Canopy Growth Corporation v. Gw Pharma Limited

Case: 22-1603 Document: 49 Page: 1 Filed: 04/24/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CANOPY GROWTH CORPORATION,
Plaintiff-Appellant
v.
GW PHARMA LIMITED, GW RESEARCH LIMITED,
Defendants-Appellees
______________________
2022-1603
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 6:20-cv-01180-ADA, Judge
Alan D. Albright.
______________________
Decided: April 24, 2023
______________________
DAVID G. WILLE, Baker Botts LLP, Dallas, TX, argued
for plaintiff-appellant. Also represented by MELISSA
MUENKS, KURT M. PANKRATZ, CLARKE STAVINOHA;
MICHAEL HAWES, Houston, TX.
GERALD J. FLATTMANN, JR., Cahill Gordon & Reindel
LLP, New York, NY, argued for defendants-appellees. Also
represented by JESSE SNYDER, AMY R. UPSHAW, King &
Spalding LLP, Washington, DC.
______________________
Case: 22-1603 Document: 49 Page: 2 Filed: 04/24/2023
2 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
Before LOURIE, TARANTO, and STARK, Circuit Judges.
TARANTO, Circuit Judge.
Canopy Growth Corp. sued GW Pharma Ltd. and GW
Research Ltd. (collectively, GW) in the United States Dis-
trict Court for the Western District of Texas, alleging in-
fringement of at least claims 1–25 of its U.S. Patent No.
10,870,632. The district court issued an order construing
the sole disputed claim limitation: “CO2 in liquefied form
under subcritical pressure and temperature conditions.”
Canopy Growth Corp. v. GW Pharmaceuticals PLC, No. 20-
cv-01180, 2021 WL 8015834, at *4–15 (W.D. Tex. Nov. 27,
2021). Based on the district court’s construction, the par-
ties stipulated to non-infringement, and the court then en-
tered final judgment in favor of GW on infringement and
dismissed GW’s remaining affirmative defenses and coun-
terclaims without prejudice. Canopy appeals. Because the
phrase “subcritical pressure and temperature conditions,”
as used in the claims here, requires both pressure and tem-
perature to be subcritical, we affirm.
I
The ’632 patent describes and claims processes for pro-
ducing an extract containing tetrahydrocannabinol (THC)
and/or cannabidiol (CBD) from cannabis using liquid car-
bon dioxide (i.e., CO2). CO2 can exist in the solid, liquid,
and gas phases. But when temperature and pressure are
high enough, CO2 can transition from the liquid or gas
phase into a supercritical fluid state. The lowest combina-
tion of temperature and pressure at which this transition
can occur is the critical point; only if both temperature and
pressure are above the critical point will CO2 enter the su-
percritical fluid state.
CO2 can be described as subcritical when either its tem-
perature or its pressure is below the critical point, and, put-
ting aside its solid phase (which is not relevant here), CO2
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 3
can be in the subcritical state as either a liquid or a gas,
depending on the specific temperature and pressure of the
CO2. When its temperature is supercritical but its pres-
sure is subcritical, CO2 will form a gas because the pres-
sure is not sufficient to force the CO2—expanding due to
the high temperature—to liquify. In contrast, when its
temperature is subcritical but its pressure is supercritical,
the CO2 will form a liquid. And when both temperature
and pressure are subcritical, CO2 can form either a liquid
or a gas, depending on the specific temperature and pres-
sure. The critical-point temperature for CO2 is 31°C, and
the critical-point pressure for CO2 is 73.8 bar (or 72.8 atm).
The parties do not dispute any of those principles, which
are depicted in the CO2 phase diagram below. 1
1 Canopy contends in its reply brief that “[t]he pres-
ence of impurities in the CO2 can result in liquefied CO2 at
a temperature above what is generally understood as the
critical temperature of CO2.” Reply Br. at 3 n.1 (citing J.A.
1215). Neither the document Canopy cites nor the argu-
ment Canopy makes appears in Canopy’s briefing before
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4 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
J.A. 90.
