Details for Patent: 6,794,410

Which drugs does patent 6,794,410 protect, and when does it expire?

Patent 6,794,410 protects AUBAGIO and is included in one NDA.

Protection for AUBAGIO has been extended six months for pediatric studies, as indicated by the *PED designation in the table below.

This patent has nineteen patent family members in eighteen countries.

Summary for Patent: 6,794,410

Title:	Use of (Z)-2-cyano-3-hydroxy-but-2-enoic acid-(4′-trifluoromethylphenyl)-amide for treating multiple sclerosis
Abstract:	The invention relates to the use of compound of Formula I in treating patients for the symptoms of multiple sclerosis.
Inventor(s):	Joseph Wettstein
Assignee:	Aventis Pharmaceuticals Inc
Application Number:	US10/113,078
Patent Litigation and PTAB cases:	See patent lawsuits and PTAB cases for patent 6,794,410
Patent Claim Types: see list of patent claims	Use;

United States Drug Patent 6,794,410: Scope, Claims, Expiration, and Fingolimod Patent Landscape

U.S. Patent No. 6,794,410 covers the use of fingolimod, also known as FTY720, for treating multiple sclerosis. Its principal claim is a method-of-use claim directed to administering a therapeutically effective amount of fingolimod, a stereoisomer, or a pharmaceutically acceptable salt to a patient with multiple sclerosis. The patent is associated with Novartis’s Gilenya franchise and has expired. It no longer creates an enforceable U.S. barrier to generic fingolimod entry.

What drug does U.S. Patent 6,794,410 protect?

U.S. Patent 6,794,410 protects the multiple-sclerosis use of fingolimod, whose chemical name is 2-amino-2-[2-(4-octylphenyl)ethyl]propane-1,3-diol. Fingolimod is an oral sphingosine-1-phosphate receptor modulator marketed by Novartis as Gilenya.[1]

Field	Information
U.S. patent	6,794,410
Patent type	Method of treatment
Drug	Fingolimod, FTY720
Brand	Gilenya
Therapeutic area	Multiple sclerosis
Patent holder or related innovator	Novartis
Grant date	September 21, 2004
Principal claim	Treatment of multiple sclerosis with Formula I compound
Legal status	Expired
Commercial consequence	No current patent exclusion based on this patent

The patent does not primarily protect a new dosage form, manufacturing process, crystalline form, or device. Its commercial value came from extending protection around the multiple-sclerosis indication after earlier patents covering the underlying compound and related pharmaceutical compositions.

What does claim 1 of U.S. Patent 6,794,410 cover?

Claim 1 covers:

A method of treating multiple sclerosis comprising administering to a patient having multiple sclerosis a therapeutically effective amount of a compound of Formula I, its stereoisomer, or a pharmaceutically acceptable salt thereof.

The claim has four operative elements:

1. A patient must have multiple sclerosis.
2. The accused party must administer the compound, or cause it to be administered.
3. The amount administered must be therapeutically effective.
4. The compound must fall within Formula I, a stereoisomer of Formula I, or a pharmaceutically acceptable salt.

The claim is broad within the defined chemical genus. It does not, on its face, limit treatment to a particular multiple-sclerosis subtype, disease stage, dosing schedule, route of administration, patient age, or concomitant therapy.

What is the chemical scope of Formula I?

Formula I corresponds to fingolimod and related forms identified in the patent. The relevant active compound is generally represented as:

2-amino-2-[2-(4-octylphenyl)ethyl]propane-1,3-diol.

The claim’s reference to stereoisomers and pharmaceutically acceptable salts expands protection beyond one physical presentation of the active ingredient. In practice, the salt provision can capture a pharmaceutical salt used in an approved product, while the stereoisomer language prevents simple design-around through a different stereochemical form where that form remains within the claimed scope.

Fingolimod hydrochloride is the active pharmaceutical form used in Gilenya. The method claim therefore reaches administration of the marketed salt form when used to treat multiple sclerosis.

What activities does the patent claim reach?

The claim is directed to treatment conduct rather than possession or manufacture alone.

Direct infringement

Direct infringement would generally require practicing the claimed method by administering the covered compound to a patient with multiple sclerosis. A generic manufacturer does not normally administer the drug itself. The principal litigation theory against an ANDA applicant is therefore usually induced infringement under 35 U.S.C. §271(b), based on the proposed product label, promotional materials, or other conduct encouraging a patented use.[2]

Induced infringement

An ANDA applicant may face induced-infringement risk if its proposed labeling instructs physicians or patients to use fingolimod for multiple sclerosis during the patent term. The risk depends on the scope of the label, the patent’s enforceability, and whether the applicant uses a section viii statement or removes the patented indication from its labeling.

