Allergan et al. v. MSN Laboratories Private Limited et al.
Infringement action filed 23 Jul 2021 in the United States District Court for the District of Delaware and closed 12 Oct 2023, with 16 patents asserted. Recorded basis of termination: case consolidated.
Case record
- Patents involved
- US9364489B2US9700542B2US10213415B2US9675587B2US9789125B2US8772325B2US7786158B2US10188632B2US9115091B2US8609709B2US7741356B2US9205076B2US8691860B2US11090291B2US8344011B2US11007179B2
- Case no.
- 1:21-cv-01064
- Verdict cause
- Infringement action
- Court
- D. Del.
- Court level
- District Court
- Case region
- Delaware
- Chief judge
- Richard G. Andrews
- Trial level
- First instance
- Filed – Closed
- 23 Jul 2021 – 12 Oct 2023
- Duration
- 811 days
- Basis of termination
- Case Consolidated
- Products & marks
- Eluxadoline generic oral tablets 75 mg and 100 mg
Check this patent against your own product
Prior art, claim scope, infringement exposure and design-around routes. Every answer cites the records behind it.
Get an FTO claim chart- 01Ranked prior artEvery hit source-linked
- 02Claim-level comparisonAgainst your own product
- 03Legal statusAcross 174 jurisdictions
Crystals and process of making 5-({[2-amino-3-(4-Carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid
The present invention relates to a novel crystals of 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid and methods of making the zwitterion of 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid.
- Legal status
- Active
- Granted
- 14 Jun 2016
- Earliest priority
- 9 Jul 2007
- Est. expiry
- 7 Jul 2028
- Validity challenges
- None recorded
- Licences recorded
- None recorded
- Inventors
- ANZALONE, LUIGI · VILLANI, FRANK J. · TELEHA, CHRISTOPHER A. · FEIBUSH, PENINA · FEGELY, BARRY
- Classification
- A61K31/4164C07D233/64A61K31/625
- Prosecution counsel
- ALLERGAN, INC.
- Examiner
- VAJDA, KRISTIN
Compounds as opioid receptor modulators
The present invention is directed to novel opioid receptor modulators of Formula (I).The invention further relates to methods for preparing such compounds, pharmaceutical compositions containing them, and their use in the treatment of disorders that may be ameliorated or treated by the modulation of opioid receptors.
- Legal status
- Inactive
- Granted
- 11 Jul 2017
- Earliest priority
- 15 Mar 2004
- Est. expiry
- 14 Mar 2025
- Validity challenges
- None recorded
- Licences recorded
- None recorded
- Inventors
- BRESLIN, HENRY J. · CAI, CHAOZHONG · HE, WEI · KAVASH, ROBERT W.
- Classification
- A61K31/4174A61K9/20C07D275/06C07D233/64A61K31/4164A61K9/28A61K31/4172A61K31/4178A61K31/454C07D233/54
- Prosecution counsel
- ALLERGAN, INC.
- Examiner
- KOSACK, JOSEPH
Also asserted in this case
14 moreThe docket lists 16 asserted patents. Full bibliographic detail, drawings and prosecution history for the remaining 14 asserted patents are one query away in Eureka.
- US10213415B2Compounds as opioid receptor modulators
- US9675587B2Opioid receptor modulator dosage formulations
- US9789125B2Crystals and process of making 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1H-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid
- US8772325B2Compounds as opioid receptor modulators
- US7786158B2Compounds as opioid receptor modulators
- US10188632B2Opioid receptor modulator dosage formulations
- US9115091B2Crystals and process of making 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl—1H-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid
- US8609709B2Compounds as opioid receptor modulators
- US7741356B2Compounds as opioid receptor modulators
- US9205076B2Compounds as opioid receptor modulators
- US8691860B2Crystals and process of making 5-({(2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(-4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid
- US11090291B2Opioid receptor modulator dosage formulations
- US8344011B2Compounds as opioid receptor modulators
- US11007179B2Opioid receptor modulator dosage formulations
Parties of record
Allergan
- Core tech
- A61K31/4164C07D233/64A61K31/625
- Counsel
- Jack B. Blumenfeld · Jeremy A. Tigan
- Firm
- Morris, Nichols, Arsht & Tunnell LLP
- Also named
- Allergan Holdings Unlimited Company · Eden Biodesign, LLC
MSN Laboratories Private Limited
- Core tech
- Not recorded
- Counsel
- Stamatios Stamoulis
- Firm
- Stamoulis & Weinblatt LLC
- Also named
- MSN Pharmaceuticals, Inc.
