Scope and Patent Landscape for U.S. Patent 7,119,080 (Claims 1–24)
U.S. Patent 7,119,080 is drafted as a broad chemical-structure claim set covering compounds of formula (1a) defined by variable substituents (notably P, X2, R, R2, R3, R5, and Z1/Z2), plus dependent claim fallbacks that pin down narrower exemplars (including specific embodiments such as R = H, R3 = isobutyl, R5 = phenyl, Z1/Z2 = hydroxy, and P = phenyl-derived acyl/alkanesulfonyl or related protecting-moiety variants). The independent claim scope reaches across a wide substituent space for aryl/cycloalkyl groups and halogen and polar substituents on R5, and it extends to injectable-use compositions formulated for IV, IM, and SC administration.
What does U.S. Patent 7,119,080 claim: compound formula (1a), salts, and substituent ranges?
Quick answer: The patent claims (i) compounds of a specific generic chemical scaffold (formula 1a) with variable substituents, including pharmaceutically acceptable salts, and (ii) injectable pharmaceutical compositions containing those compounds (IV/IM/SC solution in physiologically acceptable saline carrier). Dependent claims narrow the substituent variables to specific values (e.g., R = H; R3 = C4 alkyl such as isobutyl; R5 = phenyl; Z1/Z2 = hydroxy or phenyl-substituted P moieties).
Independent claim 1 scope: “A” is zero; X2 is “—C(O)—NH—”; variable P, R/R2/R3/R5, and Z1/Z2
Claim 1 sets the master structure and defines key variable positions:
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Core scaffold: “A is zero”; X2 = —C(O)—NH—
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P: hydrogen or an amino group protecting moiety (as defined broadly; claim 4/5 expand this)
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R: hydrogen or C1–8 alkyl
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R2: —CH2—R5
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R3: C4 alkyl
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R5: aryl or cycloalkyl, optionally substituted by one or two substituents selected from an extensive list (alkyl, cycloalkyl, alkenyl, alkynyl, cyano, amino/alkylamino/di(alkyl)amino, benzylamino, nitro, carboxy, alkoxy, trifluoromethyl, halogen, aryl/aryl-alkyl/aryl-alkoxy, hydroxy, thio/sulfinyl/sulfonyl, arylthio/sulfinyl/sulfonyl, alkyl(aryl), halo(aryl))
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Z1 and Z2: independently alkyl, hydroxy, alkoxy, aryloxy, or together form a polyhydroxy-derived moiety based on a dihydroxy precursor with at least two connecting atoms in chain/ring, optional heteroatoms N/S/O
Practical scope effect: Claim 1’s chemical genus is controlled by (i) R5 substitution space and (ii) Z1/Z2 allowable oxygenated substitution patterns. Everything else (A=0 and X2 as a specific amide linkage) is rigid.
Claim 2/3: specific fallback examples on R and R3
- Claim 2: R = hydrogen
- Claim 3: R3 = isobutyl (explicit C4 alkyl subset)
These reduce design-around freedom on the R substituent and narrow the alkyl identity at R3.
How broad is the genus on R5 substituents and Z1/Z2 oxygenation?
R5 substituent breadth: one or two substituents with wide functional classes
Claim 1 allows R5 to be aryl or cycloalkyl with optional one or two substituents selected from:
- Hydrocarbon and ring substituents: C1–6 alkyl; C3–8 cycloalkyl; C1–6 alkyl(C3–8)cycloalkyl; C2–8 alkenyl; C2–8 alkynyl
- Basic/amine functionality: amino; C1–6 alkylamino; di(C1–6)alkylamino; benzylamino; dibenzylamino
- Electron-withdrawing and polar: cyano; nitro; carboxy
- Oxygenated and halogen: carbo(C1–6)alkoxy; trifluoromethyl; halo (as a general halogen)
- O-alkoxy / O-aryl / phenolic: C1–6 alkoxy; hydroxy
- Sulfur-functional: C1–6 alkylthio; alkylsulfinyl; alkylsulfonyl; arylthio; arylsulfinyl; arylsulfonyl
- “Alkyl(aryl)” and halo(aryl): C1–6 alkyl(C6–10)aryl; halo(C6–10)aryl
Implication for claim construction (business view): This is a fairly high-coverage list across most “medicinal chemistry” substituent motifs used to tune potency, solubility, and lipophilicity on aryl rings. The “one or two substituents” limit still permits broad combinations, but it restricts multi-substituted substitution patterns.
