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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 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 anchorClaim 1 is the broadest and contains four buckets:
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
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
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
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
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
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
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 specificityThe list spans:
Boundary: Claim 1 does not require “acute” or “maintenance.” Those constraints appear in Claims 2 and 3. Practical enforcement axis
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:
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:
Generic small-molecule angle
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
Design-around routes (conceptual)
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
Evidence vector: medical records, dosing histories, and regimen documentation. Optional co-immunosuppressants and biologics
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:
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)
This matrix reflects the claim language you supplied and does not incorporate any external Orange Book or litigation status. Key Takeaways
FAQs1) Does US 10,092,569 require a specific dosage form to infringe? 2) Can a product avoid infringement by using an E/Z mixture instead of a pure isomer? 3) What is the most objective quantitative claim limitation for formulation design-around? 4) Are corticosteroids required for infringement? 5) Does the patent cover treatment with anti-CD20 biologics by themselves? References (APA)
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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 |
International Patent Family for US Patent 10,092,569
| Country | Patent Number | Estimated Expiration |
|---|---|---|
| Australia | 2015218713 | ⤷ Start Trial |
| Brazil | 112016018948 | ⤷ Start Trial |
| Canada | 2939186 | ⤷ Start Trial |
| China | 106456652 | ⤷ Start Trial |
| >Country | >Patent Number | >Estimated Expiration |