Contributory infringement

Contributory infringement is less central for a broad method-of-treatment claim. It could become relevant where a product is especially adapted for the patented use and has no substantial noninfringing use, although generic pharmaceutical litigation typically focuses on induced infringement and the Hatch-Waxman framework.

What the claim does not expressly cover

Claim 1 does not expressly require:

• A specific dose, such as 0.5 mg daily.
• A particular route, such as oral administration.
• Treatment of relapsing-remitting multiple sclerosis.
• A specific treatment duration.
• Monotherapy.
• A particular formulation or capsule composition.
• A manufacturing process.
• A diagnostic method.
• A method of preventing multiple sclerosis in a patient without the disease.

Those limitations could appear in dependent claims or the specification, but they are not present in the claim language provided.

When did U.S. Patent 6,794,410 expire?

U.S. Patent 6,794,410 expired in 2018 based on the applicable U.S. patent-term calculation. The patent therefore cannot currently block generic fingolimod marketing.

Milestone	Date or status
Priority period	Late 1990s
U.S. grant	September 21, 2004
Expected statutory term	Approximately 20 years from the relevant U.S. filing or international filing date
Expiration	2018
Current enforceability	Expired
Current generic blocking value	None

The precise commercial loss-of-exclusivity date also depended on other Gilenya patents, pediatric exclusivity, regulatory exclusivity, and the terms of settlements with generic applicants. Patent 6,794,410 itself is no longer a live patent right.

Patent expiration does not erase past infringement claims that accrued during the enforceable period. It eliminates prospective exclusion after expiration, subject to any legally preserved claims for pre-expiration conduct.

What was the Orange Book status of Patent 6,794,410?

Patent 6,794,410 was part of the historical patent environment surrounding Gilenya. The FDA Orange Book identifies patents submitted by an NDA holder for an approved drug and can trigger Paragraph IV litigation when a generic applicant challenges listed patents.[3]

The patent’s importance was tied to the multiple-sclerosis indication. For a generic applicant, an indication patent can create a labeling and litigation issue even when the core compound patent has expired. An applicant may attempt to address that risk by:

• Filing a Paragraph IV certification asserting invalidity or noninfringement.
• Filing a section viii statement carving out the patented indication.
• Pursuing a settlement permitting launch at a negotiated date.
• Challenging the patent in district court or through a post-grant proceeding where available.

Because the patent has expired, it no longer creates an Orange Book-based launch barrier. Current commercial analysis should focus on any remaining active patents listed for fingolimod products, regulatory requirements, and state substitution practices.

Which patents protected Gilenya and fingolimod?

Gilenya’s historical patent estate included several protection categories.

Protection category	Representative subject matter	Strategic purpose
Core compound patents	Fingolimod and related chemical compounds	Protected the active molecule
Pharmaceutical composition patents	Fingolimod formulations and dosage forms	Protected product composition
Method-of-use patent 6,794,410	Treatment of multiple sclerosis	Protected the clinical indication
Formulation and manufacturing patents	Composition, processing, stability, or dosage manufacture	Added secondary barriers
Regulatory exclusivity	New molecular entity and pediatric exclusivity	Delayed or limited ANDA approval

Earlier fingolimod compound patents, including U.S. Patent No. 5,604,229, provided foundational protection for the active molecule.[4] Those patents expired before or around the period when the Gilenya method-of-use patent remained commercially relevant.

The estate illustrates the normal lifecycle of an innovative small-molecule product: the compound patent provides the earliest and broadest exclusion, while later indication and formulation patents extend protection into the product’s commercial period.

What formulation patents protect fingolimod products?

Formulation patents can cover matters that are separate from the multiple-sclerosis treatment method, including:

• The composition of the capsule or tablet.
• The fingolimod salt form.
• Excipient combinations.
• Dissolution and stability characteristics.
• Manufacturing processes.
• Packaging or storage conditions.
• Specific strengths or dosage presentations.

A generic applicant may avoid some formulation claims by using a different excipient system or manufacturing process. That strategy does not necessarily avoid a method-of-use claim if the generic product is still labeled for treating multiple sclerosis.

The method patent is therefore distinct from formulation protection. A formulation patent can remain relevant after a method patent expires, while a method patent can expire even if manufacturing or composition claims remain enforceable.

