Apotex, Inc. v. Boehringer lngelheim Pharmaceuticals, Inc. et al.
Infringement action filed 28 Jun 2023 in the United States District Court for the District of Delaware and closed 10 Oct 2023, with 3 patents asserted. Recorded basis of termination: judgment on the merits for plaintiff.
Case record
- Patents involved
- US8846695B2US8673927B2US8883805B2
- Case no.
- 1:23-cv-00704
- Verdict cause
- Infringement action
- Court
- D. Del.
- Court level
- District Court
- Case region
- Delaware
- Chief judge
- Maryellen Noreika
- Trial level
- First instance
- Filed – Closed
- 28 Jun 2023 – 10 Oct 2023
- Duration
- 104 days
- Basis of termination
- Judgment on the merits for Plaintiff
- Products & marks
- TRADJENTA (Linagliptin) Tablets, 5 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
Treatment for diabetes in patients with inadequate glycemic control despite metformin therapy comprising a DPP-IV inhibitor
The present invention relates to the finding that certain DPP-4 inhibitors are particularly suitable for improving glycemic control in type 2 diabetes patients with inadequate glycemic control despite metformin therapy.
- Legal status
- Inactive
- Granted
- 30 Sep 2014
- Earliest priority
- 7 Jan 2009
- Est. expiry
- 4 Dec 2030
- Validity challenges
- 1 on recordIPR2016-01564 · filed by MYLAN PHARMACEUTICALS INC.
- Licences recorded
- None recorded
- Inventors
- DUGI, KLAUS
- Classification
- A61K31/52
- Prosecution counsel
- VP, IP, LEGAL
- Examiner
- SHIAO, REI-TSANG
Uses of DPP-IV inhibitors
The specification describes the use of selected DPP IV inhibitors for the treatment of physiological functional disorders and for reducing the risk of the occurrence of such functional disorders in at-risk patient groups. In addition, the use of the above-mentioned DPP IV inhibitors in conjunction with other active substances is described, by means of which improved treatment outcomes can be achieved. These applications may be used to prepare corresponding medicaments.
- Legal status
- Active
- Granted
- 18 Mar 2014
- Earliest priority
- 4 May 2006
- Est. expiry
- 4 Nov 2027
- Validity challenges
- 1 on recordIPR2016-01563 · Other · filed by MYLAN PHARMACEUTICALS INC.
- Licences recorded
- None recorded
- Inventors
- DUGI, KLAUS · HIMMELSBACH, FRANK · MARK, MICHAEL
- Classification
- A61K31/52A61K31/155
- Prosecution counsel
- VP, IP, LEGAL
- Examiner
- WEDDINGTON, KEVIN E
Also asserted in this case
1 moreThe docket lists 3 asserted patents. Full bibliographic detail, drawings and prosecution history for the remaining asserted patent are one query away in Eureka.
Parties of record
Apotex, Inc.
- Core tech
- Not recorded
- Counsel
- Greg L. Goldblatt · John C. Phillips · Megan C. Haney · Rachel P. Waldron · William A. Rakoczy
- Firm
- Phillips, McLaughlin & Hall PA
Boehringer lngelheim Pharmaceuticals, Inc.
- Core tech
- Not recorded
- Counsel
- Brian P. Egan · Jack B. Blumenfeld · Megan Elizabeth Dellinger
- Firm
- Morris, Nichols, Arsht & Tunnell LLP
- Also named
- Boehringer lngelheim Corporation · Boehringer Lngelheim International, GmbH · Boehringer Lngelheim Pharma Gmbh & Co., KG
Counsel of record
| Attorney | For | Role |
|---|---|---|
| Greg L. Goldblatt | Apotex, Inc. | Plaintiff |
| John C. Phillips | Apotex, Inc. | Plaintiff |
| Megan C. Haney | Apotex, Inc. | Plaintiff |
| Rachel P. Waldron | Apotex, Inc. | Plaintiff |
| William A. Rakoczy | Apotex, Inc. | Plaintiff |
| Brian P. Egan | Boehringer lngelheim Pharmaceuticals, Inc. | Defendant |
| Jack B. Blumenfeld | Boehringer lngelheim Pharmaceuticals, Inc. | Defendant |
| Megan Elizabeth Dellinger | Boehringer lngelheim Pharmaceuticals, Inc. | Defendant |
Basis of termination
From the record · verbatim“1. The Court has subject matter jurisdiction over the declaratory judgment action and personal jurisdiction over Apotex and Boehringer for the purposes of this Final Judgment. 2. Based on Apotex’s assertion that the ‘927 patent is invalid, which is not contested by Boehringer, the Court hereby finds and enters Final Judgment that the claims of the ‘927 patent are invalid for obviousness and obviousness-type double patenting. Final Judgment of invalidity of the ‘927 patent is therefore entered in favor of Apotex as to Apotex’s Count I. 3. Based on Apotex’s assertion that the ‘695 patent is not enforceable, which is not contested by Boehringer, the Court hereby finds and enters Final Judgment that the claims of the ‘695 patent are not enforceable since all claims have been disclaimed by the patentee. Final Judgment of unenforceability of the ‘695 patent is therefore entered in favor of Apotex as to Apotex’s Count II. 4. Based on Apotex’s assertion that the ‘805 patent is not infringed, which is not contested by Boehringer, the Court hereby finds and enters Final Judgment that Apotex’s ANDA and product made by the process described in Apotex’s ANDA do not infringe any claim of the ‘805 patent. Final Judgment of non-infringement of the ‘805 patent is therefore entered in favor of Apotex as to Apotex’s Count III. 5. As a result of the Final Judgment being entered in this action with respect to the ‘927, ‘695, and ‘805 patents, there remains no actual controversy between the parties with respect to the claims brought by Apotex in this action. 