Details for Patent: 10,307,417
Which drugs does patent 10,307,417 protect, and when does it expire?
Patent 10,307,417 protects RELISTOR and is included in one NDA.
This patent has fifty-six patent family members in thirty-two countries.
Summary for Patent: 10,307,417
| Title: | Oral formulations and lipophilic salts of methylnaltrexone | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The present invention provides compositions comprising methylnaltrexone or a salt thereof, and compositions and formulations thereof, for oral administration. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Syed M. Shah, Christopher Richard Diorio, Eric C. Ehrnsperger, Xu Meng, Kadum A. Al Shareffi, Jonathan Marc Cohen | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Wyeth LLC | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US16/219,681 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 10,307,417 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
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Patent Claim Types: see list of patent claims | Composition; Formulation; Compound; Device; Dosage form; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 10,307,417: Claim Scope, Expiration, Orange Book Status, and Methylnaltrexone Patent LandscapeU.S. Patent No. 10,307,417 protects a narrow oral methylnaltrexone bromide tablet platform that uses sodium dodecyl sulfate, also called sodium lauryl sulfate, to create an ion pair and improve dissolution and apparent lipophilicity in acidic conditions. The strongest commercial claims target a non-enteric-coated tablet containing methylnaltrexone bromide and SDS at approximately a 3:1 weight ratio, including a 150 mg/50 mg dose configuration. The patent does not broadly cover methylnaltrexone, all oral formulations, injectable products, or methods of treating opioid-induced constipation. The patent issued June 4, 2019. Based on its ordinary 20-year term calculated from its earliest nonprovisional priority date, the expected expiration is in 2032, subject to any applicable patent-term adjustment or other term modification.[1] What does U.S. Patent 10,307,417 protect?The patent protects a pharmaceutical composition for oral administration with five central limitations:
The independent claim is composition-based. It does not require a particular therapeutic indication, dosing schedule, manufacturing process, tablet weight, or commercial brand.
Because claim 1 uses the transition “comprising,” the claim permits additional inactive ingredients unless another limitation excludes them. The “sole active agent” limitation prevents a combination product with another pharmacologically active ingredient from satisfying the claim. How do the dependent claims narrow the patent?The dependent claims create several overlapping fallback positions. A product need not satisfy every dependent limitation to infringe claim 1, but the dependent claims can provide narrower infringement theories and potentially stronger validity positions. Dissolution limitationsClaims 5 and 6 require at least 75% and 90% dissolution, respectively, within approximately 15 minutes. Claims 15 and 16 apply the same thresholds to the approximately 3:1 formulation. These limitations are technically important because they create a measurable performance boundary. A competing tablet with the same ingredients but slower dissolution could avoid the narrower claims while still potentially falling within claim 1 if it reaches at least 50% dissolution. The phrase “about 15 minutes” introduces ordinary claim-construction questions concerning experimental variability, acceptable analytical tolerances, and the meaning of “about” in the specification. The test conditions are unusually specific, which may limit the relevance of results generated under a different medium, apparatus, agitation speed, volume, or temperature. Ion-pair limitationsClaims 7 through 10 and 17 through 18 require formation of an ion pair when methylnaltrexone bromide and SDS are dissolved in solution. The relevant pH range is approximately 1 to 4. These claims are directed to a functional chemical interaction rather than merely the co-presence of the ingredients. A formulation containing SDS may not satisfy these claims if the required ion pair does not form under the claimed conditions. Conversely, a defendant may face analytical discovery concerning the formulation’s behavior in acidic solution. Partition-coefficient limitationsClaims 11 through 13 require an apparent octanol/water partition coefficient for methylnaltrexone of at least 0.25, 0.5, or 1 at a pH between 1 and 4. The partition-coefficient claims attempt to capture the effect of SDS on methylnaltrexone’s distribution between aqueous and organic phases. They may be relevant to formulation designs using alternative ratios or excipient levels, provided the product satisfies the other limitations of claim 1. The term “apparent” is significant. The measurement concerns the formulation’s observed distribution behavior under specified acidic conditions, rather than necessarily the intrinsic partition coefficient of unformulated methylnaltrexone. Disintegrant limitationsClaims 2 through 4 require a rapid-acting disintegrant, including an effervescent disintegrant or sodium bicarbonate. These claims address rapid tablet breakup and may support the dissolution limitations. A tablet using crospovidone, croscarmellose sodium, sodium starch glycolate, sodium bicarbonate, or another fast-disintegrating system could raise different infringement questions depending on whether the excipient satisfies the claim language and the patent’s construction of “rapid-acting.” Chelating-agent limitationsClaims 20 through 23 add a chelating agent. Claim 21 specifically identifies calcium EDTA disodium. These claims could cover a formulation designed to control metal-ion interactions or improve stability. The chelating-agent limitations are narrower than claim 1 and do not appear necessary for coverage of a basic methylnaltrexone/SDS tablet. What formulations are protected by U.S. Patent 10,307,417?The principal commercial formulation target is a tablet containing 150 mg methylnaltrexone bromide and 50 mg SDS. Claims 24 through 29 expressly identify that configuration and connect it to the 3:1 ratio, dissolution, and ion-pair limitations.
