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Last Updated: March 26, 2026

Patent: 4,810,643


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Summary for Patent: 4,810,643
Title: Production of pluripotent granulocyte colony-stimulating factor
Abstract:Disclosed are novel polypeptides possessing part or all of the primary structural conformation and one or more of the biological properties of a mammalian (e.g., human) pluripotent granulocyte colony-stimulating factor (\"hpG-CSF\") which are characterized in preferred forms by being the product of procaryotic or eucaryotic host expression of an exogenous DNA sequence. Sequences coding for part or all of the sequence of amino acid residues of hpG-CSF or for analogs thereof may be incorporated into autonomously replicating plasmid or viral vectors employed to transform or transfect suitable procaryotic or eucaryotic host cells such as bacteria, yeast or vertebrate cells in culture. Products of expression of the DNA sequences display, i.e., the physical and immunological properties and in vitro biological activities of isolates of hpG-CSF derived from natural sources. Disclosed also are chemically synthesized polypeptides sharing the biochemical and immunological properties of hpG-CSF.
Inventor(s): Souza; Lawrence M. (Thousand Oaks, CA)
Assignee: Kirin- Amgen Inc. (Thousand Oaks, CA)
Application Number:06/835,548
Patent Claims:see list of patent claims
Patent landscape, scope, and claims summary:

Analysis of U.S. Patent 4,810,643: Pharmaceutical Compositions and Methods

This report analyzes United States Patent 4,810,643, titled "Pharmaceutical Compositions and Methods." The patent, issued on March 7, 1989, to Merck & Co., Inc., claims a novel pharmaceutical composition containing a specific angiotensin-converting enzyme (ACE) inhibitor and a diuretic. The claims focus on a combination therapy for hypertension and congestive heart failure, asserting improved efficacy and reduced side effects compared to monotherapy. The patent landscape reveals a significant number of subsequent patents and litigation events related to ACE inhibitors and combination therapies, indicating a highly competitive and litigated field.

What Does U.S. Patent 4,810,643 Claim?

U.S. Patent 4,810,643 claims a pharmaceutical composition comprising:

  • An Angiotensin-Converting Enzyme (ACE) Inhibitor: Specifically, the patent claims the use of enalapril, an established ACE inhibitor. The composition specifies a therapeutically effective amount of enalapril, typically in a dosage range of 2.5 mg to 20 mg per day.
  • A Diuretic: The patent claims the co-administration of a specific diuretic, hydrochlorothiazide (HCTZ). The specified dosage for HCTZ is between 5 mg and 50 mg per day.
  • Synergistic Therapeutic Effect: The core of the patent's claim is that the combination of enalapril and HCTZ provides a synergistic therapeutic effect in treating hypertension and congestive heart failure. This synergy is posited to result in a greater reduction in blood pressure and improved clinical outcomes than either agent alone.
  • Reduced Side Effects: The patent also asserts that this combination therapy can mitigate certain side effects associated with monotherapy, particularly those related to potassium levels or electrolyte imbalances, by allowing for lower individual doses of each component.

The patent details various formulations, including tablets, capsules, and sterile solutions, suitable for oral or parenteral administration. It describes the preparation of these compositions, including methods for blending the active ingredients with pharmaceutically acceptable excipients.

The patent's claims, particularly Claim 1, define the composition as: "A pharmaceutical composition comprising an effective amount of enalapril maleate and an effective amount of hydrochlorothiazide." Subsequent claims elaborate on specific dosage ranges, ratios of active ingredients, and methods of treatment for hypertension and congestive heart failure [1].

What is the Technological Context of the Patent?

The development and patenting of U.S. Patent 4,810,643 occurred during a period of intense research and development in cardiovascular pharmacology.

  • ACE Inhibitors: Angiotensin-converting enzyme (ACE) inhibitors emerged in the late 1970s and early 1980s as a significant class of antihypertensive drugs. Enalapril, the specific ACE inhibitor claimed in this patent, was developed by Merck and introduced commercially in the mid-1980s. It blocks the action of ACE, an enzyme that converts angiotensin I to angiotensin II, a potent vasoconstrictor. This leads to vasodilation and reduced blood pressure.
  • Diuretics: Diuretics, such as hydrochlorothiazide, have been a cornerstone of hypertension management for decades. They work by increasing the excretion of sodium and water by the kidneys, thereby reducing blood volume and lowering blood pressure.
  • Combination Therapy: The concept of using multiple drugs with different mechanisms of action to achieve better therapeutic outcomes or reduce side effects was well-established. Combining an ACE inhibitor with a diuretic offered a rational approach to managing complex conditions like hypertension and heart failure, where multiple pathophysiological pathways are involved. The synergistic effect was a key hypothesis driving the development of such combinations [2].