Independent claim 1 of the ’632 patent recites
1. A process for producing an extract contain-
ing Tetrahydrocannabinol (THC) and/or canna-
bidiol (CBD), and optionally the carboxylic acids
thereof, from a cannabis plant material or a pri-
mary extract thereof, said process comprising:
(1) subjecting the cannabis plant material
or primary extract thereof to CO2 in liquefied
form under subcritical pressure and tem-
perature conditions to extract cannabinoid
components; and
(2) reducing the pressure and/or tempera-
ture to separate tetrahydrocannabinol and/or
cannabidiol, and optionally the carboxylic ac-
ids thereof, from the CO2.
’632 patent, col. 14, lines 30–41 (bolding added for empha-
sis). The only other independent claim, claim 14, is rele-
vantly similar, and all claims of the ’632 patent include the
limitation at issue.
The ’632 patent’s specification lists the phrase at issue
among itemized temperature and pressure conditions for
the district court, notwithstanding GW’s argument before
the district court that CO2 is a gas under these conditions.
Even if this court could take judicial notice of the document
for its content, which has not been requested or justified,
Canopy has doubly forfeited this argument. See In re
Google Technology Holdings LLC, 980 F.3d 858, 863 (Fed.
Cir. 2020) (arguments not presented to the reviewed tribu-
nal are generally forfeited); Aventis Pharma S.A. v. Hos-
pira, Inc., 675 F.3d 1324, 1332–33 (Fed. Cir. 2012)
(arguments not raised before us until reply briefing are for-
feited).
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 5
CO2 that are “[i]n accordance with the invention.” Id., col.
5, lines 6–20. Specifically, it provides that extraction can
occur
with the aid of CO2 under supercritical pressure
and temperature conditions at a temperature in
the range of approx[.] 31° C. to 80° C. and at a pres-
sure in the range of approx. 75 bar to 500 bar, or in
the subcri[t]i[c]al range at a temperature of ap-
prox. 20° C. to 30° C. and a supercritical pressure
of approx. 100 bar to 350 bar; or extracted under
subcri[t]i[c]al pressure and temperature condi-
tions; and the obtained primary extract is sepa-
rated under subcri[t]i[c]al conditions, or under
conditions that are subcri[t]i[c]al in terms of pres-
sure and supercritical in terms of temperature.
Id.The limitation at issue, with the other possible CO2
conditions quoted above, also appears in the prosecution
history. The ’632 patent issued from a continuation of Ap-
plication No. 10/399,362. During prosecution of that appli-
cation, the applicant sought claims to these conditions in a
claimed process that it described as reciting three “alterna-
tive steps,” J.A. 372 (emphasis omitted), depicted below:
J.A. 366. As described by the applicant during prosecution,
these alternative steps permitted extraction via CO2 under
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6 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
“(a) supercritical pressure and temperature conditions; or
(b) subcritical temperature range and a supercritical pres-
sure; or (c) subcritical pressure and temperature condi-
tions.” J.A. 372–73. The ’362 application issued with
claims directed to these steps as U.S. Patent No. 8,895,078.
For the application that gave rise to the ’632 patent,
Application No. 14/276,165, the prosecution history starts
off similarly, in that the applicant began by seeking claims
directed to the same three alternative steps. J.A. 399. But
in response to an examiner rejection of the claims over
prior art that discloses the use of supercritical fluid CO2 for
extraction, Webster (U.S. Patent No. 6,403,126), J.A. 404–
05, the applicant amended the pending claims to remove
the first of the alternative steps—“under supercritical pres-
sure and temperature conditions at a temperature in a
range of approx. 31°C to 80°C and at a pressure in a range
of approx. 75 bar or 500 bar,” J.A. 420. Then, in response
to the examiner’s continued rejection based on Webster’s
disclosure of supercritical fluid CO2 and Webster’s state-
ment that temperature and pressure can be adjusted, J.A.
