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Boehringer Ingelheim v JAMP Pharma – Empagliflozin Patent Litigation | PatSnap
Patent Litigation

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.

Resolution time
0days
Case closed 4 July 2023 under Canada Federal Court PM(NOC) proceedings
Patents asserted
6
CA2696558C and 5 further Canadian patents asserted covering empagliflozin tablets
Outcome
Case Dismissed
Defendant's interlocutory motion dismissed; costs of $1,000 awarded to plaintiffs
Cost ruling
$1,000 Costs
Lump-sum costs fixed by court, reduced from $3,000 sought due to both parties' conduct
Published by PatSnap Insights Team · Verified by PatSnap Eureka Data
Case overview

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 at a glance
CourtCanada Federal court
JudgeBenoit M. Duchesne
FiledN/A
ClosedJuly 4, 2023
Duration0 days
OutcomeCase Dismissed
Verdict causeInfringement Action
BasisCase Dismissed
Prior Art Intelligence
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Case timeline

Filing to Case Dismissed in 0 days

Case closed 4 July 2023 under Canada Federal Court PM(NOC) proceedings

Case timeline: Complaint filed — 0 days total Horizontal timeline showing the three key events in BOEHRINGER INGELHEIM (CANADA) LTD. v JAMP PHARMA CORPORATION from filing to resolution. Source: PACER, Canada Federal court. Complaint filed Pre-trial proceedings JUL 4 2023 Case Dismissed 0 DAYS TOTAL
Patent at issue

CA2696558C and five further patents — empagliflozin tablet formulations

Publication No.CA2696558C
Patent details
ProductEmpagliflozin compound and SGLT2 inhibitor formulations
Cited in actionN/A

Publication No.CA2557801C
Patent details
ProductEmpagliflozin pharmaceutical compositions and tablet formulations
Cited in actionN/A

Publication No.CA2606650C
Patent details
ProductEmpagliflozin formulation methods and dosage forms
Cited in actionN/A

Publication No.CA2752435C
Patent details
ProductEmpagliflozin therapeutic use and treatment methods
Cited in actionN/A

Publication No.CA2751833C
Patent details
ProductEmpagliflozin crystal forms or solid-state compositions
Cited in actionN/A

Publication No.CA2813661C
Patent details
ProductEmpagliflozin combination or related pharmaceutical preparations
Cited in actionN/A
Technical brief · sourced from PatSnap patent database
Patent figurePatent figure
Representative claim (1 of 4 independent)
CLAIMS: 1. A pharmaceutical composition comprising the glucopyranosyl- substituted benzene derivative 1-chloro-4-(.beta.-D-glucopyranos-1-yl)-2-[4- ((S)- tetrahydrofuran-3-yloxy)-benzyl]-benzene and one or more pharmaceutically acceptable carriers, for use in combination with the DPP IV inhibitor 1-[(4- methyl- quinazolin-2-yl)methyl]-3-methyl-7-(2-butyn-1-yl)-8-(3-(R)-amino-piperidin-1- yl)- xanthine or a pharmaceutically acceptable salt thereof. 2. The pharmaceutical composition according to claim 1, wherein the DPP IV inhibitor is 1-[(4-methyl-quinazolin-2-yl)methyl]-3-methyl-7-(2-butyn-1-yl)- 8.(3-(R)- amino-…
Technical background
CA 02696558 2015-07-17- 1 - Combination of a glucopyranosyl-substituted benzene derivative and DPP IV Inhibitor for Improving Glycemic Control Technical Field of the Invention The invention relates to a pharmaceutical composition comprising a glucopyranosyl- substituted benzene derivative of the formula (I) as described hereinafter in combination with a DPP IV inhibitor as specified hereinafter. More particularly, the invention relates to a pharmaceutical composition comprising the glucopyranosyl-substituted benzen…
Patent family
85 family members across 49 jurisdictions (VN, CA, CY, WO, US, NL, MT, HU, EC, BR, JP, CL)
PatSnap Eureka · FTO Search Agent
Should you run an FTO against CA2696558C and the empagliflozin patent cluster?

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.

