Last Updated: June 25, 2026

Patent: 10,092,569


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Summary for Patent: 10,092,569
Title:Salts and solid form of a BTK inhibitor
Abstract: Disclosed herein are processes for preparing 2-[(3R)-3-[4-amino-3-(2-fluoro-4-phenoxy-phenyl)pyrazolo[3,4-d]pyrimidin-- 1-yl]piperidine-1-carbonyl]-4-methyl-4-[4-(oxetan-3-yl)piperazin-1-yl]pent- -2-enenitrile free base (compound (I)), salts of compound (I) and solid state form of said salts. Also disclosed herein are pharmaceutical compositions comprising such salts and solid state form thereof and methods of treating cancer, autoimmune, and inflammatory diseases using compound (I) or a pharmaceutically acceptable salt thereof.
Inventor(s): Masjedizadeh; Mohammad Reza (San Jose, CA), Gourlay; Steven (San Francisco, CA)
Assignee: PRINCIPIA BIOPHARMA INC. (South San Francisco, CA)
Application Number:15/120,293
Patent Claims:see list of patent claims
Patent landscape, scope, and claims summary:

Executive summary
US Patent 10,092,569 claims US-methods of treating defined inflammatory/autoimmune diseases by administering a specific small-molecule 2-[(3R)-3-[4-amino-3-(2-fluoro-4-phenoxy-phenyl)pyrazolo[3,4-d]pyrimidin-1-yl]piperidine-1-carbonyl]-4-methyl-4-[4-(oxetan-3-yl)piperazin-1-yl]pent-2-enenitrile scaffold in (E), (Z), or E/Z mixtures (and pharmaceutically acceptable salts), including isomer-purity and salt/form limitations, with combination/replace-corticosteroid use language. For enforcement, the claim set is broad on disease name coverage and composition definition, but narrower on (i) the specific compound/isomer/salt/form and (ii) treatment framing (replacement or combination with corticosteroids; optionally named co-immunosuppressants/biologics; isomer purity thresholds). The practical competitive impact is driven by whether competitors can design around by changing the active (scaffold), using a different isomeric form outside the claimed purity window, or avoiding the claimed disease-treatment/combination posture (while still achieving the same clinical endpoints).

H1: US Patent 10,092,569 claim scope and US patent landscape for (E)/(Z) isomer treatment of autoimmune diseases


What is US Patent 10,092,569 actually claiming?

Answer (core claim structure): A method of treating listed inflammatory/autoimmune diseases in a mammal (human by dependent claim) by administering a pharmaceutical composition containing one or more of the specified (E) isomer, (Z) isomer, or E/Z mixture of a named nitrile-containing pyrazolo[3,4-d]pyrimidine–piperidine–piperazine scaffold, including pharmaceutically acceptable salts and carriers. Dependent claims then narrow by adding (a) acute disease and corticosteroid replacement/combination language, (b) corticosteroid maintenance posture, (c) substantially pure E or Z and a specific ≥85% w/w E threshold, (d) disease selection (pemphigus vulgaris), and (e) optional combinations with a long list of immunosuppressive agents and specific anti-CD20 monoclonals (including biosimilars).

Claim 1: the anchor

Claim 1 is the broadest and contains four buckets:

  1. Disease selection: thrombotic thrombocytopenic purpura; polyarteritis nodosa; cutaneous lupus; cutaneous systemic sclerosis (CREST); mixed connective tissue disease; cryoglobulinemia; primary biliary sclerosis; sclerosing cholangitis; (typo in your text: “Al urticaria”); IgA nephropathy; lupus nephritis; granulomatosis with polyangiitis; pemphigus vulgaris.
  2. Administration: “administering… a pharmaceutical composition comprising” the active and excipient/carrier.
  3. Active composition: the specified scaffold in (E), (Z), or mixture of (E) and (Z), plus pharmaceutically acceptable salts.
  4. No dose form constraint: the claim does not require any specific dosage form (oral, injectable, etc.) based solely on your provided text; it is framed as “pharmaceutical composition.”

Implication: If a competitor markets the same scaffold with the same E/Z stereochemical status for any of the named diseases, Claim 1 is the enforcement “landing pad,” regardless of dose form, provided there is evidence of administration consistent with the claim.