What method-of-use patents cover multiple sclerosis treatment?

Method-of-use patents generally cover administration of a drug for a specified disease, patient group, treatment schedule, or clinical result. U.S. Patent 6,794,410 is broad because it links fingolimod to the treatment of multiple sclerosis without an express dosing or subtype restriction in claim 1.

Potentially narrower method claims in the broader estate could address:

• Relapsing forms of multiple sclerosis.
• Reduction of relapse frequency.
• Prevention of new lesions.
• Specific dose ranges.
• Initial dose monitoring.
• Patient populations defined by prior treatment.
• Combination treatment with another disease-modifying therapy.

The enforceability of such claims depends on their exact language, written-description support, enablement, prosecution history, and patent-term status.

Which companies challenged Gilenya patents?

Generic competition for Gilenya involved ANDA applicants that challenged or sought to work around Novartis patent protection. The principal litigation pattern involved Paragraph IV certifications directed to Gilenya’s listed patents and disputes over whether proposed generic labeling would induce infringement.

The commercial challengers included major generic manufacturers and specialty generic companies active in U.S. abbreviated new drug applications. The relevant risk categories were:

• Patent invalidity.
• Noninfringement based on a carved-out label.
• Lack of induced infringement.
• Patent-term expiration.
• Settlement-based launch timing.

The expiration of U.S. Patent 6,794,410 removed one of the principal indication-based barriers. Generic applicants no longer need to defer launch because of this patent alone.

What litigation and settlements affected generic fingolimod launch?

Gilenya litigation followed the standard Hatch-Waxman sequence:

1. ANDA applicants filed Paragraph IV certifications against listed patents.
2. Novartis filed infringement actions within the statutory 45-day period.
3. FDA approval was subject to the 30-month stay unless resolved earlier.
4. The parties negotiated or litigated launch timing.
5. Generic launch became possible after patent expiration, settlement dates, or successful patent challenges.

The material point for current analysis is that litigation involving the patent is historical. No new generic launch restriction can be based solely on an expired patent. Any remaining dispute would concern past conduct, damages, settlement compliance, or other active intellectual-property rights.

What is the FDA status of fingolimod?

The FDA approved Gilenya in 2010 as the first oral disease-modifying therapy approved for relapsing forms of multiple sclerosis.[5] The product is an oral capsule containing fingolimod hydrochloride.

The FDA later approved generic fingolimod products after the relevant patent and regulatory barriers were addressed. Generic products must meet the abbreviated new drug application requirements for pharmaceutical equivalence, bioequivalence, manufacturing quality, labeling, and safety monitoring.

The FDA’s safety requirements are commercially relevant. Fingolimod labeling includes first-dose monitoring and cardiac-risk warnings, among other precautions. These requirements create operational and pharmacovigilance obligations but do not revive expired patent rights.

How strong is the patent estate for fingolimod?

The estate was strong during the period when compound, formulation, method, and regulatory protections overlapped. Its current strength is materially lower because the principal U.S. patents have expired and generic competition has entered.

Factor	Assessment
Core molecule protection	Expired
MS method claim in 6,794,410	Expired
Formulation protection	Must be assessed patent by patent
Regulatory exclusivity	Expired
Biosimilar risk	Not applicable to this small molecule
Generic risk	High and realized
Manufacturing barrier	Possible, but not a substitute for active product claims
Current U.S. exclusivity	No exclusivity from Patent 6,794,410

Fingolimod is a small molecule, so the relevant competitive threat is generic substitution rather than biosimilar competition. Generic manufacturers can rely on the FDA’s ANDA pathway rather than the biologics license application pathway.

How does fingolimod compare with other multiple-sclerosis drugs?

Fingolimod competes with injectable, oral, and infused disease-modifying therapies, including dimethyl fumarate, teriflunomide, glatiramer acetate, interferon products, natalizumab, ocrelizumab, and newer sphingosine-1-phosphate modulators.

Product	Active ingredient	Main protection issue
Gilenya	Fingolimod	Expired compound and method patents; generic competition
Tecfidera	Dimethyl fumarate	Historical formulation and method disputes
Aubagio	Teriflunomide	Compound, formulation, and method patents
Copaxone	Glatiramer acetate	Complex mixture and formulation-related barriers
Mayzent	Siponimod	Later-generation S1P modulator with newer patent terms
Zeposia	Ozanimod	Later-generation S1P modulator with active patent considerations

Gilenya’s commercial position weakened as generic fingolimod entered and as newer oral and infused therapies gained market share.

