Cannabis Patent Litigation Update: A Certificate of Correction Allows the 911 Patent to Survive Another Challenge

We have been closely monitoring the first ever cannabis patent infringement case, between plaintiff United Cannabis Corporation (“UCANN”) and defendant Pure Hemp Collective, Inc. (“Pure Hemp”). UCANN owns the “911 Patent,” which generally covers liquid cannabinol formulations of a purified CBD and/or THC greater than 95%. For the past year, UCANN has fought to secure a permanent injunction against Pure Hemp from infringing on its patent, as well as damages and attorneys’ fees. For our previous coverage, see  here, here and here.

Things have not been going well for Pure Hemp, and it recently struck out again. Last month, Pure Hemp had filed a Motion for Leave to Brief the Invalidity of the Certificate of Correction for the 911 Patent. UCANN filed a Response in Opposition on May 3, 2019 and Pure Hemp filed its Reply on May 22, 2019. The Magistrate Judge, Nina Y. Wang, issued her Order denying Pure Hemp’s Motion for Leave the same day.

As relevant here, recall in our previous post that in Pure Hemp’s Motion for Partial Summary Judgment (the “MPSJ”), Pure Hemp had claimed that Claim 31 of the 911 Patent is invalid because “it is a multiple dependent claim that improperly depends on another multiple dependent claim.” Essentially, Pure Hemp had argued that Claim 31 of the 911 Patent incorrectly covers: “The formulation of any one of the proceeding claims, wherein the formulation is infused in a medium chain triglyceride (MCT).” In response to this argument, UCANN had filed a Motion to Correct Claim 313 of the 911 Patent, seeking to modify Claim 31 by replacing “proceeding claims” with “preceding claims,” arguing that the former construction is simply an error the court may correct.

The Court denied UCANN’s Motion to Correct on February 19, 2019, finding that the error, if any, would be more appropriately addressed by proceedings before the USPTO. Three days later, UCANN did file a Request for Certificate of Correction with the USPTO, indicating it had made an “inadvertent typographical error” and arguing that the correction did not “involve new matter or require reexamination.”

“The standard for issuing a certificate of correction is laid out in 35 U.S.C. 255:Whenever a mistake of a clerical or typographical nature, or of minor character, which was not the fault of the Patent and Trademark Office, appears in a patent and a showing has been made that such mistake occurred in good faith, the Director may, upon payment of the required fee, issue a certificate of correction, if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination. Such patent, together with the certificate, shall have the same effect and operation in law on the trial of actions for causes thereafter arising as if the same had been originally issued in such corrected form.”

On April 17, 2019, UCANN filed a notice indicating that the USPTO had agreed and issued a Certificate of Correction on April 9, 2019, amending “proceeding” to “preceding” in Claim 31 of the 911 Patent. This was relatively quick, cost-effective way that resulted in a big win for UCANN – that same day, Judge Martinez denied Defendant’s MPSJ. In his Order, Judge Martinez noted that UCANN had obtained the proper Certificate of Correction and therefore, Pure Hemp’s argument that Claim 31 was invalid because it did not contain a reference to a previous claim was moot.

Pure Hemp’s latest Motion for Leave argued that the Certificate of Correction is a broadening amendment, which is not proper, and that it did not have the opportunity to brief the issue as part of its MPSJ due to the timing of the issuance of the Certificate. Pure Hemp also argued that the issuance of whether the Certificate of Correction is a broadening amendment is an issue of claim construction, and that it should be permitted to brief the issue in conjunction with the same.

In response, UCANN made two simple arguments: (1) Pure Hemp’s motion violates the limits on the number of motions for summary judgment a party may file (in this case, one), and (2) the Patent Local Rules limit claim construction briefing to resolving issues of claim interpretation. Judge Wang agreed and denied Pure Hemp’s Motion for Leave in its entirety. This just goes to show: sometimes, really complex issues are resolved on really simple procedural grounds.

Now that the validity of Claim 31 has been put to rest, the parties have proceeded to the claim construction phase of all patent litigation (the subject of a future post!).  It will undoubtedly include more complex arguments, so stay tuned.