431–33; J.A.445–48, the applicant amended the claims to
also remove the second alternative step—“in liquefied form
in the subcritical range at a temperature of approx. 20°C
to 30°C and a supercritical pressure of approx. 100 bar to
350 bar,” J.A. 437. This amendment left the applicant with
claims directed only to the third of the alternative steps—
“in liquefied form under subcritical pressure and tempera-
ture conditions,” though further limited through amend-
ment to “a pressure of 70 bar or less and a temperature of
approx. 20°C to 30°C.” Id. The applicant ultimately can-
celed the claims, J.A. 152, but the issued claims now in dis-
pute include this same phrase (without the numerical
pressure and temperature limits).
The district court concluded that the phrase, “CO2 in
liquefied form under subcritical pressure and temperature
conditions,” requires that both the pressure and tempera-
ture be subcritical. Canopy, 2021 WL 8015834, at *15. The
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 7
court relied on the claim’s use of “and” instead of “or,”
which it viewed as indicating that the claim required both
pressure and temperature to be subcritical. Id. at *4. The
court concluded that the use of “conditions” (a plural) does
nothing to change this. Id. Looking next to the specifica-
tion, the court viewed the above-quoted passage, in column
5, as listing three alternative options, rejecting Canopy’s
argument that the second, which includes subcritical tem-
perature and supercritical pressure, is a subset of the third,
which is defined by the “subcritical pressure and tempera-
ture conditions” phrase at issue. Id. at *8–10. Finally, the
court viewed the prosecution history as not “provid[ing]
any additional insight . . . beyond the plain language of the
claims and the specification.” Id. at *14. The prosecution
history statements, the court determined, “mirror those in
the specification, namely, that the claims in the parent pa-
tent and the as-filed/amended claims in the asserted patent
recite three pressure and temperature conditions.” Id. The
court likewise deemed extrinsic evidence, involving the use
of similar but notably different phrases, to be “not directly
relevant” and not sufficient to “outweigh the intrinsic evi-
dence.” Id. at *15.
The district court entered final judgment, following the
parties’ stipulation to non-infringement, on February 25,
2022. Canopy timely appealed on March 24, 2022. See 28
U.S.C. § 2107(a); Fed. R. App. P. 4(a)(1)(A). We have juris-
diction under 28 U.S.C. § 1295(a)(1).
II
“[T]here is no magic formula or catechism for conduct-
ing claim construction.” Intel Corp. v. Qualcomm Inc., 21
F.4th 801, 809 (Fed. Cir. 2021) (alteration in original)
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed.
Cir. 2005) (en banc)). But
[w]e generally give words of a claim their ordinary
meaning in the context of the claim and the whole
patent document; the specification particularly,
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8 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
but also the prosecution history, informs the deter-
mination of claim meaning in context, including by
resolving ambiguities; and even if the meaning is
plain on the face of the claim language, the pa-
tentee can, by acting with sufficient clarity, dis-
claim such a plain meaning or prescribe a special
definition.
SIMO Holdings Inc. v. Hong Kong uCloudlink Network
Technology Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021) (al-
teration in original) (quoting World Class Technology Corp.
v. Ormo Corp., 769 F.3d 1120, 1123 (Fed. Cir. 2014)). That
undertaking is ultimately one of law, for us to make de
novo. Intel Corp., 21 F.4th at 808. But sometimes there
are underlying determinations of fact, concerning usage or
other matters extrinsic to the patent, and we review such
determinations for clear error. Id.
The ordinary meaning of “subcritical pressure and tem-
perature conditions” favors the construction advanced by
GW and accepted by the district court. In that phrase, with
its use of “and,” the term “subcritical” operates most plainly
as a prepositive modifier that modifies either both “pres-
sure” and “temperature” or both “pressure conditions” and
“temperature conditions.” We have held that the ordinary
construction of language such as this reads the “prepositive
. . . modifier [as] normally appl[ying] to the entire series.”
