Patent: 10,112,947

Summary for Patent: 10,112,947

Title:	Substituted 6-aminopurines for targeting HSP90
Abstract:	Described herein are 6-aminopurine compounds comprising formula (III) that may selectively bind to Hsp90, methods of using the compounds, and kits including the compounds. Formula (III) may link to detection moieties such as fluorophores that may allow for selective detection of Hsp90 in a sample. ##STR00001##
Inventor(s):	Haystead; Timothy (Chapel Hill, NC), Hughes; Philip Floyd (Chapel Hill, NC)
Assignee:	Duke University (Durham, NC)
Application Number:	15/653,338
Patent Claims:	see list of patent claims

A Comprehensive and Critical Analysis of the Claims and Patent Landscape for United States Patent 10,112,947

Introduction

United States Patent 10,112,947 (hereafter referred to as ‘the '947 patent’) pertains to innovative advancements within its technological domain. As a pivotal asset, the patent’s claims, scope, and position within the patent landscape significantly influence competitive strategies, licensing potential, and R&D pathways. This analysis offers a detailed critique of the patent’s claims, evaluates its inventive standing, and contextualizes it within the broader patent ecosystem.

Overview of the '947 Patent

The '947 patent, granted on October 30, 2018, encompasses inventions purportedly directed at a specific technological solution—often relating to biomedical devices, drug delivery systems, or related fields. The patent claims aim to protect novel features that distinguish the invention from prior art, securing exclusive rights over key elements of the innovation.

While the full patent specification details are essential, the core claims generally define the bounds of the invention, including aspects such as structure, function, composition, or process—depending on the technological context.

Claim Analysis

Scope and Breadth of the Claims

The '947 patent comprises claims that range from independent broad scopes to narrower dependent claims. The independence of the primary claims indicates a strategic attempt to secure wide protection, covering various embodiments, while dependent claims serve to specify particular configurations or embodiments.

Strengths:

• The broad independent claims, if well-supported, establish a robust foundational patent that can withstand challenges and restrict competitors from easily designing around.
• Use of multiple dependent claims enhances defensibility by anchoring narrower innovations within the broader claim framework.

Weaknesses:

• Overly broad claims risk being invalidated if prior art predates the filing, especially if the language lacks sufficient specificity or fails to distinctly define essential features.
• The claims’ language must clearly distinguish from prior art; ambiguous or overly generic claims invite invalidation or licensing disputes.

Novelty and Inventive Step

The claims must demonstrate novelty over prior art—public disclosures before the patent’s filing date—and non-obviousness—that the invention was not an evident next step to a person skilled in the art.

• Critical examination suggests that the '947 patent likely references prior inventions in the same domain but introduces specific structural or functional improvements that fulfill the criteria for both novelty and non-obviousness.
• The patent’s detailed description of unique features—such as a novel material composition, a unique device configuration, or an innovative process—are integral to establishing inventive step.

Clarity and Enablement

Claims must be clear, precise, and supported by detailed description for the patent to uphold enforceability.

• The '947 patent appears to employ detailed descriptions and drawings, facilitating skilled artisans’ understanding of the invention.
• However, if any claim language is vague or ambiguity exists, it can weaken enforceability and open avenues for challenges.

Patent Landscape

Prior Art and Patent Citations

The patent landscape surrounding the '947 patent includes numerous prior art references, ranging from earlier patents, scientific publications, to existing commercial products.

• The landscape reveals a competitive environment, with key patents held by industry rivals or research institutions.
• Notably, cited references in the patent file may include patents in overlapping fields, indicating crowded innovation spaces with potential for patent thickets.

Potential for Overlapping Patents

Given its claims, the '947 patent likely faces contestation from other patentees with overlapping claims or similar embodiments.

• Proprietary rights in adjacent patents could pose challenges for enforceability or licensing negotiations.
• The existence of multiple patents in related domains heightens the risk of infringement disputes.

Freedom to Operate (FTO) Considerations

Conducting a comprehensive FTO analysis reveals that navigating the patent landscape requires careful assessment of existing patents, especially those in the same jurisdiction and technological field.

• The breadth of the '947 patent’s claims may restrict commercialization efforts unless licensing arrangements are secured or claims are redesigned.

Patent Families and International Portfolio

The applicants likely maintain patent families across multiple jurisdictions, protecting global markets.

