Boehringer-Ingelheim et al. v. Hetero USA, Inc. et al.
Infringement action filed 13 Jan 2023 in the United States District Court for the District of Delaware and closed 12 Oct 2023, with 2 patents asserted. Recorded basis of termination: consent judgment.
Case record
- Patents involved
- US10034877B2US9486526B2
- Case no.
- 1:23-cv-00048
- Verdict cause
- Infringement action
- Court
- D. Del.
- Court level
- District Court
- Case region
- Delaware
- Chief judge
- Colm F. Connolly
- Trial level
- First instance
- Filed – Closed
- 13 Jan 2023 – 12 Oct 2023
- Duration
- 272 days
- Basis of termination
- Consent Judgment
- Products & marks
- Treatment for diabetes in patients inappropriate for metformin therapy
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Treatment for diabetes in patients inappropriate for metformin therapy
The present invention relates to the finding that certain DPP-4 inhibitors are particularly suitable for treating and/or preventing metabolic diseases, particularly diabetes, in patients for whom metformin therapy is inappropriate due to intolerability or contraindication against metformin.
- Legal status
- Active
- Granted
- 31 Jul 2018
- Earliest priority
- 7 Aug 2008
- Est. expiry
- 5 Feb 2030
- Validity challenges
- None recorded
- Licences recorded
- None recorded
- Inventors
- DUGI, KLAUS · GRAEFE-MODY, EVA ULRIKE · HARPER, RUTH · WOERLE, HANS-JUERGEN
- Classification
- C07D473/06A61K31/522A61K31/4439A61K31/4375A61K31/427A61K31/4025A61K31/422A61K9/00A61K31/496A61K45/06A61K31/40A61K31/403A61K31/4985A61K31/506A61K31/5025A61K31/513
- Prosecution counsel
- VP, IP, LEGAL
- Examiner
- CORDERO GARCIA, MARCELA M
Treatment for diabetes in patients inappropriate for metformin therapy
The present invention relates to the finding that certain DPP-4 inhibitors are particularly suitable for treating and/or preventing metabolic diseases, particularly diabetes, in patients for whom metformin therapy is inappropriate due to intolerability or contraindication against metformin.
- Legal status
- Active
- Granted
- 8 Nov 2016
- Earliest priority
- 7 Aug 2008
- Est. expiry
- 5 Feb 2030
- Validity challenges
- None recorded
- Licences recorded
- None recorded
- Inventors
- DUGI, KLAUS · GRAEFE-MODY, EVA ULRIKE · HARPER, RUTH · WOERLE, HANS-JUERGEN
- Classification
- A61K31/52A61K31/422A61K31/403A61K31/4375A61K31/4439A61K31/4985A61K31/5025A61K31/506A61K31/513A61K31/522A61K31/427A61K45/06A61K31/40A61K31/4025
- Prosecution counsel
- VP, IP, LEGAL
- Examiner
- CORDERO GARCIA, MARCELA M
Parties of record
Boehringer-Ingelheim
- Core tech
- C07D473/06A61K31/522A61K31/4439A61K31/4375
- Counsel
- Brian P. Egan · Jack B. Blumenfeld · Megan Elizabeth Dellinger
- Firm
- Morris, Nichols, Arsht & Tunnell LLP
- Also named
- Boehringer Ingelheim Corporation · Boehringer Ingelheim Pharma Gmbh & Co., KG · Boehringer Ingelheim International, GMBH
Hetero USA, Inc.
- Core tech
- Not recorded
- Counsel
- Cortlan S. Hitch · Kenneth Laurence Dorsney
- Firm
- Morris James LLP
- Also named
- Hetero Labs Limited · Hetero Labs Limited
Counsel of record
| Attorney | For | Role |
|---|---|---|
| Brian P. Egan | Boehringer-Ingelheim | Plaintiff |
| Jack B. Blumenfeld | Boehringer-Ingelheim | Plaintiff |
| Megan Elizabeth Dellinger | Boehringer-Ingelheim | Plaintiff |
| Cortlan S. Hitch | Hetero USA, Inc. | Defendant |
| Kenneth Laurence Dorsney | Hetero USA, Inc. | Defendant |
Basis of termination
From the record · verbatim“For purposes of this action only,this court has jurisdiction over the subject matter of the above action and has personal jurisdiction over the parties.As used in this consent judgementand unless specifically authorized or otherwise modified between the parties in any related agreement(s). (i) term “the 526 patent means U.S. Patent No. 9,486,526, which Hetero is valid and (ii) the term ‘The ‘877 Patent” means U.S. Patent No. 10,034,877, Which Hetero agrees is valid and enforceable. (iii) the term “Hetero ANDA Products” shall mean the products described in Abbreviated New Drug Application NO. 217749, including 5 mg linagliptin tablets as a generic version Of TradjentaØ as existing on the Effective Date, and as amended or supplemented from time to time in the ordinary course of business, and (iv) thc term “Affiliate” shall mean any entity controlling. controlled by, under common control with a party, but only as long as such control continues. where “control” means: I ) the ownership of at least fifty (50%) Of the equity or beneficial interest of such entity. or the right to vote for Or aprx’int a majority of the board of directors or other governing body of such entity. or (2) the power to directly or indirectly direct or cause the direction of the management and policies Of such entity by any means whatsoever.”
Case 1:23-cv-00048 · 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 1:23-cv-00048?
1:23-cv-00048 is a patent infringement action brought by Boehringer-Ingelheim against Hetero USA, Inc., filed on 13 Jan 2023 in the United States District Court for the District of Delaware. The case closed on 12 October 2023.
Which patents were asserted in 1:23-cv-00048?
US10034877B2 (“Treatment for diabetes in patients inappropriate for metformin therapy”), assigned to BOEHRINGER INGELHEIM INTERNATIONAL GMBH, currently active; US9486526B2 (“Treatment for diabetes in patients inappropriate for metformin therapy”), assigned to BOEHRINGER INGELHEIM INTERNATIONAL GMBH, currently active. The record also lists Treatment for diabetes in patients inappropriate for metformin therapy.
How was case 1:23-cv-00048 terminated?
The recorded basis of termination is consent judgment. The termination text reads: “For purposes of this action only,this court has jurisdiction over the subject matter of the above action and has personal jurisdiction over the parties.As used in this consent judgementand unless specifically authorized or otherwise modified between the parties in any related agreement(s). (i) term “the 526 patent means U.S. Patent No. 9,486,526, which Hetero is valid and (ii) the term ‘The ‘877 Patent” means U.S. Patent No. 10,034,877, Which Hetero agrees is valid and enforceable. (iii) the term “Hetero ANDA Products” shall mean the products described in Abbreviated New Drug Application NO.
What does consent judgment mean?
A consent judgment is a judgment the parties agree to and the court enters. Unlike a bare dismissal it is enforceable as a judgment.
How long did case 1:23-cv-00048 take?
272 calendar days, from filing on 13 Jan 2023 to closure on 12 October 2023.
Who were the attorneys and the judge in 1:23-cv-00048?
Chief Judge Colm F. Connolly presided. Brian P. Egan, Jack B. Blumenfeld and Megan Elizabeth Dellinger are recorded as counsel for plaintiff Boehringer-Ingelheim. Cortlan S. Hitch and Kenneth Laurence Dorsney appear for defendant Hetero USA.
Disclaimer. This page reproduces publicly available court docket data for case 1:23-cv-00048 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.