United States Patent 11,369,599 (US 11,369,599): Scope, Claims, and IP Landscape for Orally Deliverable Copovidone/Polysorbate Solid-Dispersion Tablets
US 11,369,599 is a formulation-focused US patent that claims orally deliverable tablets built around an amorphous or essentially non-crystalline “parent compound” in a specific solid dispersion system, using water-soluble polymeric carriers (with copovidone as a key embodiment), non-ionic surfactants (polysorbates), and glidants (colloidal silicon dioxide). The claims also narrow to specific wt% compositions and two parent-compound strengths (about 50 mg and about 100 mg per tablet).
Because the claims recite a very specific API chemical name and tightly bounded formulation ranges, the enforceable scope is primarily limited to products that use the same parent compound (or a legally equivalent substitute) and fall within the claimed solid-dispersion and excipient frameworks.
What is the exact scope of US 11,369,599 claims (parent compound + solid dispersion + tablet composition)?
Core claim architecture
- Claims 1–4: orally deliverable tablets with the parent compound plus specific excipient percentages.
- Claims 5–31 and 32–54: tablets/solid dosage forms defined by a solid dispersion where the parent compound is essentially non-crystalline/amorphous and is combined with a water-soluble polymeric carrier (broad carrier genus; narrower embodiments with copovidone), plus optional surfactant and glidant constraints.
- Multiple claims lock in specific weight percentages (not just ranges) and specific per-tablet API strengths.
Parent compound identity (claim-defining)
Every formulation claim uses the same parent-compound definition:
- 4-(4-{[2-(4-chlorophenyl)-4,4-dimethylcyclohex-1-en-1-yl]methyl}piperazin-1-yl)-N-({3-nitro-4-[(tetrahydro-2H-pyran-4-ylmethyl)amino]phenyl}sulfonyl)-2-(1H-pyrrolo[2,3-b]pyridin-5-yloxy)benzamide
This API name functions as a hard boundary on claim scope: a generic can often avoid patent infringement if it uses a different polymorph/chemical entity or a different API (subject to legal doctrines of equivalents and validity).
Claim-defining excipient system
- Solid dispersion composition
- Parent compound: 5% to 20% by weight
- Water-soluble polymeric carrier: 70% to 95% by weight
- Parent compound physical state: essentially non-crystalline or amorphous
- Carrier genus (claim 8)
Water-soluble polymeric carrier selected from a list including:
- povidones/copolyvidones (claim 9 narrows to povidone family),
- HPMCs,
- graft copolymers,
- polyalkylene oxides and multiple other polymer classes, plus mixtures.
- Key embodiment carriers (claim 9 + downstream claims)
- Claim 9 expressly includes: povidones/copolymers of vinyl lactams/copolyvidone; HPMCs; PEG-graft/copolymers; etc.
- Claims 15/21/22/30/36 and related dependents increasingly focus on copovidone 60/40.
- Non-ionic surfactants
- Claim 10 limits: at least one pharmaceutically acceptable surfactant that is non-ionic
- Claim 11 specifies examples, including polysorbate 80 (and TPGS, sorbitan monoesters, etc.)
- Glidant
- Claim 12 includes at least one glidant
- Claim 13 specifies glidant comprises colloidal silicon dioxide in at least one embodiment.
Tablet excipient percentages (non-solid-dispersion independent set in claims 1–4)
Claim 1 is a specific whole-tablet composition:
- 9.42% parent compound
- 62.8% copovidone
- 5.495% polysorbate 80
- 0.785% colloidal silicon dioxide
Claim 2 adds:
- 20% dicalcium phosphate
- 0.5% sodium stearyl fumarate
- +1% colloidal silicon dioxide (in that dependent structure)
Claims 3 and 4 lock to:
- about 50 mg parent compound (claim 3)
- about 100 mg parent compound (claim 4)
How broad is claim coverage: ranges vs locked compositions?
US 11,369,599 has a two-layer claim strategy:
- Broader ranges for solid dispersion (claims 5, 8, 10–14, 19–21, 25–27, 32–35)
- Narrow, product-specific compositions (claims 1, 2, 22–23, 28–29, 36, etc.)
A likely infringement map:
- If a competitor uses the same API but changes the polymer carrier away from covered genus, they can escape claim 5/32 while still potentially falling under narrower embodiment claims if they match composition.
- If a competitor uses copovidone + polysorbate + colloidal silicon dioxide but shifts the API % outside 5–20% (or outside the dependent tighter windows), they can escape many dependent claims but still face risk under the independent range claims unless they shift outside both the solid dispersion and tablet formulations.
Which claim elements are most “litigation-relevant” for infringement (and how to design around)?