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Official verdict

Official order — verbatim text

[52] For the reasons provided above, the Defendant’s motion is dismissed. [53] The Plaintiffs stated at the hearing of this motion that they are seeking costs in the amount of $3,000, should they be successful. The Plaintiffs were wholly successful on this motion. The Defendant shall pay the Plaintiffs their costs of this motion which I hereby fix in the lump sum amount of $1,000, all inclusive, within 90 days of the date of this Order. [54] I have exercised my discretion to award a low amount of costs because of the parties’ failure to be practical that is reflected in the record that is before me. The Plaintiffs complied with the early scheduling order and then applied their own view of proportionality with respect to further examinations of inventors. The Plaintiffs ought not to be rewarded for hindering the Defendant’s procedural rights to examine inventors, and the Defendant should be made to understand by way of costs order, albeit a modest one, that the Orders sought on this motion were simply not supported by either the jurisprudence, the Rules, or the Regulation. [55] The RIAS and the industry/regulatory compromises given effect through the Regulations reflect a real concern that litigation pursuant to the Regulations must proceed from service of the Statement of Claim to a trial decision in a very short time frame that is easily derailed by one party’s failures to cooperate reasonably at any given time throughout the process. Section 6.09 of the Regulation recognizes that the parties are to reasonably cooperate to expedite any action. This Court’s Case and Trial Management Guidelines for Complex Proceedings and Proceedings under the PM(NOC) Regulation contain a direction that parties are to make a bona fide effort to agree and set realistic timetables in their discovery plans. A failure to do so can result in consequences, including significant costs. Other types of Orders such as restrictions on examination rights may be made to drive home the point that a failure to cooperate reasonably on issues of process and procedure that do not detrimentally affect a party’s legitimate interests and rights in the cause but results in running down the litigation clock is not acceptable. [56] The parties are encouraged to have meaningful discussions to schedule the examination for discovery of inventors. The parties may request a case management conference for the Court’s assistance in scheduling and carrying out those examinations for discovery should they not be able to agree. THIS COURT ORDERS that: The Defendant’s motion is dismissed. The Defendant shall pay the Plaintiffs their costs of this motion in the amount of $1,000, all inclusive, within 90 days of the date of this Order.
Source: PACER Docket, Case T-2276-22|T-2318-22, Canada Federal court

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.

PACER case T-2276-22|T-2318-22 · Public docket record Explore in Eureka ↗
Dismissal terms

Defendant's motion dismissed: what the court's ruling means for both parties

Legal mechanism

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 dismissed
Patent holder outcome

Boehringer 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 $1,000
Defendant outcome

JAMP 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 payable
Commercial implications

PM(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 affirmed
Legal analysis based on PACER docket records for case T-2276-22|T-2318-22 and PatSnap Eureka litigation intelligence Search PatSnap Eureka ↗
Parties and representation

Full party and counsel information

RoleNameTypeDetail
PlaintiffBOEHRINGER INGELHEIM (CANADA) LTD.Company/Search in Eureka ↗
DefendantJAMP PHARMA CORPORATIONCompany/Search in Eureka ↗
Plaintiff counselAlex GloorAttorneyCounsel for BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗
Plaintiff counselAlexander CamenzindAttorneyCounsel for BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗
Plaintiff law firmAlex Gloor Alexander Camenzind Gowling WLGLaw FirmRepresenting BOEHRINGER INGELHEIM (CANADA) LTD.Search in Eureka ↗
Defendant counselNathaniel DillonsmithAttorneyCounsel for JAMP PHARMA CORPORATIONSearch in Eureka ↗
Defendant counselRaenaud TiwariAttorneyCounsel for JAMP PHARMA CORPORATIONSearch in Eureka ↗
Defendant law firmNathaniel Dillonsmith Raenaud Tiwari SprigingsLaw FirmRepresenting JAMP PHARMA CORPORATIONSearch in Eureka ↗
Presiding judgeJudge Benoit M. DuchesneJudgeCanada Federal courtSearch in Eureka ↗
R&D signals

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.

Patent portfolio

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 signal
Technology landscape

SGLT2 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-gen
Competitor IP posture

JAMP 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 posture
White space opportunity

Adjacent 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 space
Related litigation

Similar 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.

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BOEHRINGER INGELHEIM (CANADA) LTD. patent enforcement history, Canada Federal court case history, BOEHRINGER INGELHEIM (CANADA) LTD.'s full IP portfolio, and comparable case analysis
Other JAMP Pharma NOC casesEmpagliflozin PM(NOC) actionsSGLT2 inhibitor patent disputesBoehringer Ingelheim Canada IP
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Strategic implications

What 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.

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Full strategic analysis in PatSnap Eureka
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Inventor examination rightsSGLT2 patent cluster riskPM(NOC) costs benchmarks
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Analysis powered by PatSnap Eureka Litigation Intelligence Explore in Eureka ↗
Frequently asked questions

BOEHRINGER v JAMP — key questions answered

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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.

Disclaimer

This page is compiled from public court dockets and third-party patent and litigation data via PatSnap Eureka, and is provided for general informational purposes only. The information shown — including party names, patent and application numbers, dates, case status, outcomes, and any analysis — may be incomplete, may not reflect the most recent filings or legal status, and may contain errors or omissions. Verify all details against official court records (for example, PACER) and the relevant patent office before relying on them.

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