Counsel of record
| Attorney | For | Role |
|---|---|---|
| Jack B. Blumenfeld | Allergan | Plaintiff |
| Jeremy A. Tigan | Allergan | Plaintiff |
| Stamatios Stamoulis | MSN Laboratories Private Limited | Defendant |
Basis of termination
From the record · verbatim“WHEREAS, the actions against Alkem Laboratories Limited (21-1061); Aurobindo Pharma Ltd. and Aurobindo Pharma USA, Inc. (21-1062); Hetero Labs Limited and Hetero USA Inc. (21-1063); MSN Laboratories Private Limited and MSN Pharmaceuticals, Inc. (21-1064); Sun Pharmaceutical Industries Limited (21-1065); and Zydus Pharmaceuticals (USA) Inc. (21-1066) (collectively, “Related Actions”) are related to C.A. No. 19-1727, which is currently pending before this Court; IT IS HEREBY STIPULATED by the parties, subject to the approval of the Court, that: 1. The Related Actions shall be consolidated with C.A. No. 19-1727 (RGA) for all purposes; 2. All filings shall be made in the lead case C.A. No. 19-1727 (RGA); 3. The Scheduling Order in the lead case C.A. No. 19-1727 (RGA) (D.I. 14, as modified by D.I. 81, D.I. 156, and D.I. 208) is modified as set forth in the table .”
Case 1:21-cv-01064 · D. Del. · closed 12 October 2023
Related cases
Three questions this record usually leads to. Each one runs against the full litigation and patent corpus, and cites what it finds.
Frequently asked questions
What is case 1:21-cv-01064?
1:21-cv-01064 is a patent infringement action brought by Allergan against MSN Laboratories Private Limited, filed on 23 Jul 2021 in the United States District Court for the District of Delaware. The case closed on 12 October 2023.
Which patents were asserted in 1:21-cv-01064?
US9364489B2 (“Crystals and process of making 5-({[2-amino-3-(4-Carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY, currently active; US9700542B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA NV, currently inactive; US10213415B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US9675587B2 (“Opioid receptor modulator dosage formulations”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US9789125B2 (“Crystals and process of making 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl-1H-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US8772325B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US7786158B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US10188632B2 (“Opioid receptor modulator dosage formulations”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US9115091B2 (“Crystals and process of making 5-({[2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(4-phenyl—1H-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US8609709B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US7741356B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N. V.; US9205076B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US8691860B2 (“Crystals and process of making 5-({(2-amino-3-(4-carbamoyl-2,6-dimethyl-phenyl)-propionyl]-[1-(-4-phenyl-1h-imidazol-2-yl)-ethyl]-amino}-methyl)-2-methoxy-benzoic acid”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US11090291B2 (“Opioid receptor modulator dosage formulations”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY; US8344011B2 (“Compounds as opioid receptor modulators”), assigned to JANSSEN PHARMACEUTICA, N.V.; US11007179B2 (“Opioid receptor modulator dosage formulations”), assigned to ALLERGAN HOLDINGS UNLIMITED COMPANY. The record also lists Eluxadoline generic oral tablets 75 mg and 100 mg.
How was case 1:21-cv-01064 terminated?
The recorded basis of termination is case consolidated. The termination text reads: “WHEREAS, the actions against Alkem Laboratories Limited (21-1061); Aurobindo Pharma Ltd. and Aurobindo Pharma USA, Inc. (21-1062); Hetero Labs Limited and Hetero USA Inc. (21-1063); MSN Laboratories Private Limited and MSN Pharmaceuticals, Inc. (21-1064); Sun Pharmaceutical Industries Limited (21-1065); and Zydus Pharmaceuticals (USA) Inc. (21-1066) (collectively, “Related Actions”) are related to C.A. No. 19-1727, which is currently pending before this Court; IT IS HEREBY STIPULATED by the parties, subject to the approval of the Court, that: 1. The Related Actions shall be consolidated with
How long did case 1:21-cv-01064 take?
811 calendar days, from filing on 23 Jul 2021 to closure on 12 October 2023.
Who were the attorneys and the judge in 1:21-cv-01064?
Chief Judge Richard G. Andrews presided. Jack B. Blumenfeld and Jeremy A. Tigan are recorded as counsel for plaintiff Allergan. Stamatios Stamoulis appears for defendant MSN Laboratories Private.
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