For claim 5 (solid dispersion tablet), infringement requires all of:
- Orally deliverable tablet (solid dosage form)
- Solid dispersion exists as part of the formulation
- Solid dispersion composition:
- API is the named parent compound
- API is essentially non-crystalline or amorphous
- API wt% is 5–20%
- polymeric carrier wt% is 70–95%
- Optional add-ons depend on the specific asserted dependent claim:
- surfactant non-ionic (claim 10/11)
- glidant (claim 12/13) specifically colloidal silicon dioxide in certain branches
- specific narrower wt% combinations (claims 14, 19–22, 25–27, 28–29)
Most easily adjusted formulation “escape knobs”
- API percentage in solid dispersion (move below 5% or above 20%)
- Polymeric carrier selection (avoid the covered water-soluble polymeric carrier genus; especially avoid copovidone if targeting narrower claims)
- Surfactant selection (avoid non-ionic polysorbate family; use ionic surfactants, or non-specified surfactants not within the claim lists, depending on how the independent is asserted)
- Glidant selection (avoid colloidal silicon dioxide if the asserted claim requires it)
- Crystallinity/polymorph control (claim language requires “essentially non-crystalline or amorphous” for the API in the solid dispersion; a competitor can target a different solid-state state if feasible)
Note: “essentially non-crystalline or amorphous” is often litigated with characterization methods. But structurally, it is still a key boundary element.
What patent claim coverage exists for 50 mg and 100 mg tablet strengths?
The patent uses mg-strength limitations in multiple dependent claims:
- Claim 3: tablet comprises about 50 mg parent compound
- Claim 4: tablet comprises about 100 mg parent compound
Parallel mg-strength coverage appears in:
- claims 30 and 31 (tied to claim 5’s solid-dispersion framework)
- claims 44–45, 53–54 in dependent chains tied to surfactant + carrier + glidant compositions
These constraints matter in litigation because a generic’s real product strength is measurable, and “about” still creates a range dispute but typically not a free pass.
How many distinct formulation embodiments does US 11,369,599 cover (by excipient system)?
Embodiment cluster A: Whole-tablet composition with copovidone/polysorbate/silicon dioxide (claims 1–4)
- Copovidone fixed at 62.8%
- Polysorbate 80 fixed at 5.495%
- Colloidal silicon dioxide fixed at 0.785%
- Dependent adds:
- dicalcium phosphate 20%
- sodium stearyl fumarate 0.5%
- colloidal silicon dioxide additional 1% (in the dependent table composition structure)
Embodiment cluster B: Solid dispersion (claims 5–21, 22–23)
- API wt% in solid dispersion: 5–20% (or tighter windows)
- polymer carrier wt%: 70–95% (or tighter)
- optional:
- non-ionic surfactant (includes polysorbate 80)
- glidant (includes colloidal silicon dioxide)
Embodiment cluster C: Solid dispersion with explicit carrier surfactant/glidant combinations (claims 22, 25–27, 28–29, 36, 37–43)
- Claim 22 locks an example solid dispersion:
- 12% API
- 80% copovidone 60/40
- 7% polysorbate 80
- 1% colloidal silicon dioxide
- Claim 23 then scales to tablet overall:
- 78.5% solid dispersion
- 20% dicalcium phosphate
- 0.5% sodium stearyl fumarate
- 1% colloidal silicon dioxide
These “example” embodiments are often the most enforceable in practice because they match commercial formulation recipes closely.
What does the patent protect: formulation composition, not use or method?
From the provided claim set, US 11,369,599 is not claiming:
- method-of-treatment
- patient dosing regimens
- manufacturing steps (as independent claim language)
- device combinations
- polymorph-specific “single polymorph” exclusive forms beyond the “essentially non-crystalline or amorphous” characterization requirement
Instead, the claim scope centers on:
- composition of orally deliverable tablets
- composition of a solid dispersion within the tablet
- specific excipient selection and ranges
- specific weight ratios
- optionally required excipient classes (surfactants and glidants)
That means freedom-to-operate risk for a competing generic is strongest when the product formulation is “close” in both API solid-state and excipient architecture.
How strong is the patent estate for this product concept (format of claims vs typical generic design-around)?
Strength drivers (for enforcement)
- The patent recites an API by complete chemical name. If a competitor uses the same API, this element is satisfied.
- It recites measurable formulation parameters: wt% ranges, specific excipients (copovidone, polysorbate 80, colloidal silicon dioxide), and defined solid dispersion structure.
- The patent includes narrow dependent claims that can be asserted if a competitor’s commercial product matches the listed percentages or strength.
Strength limitations (for enforcement)
- Scope is formulation-specific. A competing entrant can design around by:
- choosing a carrier outside the claimed polymer genus,
- shifting API wt% outside 5–20% in the solid dispersion,
- using a different non-ionic surfactant combination not captured by dependent lists (while still satisfying independent claim elements if asserted),
- avoiding colloidal silicon dioxide where required by dependent claims.
- If the competitor changes excipient grades or uses alternative carriers (even still water-soluble), the patent’s “selected from the group” lists can reduce coverage unless doctrine of equivalents applies.
Practical litigation inference
In many solid-dispersion cases, the highest-risk scenario is a generic that adopts:
- copovidone as the primary carrier,
- polysorbate 80 as the surfactant,
- colloidal silicon dioxide as glidant,
- and an amorphous or essentially non-crystalline API dispersed at ~5–15% (or ~12% as in the specific example) in a copovidone-dominant matrix.
What generic entry risks exist for products that use a similar solid dispersion but different polymers or surfactants?
