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Boehringer Ingelheim Pharms., Inc. v. Mylan Pharms., Inc.

United States Court of Appeals for the Federal Circuit

March 16, 2020, Decided

2019-1172

Opinion

Moore, Circuit Judge [*2] .

Appellants Boehringer Ingelheim Pharmaceuticals, Inc., Boehringer Ingelheim International GmbH, Boehringer Ingelheim Corporation, and Boehringer Ingelheim Pharma GmgH & Co. KG (collectively, Boehringer) sued Mylan Pharmaceuticals Inc., Mylan Inc., Mylan Laboratories, Ltd., Aurobindo Pharma Limited and Aurobindo Pharma USA, Inc. (collectively, Appellees) for infringement of U.S. Patent Nos. 8,853,156, 9,173,859 and 8,673,927, which relate to the treatment of type 2 diabetes mellitus with DPP-IV inhibitors such as linagliptin. Appellees moved for partial judgment on the pleadings under Federal Rule of Civil Procedure 12(c) alleging that claims 10-17, 24 and 25 of the '156 patent are directed to ineligible subject matter under 35 U.S.C. § 101. The district court granted Appellees' motion, holding the claims patent ineligible under the two-step framework of Alice Corporation Pty. Ltd. v. CLS Bank International. 573 U.S. 208, 217, 134 S. Ct. 2347, 189 L. Ed. 2d 296 (2014).

A bench trial ensued on the '859 and '927 patents. The district court held that claims 1, 14, 15, 20, and 21 of the '859 patent and claims 7, 9, 15, 17, 19, 25, and 26 of the '927 patent are invalid for obviousness-type double patenting in light of the claims of U.S. Patent No. 8,178,541, and invalid as obvious in view of U.S. Patent Application Publication No. 2004/0097510. Boehringer appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

For the reasons discussed below, we reverse the district court's judgment that [*3]  claims 10-17, 24 and 25 of the '156 patent are directed to ineligible subject matter under 35 U.S.C. § 101 and remand for further proceedings. We affirm the district court's judgment that the asserted claims of the '859 and '927 patents are invalid for obviousness and obviousness-type double patenting.

Discussion

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2020 U.S. App. LEXIS 8393 *; 2020 U.S.P.Q.2D (BNA) 10186

BOEHRINGER INGELHEIM PHARMACEUTICALS INC., BOEHRINGER INGELHEIM INTERNATIONAL GMBH, BOEHRINGER INGELHEIM CORPORATION, BOEHRINGER INGELHEIM PHARMA GMBH & CO. KG, Plaintiffs-Appellants v. MYLAN PHARMACEUTICALS INC., MYLAN INC., MYLAN LABORATORIES LIMITED, AUROBINDO PHARMA LIMITED, AUROBINDO PHARMA USA, INC., Defendants-Appellees

Notice: THIS DECISION WAS ISSUED AS UNPUBLISHED OR NONPRECEDENTIAL AND MAY NOT BE CITED AS PRECEDENT. PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 GOVERNING THE CITATION TO UNPUBLISHED OPINIONS.

Prior History:  [*1] Appeal from the United States District Court for the District of New Jersey in Nos. 3:15-cv-05982-PGS-TJB, 3:16-cv-00851-PGS-TJB, 3:16-cv-00852-PGS-TJB, 3:16-cv-01727-PGS-TJB, 3:16-cv-02394-PGS-TJB, Senior Judge Peter G. Sheridan.

Boehringer Ingelheim Pharms. v. HEC Pharm Co., 2017 U.S. Dist. LEXIS 2543 (D.N.J., Jan. 4, 2017)

Disposition: REVERSED-IN-PART, AFFIRMED-IN-PART, AND REMANDED.

CORE TERMS

patients, dose, renal, district court, linagliptin, inhibitor, metabolic, metformin, patent, diabetes mellitus, double patenting, obviousness-type, disease, invalid, impairment, ineligible, pleadings, contraindication, pharmaceutically, administering, compound, eligible, treating

Civil Procedure, Appeals, Standards of Review, De Novo Review, Patent Law, Jurisdiction & Review, Judgments, Pretrial Judgments, Judgment on Pleadings, Subject Matter, Trials, Bench Trials, Nonobviousness, Evidence, Fact & Law Issues, Clearly Erroneous Review