¶27 | col. 8:19-23 |
| wherein optionally, (a) the solvent is 95% ethanol and 5% of a solvent that is another solvent...or (b) the solvent is at least one solvent-like material selected from the group... | The Accused Process is alleged to use a solvent formulation that falls within one of the options defined in this clause. | ¶27 | col. 8:24-30 |
- Identified Points of Contention:
- Technical Question: The primary factual dispute will likely concern the actual operating parameters of the Accused Process. A central question is whether the complaint can produce evidence that the process chills the solvent and performs the extraction within the specific "-30°C to -50°C" range required by both patents.
- Scope Questions: For the ’248 Patent, the "wherein optionally" clause raises a significant scope question. The court may need to determine if this clause acts as a limitation, narrowing the claim to cover only processes using the specified solvent mixtures. This raises the possibility that a process using 100% ethanol, which may infringe the parent ’407 Patent, would not infringe this specific claim of the ’248 Patent.
V. Key Claim Terms for Construction
The Term: "substantially free of any lipids and chlorophyll" (’407 Patent, Claim 1; ’248 Patent, Claim 1)
Context and Importance: This term defines the required purity of the end product and is a term of degree, making it a likely focus of claim construction. The entire infringement analysis may depend on the quantitative or qualitative standard assigned to "substantially free."
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, quantitative benchmark for what the inventor considered "substantially free."
- Evidence for a Narrower Interpretation: The background sections describe a goal of bypassing "undesired constituents" (’407 Patent, col. 1:20). A party could argue this implies a higher level of purity than a simple 1% threshold, suggesting a level that is negligible or non-functional.
The Term: "purging" (’407 Patent, Claim 1)
Context and Importance: This term describes a final, critical step in the claimed process. Its construction will determine what types of solvent-removal techniques meet the limitation. Practitioners may focus on this term to distinguish it from the separate "recovering" step.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Claim 1 of the ’407 Patent recites "purging" without requiring any specific method, such as a vacuum. This could support a construction that encompasses any final step intended to remove residual solvent to achieve the desired purity.
- Evidence for a Narrower Interpretation: The specification describes the purging step as a means "to remove remaining solvent from the extract" after a primary recovery step like distillation (’407 Patent, col. 2:21-26). This could support a narrower definition of a distinct, final polishing step, rather than any general solvent removal.
VI. Other Allegations
- Indirect Infringement: The complaint includes a general recitation that Defendant "indirectly develops, designs, [and] distributes" infringing products (Compl. ¶3). However, the specific counts for infringement are pleaded only under 35 U.S.C. § 271(a) for direct infringement, and the complaint does not allege specific facts to support a claim for inducement, such as the provision of instructional materials to third parties.
- Willful Infringement: The complaint alleges that Defendant has known of its infringement of both patents "since at least October 31, 2020" (Compl. ¶¶ 20, 29). As this date is after the issuance of both patents-in-suit, this allegation supports a claim for post-suit knowledge and potential willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can the Plaintiff demonstrate through discovery that the accused Helderpad process operates within the specific, super-cooled temperature range of "-30°C to -50°C" recited in the independent claims of both asserted patents?
- The case will likely involve a key question of claim construction: How will the court define "substantially free of any lipids and chlorophyll"? The resolution of this term—whether it is defined by a quantitative threshold (e.g., <1% chlorophyll) or a more qualitative standard—will be critical to the infringement analysis.
- For the ’248 Patent, a core issue will be one of claim scope: Does the "wherein optionally" clause in Claim 1 function as a positive claim limitation, thereby narrowing the claim to only cover processes that use the specified solvent mixtures and excluding processes that use 100% pure ethanol?