ARTICLE
2 September 2024

Boehringer Ingelheim Succeeds In Nintedanib PMNOC Action Against JAMP

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Smart & Biggar

Contributor

Smart & Biggar uncovers and maximizes intellectual property and technology assets for our clients. Today’s fast-paced innovation economy demands a higher level of expertise and attention to detail when it comes to IP strategy and protection. With over 125 lawyers, patent agents and trademark agents collaborating across five Canadian offices, Smart & Biggar is trusted by the world’s leading innovators to find value in their IP rights. As market leaders in IP, Smart & Biggar’s team is on the pulse when it comes to the latest developments and the wider industry changes that impact our clients. To stay informed, visit smartbiggar.ca/insights, including access to our RxIP Update (smartbiggar.ca/insights/rx-ip-updates), a monthly digest of the latest decisions and law surrounding the life sciences and pharmaceutical industries.
In a public decision dated August 8, 2024, Justice Furlanetto of the Federal Court found Boehringer Ingelheim's Canadian Patent No. 2,591,083 (the 083 patent) valid and infringed by JAMP...
Canada Food, Drugs, Healthcare, Life Sciences

In a public decision dated August 8, 2024, Justice Furlanetto of the Federal Court found Boehringer Ingelheim's Canadian Patent No. 2,591,083 (the 083 patent) valid and infringed by JAMP in an action under the Patented Medicines (Notice of Compliance) Regulations relating to OFEV® (nintedanib): Boehringer Ingelheim (Canada) Ltd v JAMP Pharma Corporation2024 FC 1198.

The 083 patent relates to the use of nintedanib and its esylate salt in the prevention or treatment of idiopathic pulmonary fibrosis (IPF) – a rare, chronic and incurable lung disease that typically leads to respiratory failure and death.

The Court found that the 083 patent is not invalid for anticipation, double patenting, lack of sound prediction of utility or obviousness. In particular, the 083 patent provided the skilled person with a sound prediction of utility that was “more than mere speculation or hypothesis, but one grounded in the accepted in vivo  model for evaluating potential efficacy”.

In addition, the Court concluded that JAMP's import and sale of JAMP Nintedanib is sufficient to constitute direct infringement of the 083 claims that are directed to the medicine (nintedanib esylate) and pharmaceutical composition of the medicine for use in the prevention or treatment of IPF. JAMP had stipulated that it would induce infringement of the 083 claims.

With respect to the second patent at issue relating to a formulation of nintedanib esylate (Canadian Patent No. 2,726,267), the Court found that JAMP Nintedanib does not infringe the asserted claims and declined to consider the invalidity defences raised by JAMP.

Boehringer Ingelheim was successfully represented by a trial team from Smart & Biggar, including J. Sheldon Hamilton, Nancy Pei, Urszula Wojtyra, Katie Lee, Chen Li, Malcolm Harvey and Ryan Wong.

Either party may appeal as of right.

Should you have any questions, please do not hesitate to contact a member of the Pharmaceutical Litigation Group.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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