The claims are formulation-specific, not molecule-wide. An oral methylnaltrexone product using a different dosage form, a different surfactant, or a non-SDS absorption strategy may avoid literal infringement, although the doctrine of equivalents could become relevant in litigation. How strong is the patent estate for methylnaltrexone?U.S. Patent 10,307,417 appears strongest against a direct copy of the claimed oral tablet architecture. Its commercial significance depends on whether the marketed product contains SDS at the claimed level and satisfies the dissolution and, where asserted, ion-pair limitations. Its strengths are:
Its limitations are:
The patent’s validity could be tested against prior art involving oral quaternary ammonium opioid antagonists, surfactant-mediated ion pairing, pharmaceutical dissolution enhancement, and methylnaltrexone formulations. The most vulnerable issues would likely include written description and enablement across the breadth of the functional limitations, obviousness of combining methylnaltrexone with SDS, and the reproducibility of the claimed dissolution and partition-coefficient results. When does U.S. Patent 10,307,417 lose exclusivity?The patent issued in 2019 and is expected to expire in 2032 under the ordinary patent-term framework.[1] The exact terminal date depends on the patent’s recorded term adjustment and any applicable term extension.
Patent expiration does not automatically determine generic entry. A generic applicant may challenge the patent, settle with the patent holder, or obtain a license for an earlier launch. Conversely, a patent may remain enforceable after regulatory exclusivity ends. What is the FDA and Orange Book status of the methylnaltrexone product?Relistor, marketed by RedHill Biopharma after its acquisition of rights from Bausch Health-related entities, is the principal U.S. methylnaltrexone product. FDA-approved products include oral tablets and subcutaneous injection products for opioid-induced constipation in specified patient populations.[2] Methylnaltrexone is a small-molecule drug. It is therefore subject to the ANDA pathway and Paragraph IV patent certification framework, not the biosimilar pathway under the Public Health Service Act.[3] The Orange Book analysis should distinguish:
An Orange Book listing does not establish validity or infringement. It affects FDA approval timing and the statutory notice-and-stay framework for an ANDA applicant. The relevant FDA regulatory milestones include approval of oral Relistor tablets for opioid-induced constipation and separate approval of the injectable product. The oral tablet’s approved dose is administered as methylnaltrexone bromide tablets, with the labeled regimen differing by indication and patient population.[2] What generic entry risks exist for Relistor?A generic applicant targeting the oral product would likely evaluate at least four design strategies. Direct formulation challengeThe applicant could copy the active ingredient, tablet form, SDS, dose, and dissolution profile, then file a Paragraph IV certification against listed patents. This creates the highest infringement exposure but may produce the closest bioequivalence profile. Excipient substitutionThe applicant could use a different surfactant or a different disintegration system. This approach may avoid claims expressly requiring SDS, but it must still satisfy bioequivalence and product-quality requirements. Ratio modificationA formulation outside the approximately 3:1 methylnaltrexone bromide:SDS ratio could avoid the narrower claims. It may remain exposed to claim 1 if it contains SDS, is a non-enteric-coated tablet, and meets the 50% dissolution threshold. Dosage-form redesignA capsule, multiparticulate system, liquid, or alternative delivery system could avoid the tablet limitation. The commercial and regulatory burden would be higher if the redesign changes dissolution, absorption, or pharmacokinetic behavior. The principal competitive risk is therefore formulation-specific rather than molecule-wide. A challenger that avoids SDS and the tablet limitation may have a stronger noninfringement position but could face a more difficult development program. Which companies are challenging the methylnaltrexone patent estate?Publicly available patent information does not establish a definitive Paragraph IV challenger or a final settlement involving U.S. Patent 10,307,417. The patent itself is not evidence of litigation activity, and FDA Orange Book listing data must be matched with court dockets to determine whether an ANDA challenge has occurred. For diligence purposes, the relevant litigation questions are:
Absent a verified docket or FDA notice, no challenger, settlement date, or agreed launch date should be treated as established. Does the patent cover biosimilars or injectable methylnaltrexone?No. Biosimilar risk is not the relevant framework because methylnaltrexone bromide is a small molecule. The patent also does not expressly cover injectable methylnaltrexone because the claims require a tablet for oral administration. An injectable product would fall outside the literal scope of claim 1 even if it contained methylnaltrexone bromide and SDS. The patent likewise does not cover a general method of treating opioid-induced constipation. How does this patent compare with broader methylnaltrexone patents?