Z1/Z2 patterns: hydroxy/alkoxy/aryloxy and a “di(hydroxy)-derived” paired moiety
Claim 1 permits:
- Z1 and Z2 individually: alkyl, hydroxy, alkoxy, aryloxy
- Or together: form a moiety derived from a dihydroxy compound with at least two hydroxy groups separated by at least two connecting atoms in a chain or ring; chain/ring comprises carbon atoms, optionally with heteroatoms N/S/O
Practical consequence: The claim can cover both simple phenolic/hydroxy-diol-like substitution and more complex paired oxygenation motifs that map to a dihydroxy precursor pattern.
What is claimed beyond the compound: injectable compositions with saline carrier?
Quick answer: Claims 14–24 cover pharmaceutical compositions that are solutions suitable for IV, IM, or SC administration, containing a compound of formula (1a) (or salt), formulated with a physiologically acceptable saline carrier.
Claim 14: composition definition for injectable solutions (broad P/R/R2/R3/R5/Z1/Z2 specific subset)
Claim 14 introduces composition language and locks in a set of compound variables:
- Physiologically acceptable saline carrier
- Suitable for IV, IM, or SC
- Contains a formula (1a) compound with:
- P = hydrogen or amino group protecting moiety
- A = zero; X2 = —C(O)—NH—
- R = hydrogen or C1–8 alkyl
- R2 = —CH2—R5
- R3 = C4 alkyl
- R5 = aryl or cycloalkyl with the same optional substitution list as claim 1
- Z1 and Z2 are both hydroxy
This is a narrower subset than claim 1 on Z1/Z2, but the claim still supports significant chemical variation in P, R, R3, and R5.
Claim 15/16: composition narrowing to R = H and R3 = isobutyl
- Claim 15: R = hydrogen
- Claim 16: R3 = isobutyl
Claim 17/18: P becomes R7—C(O)— or R7—SO2—; and also includes carbamyl/oxycarbonyl variants
- Claim 17: P = R7—C(O)— or R7—SO2—
- Claim 18: P = R7—NH—C(O)— or R7—O—C(O)—
R7 is broad: alkyl, cycloalkyl, aryl, aralkyl, heteroaryl, heteroarylalkyl, and saturated or partially unsaturated heterocycles; ring portion optionally substituted.
Claim 19/20: R7 optionally substituted aryl/aralkyl or heteroaryl/heteroaralkyl
- Claim 19: R7 = optionally substituted aryl or aralkyl
- Claim 20: R7 = optionally substituted heteroaryl or heteroaralkyl
Claims 21–22: R5 optionally substituted C6–10 aryl; and phenyl
- Claim 21: R5 = optionally substituted C6–10 aryl
- Claim 22: R5 = phenyl
- Claim 10/11 in the compound set mirror this: claim 10 sets Z1 and Z2 both hydroxy when R5 is phenyl.
Claims 23/24: second composition independent (tighter exemplar set)
Claim 23 is another composition claim reciting a more constrained set of variables:
- P = R7—C(O)— or R7—SO2—
- R7 = optionally substituted aryl or aralkyl
- A = zero; X2 = —C(O)—NH—
- R = hydrogen
- R2 = benzyl
- R3 = C4 alkyl
- Z1 and Z2 = both hydroxy
Claim 24: R7 = phenyl.
Which specific embodiments are explicitly covered?
From the claim text provided, the patent includes explicit “narrowing” embodiments that are likely to match examples in the spec (and are most useful for infringement and design-around analysis):
Compound embodiments (claims 2, 3, 9–11, 12–13)
- R = H (claim 2)
- R3 = isobutyl (claim 3)
- R5 = phenyl (claim 9)
- Z1 = Z2 = hydroxy when R5 = phenyl (claim 10)
- R5 = phenyl, Z1/Z2 a dihydroxy-derived moiety (claim 11)
- A specifically constrained claim 12 includes:
- P = R7—C(O)— or R7—SO2—
- R7 not restricted to phenyl in that claim
- R = H
- R2 = benzyl
- R3 = C4 alkyl (not limited to isobutyl in claim 12)
- R5 = aryl/cycloalkyl implied via R2 = benzyl and R5 variable mapping
- Z1 and Z2 individually hydroxy/alkoxy/aryloxy or together a dihydroxy-derived moiety
- Claim 13: R7 = phenyl
Composition embodiments (claims 15–16, 22, 23–24)
- Injectable saline solutions containing Z1 = Z2 = hydroxy compounds
- R = H (claim 15)
- R3 = isobutyl (claim 16)
- R5 = phenyl (claim 22)
- A tighter saline-solution composition with:
- P = R7—C(O)— or R7—SO2—
- R7 = optionally substituted aryl or aralkyl
- R = H
- R2 = benzyl
- R3 = C4 alkyl
- Z1 and Z2 both hydroxy (claim 23)
- Claim 24: R7 = phenyl
What does the substituent-variable structure mean for design-around?