Claims 2 and 3: corticosteroid replacement vs maintenance

  • Claim 2: acute disease; administered in place of or in combination with corticosteroid therapy, optionally with additional noncorticosteroidal immunosuppressive/antiinflammatory agents.
  • Claim 3: corticosteroid maintenance therapy posture; again “in place of or in combination.”

Implication: These dependents add treatment context hooks that matter in infringement evidence because they tie the method to real-world standard-of-care transitions (induction and maintenance). If a competitor positions its regimen as entirely steroid-free from day one without fitting “in place of or in combination” as claimed, it may try to avoid these dependent claim postures while still potentially falling under Claim 1 (since Claim 1 has no corticosteroid requirement).

Claim 4: substantially pure E or Z and human limitation

  • Adds: substantially pure (E) or (Z) isomer (plus salts) and explicitly human mammal.

Implication: This is an important narrowing device for isomer-enrichment products and analytical marketing claims. If a product is formulated with E/Z mixture but not “substantially pure,” Claim 4 may not apply, though Claim 1 (mixture allowed) could still.

Claim 5: ≥85% w/w E threshold

  • Requires at least about 85% w/w of the specified compound (or its salt) being the (E) isomer.

Implication: This creates a clear analytical infringement gate. If a competitor can consistently keep E content below that threshold (or demonstrate different isomeric composition), it can reduce exposure to this dependent claim. Claim 1 still covers mixtures, so the design-around must be about shifting to an unclaimed stereochemical regime or a different scaffold.

Claim 6: pemphigus vulgaris as a specific disease

  • Human treatment; disease limited to pemphigus vulgaris.

Implication: This provides an alternative enforcement route focused on a specific indication that often has dedicated payer and clinician pathways. A competitor launching first in pemphigus vulgaris can face this narrower claim without needing to prove the broader disease list.

Claims 7–8: optional combinations and anti-CD20 agents

  • Claim 7: optional combination with a broad panel of immunosuppressants including interferons, cyclophosphamide, tacrolimus, mycophenolate mofetil, methotrexate, dapsone, sulfasalazine, azathioprine, and multiple pathway antagonists (TNFα, IL-6, IL-17, IL-1, IL-2, CD2/CD3/CD80/86, S1P receptor, C5, mTOR, calcineurin, BAFF/BlyS, plus leflunomide, teriflunomide).
  • Claim 8: optional combination with rituximab, ofatumumab, obinutuzumab, veltuzumab or biosimilars.

Implication: These are “combination method” dependents. Practically, enforcement depends on whether the competitor’s labeling or promotional materials encourage (or at least document) coadministration with these agents, and whether the coadministration is part of the method practice. Without that linkage, the combination dependents are weaker than Claim 1.

Claims 9–10: salt types and amorphous salt form

  • Claim 9: the salt is a sulfonic acid or carboxylic acid salt.
  • Claim 10: “amorphous form” of a pharmaceutically acceptable salt.

Implication: These dependents are relevant to formulation exclusivity. If competitors use different counterions or crystallinity forms, they may avoid these dependents while still practicing the underlying method of Claim 1.


How broad is the disease coverage, and what are the litigation-relevant boundaries?

Featured-snippet answer: The claim lists multiple autoimmune and inflammatory diseases by name; enforcement for Claim 1 hinges on proving administration of the claimed (E)/(Z) active in the context of one listed disease, while dependents add corticosteroid replacement/maintenance and specific co-therapies.

Disease list: breadth vs specificity

The list spans:

  • Thrombotic/inflammatory (thrombotic thrombocytopenic purpura; granulomatosis with polyangiitis),
  • Connective tissue diseases (polyarteritis nodosa; mixed connective tissue disease; CREST/cutaneous systemic sclerosis),
  • Autoimmune blistering/skin (pemphigus vulgaris; cutaneous lupus),
  • Renal autoimmune (IgA nephropathy; lupus nephritis),
  • Vascular/immune complex (cryoglobulinemia),
  • Hepatobiliary autoimmune (primary biliary sclerosis; sclerosing cholangitis),
  • Urticarial entity (as written: “Al urticaria,” likely a specific autoimmune urticaria variant),
  • No explicit severity restriction in Claim 1.

Boundary: Claim 1 does not require “acute” or “maintenance.” Those constraints appear in Claims 2 and 3.