6. The Court retains jurisdiction to enforce this Final Judgment. 7. This Final Judgment shall not have any preclusive effect in any cause of action, litigation, or proceeding with respect to any other product other than the Apotex ANDA Product or with respect to any patents other than the ‘927, ‘695, and ‘805 patents. 8. Each party shall bear its own fees and costs in connection with this action, including attorneys’ fees. 9. The Clerk of the Court is directed to enter this Final Judgment in favor of Apotex forthwith. 10. Except as expressly stated in this Final Judgment, the Court makes no other findings of fact, conclusions of law or judgments.”
Case 1:23-cv-00704 · D. Del. · closed 10 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 1:23-cv-00704?
1:23-cv-00704 is a patent infringement action brought by Apotex, Inc. against Boehringer lngelheim Pharmaceuticals, Inc., filed on 28 Jun 2023 in the United States District Court for the District of Delaware. The case closed on 10 October 2023.
Which patents were asserted in 1:23-cv-00704?
US8846695B2 (“Treatment for diabetes in patients with inadequate glycemic control despite metformin therapy comprising a DPP-IV inhibitor”), assigned to BOEHRINGER INGELHEIM INTERNATIONAL GMBH, currently inactive; US8673927B2 (“Uses of DPP-IV inhibitors”), assigned to BOEHRINGER INGELHEIM INTERNATIONAL GMBH, currently active; US8883805B2 (“Process for the preparation of chiral 8-(3-aminopiperidin-1-yl)-xanthines”), assigned to BOEHRINGER INGELHEIM INTERNATIONAL GMBH. The record also lists TRADJENTA (Linagliptin) Tablets, 5 mg.
How was case 1:23-cv-00704 terminated?
The recorded basis of termination is judgment on the merits for plaintiff. The termination text reads: “1. The Court has subject matter jurisdiction over the declaratory judgment action and personal jurisdiction over Apotex and Boehringer for the purposes of this Final Judgment. 2. Based on Apotex’s assertion that the ‘927 patent is invalid, which is not contested by Boehringer, the Court hereby finds and enters Final Judgment that the claims of the ‘927 patent are invalid for obviousness and obviousness-type double patenting. Final Judgment of invalidity of the ‘927 patent is therefore entered in favor of Apotex as to Apotex’s Count I. 3. Based on Apotex’s assertion that the ‘695 patent is not
What does judgment on the merits mean?
A judgment on the merits decides the substance of the claims, as opposed to ending the case on procedural grounds.
How long did case 1:23-cv-00704 take?
104 calendar days, from filing on 28 Jun 2023 to closure on 10 October 2023.
Who were the attorneys and the judge in 1:23-cv-00704?
Chief Judge Maryellen Noreika presided. Greg L. Goldblatt, John C. Phillips, Megan C. Haney, Rachel P. Waldron and William A. Rakoczy are recorded as counsel for plaintiff Apotex. Brian P. Egan, Jack B. Blumenfeld and Megan Elizabeth Dellinger appear for defendant Boehringer lngelheim Pharmaceuticals.
Disclaimer. This page reproduces publicly available court docket data for case 1:23-cv-00704 and is provided for general information and reference only. It is not legal advice and must not be relied upon as such.
Docket data has limits. Records are drawn from a snapshot and may lag the live docket. Sealed filings, amended complaints, counterclaims and post-closure motions may not be reflected. Party names, attorney names and firm affiliations are reproduced as recorded and may contain omissions. Where a field is absent from the record, this page marks it as not recorded rather than inferring a value.
No characterisation of the parties or the outcome. This page reports what the record contains. Nothing here should be read as an assertion that any party infringed, that any patent is valid or invalid, that any settlement occurred, or that any party prevailed.
No FTO or validity opinion. Nothing on this page constitutes a freedom-to-operate, novelty, validity or infringement opinion. Any decision touching a live patent dispute should be verified independently and reviewed with qualified patent counsel.