Apotex, Inc. v. Daiichi Sankyo, Inc., No. 12 C 9295, Slip Op. (N.D. Ill. Jan. 9, 2014) (Coleman, J.).

Judge Coleman granted defendant’s (collectively “Sankyo”) Fed. R. Civ. P 12(b)(1) motion to dismiss this ANDA patent litigation involving Benicar, a drug used for treating high blood pressure.  Apotex sought declaratory judgment of noninfringement of Sankyo’s ‘703 patent.  Sankyo listed the ‘703 patent in the Orange Book — identifying it as covering Benicar.  But Sankyo subsequently disclaimed the ‘703 patent pursuant to 35 U.S.C. § 253.  Although the’703 patent was not de-listed from the Orange Book, disclaiming the ‘703 patent requires that it be treated as if it never existed. 

Because the ‘703 patent was not enforceable, the Court lacked subject matter jurisdiction.