Practical enforcement axis

  • If a product is prescribed for any listed indication, Claim 1 provides the widest reach.
  • If a product is prescribed for an indication not named, method infringement on this patent becomes less direct.
  • If the product is used with steroids, the replace/maintenance dependents become evidentiary targets; if it is used steroid-free, those dependents may be harder to prove but Claim 1 remains.

What patents protect the same active scaffold or its E/Z isomers in the US?

No complete, accurate cross-document patent landscape can be produced from your prompt alone. You provided the text of claims 1–10 for US Patent 10,092,569, but not the patent’s:

  • assignee/applicant,
  • prosecution history,
  • priority dates,
  • specification-defined “compound of formula” context,
  • related family members,
  • or any cited patents.

Given the constraint, the only defensible statement is internal to US 10,092,569: it protects method-of-use treatment with the named scaffold in (E)/(Z)/mixture forms (plus salts) and certain isomer purity/salt/form and combination postures (corticosteroids and co-immunosuppressants/anti-CD20).


When does US Patent 10,092,569 lose exclusivity (expiration and term)?

No USPTO bibliographic data (filing date, priority, PTA, continuation status) is included in your prompt. Without it, any specific expiration date would be inaccurate.


Is US Patent 10,092,569 likely enforceable against generics or biosimilars?

Answer: As a method-of-treatment patent claiming administration of a specific compound/isomer/salt for listed diseases, enforcement risk is strongest against any third party that:

  1. manufactures and sells the same compound scaffold in the claimed stereochemical form (E, Z, or mixture) and
  2. practices the claimed method for a listed indication in US commerce.

Generic small-molecule angle

  • If generic developers copy the molecule and market it for the claimed disease set, method claims create a pathway for enforcement even when the product is a generic.
  • Whether a “Paragraph IV” challenge is plausible depends on whether US 10,092,569 is listed in the Orange Book for a specific NDA/BLA or otherwise tied to drug approval. Your prompt does not provide the FDA product link or Orange Book status.

Biosimilar angle (Claim 8)

Claim 8 references coadministration with multiple anti-CD20 monoclonals and biosimilars, but it does not claim the biologics themselves. It is still a method claim directed to administration of the small-molecule composition with specified biologics. A biosimilar cannot “design around” by being biosimilar if the biosimilar is merely one optional co-therapy; the question becomes whether infringement evidence ties the patient regimen to the claimed combination posture.


What formulations are protected by US Patent 10,092,569?

Answer: Protection centers on the chemical stereochemistry (E/Z/mixture), salt class (sulfonic/carboxylic acid), and an amorphous salt form dependent claim, plus a quantitative isomer purity threshold in a dependent claim.

Formulation claim levers

  • E/Z stereochemistry: Claim 1 covers E, Z, and E/Z mixtures.
  • Substantially pure E/Z: Claim 4.
  • ≥85% w/w E isomer: Claim 5.
  • Salt class: Claim 9 (sulfonic acid or carboxylic acid salts).
  • Amorphous salt form: Claim 10.

Design-around routes (conceptual)

  • Reduce E isomer content below the ≥85% w/w threshold to avoid Claim 5 (while still risking Claim 1).
  • Use a different salt counterion outside sulfonic/carboxylic acid classes to target Claim 9 and potentially Claim 10 if amorphous form is avoided.
  • Use a formulated E/Z mixture that still falls under Claim 1 but attempts to avoid “substantially pure” language in Claim 4 (though “mixture” remains explicitly covered in Claim 1).

Which combination regimens are captured, and where do clinicians/guidelines matter for infringement evidence?

Answer: The claim’s combination scope is primarily evidence-driven: Claim 2–3 tie to corticosteroid replacement/combination (acute vs maintenance). Claim 7–8 are optional co-immunosuppressants, including rituximab and other anti-CD20 agents.

Steroid posture

  • Acute: Claim 2.
  • Maintenance: Claim 3.
  • Either “in place of” or “in combination” is explicitly included.

Evidence vector: medical records, dosing histories, and regimen documentation.

Optional co-immunosuppressants and biologics

  • Claim 7 lists multiple immunosuppressants and cytokine/pathway antagonists.
  • Claim 8 narrows the anti-CD20 class to named antibodies and biosimilar versions.

Evidence vector: co-prescription patterns and product labeling or clinical protocols.


How strong is the patent estate for US Patent 10,092,569?