SIMO Holdings, 983 F.3d at 1377 (quoting Antonin Scalia
& Bryan A. Garner, Reading Law: The Interpretation of
Legal Texts § 19, at 147 (2012)). Thus, the ordinary mean-
ing is that both pressure and temperature must be subcrit-
ical for the limitation to be satisfied. See id.
Canopy disagrees. It contends that the patent discloses
two embodiments, one in which CO2 has both supercritical
pressure and temperature, which it opted not to claim, and
one in which either the temperature or pressure of CO2 (or
both) are subcritical, part of which the district court ex-
cluded without sufficient reason. It offers a construction
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 9
that it contends is “reasonabl[e]” and captures the full
scope of this purported second embodiment—one in which
the phrase “pressure and temperature” is read as a unit
modifying “conditions” in such a way that it means a com-
bination of “pressure and temperature conditions” that is
subcritical. For support beyond the claim language, Can-
opy argues that no evidence suggests that a person of ordi-
nary skill in the art would have reason to distinguish
between liquid CO2 with both subcritical pressure and tem-
perature and liquid CO2 with subcritical temperature and
supercritical pressure, as both are subcritical and function-
ally indistinct.
But we need not decide whether that substantive sci-
entific context would be enough in another case to over-
come the ordinary English-language meaning of
“subcritical pressure and temperature conditions.” Nor
need we decide whether one might consider Canopy’s read-
ing of the claim “reasonable.” Here, the prosecution history
forecloses Canopy’s construction and two-embodiment
reading.
During prosecution, Canopy clearly sought claims di-
rected to three alternatives, not two: (1) supercritical fluid
CO2, (2) CO2 with subcritical temperature and supercriti-
cal pressure, and (3) CO2 with subcritical pressure and
temperature conditions. J.A. 399; see also J.A. 366. Can-
opy sequentially deleted the first and second sets of condi-
tions from the initially sought claims, J.A. 420; J.A. 437,
and ultimately claimed only the third set of conditions.
And that third set of conditions must be limited to having
both subcritical temperature and subcritical pressure be-
cause, if the third set included CO2 with subcritical tem-
perature and supercritical pressure, then it would entirely
subsume the second initially claimed condition set, render-
ing that set superfluous. See Intel Corp., 21 F.4th at 810
(“It is highly disfavored to construe terms in a way that
renders them void, meaningless, or superfluous.” (quoting
Wasica Finance GmbH v. Continental Automotive Systems,
Case: 22-1603 Document: 49 Page: 10 Filed: 04/24/2023
10 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
Inc., 853 F.3d 1272, 1288 n.10 (Fed. Cir. 2017))); see also
Scalia & Garner, Reading Law § 26, at 174 (“If possible,
every word and every provision is to be given effect.”). Can-
opy nevertheless contends that the initially claimed alter-
natives were not mutually exclusive alternatives but were
instead akin to a “Markush” group. But that characteriza-
tion does not overcome the problem that the third set of
conditions, understood as Canopy proposes, would sub-
sume the second. Each member of a Markush group is cov-
ered by the group, so there is no reason to include an
alternative in a Markush group that falls entirely within
another alternative. See Multilayer Stretch Cling Film
Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1357
(Fed. Cir. 2016) (describing Markush groups).
This prosecution history clarifies the meaning of the
claim language both directly and, by clarifying the specifi-
cation’s disclosures, indirectly. The specification, like the
claims sought earlier in prosecution, lists the three alter-
native condition sets, but it does so with various transition
phrases, commas, and semicolons that leave its proper
parsing less than clear. See ’632 patent, col. 5, lines 6–20. 2
2 As detailed above, the specification states that,
“[i]n accordance with the invention,” extraction can occur
with the aid of CO2 under supercritical pressure
and temperature conditions at a temperature in
the range of approx[.] 31° C. to 80° C. and at a pres-
sure in the range of approx. 75 bar to 500 bar, or in
the subcri[t]i[c]al range at a temperature of ap-
prox. 20° C. to 30° C. and a supercritical pressure
of approx. 100 bar to 350 bar; or extracted under
subcri[t]i[c]al pressure and temperature condi-
tions; and the obtained primary extract is sepa-
rated under subcri[t]i[c]al conditions, or under
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 11
The prosecution history clarifies that, contrary to Canopy’s
two-embodiment reading (in which the “subcritical [tem-
perature] range . . . and supercritical pressure” is a subset
of “subcritical pressure and temperature conditions,”
Opening Br. at 10–11 (characterizing the former as an ex-
ample of the latter)), this passage discloses three distinct
embodiments, and the claims recite only one of them.
