In an article published last summer in the American Intellectual Property Law Association’s (“AIPLA”) Quarterly Journal entitled “Marijuana and Patents: The Complicated Relationship Between Patent Rights and the Federal Criminalization of Marijuana,” [1] my co-author and I flagged the illegality doctrine, otherwise known as ex turpi causa, as a potential obstacle to enforcement of cannabis patents. In short, the illegality doctrine posits that a “court will [not] lend its aid to a party who founds his claim for redress upon an illegal act.”[2] While applied in other contexts, as of the time of the article, courts had not yet ruled on application of this doctrine to patent infringement actions. That changed recently.
In the case of Gene Pool Techs., Inc. v. Coastal Harvest, LLC, Plaintiff Gene Pool Technologies, Inc. (“Gene Pool”) sued Defendant Coastal Harvest, LLC (“Coastal”) for infringing three of its patents seeking, among other things, a reasonable royalty adequate to compensate it for Coastal’s infringement. Coastal sought to dismiss the case, arguing that Gene Pool could not enforce its utility patents due to allegations of illegality of the underlying business activity. Judge Holcomb of the District Court for the Central District of California, ruling from the bench, disagreed with Coastal and concluded that Coastal “has not demonstrated that the illegality doctrine should bar Gene Pool’s claims in the face of ‘validly issued’ patents.”[3]
The Court noting the absence of “authority addressing the application of the … illegality doctrine in the patent infringement context,” reasoned that Gene Pool neither “seek[s] damages based on its own cultivation or sale of marijuana,” nor “based upon Coastal Harvest’s cultivation or sale of marijuana.” Rather, “the Complaint alleges infringement based upon Coastal Harvest’s extraction activities” as a whole, which includes activities not prohibited by the Controlled Substance Act (“CSA”). Accordingly, the Court held that because Gene Pool’s “allegations “concerning extraction of cannabis material are broad enough to include types of cannabis material excluded from the CSA,”[4] the illegality doctrine does not divest the Court of jurisdiction over the matter.[5]
Reza Roghani Esfahani is an intellectual property attorney, with a focus on patent and trade secret litigation involving a wide range of technologies including mechanical, chemical, and computer sciences. While pursuing his engineering degrees, he worked on projects directed at breast cancer therapy, live cell delivery, and the development of small molecule inhibitors of a human protein implicated in thrombosis. Reza also has experience working on projects directed toward the investigation of the aggregation kinetics of crude oil components.
[1] Reza Roghani Esfahani & Howard Bromberg, Marijuana and Patents: The Complicated Relationship Between Patent Rights and the Federal Criminalization of Marijuana, 50:3 AIPLA Q.J. 365–425 (2022).
[2] The Florida, 101 U.S. 37, 43 (1879).
[3] See 35 U.S.C. § 282 (“A patent shall be presumed valid.”).
[4] See 21 U.S.C. § 802 (“The terms ‘marihuana’ and ‘marijuana’ do not include—(i) hemp, as defined in section 1639o of title 7; or (ii) the mature stalks of such plant, fiber produced from such stalks, oil or cake made from the seeds of such plant, any other compound, manufacture, salt, derivative, mixture, or preparation of such mature stalks (except the resin extracted therefrom), fiber, oil, or cake, or the sterilized seed of such plant which is incapable of germination.”); see also 7 U.S.C. § 1639o (“The term ‘hemp’ means the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.”).
[5] The Court also denied Coastal’s motion to dismiss based on Rule 12(b)(6)—i.e., failure to state a claim upon which relief can be granted—because it was “premised on the same allegations” already addressed by the Court.
