Helen Saulnier 
Take note from Crouch: I bundled “chronic” in the title of this submit as a reference to an antiquated reference to marijuana, and did not intend to claim that this concern is a single that the court is frequently struggling with.
United Hashish Company v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023)
This case is even now pending right before the Federal Circuit, but I found it intriguing ample for a preview.
United Cannabis retains a wide marijuana patent – US9730911 – with claims directed to a liquid cannabinoid acquiring 95% of both THC or CBD.
5. A liquid cannabinoid formulation, whereby at least 95% of the overall cannabinoids is tetrahydrocannabinol (THC).
10. A liquid cannabinoid formulation, wherein at least 95% of the whole cannabinoids is cannabidiol (CBD).
In 2018, United Hashish sued Pure Hemp for patent infringement and Pure Hemp responded with a Walker-Method antitrust counterclaim for asserting a patent known to be invalid. The defendant also argued the patent ought to be held unenforceable because of to inequitable perform throughout prosecution.
The inequitable carry out declare was dependent on a failure to deliver substance references to the USPTO as needed less than 37 CFR 1.56. In specific, the Cooley LLP prosecuting attorney admitted to copying materials from prior art into equally the Summary and the Detailed Description of the patent specification but did not cite the reference in the patent document or disclose that reference to the USPTO for thing to consider. While not identical, the reference (Whittle – U.S. Pat. Pub. No. 2004/0033280) apparently disclosed a liquid with 88.9% CBD or 95% CBD+THC. So, fairly shut to what was claimed. In deposition, the prosecuting legal professional apparently spelled out that the copying was done to speed the method and preserve time – and is a encouraged typical follow. It also turns out that the exact law firm – Cooley – signifies GW-Pharma (the owner of the Whittle prior artwork) in patent prosecution. And, Cooley attorneys experienced argued to the USPTO that GW Pharma invented a liquid formulation with 95% purity CBD. So, in the text of
The litigation floor to a halt in the midst of discovery when United Cannabis submitted for bankruptcy. But, the bankruptcy case was ultimately dismissed centered on the unlawful nature of the company undertaking (unlawful at the Federal amount). At that point United Hashish made a decision to drop its infringement case. The functions jointly agreed that the patentee would dismiss its statements with prejudice, although the defendant dismissed its counterclaims devoid of prejudice.
While the deserves had been settled, the accused infringer was a little bit upset for possessing to litigate the pointless lawsuit, and as a result submitted a movement seeking attorney expenses under 35 U.S.C. 285. Part 285 allows the district courtroom discretion to award reasonable attorney fees to the prevailing get together in “exceptional conditions.” In a terse feeling, the district court docket denied the charges movement: discovering (1) the defendant was not the prevailing get together because of the jointly-agreed dismissal and (2) the information of the scenario were being not demonstrated to be “exceptional” due to the fact the dismissal transpired prior to the details experienced been identified.
This scenario is now on attraction right before the Federal Circuit. The patentee has admitted that the district court erred in its prevailing occasion examination, but argued that the district court was suitable to obtain that the scenario was not exceptional. The appellant argues as a substitute that the copying into the vital portions of the application: thorough description of the creation and abstract produce an inference of the two materiality and intent sufficient for an extraordinary case finding. For its section, the district court docket only offered a cursory investigation of these challenges devoid of delving into any of the proof offered. The briefing also argues that “Cooley attorneys also have a policy of withholding references till just after the first office motion, in direct contravention of patent workplace guidance.” Nonetheless, in this situation, the references were being never submitted prior to issuance. The brief goes-on to remark that “in educational circles, it is referred to as plagiarism.” And, even devoid of climbing to the Therasense degree of inequitable perform, must be found as building an extraordinary scenario.
James Gourley from Carstens & Cahoon argued on behalf of the defendant-appellant. (Quick). Cooley’s Orion Armon argued on behalf of the Plaintiff-Appellee. (Short).
What do you assume: Do the points as mentioned here produce an fantastic case for the accused infringer?
