This case was last updated from PACER on 08/13/2021 at 07:12:44 (UTC).

Merck Sharp & Dohme Corp. v. Laurus Labs Limited et al

Case Summary

On August 12, 2021, Merck Sharp & Dohme Corp. (“Merck” or Plaintiff”), represented by Alexandra M. Joyce, Daniel M. Silver and Michael P. Kelly of McCarter & English, LLP, filed an intellectual property lawsuit against Laurus Labs Limited (“Laurus Labs”) and Laurus Generics Inc. (“Laurus Generics”)(collectively, “Laurus” or “Defendants”), seeking a preliminary and permanent injunction along with declaratory relief for the alleged infringement of patent relating to Phosphoric Acid Salt of a Dipeptidyl Peptidase-IV Inhibitor (the ’708 Patent) owned by Plaintiff. This case was filed in the U.S. District Court in the District of Delaware.

 

Plaintiff filed this complaint for the alleged infringement of U.S. Patent No. 7,326,708 entitled Phosphoric Acid Salt of a Dipeptidyl Peptidase-IV Inhibitor (“the ’708 patent”) owned by Plaintiff. 

 

In the complaint, Plaintiff alleged that, “In Laurus’s Notice Letter, Laurus notified Merck of the submission of Laurus’s Abbreviated New Drug Application (“ANDA”) to the Food and Drug Administration (“FDA”). The purpose of this submission was to obtain approval under the FDCA to engage in the commercial manufacture, use, offer for sale, sale and/or importation of Laurus’s ANDA Product prior to the expiration of the ’708 patent. Laurus stated that Laurus’s ANDA Product contains sitagliptin phosphate as an active ingredient. Laurus’s ANDA Product, and the use of Laurus’s ANDA Product, is covered by one or more claims of the ’708 patent, including at least claim 1 of the ’708 patent, because claim 1 of the ’708 patent covers the sitagliptin phosphate contained in Laurus’s ANDA Product.”

 

The Plaintiff further alleged that, “Laurus’s submission of Laurus’s ANDA for the purpose of obtaining approval to engage in the commercial manufacture, use, offer for sale, sale, and/or importation of Laurus’s ANDA Product before the expiration of the ’708 patent was an act of infringement of the ’708 patent under 35 U.S.C. § 271(e)(2)(A). Laurus will engage in the manufacture, use, offer for sale, sale, marketing, distribution, and/or importation of Laurus’s ANDA Product immediately and imminently upon approval of its ANDA. The manufacture, use, sale, offer for sale, or importation of Laurus’s ANDA Product would infringe one or more claims of the ’708 patent, including at least claim 1 of the ’708 patent.”

 

The Plaintiff also alleged that, “Laurus knows that Laurus’s ANDA Product and its proposed labeling are especially made or adapted for use in infringing the ’708 patent, that Laurus’s ANDA Product is not a staple article or commodity of commerce, and that Laurus’s ANDA Product and its proposed labeling are not suitable for substantial noninfringing use. On information and belief, Laurus plans and intends to, and will, contribute to infringement of the ’708 patent immediately and imminently upon approval of Laurus’s ANDA.”

 

There are two claims for relief laid down by the plaintiff. The first claim deals with the infringement of the ’708 Patent and the second claim deals with declaratory judgement for infringement of the ’708 Patent.

 

In its prayer for relief the plaintiff has requested the Court for a preliminary and permanent injunction enjoining Laurus, from the commercial manufacture, use, sale, offer for sale, or importation into the United States of Laurus’s ANDA Product, or any other drug product covered by or whose use is covered by the ’708 patent, prior to the expiration of the ’708 patent, a declaration that this is an exceptional case and an award of attorney’s fees pursuant to 35 U.S.C. § 285 along with the costs and expenses in this action.

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-01173

  • Filing Date:

    08/12/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Patent

  • Courthouse:

    Delaware District

 

Party Details

Plaintiff

Merck Sharp & Dohme Corp.

Defendants

Laurus Labs Limited

Laurus Generics Inc.

Attorney/Law Firm Details

Plaintiff Attorneys

Michael P. Kelly

Attorney at McCarter & English, LLP

405 N. King Street, 8Th Floor

Wilmington, DE 19801

Alexandra M. Joyce

Attorney at McCarter & English, LLP

405 N. King Street, 8Th Floor

Wilmington, DE 19801

Daniel M. Silver

Attorney at McCarter & English, LLP

405 N. King Street, 8Th Floor

Wilmington, DE 19801

 

Court Documents

#5

(#5) Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Merck & Co., Inc. for Merck Sharp & Dohme Corp. filed by Merck Sharp & Dohme Corp. (apk) (Entered: 08/12/2021)

#4

(#4) Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,326,708. (apk) (Entered: 08/12/2021)

#3

(#3) Supplemental information for patent cases involving an Abbreviated New Drug Application (ANDA) - Date Patentee(s) Received Notice: 07/8/2021. Date of Expiration of Patent: 11/24/2026.Thirty Month Stay Deadline: 1/8/2024. (apk) (Entered: 08/12/2021)

#2

(#2) Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (apk) (Entered: 08/12/2021)

1 #2

Civil Cover Sheet

1 #1

Exhibit A

#1

(#1) COMPLAINT FOR PATENT INFRINGEMENT filed against Laurus Generics Inc., Laurus Labs Limited - Magistrate Consent Notice to Pltf. ( Filing fee $ 402, receipt number ADEDC-3677746.) - filed by Merck Sharp & Dohme Corp.. (Attachments: #1 Exhibit A, #2 Civil Cover Sheet)(apk) (Entered: 08/12/2021)

 

Docket Entries

  • 08/12/2021
  • View Court Documents
  • Docket(#5) Disclosure Statement pursuant to Rule 7.1: identifying Corporate Parent Merck & Co., Inc. for Merck Sharp & Dohme Corp. filed by Merck Sharp & Dohme Corp. (apk) (Entered: 08/12/2021)

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  • 08/12/2021
  • View Court Documents
  • Docket(#4) Report to the Commissioner of Patents and Trademarks for Patent/Trademark Number(s) 7,326,708. (apk) (Entered: 08/12/2021)

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  • 08/12/2021
  • View Court Documents
  • Docket(#3) Supplemental information for patent cases involving an Abbreviated New Drug Application (ANDA) - Date Patentee(s) Received Notice: 07/8/2021. Date of Expiration of Patent: 11/24/2026.Thirty Month Stay Deadline: 1/8/2024. (apk) (Entered: 08/12/2021)

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  • 08/12/2021
  • View Court Documents
  • Docket(#2) Notice, Consent and Referral forms re: U.S. Magistrate Judge jurisdiction. (apk) (Entered: 08/12/2021)

    Read MoreRead Less
  • 08/12/2021
  • View Court Documents
  • Docket(#1) COMPLAINT FOR PATENT INFRINGEMENT filed against Laurus Generics Inc., Laurus Labs Limited - Magistrate Consent Notice to Pltf. ( Filing fee $ 402, receipt number ADEDC-3677746.) - filed by Merck Sharp & Dohme Corp.. (Attachments: #1 Exhibit A, #2 Civil Cover Sheet)(apk) (Entered: 08/12/2021)

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