Boehringer Ingelheim v JAMP Pharma: Empagliflozin Patent Motion Dismissed
Boehringer Ingelheim (Canada) Ltd. brought a PM(NOC) infringement action against JAMP Pharma Corporation asserting six Canadian patents over empagliflozin 10 mg and 25 mg tablets. The defendant's interlocutory motion was dismissed, with the court awarding Boehringer $1,000 in costs — a deliberately reduced amount reflecting procedural failings by both sides.
PM(NOC) Discovery Dispute: Six Empagliflozin Patents in Canada Federal Court
Boehringer Ingelheim (Canada) Ltd. filed two consolidated infringement actions (T-2276-22 and T-2318-22) before Justice Benoit M. Duchesne in the Canada Federal Court, asserting six Canadian patents — CA2696558C, CA2557801C, CA2606650C, CA2752435C, CA2751833C, and CA2813661C — against JAMP Pharma Corporation in relation to empagliflozin tablets containing 10 mg or 25 mg. The proceedings arose under the Patented Medicines (Notice of Compliance) Regulations, which impose strict timelines from service of the Statement of Claim to a trial decision.
The recorded basis of termination is 'Case Dismissed.' The docket order, dated 4 July 2023, dismisses the defendant's interlocutory motion and directs JAMP Pharma to pay Boehringer Ingelheim costs fixed at $1,000 (all inclusive) within 90 days. The court reduced the award from the $3,000 sought by the plaintiffs, citing both parties' failure to cooperate practically — specifically, the plaintiffs' restrictions on the defendant's rights to examine inventors, and the defendant's unsupported motion orders.
Justice Duchesne's costs reasoning is notably instructive: the judgment explicitly flags that PM(NOC) litigation timelines are 'easily derailed' by a party's failure to cooperate, and encourages the parties to schedule inventor examinations for discovery through further discussions or a case management conference. Whether the underlying infringement action proceeded to trial or was resolved separately is not disclosed in the available record.
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Case closed 4 July 2023 under Canada Federal Court PM(NOC) proceedings
CA2696558C and five further patents — empagliflozin tablet formulations


Any company developing, manufacturing, or seeking Canadian regulatory approval for empagliflozin tablets — or closely related SGLT2 inhibitors — should conduct a comprehensive freedom-to-operate analysis against all six asserted patents. The PM(NOC) framework means that listing on the Patent Register automatically triggers litigation risk upon filing a Notice of Allegation. R&D teams formulating SGLT2 inhibitor products at 10 mg or 25 mg dosage strengths face overlapping compound, formulation, and method claims that must each be independently assessed.
Official order — verbatim text
The court's order dismissing JAMP Pharma's motion is framed as a procedural ruling on interlocutory relief, not a merits determination of infringement or validity. The costs award of $1,000 — well below the $3,000 sought — reflects the court's explicit displeasure with both parties' conduct in discovery scheduling, and the judgment's extended commentary on PM(NOC) cooperation obligations suggests the court views procedural discipline as integral to the integrity of the regulatory patent litigation framework.
Defendant's motion dismissed: what the court's ruling means for both parties
What dismissal of a defendant's motion means in PM(NOC) proceedings
The court dismissed JAMP Pharma's interlocutory motion, meaning the relief the defendant sought — likely related to examinations of inventors — was denied as unsupported by the jurisprudence, the Federal Courts Rules, or the PM(NOC) Regulations. Dismissal of a motion does not end the underlying infringement action; the main case continues on its own timetable.
Interlocutory motion dismissedBoehringer Ingelheim succeeds on motion but faces cost reduction
Boehringer Ingelheim was wholly successful on the motion. However, the court awarded only $1,000 of the $3,000 sought, expressly because the plaintiffs applied their own view of proportionality to inventor examinations and hindered the defendant's procedural rights. The court signalled that patent holders in PM(NOC) actions must cooperate reasonably or risk reduced cost recovery.
Costs reduced to $1,000JAMP Pharma's motion fails; costs ordered against it
JAMP Pharma's motion was dismissed and a costs order was entered against it. The court found the orders sought were not supported by applicable rules or regulation. Despite the reduced award, the ruling confirms that generic applicants in PM(NOC) proceedings cannot use interlocutory motions to expand discovery rights beyond what the framework permits.
