“[T]he ‘911 patent claims are novel and inventive because they are directed to never before made liquid formulations of highly enriched extracts of plant cannabinoids.”
I recently read Steve Brachmann’s article Cannabis Extract Patent Assertion Underscores Issue of Limited Prior Art for Marijuana Inventions. I appreciate this opportunity to respond to Mr. Neil Juneja’s comments regarding the strength of United Cannabis’ U.S. Patent No. 9,730,911, which claims unique and innovative liquid cannabinoid formulations.
First, Mr. Juneja’s comments appear to solely reference claim 5 of the ‘911 Patent, which is directed to tetrahydrocannabinol, which is more commonly referred to as THC. I note that our patent has a total of thirty-six different claims, many of which are not directed to THC at all. Rather, these claims are of varying scope and recite specific numerical percentages directed to highly purified extracts containing terpenes, flavonoids, and other cannabinoids, such as cannabidiol (CBD), cannabinol (CBN), tetrahydrocannabinolic acid (THCa) and cannabidiolic acid (CBDa).
Second, the ‘911 Patent has six independent claims and thirty dependent claims. It is important to remember that each and every independent claim and each and every dependent claim enjoys a presumption of validity under the patent law statute. All thirty-six claims are presumed valid individually. It is also important to remember that there only needs to be a finding that any one single claim is infringed in order to establish a finding of infringement of the ‘911 Patent.
Third, Mr. Juneja asserts: “All they did was take one secondary metabolite of cannabis and create the broadest independent claim.” I do not agree with Mr. Juneja’s characterization. Nevertheless, Mr. Juneja’s comment decries precisely how good claim drafting works! Innovations are unique and those who seek patents are always seeking to obtain the broadest claim possible within the limitations of the prior art. It is unreasonable to expect an innovator would or should leave claim scope on the table, so to speak.
I note that the ‘911 patent claims are novel and inventive because they are directed to never before made liquid formulations of highly enriched extracts of plant cannabinoids. Our patent has both broad independent claims, along with a number of dependent claims that are narrower in scope. The varied broad and narrow scope of both the independent and dependent claims such as those in the ‘911 Patent are important because they provide a variety of coverage should the validity of a broader claim be challenged in litigation and is precisely a best practice in patent prosecution. Under U.S. law, if one claim is found invalid because of newly discovered prior art, but a narrower dependent claim includes elements that are not in the prior art and not obvious in light of the prior art, then the dependent claim would not be invalidated by the prior art.
While I believe all thirty-six claims of the ‘911 patent are valid and enforceable, as did the patent examiner who issued the patent, the number and breadth of our claims gives United Cannabis safety in numbers if and when it should become necessary to defend our rights.