The patent should therefore be analyzed as one layer of a possible estate. Freedom-to-operate analysis requires separate review of compound, salt, formulation, manufacturing, and method-of-use patents, as well as terminal disclaimers and patent-family continuations. What manufacturing and geographic barriers exist?The patent’s geographic scope is limited to the United States. Foreign counterparts may have different claim sets, prosecution histories, expiration dates, and validity outcomes. A global launch requires separate analysis in Europe, Canada, Japan, China, Australia, and other target markets. Manufacturing risks include:
A process that produces the same final composition can still implicate the composition claims even if the manufacturing method differs. Conversely, a manufacturing patent could create exposure even when the final tablet avoids U.S. Patent 10,307,417. Key Takeaways
Frequently Asked QuestionsDoes U.S. Patent 10,307,417 cover Relistor itself?It may cover an oral Relistor tablet if the marketed product contains the claimed SDS component, satisfies the tablet and coating limitations, and meets the relevant dissolution requirements. The patent does not automatically cover every Relistor presentation. Can a generic avoid the patent by using sodium lauryl sulfate instead of SDS?Sodium lauryl sulfate is a common name for sodium dodecyl sulfate. Changing that label alone would not avoid the SDS limitation. Does a 450 mg methylnaltrexone dose fall within the 150 mg claims?A 450 mg dose does not satisfy a claim requiring approximately 150 mg in a single tablet. It could still implicate broader claims if the product otherwise satisfies claim 1 or another asserted claim. Is a tablet with 49% dissolution at 15 minutes outside the patent?It would not satisfy the literal 50% dissolution threshold of claim 1 based solely on that result. The test conditions, analytical variability, and construction of “about 15 minutes” would remain relevant in an infringement dispute. Can a formulation with SDS but no sodium bicarbonate infringe?Yes. Sodium bicarbonate is required only by dependent claim 4. A tablet without sodium bicarbonate may still fall within claim 1 or other dependent claims if all applicable limitations are met. References
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Drugs Protected by US Patent 10,307,417
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Salix | RELISTOR | methylnaltrexone bromide | TABLET;ORAL | 208271-001 | Jul 19, 2016 | RX | Yes | Yes | 10,307,417 | ⤷ Start Trial | Y | ⤷ Start Trial | ||||
| >Applicant | >Tradename | >Generic Name | >Dosage | >NDA | >Approval Date | >TE | >Type | >RLD | >RS | >Patent No. | >Patent Expiration | >Product | >Substance | >Delist Req. | >Patented / Exclusive Use | >Submissiondate |
International Family Members for US Patent 10,307,417
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Argentina | 080491 | ⤷ Start Trial | |||
| Australia | 2011224275 | ⤷ Start Trial | |||
| Brazil | 112012022873 | ⤷ Start Trial | |||
| Canada | 2789798 | ⤷ Start Trial | |||
| Chile | 2012002192 | ⤷ Start Trial | |||
| China | 102918039 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