Canopy argues that we should disregard this history
because the relevant amendments were to claims that were
ultimately cancelled and replaced. Reply Br. at 24 (citing
Massachusetts Institute of Technology v. Shire Pharmaceu-
ticals, Inc., 839 F.3d 1111, 1120–22 (Fed. Cir. 2016), for the
proposition that statements made relating to cancelled
claims should be discounted). But the same phrase present
in the now-cancelled claims is the now-at-issue phrase re-
cited in the issued claims. In the prosecution history asso-
ciated with the phrase, Canopy made clear that it
encompasses only CO2 with both subcritical pressure and
subcritical temperature, as explained above.
Canopy also argues that the amendments do not
amount to disclaimer or disavowal and therefore cannot
justify a construction that excludes an embodiment. Can-
opy notes that, before cancellation, the claims recited spe-
cific numerical ranges of pressure and temperature, in
addition to the phrase at issue, and that the issued inde-
pendent claims omit the specific numerical ranges. But we
need not decide whether the amendments here amount to
disavowal or disclaimer because we need not find disa-
vowal or disclaimer to conclude, based on a review of the
prosecution history, that Canopy chose to claim only one of
three options. See University of Massachusetts v. L’Oreal
conditions that are subcri[t]i[c]al in terms of pres-
sure and supercritical in terms of temperature.
’632 patent, col. 5, lines 6–20.
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12 CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED
S.A., 36 F.4th 1374, 1379 (Fed. Cir. 2022) (“The prosecution
history, in particular, may be critical in interpreting dis-
puted claim terms, and even where prosecution history
statements do not rise to the level of unmistakable disa-
vowal, they do inform the claim construction.” (internal
quotation marks omitted) (quoting Personalized Media
Communications, LLC v. Apple Inc., 952 F.3d 1336, 1345
(Fed. Cir. 2020))). To be sure, constructions that read out
embodiments are sometimes wrong. See Oatey Co. v. IPS
Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally
do not interpret claim terms in a way that excludes embod-
iments disclosed in the specification.”); SIMO Holdings,
983 F.3d at 1378–79 (explaining the limited reach of the
language from Oatey, properly understood). Here, though,
the plain language of the claims, along with the prosecu-
tion history and the specification viewed in light of the
prosecution history, make clear that the ’632 patent dis-
closes three non-overlapping embodiments while claiming
only one of them: the one in which pressure and tempera-
ture both must be subcritical.
Canopy’s other arguments are also unavailing. Canopy
contends, for example, that the district court’s inclusion of
“both” in its construction somehow rewrites the claim. But
to achieve the object of definition or clarification, it is typi-
cal in presenting a clarifying interpretation that one uses
expressions absent from the interpreted language itself.
Canopy also points to extrinsic evidence, citing references
that use phrases that are somewhat similar to the phrase
at issue here. Opening Br. at 37–38 (citing use of the
phrases “subcritical conditions,” “subcritical and super-
critical conditions,” and “a subcritical CO2 process” (quot-
ing J.A. 161, J.A. 172–73, J.A. 177, and J.A. 192,
respectively)). But these phrases all involve “subcritical”
clearly modifying either “conditions” or “process,” whereas
here, the very dispute turns on what “subcritical” modifies
in the claim language, and the district court did not clearly
err in deeming the evidence not directly relevant.
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CANOPY GROWTH CORPORATION v. GW PHARMA LIMITED 13
III
For the foregoing reasons, we affirm the district court’s
claim construction order and entry of final judgment of
non-infringement in favor of GW.
AFFIRMED