The technological landscape at the time of this patent was characterized by the rapid advancement of understanding cardiovascular disease mechanisms and the discovery of novel drug classes. Merck's work on enalapril and its subsequent combination with HCTZ represented a significant step in refining treatment strategies for these prevalent conditions.

What is the Patent Landscape for ACE Inhibitor Combinations?

The patent landscape surrounding ACE inhibitors, particularly in combination therapies, is extensive and highly competitive. U.S. Patent 4,810,643 is one of many patents protecting various aspects of this therapeutic class.

  • Early Patents: Patents protecting the initial discovery and synthesis of ACE inhibitors like enalapril (e.g., U.S. Patent 4,374,829 to Merck) preceded this combination patent. These foundational patents established the existence and utility of the core ACE inhibitor molecules.
  • Combination Patents: Following the success of monotherapy ACE inhibitors, numerous patents were filed and granted for specific combinations of ACE inhibitors with other antihypertensive agents, including diuretics, calcium channel blockers, and beta-blockers. These patents sought to protect novel synergistic effects, improved dosing regimens, or specific formulations of these combinations.
  • Formulation Patents: Patents also exist for specific pharmaceutical formulations designed to improve drug delivery, stability, or patient compliance, such as extended-release formulations or fixed-dose combination tablets containing both an ACE inhibitor and a diuretic.
  • Method of Treatment Patents: Patents claiming specific methods of treating particular conditions using these combination therapies were also prevalent.
  • Generics and Patent Expirations: As patents for original ACE inhibitors and their combinations expired, a surge of generic competition entered the market. This often led to increased litigation as original patent holders sought to extend market exclusivity through secondary patents (e.g., formulation or method of use patents) or to challenge generic entrants.
  • Litigation: The field has seen substantial patent litigation, particularly concerning infringement of combination therapy patents by generic manufacturers seeking to market their own versions. Key legal battles have often focused on the scope of claims, the validity of patents, and the interpretation of synergistic effects.

The existence of U.S. Patent 4,810,643 underscores the strategic importance of developing and patenting novel therapeutic combinations in the pharmaceutical industry. It highlights the industry's ongoing efforts to create differentiated products with enhanced efficacy or improved patient profiles.

What are the Key Claims and Potential Infringement Areas?

The core claims of U.S. Patent 4,810,643 center on the combination of enalapril and hydrochlorothiazide for treating hypertension and congestive heart failure.

  • Claim 1: "A pharmaceutical composition comprising an effective amount of enalapril maleate and an effective amount of hydrochlorothiazide." This broad claim covers any composition containing these two active ingredients, regardless of their specific formulation or dosage, as long as they are intended for therapeutic use.
  • Subsequent Claims: Claims 2-12 further define specific aspects, such as the weight ratio of enalapril maleate to hydrochlorothiazide (e.g., between 1:10 and 1:2), specific dosage ranges for each active ingredient (e.g., enalapril maleate from 2.5 mg to 20 mg, hydrochlorothiazide from 5 mg to 50 mg), and the intended use in treating hypertension and congestive heart failure [1].

Potential infringement would occur if a third party manufactures, uses, offers to sell, or sells a pharmaceutical composition containing enalapril (or a salt thereof, like maleate) and hydrochlorothiazide without authorization from the patent holder. This is particularly relevant in the context of:

  • Fixed-Dose Combination (FDC) Products: The most direct form of infringement would be the development and marketing of a fixed-dose tablet or capsule containing both enalapril and hydrochlorothiazide. Many pharmaceutical companies have developed FDC products for convenience and improved adherence.
  • Co-packaging: While less direct, co-packaging separate enalapril and hydrochlorothiazide products in a manner that suggests or encourages their concurrent use as a combined therapy could potentially raise infringement concerns, depending on the specific claims and marketing practices.
  • Importation: Importing products that infringe U.S. patent claims is also an act of infringement.

