Cannabis Patent Litigation: The Claim Construction Process

In following the progress of the first-ever cannabis patent litigation case, United Cannabis Corporation v. Pure Hemp Collective, Inc., the parties are now in a special phase of patent litigation called “claim construction.” Claim construction is specific to patent cases, and it’s the process of deciding what the various terms of the asserted patent claims actually mean. Claim construction is generally where most cases are decided.

The process begins when the parties actually go through the claims and propose their definitions to each other. Typically, the parties will end up agreeing on a lot of the terms so that the Court only has to decide a few things (which the Court usually appreciates). Then, the parties will prepare briefs and advocate their own meanings at a hearing. That hearing is called a “Markman hearing” (after the Supreme Court case that created this process), and it usually requires each side to present experts, scientists, demonstratives, and technological tutorials to ascertain the appropriate meaning of relevant key words used in the patent claim. Although Markman hearings can occur at different times in different cases, they generally occur during discovery and well in advance of trial.

Here, the parties dispute just two terms: “cannabinoids” and “infused in a medium chain triglyceride (MCT).” Let’s discuss the parties’ arguments concerning “cannabinoids”:

The patent claim includes the phrase, “at least 95% of total cannabinoids,” and Pure Hemp argues that “cannabinoids” should be interpreted as cannabinoid content – a term to describe different amounts of cannabinoids, and to describe how to calculate cannabinoid content as a percentage. On the other hand, UCANN argues that “cannabinoids” should simply be construed as “more than one cannabinoid.” This is a small, technical, but really important distinction to make because Pure Hemp’s proposed interpretation would really limit what UCANN is attempting to claim as its own.

After the parties present their interpretations, the Court will decide how to construe the patent claims at issue by undertaking the following process:

1. Read the claims at issue.
2. Read the “written description” of the patent specification, and any drawings if they exist.
3. Consider which terms of the claim are at issue or in dispute as to its meaning.
4. Read the other claims in the patent to obtain a holistic understanding.
5. Read the prosecution history if it exists.
6. Consider any other objective evidence of the meaning of claim language that is available – specification, prosecution history, ordinary/dictionary meaning, evidence that a specific term means something different to a person having ordinary skill in the art (“POSITA”).
7. Understand the invention that is described in the specification.
8. Determine what the claims objectively disclose to the POSITA as to what the inventor actually claimed (whether or not that objective meaning corresponds to the invention that was just determined to be disclosed in the specification and without regard to how that objective meaning will affect validity or infringement).

For each term, the judge can adopt either party’s definition or neither party’s definition. Regardless, once the Markman opinion issues, it’s often clear whether the patent is valid and if the defendant is liable for infringement.

In our case, the parties jointly requested a Markman hearing in mid-June. On July 15, 2019, the Court issued an order denying their request, and indicated: “Having reviewed the claim construction briefs, the Court finds that no evidentiary hearing is necessary to resolve the parties’ disputes … the Court will resolve the claim construction dispute in due course.” We’ll continue to monitor the docket and provide an update on how the Court rules as soon as we can. Previous updates on this case can be found here, here, here, and here.