Motion unsupported; costs payablePM(NOC) timelines and cooperation obligations reinforced
Justice Duchesne's judgment reinforces that PM(NOC) litigation must proceed within tight statutory timelines and that both parties bear a duty under s. 6.09 of the Regulations to cooperate reasonably. Pharmaceutical IP teams should note that failing to agree on realistic discovery timetables can result in costs orders and, potentially, restrictions on examination rights — for either side.
PM(NOC) cooperation duty affirmedFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | BOEHRINGER INGELHEIM (CANADA) LTD. | Company | /Search in Eureka ↗ |
| Defendant | JAMP PHARMA CORPORATION | Company | /Search in Eureka ↗ |
| Plaintiff counsel | Alex Gloor | Attorney | Counsel for BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗ |
| Plaintiff counsel | Alexander Camenzind | Attorney | Counsel for BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗ |
| Plaintiff law firm | Alex Gloor Alexander Camenzind Gowling WLG | Law Firm | Representing BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗ |
| Defendant counsel | Nathaniel Dillonsmith | Attorney | Counsel for JAMP PHARMA CORPORATIONSearch in Eureka ↗ |
| Defendant counsel | Raenaud Tiwari | Attorney | Counsel for JAMP PHARMA CORPORATIONSearch in Eureka ↗ |
| Defendant law firm | Nathaniel Dillonsmith Raenaud Tiwari Sprigings | Law Firm | Representing JAMP PHARMA CORPORATIONSearch in Eureka ↗ |
| Presiding judge | Judge Benoit M. Duchesne | Judge | Canada Federal courtSearch in Eureka ↗ |
R&D signals in the empagliflozin and SGLT2 inhibitor patent space
Forward-looking patent intelligence derived from Boehringer Ingelheim's six-patent empagliflozin portfolio and JAMP Pharma's generic entry activity in Canada's SGLT2 inhibitor market.
Boehringer Ingelheim's empagliflozin patent filing depth in Canada
Asserting six Canadian patents for a single molecule signals a deep prosecution strategy across compound, formulation, dosage, and method-of-use claim types. Monitoring Boehringer Ingelheim's Canadian and PCT filing activity for empagliflozin and next-generation SGLT2 inhibitors can reveal where the portfolio is being extended or where exclusivity gaps are emerging.
Portfolio depth signalSGLT2 inhibitor patent filing trends post-empagliflozin exclusivity
As empagliflozin approaches patent expiry milestones in key markets, filing activity in SGLT2 inhibitor combinations, new indications (heart failure, chronic kidney disease), and next-generation inhibitor scaffolds is accelerating. Tracking these trends helps R&D teams identify white space and anticipate where the next wave of PM(NOC) litigation risk will concentrate.
Filing trend: SGLT2 next-genJAMP Pharma's generic pharmaceutical patent and regulatory strategy
JAMP Pharma's willingness to contest inventor examination scope in PM(NOC) proceedings suggests an active litigation strategy rather than early settlement. Monitoring JAMP Pharma's NOA filings across multiple originator portfolios and any inter partes patent challenges they initiate can signal which originator drug classes are being prioritised for generic entry.
Generic challenger postureAdjacent innovation opportunities around SGLT2 inhibitor formulation
The six-patent cluster around empagliflozin tablets focuses on established dosage forms. Adjacent white space may exist in novel delivery mechanisms, fixed-dose combinations with DPP-4 inhibitors or GLP-1 agonists, paediatric formulations, and SGLT2 inhibitors for non-diabetes indications. These areas may carry lower patent density and represent viable R&D differentiation pathways.
Formulation white spaceSimilar Canadian PM(NOC) patent cases involving SGLT2 inhibitor formulations
Explore PM(NOC) infringement actions in Canada Federal Court involving empagliflozin, SGLT2 inhibitors, and multi-patent originator enforcement strategies against generic applicants.
Related patent case — similar technology
Comparable case in the same technology domain. Patent holder and defendant reached resolution after proceedings.