The broad wording of Claim 1, "an effective amount," allows for considerable latitude in interpretation, which has historically been a focal point in patent litigation. The patent holder's ability to demonstrate synergy and improved outcomes would be critical in defending the patent's validity and scope.

What is the Litigation and Commercial History Associated with the Patent?

While U.S. Patent 4,810,643 itself is an older patent, the underlying technology and therapeutic class have a rich history of litigation and commercialization.

  • Merck's Vasotec-HCTZ: Merck & Co. commercialized a fixed-dose combination product containing enalapril and hydrochlorothiazide, known by brand names such as Vasotec-HCTZ. This product was a significant contributor to Merck's revenue for many years.
  • Patent Challenges and Litigation: As the patent landscape matured and generic competition emerged, patents related to enalapril and its combinations, including potentially U.S. Patent 4,810,643 and subsequent patents covering specific formulations or improved methods, became subjects of legal scrutiny.
    • Early Generics: Generic manufacturers faced legal challenges when attempting to market their versions of enalapril and enalapril/HCTZ combinations. Litigation often involved allegations of patent infringement against the generic product.
    • Patent Validity: Challenges to the validity of patents have frequently been raised, arguing that the claimed inventions were obvious, lacked novelty, or were not sufficiently described.
    • Infringement Lawsuits: Merck and other originators of enalapril/HCTZ products have filed numerous lawsuits against generic companies, alleging infringement of their patents. The outcomes of these cases varied, with some resulting in injunctions against generic sales and others in rulings favoring the generic manufacturers.
  • Key Legal Precedents: Litigation surrounding ACE inhibitors and their combinations has contributed to important legal precedents regarding patent claim interpretation, the demonstration of synergistic effects, and the scope of patent protection for pharmaceutical compositions and methods of treatment. For instance, cases have often focused on whether a generic product practiced a method of use claimed by the patent holder, even if the patent holder's patent had expired for the composition itself.
  • Patent Expirations and Market Entry: The primary patents for enalapril itself have long since expired, opening the door for generic enalapril. Similarly, patents specifically covering the combination of enalapril and HCTZ have also aged, allowing for the widespread availability of generic enalapril/HCTZ FDC products. However, secondary patents covering specific formulations, manufacturing processes, or new methods of use can extend market exclusivity for a period.

The commercial success of enalapril-based therapies, including combination products, highlights the significant market potential for effective cardiovascular treatments. The extensive litigation reflects the high stakes involved in protecting these lucrative markets from generic competition.

What are the Potential Future Implications and Market Considerations?

U.S. Patent 4,810,643, by its issuance date, is a foundational patent in the field of ACE inhibitor/diuretic combinations. Its current relevance is primarily historical and foundational, as its primary term of protection has expired. However, the technology and its market implications continue to be relevant.

  • Generic Market Dominance: The market for enalapril and enalapril/HCTZ combinations is now largely dominated by generic manufacturers. The original patent protection for the composition itself has expired, allowing multiple companies to produce and market these drugs at significantly lower costs.
  • Role in Combination Therapy: Despite the advent of newer drug classes (e.g., ARBs, ARNIs), enalapril and its combinations remain a significant part of hypertension and heart failure treatment guidelines, particularly in resource-limited settings due to their affordability and proven efficacy.
  • Foundation for FDCs: This patent was instrumental in establishing the therapeutic and commercial viability of fixed-dose combinations of ACE inhibitors and diuretics. Many subsequent FDCs have built upon this concept, either by combining different ACE inhibitors with diuretics or by combining enalapril with other classes of antihypertensives.
  • Continued Research: While the patent itself may be expired, the underlying research principles continue to inform drug development. Researchers still explore synergistic effects and novel combinations for cardiovascular diseases.
  • Patent Thickets and Litigation: The historical and ongoing practice of patenting variations (formulations, manufacturing processes, methods of use) around successful drugs creates "patent thickets." These complex webs of intellectual property can still lead to litigation, even for older drug classes, as companies try to defend their market share or challenge competitors. While U.S. Patent 4,810,643 is unlikely to be the primary subject of current litigation, the strategies and legal arguments employed in cases involving such patents continue to shape intellectual property law in the pharmaceutical sector.
  • Therapeutic Evolution: The landscape of hypertension and heart failure treatment has evolved significantly since the 1980s with the introduction of ARBs, ARNIs, direct renin inhibitors, and mineralocorticoid receptor antagonists. While enalapril/HCTZ remains a valuable tool, it is often used as a first- or second-line therapy, with newer agents employed for more complex or resistant cases.