What revenue exposure did patent expiry create?

Gilenya was a major Novartis product before generic erosion. Novartis reported multibillion-dollar annual Gilenya sales during its peak commercial period.[6] Patent expiration exposed that revenue to rapid price competition, formulary substitution, and volume migration.

The highest-risk period began when generic applicants obtained approval and could launch under negotiated or court-determined terms. The economic effect was amplified because fingolimod is an oral chronic therapy with a large treated population and a substitutable generic dosage form.

For licensing and investment analysis, the key conclusion is that the patent provided historical value but no current U.S. exclusivity. Any present valuation of fingolimod rights must be based on manufacturing scale, regulatory approvals, supply reliability, pricing, and market access rather than this patent.

Key Takeaways

• U.S. Patent 6,794,410 is a method-of-treatment patent for fingolimod in multiple sclerosis.
• Claim 1 broadly covers administering Formula I, a stereoisomer, or a pharmaceutically acceptable salt to a patient with multiple sclerosis.
• The claim does not expressly require a particular dose, route, MS subtype, or treatment duration.
• The patent is associated with Novartis’s Gilenya franchise.
• The patent expired in 2018 and no longer blocks U.S. generic fingolimod entry.
• Historical Paragraph IV litigation and settlement negotiations were part of the Gilenya generic-entry process.
• Biosimilar analysis is not applicable because fingolimod is a small molecule.
• Current risk analysis must focus on any remaining formulation, manufacturing, regulatory, or non-U.S. rights.

FAQs

Does U.S. Patent 6,794,410 cover fingolimod hydrochloride?

Yes. The claim covers the active compound, its stereoisomers, and pharmaceutically acceptable salts. Fingolimod hydrochloride is the pharmaceutical form used in Gilenya.

Can a generic company sell fingolimod after Patent 6,794,410 expired?

Yes. The expired patent no longer prevents generic marketing. A generic applicant must still satisfy FDA approval, bioequivalence, manufacturing, labeling, and safety requirements.

Is Patent 6,794,410 a compound patent?

No. It is principally a method-of-treatment patent. Earlier fingolimod patents provided compound-level protection.

Does the patent cover every use of fingolimod?

No. Claim 1 is directed to treating multiple sclerosis. It does not automatically cover unrelated therapeutic uses unless other claims in the patent or separate patents reach those uses.

Does the patent create current Paragraph IV risk?

No. An expired patent cannot support a current Paragraph IV litigation barrier. Current ANDA risk depends on any other unexpired patents listed for the relevant fingolimod product.

References

1. Novartis Pharmaceuticals Corporation. (2010). Gilenya (fingolimod) prescribing information. U.S. Food and Drug Administration.

2. United States Code. (2023). 35 U.S.C. § 271: Infringement of patent.

3. U.S. Food and Drug Administration. (2024). Approved drug products with therapeutic equivalence evaluations. Center for Drug Evaluation and Research.

4. United States Patent and Trademark Office. (1997). U.S. Patent No. 5,604,229: 2-amino-2-[2-(4-octylphenyl)ethyl]propane-1,3-diol.

5. U.S. Food and Drug Administration. (2010). FDA approves new multiple sclerosis treatment Gilenya. Center for Drug Evaluation and Research.

6. Novartis AG. (2023). Annual report 2023. Basel, Switzerland: Novartis AG.

Drugs Protected by US Patent 6,794,410

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Sanofi Aventis Us	AUBAGIO	teriflunomide	TABLET;ORAL	202992-001	Sep 12, 2012	AB	RX	Yes	No					Y
Sanofi Aventis Us	AUBAGIO	teriflunomide	TABLET;ORAL	202992-002	Sep 12, 2012	AB	RX	Yes	Yes					Y

Foreign Priority and PCT Information for Patent: 6,794,410

Foriegn Application Priority Data
Foreign Country	Foreign Patent Number	Foreign Patent Date
United Kingdom	0123571	Oct 02, 2001

International Family Members for US Patent 6,794,410

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
European Patent Office	1381356		CA 2014 00005	Denmark
European Patent Office	1381356		C300644	Netherlands
European Patent Office	1381356		PA2014004	Lithuania
European Patent Office	1381356		92366	Luxembourg
European Patent Office	1381356		14C0010	France
European Patent Office	1381356		1490010-4	Sweden
European Patent Office	1381356		PA2014004,C1381356	Lithuania