SettledRelated infringement action — same court
Comparable Empagliflozin tablets containing 10 mg or 25 mg-adjacent infringement action. Patent enforcement dynamics analysed in depth.
Active · District CourtRelated invalidity challenge — appellate outcome
Combined invalidity and infringement action in the same technology space. Decided after substantive proceedings.
DecidedBOEHRINGER INGELHEIM (CANADA) LTD.'s broader IP enforcement history
BOEHRINGER INGELHEIM (CANADA) LTD.'s full litigation history covering prior enforcement, licensing activity, and inter partes review proceedings.
Portfolio viewWhat this case signals for the Canadian pharmaceutical patent IP landscape
This ruling highlights the procedural discipline courts expect from both originators and generics in PM(NOC) empagliflozin litigation.
PM(NOC) cooperation duties cut both ways — originators are not immune
Boehringer Ingelheim won the motion but received less than a third of the costs sought. Patent holders in PM(NOC) proceedings who restrict inventor examinations risk costs penalties even when successful. Compliance with s. 6.09 cooperation obligations is a litigation risk for originators, not just generics.
Six-patent assertion strategy signals broad empagliflozin portfolio enforcement
Asserting six Canadian patents across a single generic entry suggests Boehringer Ingelheim is deploying a layered patent portfolio strategy for empagliflozin. Competitors and generic applicants should audit all six patents — CA2696558C, CA2557801C, CA2606650C, CA2752435C, CA2751833C, CA2813661C — before filing any NOA for SGLT2 inhibitor products.
Discovery motion tactics in PM(NOC) cases: what the record reveals about JAMP's strategy
JAMP Pharma's failed motion suggests generic applicants are testing the boundaries of inventor examination rights in PM(NOC) proceedings. The court's explicit guidance on case management conferences and cooperation duties may deter similar motions — but also signals a judicial appetite for active case management in complex pharmaceutical IP disputes.
Empagliflozin patent cluster: downstream FTO and invalidity exposure for SGLT2 generics
With six overlapping Canadian patents asserted, any future generic NOA filer for empagliflozin faces a multi-patent litigation risk. The composition, formulation, and method-of-use coverage across this portfolio creates compounding FTO exposure. Early invalidity analysis of each patent in the cluster is essential before any SGLT2 inhibitor product launch decision.
BOEHRINGER v JAMP — key questions answered
Boehringer Ingelheim asserted six Canadian patents: CA2696558C, CA2557801C, CA2606650C, CA2752435C, CA2751833C, and CA2813661C. All relate to empagliflozin tablets at 10 mg and 25 mg dosage strengths and were asserted in consolidated PM(NOC) infringement actions before the Canada Federal Court.
JAMP Pharma's interlocutory motion was dismissed by Justice Benoit M. Duchesne. The court found the orders sought were unsupported by the jurisprudence, the Federal Courts Rules, or the PM(NOC) Regulations. JAMP Pharma was ordered to pay costs of $1,000 within 90 days.
Justice Duchesne exercised discretion to reduce costs because both parties failed to cooperate practically. The court specifically noted that the plaintiffs hindered the defendant's rights to examine inventors and applied their own view of proportionality, which the court declined to reward despite Boehringer being wholly successful on the motion.
Section 6.09 of the Patented Medicines (Notice of Compliance) Regulations requires parties to cooperate reasonably to expedite the action. The court cited this provision to underscore that PM(NOC) litigation must proceed efficiently from Statement of Claim to trial decision, and that failures to cooperate can result in costs orders or restrictions on examination rights.
No. The July 2023 order addresses only JAMP Pharma's interlocutory motion regarding discovery procedures. It is not a determination on the merits of infringement or patent validity. Whether the underlying infringement action proceeded to trial or was otherwise resolved is not disclosed in the available record.
Track empagliflozin patent enforcement and PM(NOC) litigation in Canada
PatSnap Eureka monitors the full Boehringer Ingelheim empagliflozin patent cluster and PM(NOC) infringement actions in real time. Run FTO analysis or set litigation alerts before filing any Notice of Allegation for SGLT2 inhibitor products.
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