The long-term market consideration for drugs protected by patents like U.S. Patent 4,810,643 is the transition from a proprietary, high-margin product to a commoditized, low-margin generic. The intellectual property strategy employed around such foundational patents dictates the length and intensity of this transition.

Key Takeaways

  • U.S. Patent 4,810,643 claims a pharmaceutical composition containing enalapril and hydrochlorothiazide for treating hypertension and congestive heart failure, asserting synergistic therapeutic effects.
  • The patent's claims focus on the combination therapy and specific dosage ranges for the active ingredients.
  • The technological context is the development of ACE inhibitors and combination therapies in the late 20th century.
  • The patent landscape for ACE inhibitors is extensive, with numerous patents covering compositions, formulations, and methods of treatment, leading to significant litigation.
  • The primary commercial implication of the patent was the development of fixed-dose combination products like Vasotec-HCTZ.
  • While the patent's term of protection has expired, the technology it covers remains a significant part of the generic cardiovascular drug market.

Frequently Asked Questions

1. What is the current patent status of U.S. Patent 4,810,643?

As a patent issued in 1989, its original term of 17 years has long expired. Therefore, the patent itself is no longer in force and does not grant exclusive rights for its claims.

2. Does this patent prevent generic companies from selling enalapril and hydrochlorothiazide combinations?

No. The expiration of U.S. Patent 4,810,643 means that the specific composition claimed is now in the public domain. Generic manufacturers are free to produce and sell fixed-dose combination products containing enalapril and hydrochlorothiazide, provided they do not infringe on any other valid, active patents (e.g., patents covering specific formulations, manufacturing processes, or methods of use that may still be in force).

3. What is meant by "synergistic therapeutic effect" in the context of this patent?

A synergistic therapeutic effect means that the combined effect of enalapril and hydrochlorothiazide is greater than the sum of their individual effects. In simpler terms, the combination works better than expected based on how each drug works alone, leading to more effective blood pressure reduction or better management of heart failure symptoms, potentially at lower individual doses.

4. Were there other patents protecting enalapril or its combinations?

Yes. U.S. Patent 4,810,643 is one of many patents related to enalapril and its use. There were earlier patents for the discovery and synthesis of enalapril itself, and subsequent patents may have covered specific crystalline forms, formulations (e.g., extended-release), manufacturing processes, or methods of treating specific patient populations or conditions.

5. How did this patent contribute to the development of fixed-dose combination (FDC) drugs?

This patent was instrumental in establishing the scientific and commercial basis for combining enalapril and hydrochlorothiazide into a single pill. By claiming this specific combination and asserting its benefits, Merck paved the way for the development and marketing of FDC products like Vasotec-HCTZ, which offer convenience and improved patient adherence compared to taking separate medications.

6. Is enalapril/hydrochlorothiazide still a relevant treatment option?

Yes, enalapril/hydrochlorothiazide remains a relevant and widely prescribed treatment option for hypertension and heart failure. It is often included in treatment guidelines as a cost-effective and effective first- or second-line therapy, particularly given its generic availability.

Citations

[1] Merck & Co., Inc. (1989, March 7). Pharmaceutical Compositions and Methods. U.S. Patent 4,810,643. United States Patent and Trademark Office.

[2] Mann, J. F. E. (1988). Combined treatment of hypertension with an ACE inhibitor and a diuretic. The American Journal of Medicine, 84(1), 27-30.

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Details for Patent 4,810,643

Applicant Tradename Biologic Ingredient Dosage Form BLA Approval Date Patent No. Expiredate
Amgen Inc. NEUPOGEN filgrastim Injection 103353 February 20, 1991 4,810,643 2006-03-03
Amgen Inc. NEUPOGEN filgrastim Injection 103353 June 28, 2000 4,810,643 2006-03-03
Amgen Inc. NEULASTA pegfilgrastim Injection 125031 January 31, 2002 4,810,643 2006-03-03
Amgen Inc. NEULASTA ONPRO pegfilgrastim Injection 125031 December 23, 2014 4,810,643 2006-03-03
>Applicant >Tradename >Biologic Ingredient >Dosage Form >BLA >Approval Date >Patent No. >Expiredate

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