No strength analysis across the broader estate can be performed because the prompt only includes the claims. Without the:

  • full specification,
  • definitions of the “compound selected from (E)/(Z)” in the description,
  • claimed examples,
  • whether other family members exist (composition-of-matter, intermediates, polymorphs, method-of-use variants),
  • and prosecution outcomes,

a rigorous validity/enforceability assessment cannot be completed without risking fabrication.


What would a generic entry risk scenario look like for this patent?

Answer: The “generic entry risk” depends on whether the generic uses the same active scaffold and stereochemical composition and whether it is used for one of the listed indications in the US.

Risk matrix (claim-by-claim logic)

Scenario Likely exposure to Claim 1 Likely exposure to dependents (2–3 steroid posture) Likely exposure to dependents (4–5 isomer purity) Likely exposure to dependents (9–10 salt/form)
Same scaffold, E/Z mixture sold and prescribed for a listed disease High if method is practiced Moderate to high if “in place of/combination with corticosteroids” is used Depends on E content/purity Depends on salt/counterion and amorphous form
Same scaffold but different stereochemistry handling (e.g., avoids “substantially pure” claims) Still potentially high due to mixture coverage Moderate to high if regimen includes steroid replacement/combination Reduced for Claim 5 if E fraction <85% w/w; still risk for Claim 1 Reduced if different salt class/counterion and no amorphous form
Different active (different scaffold) Low Low Low Low

This matrix reflects the claim language you supplied and does not incorporate any external Orange Book or litigation status.


Key Takeaways

  • US Patent 10,092,569 is a method-of-use patent covering treatment of named inflammatory/autoimmune diseases using a specific pyrazolo[3,4-d]pyrimidine–piperidine–piperazine nitrile scaffold in (E), (Z), or E/Z mixtures, plus salts and carriers.
  • The broadest protection is Claim 1: disease list + claimed stereochemical active + pharmaceutical composition administration.
  • The most litigation-relevant narrowing levers are:
    • corticosteroid replacement/combination posture for acute (Claim 2) and maintenance (Claim 3),
    • human limitation (Claim 4) and quantified isomer purity (Claim 5: ≥85% w/w E),
    • salt type (Claim 9) and amorphous salt form (Claim 10),
    • optional combination co-therapies with specified immunosuppressants and anti-CD20 antibodies/biosimilars (Claims 7–8).
  • A competitor’s strongest design-around attempts would focus on changing the active scaffold, stereochemical composition outside the claimed regimes, salt form/counterion strategy, and avoiding steroid replacement/combination framing and specific co-therapeutic combinations where evidence can be controlled.

FAQs

1) Does US 10,092,569 require a specific dosage form to infringe?
No dosage form is specified in the provided claim text; it requires administration of a pharmaceutical composition containing the claimed active/isomer/salt plus carriers.

2) Can a product avoid infringement by using an E/Z mixture instead of a pure isomer?
No. Claim 1 explicitly covers (E) isomer, (Z) isomer, and mixtures of (E) and (Z).

3) What is the most objective quantitative claim limitation for formulation design-around?
Claim 5’s “at least about 85% w/w” E isomer threshold for the specified compound (or its salt).

4) Are corticosteroids required for infringement?
Claim 1 does not require corticosteroids. Claims 2–3 add specific “in place of or in combination with corticosteroid” conditions, but they are dependent claims.

5) Does the patent cover treatment with anti-CD20 biologics by themselves?
No. Claim 8 is an optional combination dependent claim tethered to administration of the claimed small-molecule composition, with anti-CD20 antibodies/biosimilars.


References (APA)

  1. US Patent 10,092,569. (Claim text provided by user).

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Details for Patent 10,092,569

Applicant Tradename Biologic Ingredient Dosage Form BLA Approval Date Patent No. Expiredate
Genentech, Inc. RITUXAN rituximab Injection 103705 November 26, 1997 ⤷  Start Trial 2035-02-20
Novartis Pharmaceuticals Corporation ARZERRA ofatumumab Injection 125326 October 26, 2009 ⤷  Start Trial 2035-02-20
Novartis Pharmaceuticals Corporation ARZERRA ofatumumab Injection 125326 April 01, 2011 ⤷  Start Trial 2035-02-20
Novartis Pharmaceuticals Corporation KESIMPTA ofatumumab Injection 125326 August 20, 2020 ⤷  Start Trial 2035-02-20
>Applicant >Tradename >Biologic Ingredient >Dosage Form >BLA >Approval Date >Patent No. >Expiredate

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