Scenario 1: Same API, copovidone carrier, polysorbate 80, colloidal silicon dioxide
- High risk of hitting dependent claims that recite those specific excipients, especially those with explicit wt% examples.
Scenario 2: Same API + copovidone, but different surfactant
- Risk depends on whether the asserted claim requires polysorbate (dependent claims 16/22/39 and branches requiring polysorbate 80).
- Independent claim 5 only requires surfactant “optional” via dependents (claim 10/11 chain). If a plaintiff asserts independent claim 5 without surfactant limitation, the design-around may fail unless the carrier/API wt% still fits.
Scenario 3: Same API + polysorbate 80, but different carrier polymer
- If the carrier is not within the claimed list (claim 8 and 9), it can avoid claim 5/32 if the asserted carrier is outside genus.
- If the product still uses a povidone/copolymer of N-vinyl lactams or copovidone-like polymers, it may still fall within claim 9.
Scenario 4: API crystalline form changes
- Claim 5/32 requires “essentially non-crystalline or amorphous” parent compound in the solid dispersion.
- If a competitor achieves a different solid-state profile (more crystalline) while maintaining solubility via other mechanisms, it can argue non-infringement on that element.
What is the Orange Book status of US 11,369,599 and how does it relate to FDA listings?
No Orange Book drug/approval mapping can be produced from the provided information alone, because US 11,369,599’s patent-to-product link requires:
- patent assignee,
- patent family member identifiers,
- the FDA application/active ingredient listing,
- and Orange Book “listed” entries.
Per the constraints, no incomplete mapping is provided.
What patent litigation affects US 11,369,599 (Paragraph IV, ITC, district court)?
No litigation docket, settlement agreement, or Paragraph IV history can be derived from the provided claim text alone. Patent enforcement activity typically depends on:
- assignee,
- listed Orange Book patents,
- ANDA/DIA case numbers,
- and asserted claim sets.
No incomplete litigation mapping is provided.
What does the claim scope imply for licensing negotiations (what would a license likely cover)?
A license tied to US 11,369,599 would likely cover:
- tablets using the named parent compound in an amorphous/non-crystalline solid dispersion,
- with water-soluble polymeric carriers in the 70–95% range,
- and, for higher-value coverage, embodiments using:
- copovidone (including copovidone 60/40),
- polysorbate 80 as non-ionic surfactant,
- colloidal silicon dioxide as glidant,
- and specific wt% formulations (notably 12% API / 80% copovidone 60/40 / 7% polysorbate 80 / 1% colloidal silicon dioxide and the corresponding tablet recipe in claim 23).
Negotiation leverage is usually strongest when the competitor’s formulation matches a dependent claim’s specific wt% and strength.
Timeline: when does exclusivity end (how long does this formulation patent last)?
No expiration date can be computed from the claim text alone because the filing date, priority date, and term adjustments require bibliographic data from the patent record.
No incomplete exclusivity timeline is provided.
Key Takeaways
- US 11,369,599 is an orally deliverable tablet / solid dispersion formulation patent built around one specific API by chemical name.
- Claim scope is defined by: amorphous or essentially non-crystalline API in a solid dispersion, with 5–20% API and 70–95% water-soluble polymeric carrier.
- The enforceability leverage is highest for embodiments using copovidone (including copovidone 60/40), non-ionic surfactant polysorbate 80, and colloidal silicon dioxide glidant, especially where wt% recipes are locked (notably the 12/80/7/1 dispersion and corresponding tablet formulation).
- Generic design-around is most plausible by moving carrier selection outside the claimed polymer list, shifting API wt% outside the solid dispersion range, avoiding polysorbate 80 where dependent claims require it, avoiding colloidal silicon dioxide where dependent claims require it, or changing the API solid-state away from “essentially non-crystalline or amorphous.”
- Orange Book status, FDA linkage, and litigation/Paragraph IV risk cannot be mapped without patent record and regulatory listing data.
FAQs
1) Does US 11,369,599 require an amorphous API state?
Yes. Claims 5 and 32 require the parent compound in the solid dispersion to be “essentially non-crystalline or amorphous.”
2) Can a tablet infringe if it uses a different surfactant than polysorbate 80?
Infringement depends on which claim is asserted. Surfactant is required only in specific dependent claim paths tied to non-ionic surfactant, where examples include polysorbates; independent solid-dispersion claims may be asserted without surfactant limitations.
3) What carrier is most central to US 11,369,599’s narrower embodiments?
Copovidone is central. Several dependent claims and explicit examples use copovidone 60/40 and weight-locked compositions.
4) What excipient is required in the claims’ glidant-specific embodiments?
Colloidal silicon dioxide is required where the dependent glidant claims specify it (claims 13 and related dependents).
5) Are the 50 mg and 100 mg strengths separately protected from a licensing standpoint?
They are protected as “about” tablet strength limitations in multiple dependent claims, which can raise infringement risk if a commercial product matches those strengths.
References
(No external sources were cited because the provided prompt did not include patent bibliographic data, FDA/Orange Book identifiers, or litigation records needed for source-backed claims.)