Key design levers inside this claim set:
- Change X2 or A away from “A is zero” and “X2 = —C(O)—NH—”
Those are rigid claim elements. A compound that changes those core features avoids the literal chemical scaffold.
- Keep Z1/Z2 not both hydroxy (for the composition claims)
Claims 14–16 and 23–24 require Z1 and Z2 both hydroxy for the injectable composition set. Altering that pair likely blocks composition infringement even if compound infringement remains at claim 1 level (claim 1 is more permissive on Z1/Z2).
- Restrict R3 away from C4 alkyl (especially isobutyl for dependent claims)
Claim 1 requires R3 = C4 alkyl; composition claim 14 also requires R3 = C4 alkyl. Dependent claim 3 narrows further to isobutyl.
- Eliminate the R2 mapping to —CH2—R5 (and/or change the benzyl-specific dependence in claim 12/23)
Claim 1 requires R2 = —CH2—R5. Claim 12 and claim 23 lock R2 = benzyl.
- For P: avoid “hydrogen or amino-protecting-moiety” as defined, or shift to a non-matching protecting pattern
Claims 4/5/17/18 broaden the allowed forms of P via R7–C(O)/SO2 and carbamates/oxycarbonyl variants. A non-matching P option is a direct avoidance path.
How many patents could be implicated by the same scaffold, salts, and injectable compositions?
Insufficient information to produce a complete and accurate landscape.
A full landscape for U.S. Patent 7,119,080 requires at least one of: the drug name/INN, assignee, earliest priority, or the patent publication number and citation set. With only claim text and without the patent’s bibliographic record (title, inventors, assignee, priority dates) and without its U.S. publication number and family members, the scope of related continuation/divisional/improvement patents, reissues, and international filings cannot be reliably enumerated. Therefore no complete “how many patents cover it” count can be generated without fabricating records.
What litigation and Orange Book risk exists for this patent?
Insufficient information to produce a complete and accurate regulatory and litigation assessment.
Orange Book listing and Paragraph IV/biosimilar risk require the FDA product name, active ingredient, NDA/BLA number, and Orange Book code. Without those identifiers tied to U.S. Patent 7,119,080, any assertion about Orange Book status, listed patents, exclusivity triggers, or Paragraph IV challenges would be speculative.
Key Takeaways
- U.S. Patent 7,119,080 claims a broad genus of compounds of formula (1a) with rigid core constraints (A = 0; X2 = —C(O)—NH—) and broad variable substitution on R5 (aryl/cycloalkyl with one or two substituents chosen from a large functional list) and paired oxygenation patterns via Z1/Z2.
- The patent also claims injectable saline solutions for IV/IM/SC administration, but the composition claims are narrower on Z1/Z2 (both hydroxy) and further lock in additional variables across dependent claims (R = H, R3 = isobutyl, R5 = phenyl, P = R7—C(O)—/R7—SO2—/carbamate-like variants, and exemplars with R2 = benzyl).
- Design-around is most likely through changing the rigid scaffold elements (A or X2), or changing Z1/Z2 to avoid the “both hydroxy” requirement in the composition claims, or modifying R3/R5/P patterns outside the claim-defined ranges.
FAQs
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Which claim elements are most critical for literal infringement of the compound?
A = zero and X2 = —C(O)—NH— are the highest-signal rigid elements; R3 and the allowed structure mapping of R2 to —CH2—R5 are also central.
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Does the patent protect salts?
Yes, each compound claim includes “pharmaceutically acceptable salt thereof.”
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What is the narrowest Z1/Z2 limitation in the composition claims?
The injectable composition claims require Z1 and Z2 both hydroxy.
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How does the patent handle P as an amino-protecting moiety?
P is hydrogen or a protecting/moiety expressed in dependent claims via R7—C(O)—, R7—SO2—, and carbamate/oxycarbonyl-like variants using R7 defined broadly.
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What are the most explicit “example-like” embodiments in the claim set?
R = H; R3 = isobutyl; R5 = phenyl with Z1/Z2 hydroxy; and compositions with R2 = benzyl plus Z1/Z2 = hydroxy and P restricted to R7—C(O)—/R7—SO2—.
References
- U.S. Patent 7,119,080 (claims 1–24 as provided by user).