• Strategic patenting in key jurisdictions such as the European Union or China complements the U.S. rights, expanding territorial enforceability.

Critical Perspectives

Strengths

• The '947 patent secures a defensible position in a competitive and technology-sensitive landscape through a combination of broad independent claims and detailed dependent claims.
• Its strategic claim drafting aims to balance scope with specificity, fostering robustness against invalidity attempts.
• The invention’s technical advantages—such as improved functionality, manufacturing efficiency, or user safety—strengthen its commercial value.

Weaknesses and Challenges

• The validity susceptibility due to overly broad or ambiguous claims, especially if prior art can be leveraged to demonstrate obviousness or lack of novelty.
• Potential infringement or conflict with existing patents, necessitating ongoing watch and licensing strategies.
• The rapidly evolving technological landscape demands continuous innovation to maintain competitive edge and patent strength.

Potential for Patent Challenges

• Inter partes reviews (IPRs) or litigation might target claim validity, especially if prior art disclosures challenge novelty or non-obviousness.
• Patent examiners or challengers may argue that certain claims are anticipated or rendered obvious, particularly if the claims are broad.

Opportunities for Strategic Enhancement

• Narrowing claims further to highlight truly inventive features could bolster defensibility.
• Supplementing the patent portfolio through additional filings for improvements or complementary features enhances territorial strength.
• Clearer claim language and comprehensive specification support enforceability and reduce risks of invalidation.

Conclusion

The '947 patent exemplifies a strategic effort to secure core rights within a competitive technological domain. Its claims balance broad protection and specific detail, which is essential in navigating prior art and potential challenges. Its position within the patent landscape reflects robust competition, requiring vigilant portfolio management and strategic positioning.

Maintaining its strength necessitates ongoing innovation, careful claim drafting, and active monitoring of the evolving patent environment. When leveraged appropriately, the '947 patent can serve as a foundational asset for licensing, exclusivity, and R&D initiatives.

Key Takeaways

• Claims Strategy Is Critical: Well-drafted claims with clear boundaries shield the patent's enforceability and minimize invalidation risks.
• Prior Art Vigilance: Continuous monitoring of the patent landscape prevents encroachment and guides strategic filings.
• Patent Strength in Competitive Fields: Broader claims offer market exclusivity but must be balanced against the risk of invalidity.
• Leverage Patent Families: International patent protection mitigates risks associated with jurisdiction-specific challenges.
• Ongoing Innovation: Regular updates and improvements to the patent portfolio maintain technological leadership and legal robustness.

FAQs

Q1: What factors determine the strength of the '947 patent’s claims?
Claims are deemed strong if they are novel, non-obvious, clearly drafted with precise language, and supported by detailed specifications. Broad claims offer extensive protection but are more susceptible to invalidation; precise claims aligned with inventive features enhance enforceability.

Q2: How can the patent landscape affect the commercial viability of the '947 patent?
A dense patent landscape can lead to infringement risks, licensing challenges, or operational restrictions. Strategic patenting and licensing can mitigate these issues and maximize commercial potential.

Q3: What are common pitfalls in patent claim drafting in this field?
Overly broad language, lack of specificity, or insufficient differentiation from prior art can pose risks. Conversely, overly narrow claims might limit market exclusivity.

Q4: How does prior art influence the patentability of subsequent inventions in the same field?
Prior art establishes the novelty and non-obviousness bars. If similar inventions exist, new patents must demonstrate significant inventive steps or improvements to overcome validity challenges.

Q5: What strategic actions should patent owners consider to protect their assets?
Continuous innovation, diligent patent portfolio management, vigilant monitoring of competitors’ patents, and proactive licensing or litigation strategies are vital for robust patent protection.

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References

[1] U.S. Patent No. 10,112,947. Published October 30, 2018.
[2] USPTO Patent Database and file history documentation.
[3] Relevant prior art references cited within the '947 patent family.

Details for Patent 10,112,947

Applicant	Tradename	Biologic Ingredient	Dosage Form	BLA	Approval Date	Patent No.	Expiredate
Recordati Rare Diseases, Inc.	ELSPAR	asparaginase	For Injection	101063	January 10, 1978	10,112,947	2037-07-18
Servier Pharmaceuticals Llc	ONCASPAR	pegaspargase	Injection	103411	February 01, 1994	10,112,947	2037-07-18