Details for Patent: 7,220,742

Summary for Patent: 7,220,742

Title:	Enantiomerically pure beta agonists, process for the manufacture thereof and use thereof as medicaments
Abstract:	The present invention relates to enantiomerically pure compounds of general formula 1 wherein the groups R1, R2, R3, R4 and X− may have the meanings given in the claims and in the specification, processes for preparing them and the use thereof as pharmaceutical compositions, particularly as pharmaceutical compositions for the treatment of respiratory complaints.
Inventor(s):	Philipp Lustenberger, Ingo Konetzki, Peter Sieger
Assignee:	Boehringer Ingelheim International GmbH
Application Number:	US11/128,032
Patent Claim Types: see list of patent claims	Use; Composition;

United States Patent 7,220,742: Scope, Claim Boundaries, and US Patent Landscape for Formula 1 Enantiomer-Pure Respiratory Compounds

Executive summary: US Patent 7,220,742 claims a class of enantiomerically pure (≥85% ee) compounds of Formula 1 defined by a flexible set of substituents (R1 to R4) and a single-charge anion (X−), with downstream claim coverage to pharmaceutical compositions, respiratory treatment methods, crystalline forms/solvates/hydrates, and a protected-hydroxyl intermediate/derivative concept. The claim scope is broad on chemical substitution and salts, moderately constrained by the ≥85% ee requirement and the exact Formula 1 framework, and expands further into dosage-agnostic administration for “respiratory complaints.” The likely competitive and litigation-relevant gaps are: (i) competitors can try to design around via outside the Formula 1 scaffold or by failing the ≥85% ee requirement; (ii) they can seek to avoid claimed salts or crystalline form capture if the commercial product uses a different solid form not covered by the crystalline-forms claim; and (iii) method claims turn on the respiratory complaint labeling/indication context.

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What is US Patent 7,220,742 (scope of Formula 1) and how are claims structured?

Core claim architecture: The patent’s claim set is built around a general chemical formula (Formula 1) coupled to:

1. Stereochemical constraint: compound of Formula 1 has enantiomeric purity ≥85% ee.
2. Substitution-site freedom: R1, R2, R3, R4 each take limited enumerations (H/C1–C4 alkyl/C1–C4 alkoxy/halogen, with R3 also bearing OH and specific carboxylic-acid/ester-type substituents via alkylene linkers).
3. Counterion/salt freedom: X− is any single-negative-charge anion, optionally present as tautomers, tautomer mixtures, hydrates, and solvates.
4. Downstream claim coverage: the class is then used in:
   • pharmaceutical compositions (claim 7),
   • method-of-treatment for respiratory complaints (claims 8, 14–18),
   • solid form emphasis (claim 6: crystalline forms/hydrates/solvates),
   • protected hydroxyl derivative (claims 9–10 describe OPG protecting groups and protected hydroxyl functionality).

Claim hierarchy in plain terms

• Independent chemical claim: Claim 1 is the broadest “class” claim.
• Dependent chemical narrowing: Claims 2–5 narrow substituent sets (R1–R4, and X−) into smaller enumerated subsets.
• Physical form claim: Claim 6 locks in crystalline embodiments.
• Formulation and medical use claims: Claims 7 and 8 expand the protection into product and use territory.
• Intermediate/protecting group claim: Claims 9–10 add an OPG concept tied to protected hydroxyl functionality.
• Additional method claims: Claims 14–18 restate “respiratory complaints” with narrower dependent substituent scopes.

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What patents protect enantiomeric purity (≥85% ee) of Formula 1 compounds?

Featured scope element: Claim 1 explicitly requires enantiomeric purity of at least 85% ee.

How this constrains design-around

A competitor’s compound could avoid infringement by one of these approaches:

• Provide a product that falls below 85% ee for the specific enantiomeric fraction used in the claimed “compound of Formula 1.”
• Use a different scaffold that does not satisfy the “compound of Formula 1” structure.
• Use a salt form that does not meet the X− requirement, if the commercial product is outside the claimed anion set (see next section).

Practical enforcement implication

Even if a competitor uses the same underlying racemate chemistry, the commercial enantiomeric purity spec becomes pivotal. Claim construction and proof will hinge on:

• what “compound of Formula 1” refers to structurally, and
• what analytical evidence ties the marketed enantiomeric composition to the claimed “≥85% ee” boundary.

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What is the claim scope for R1–R4 substituents in US 7,220,742?

Substitution-site ranges in Claim 1

• R1: H, C1–C4 alkyl, C1–C4 alkoxy, or halogen
• R2: H, C1–C4 alkyl, C1–C4 alkoxy, or halogen
• R3: H, C1–C4 alkyl, C1–C4 alkoxy, halogen, OH, or two specific oxygen-linked carboxyl/alkoxycarbonyl patterns:
  • —O—C1–C4-alkylene-COOH
  • —O—C1–C4-alkylene-COO—C1–C4-alkyl
• R4: H, C1–C4 alkyl, C1–C4 alkoxy, or halogen

Dependent narrowing via Claims 2–5

• Claim 2: R1 and R2 limited to H or halogen; R4 limited to H or halogen; R3 limited to H, C1–C4 alkoxy, or halogen.
• Claim 3: tightens R1/R2 to H/fluorine/chlorine; R3 to H/methoxy/ethoxy/fluorine/chlorine; R4 to H/fluorine/chlorine.
• Claim 4: R1 H or fluorine; R2 hydrogen; R3 methoxy/ethoxy/fluorine; R4 hydrogen; X− in an enumerated list including multiple common pharma salts.
• Claim 5: R1 hydrogen; R2 H/fluorine/chlorine; R3 hydrogen; R4 H/fluorine/chlorine; X− in an enumerated list.

Scope implication: Claim 1 covers a wide chemical neighborhood for substituents, while the dependent claims concentrate on particular substitution “species” that also align with specific salts. For portfolio strategy, the independent claim matters for broad licensing; the dependent claims matter for narrower settlements and for product-specific freedom-to-operate screens.

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Which anions (X−) are covered, and how does salt scope affect generic and formulation design?

Claim 1 salt scope

Claim 1 is defined generally as:

• X− = anion with a single negative charge,
• including optional tautomers, tautomer mixtures, hydrates, solvates.

That language is broad on category (single-charge anions), but then Claims 4–5 and Claims 11–13 enumerate specific anions.

Explicit anion lists in dependent claims

Claim 4 X− list includes:

• chloride, bromide, sulphate, methanesulphonate, maleate, acetate, benzoate, citrate, salicylate, trifluroacetate, fumarate, tartrate, succinate.

Claim 5 X− list includes:

• chloride, bromide, sulphate, methanesulphonate, maleate, acetate, benzoate, citrate, salicylate, trifluoroacetate, fumarate, tartrate, oxalate, succinate.

Claim 11 (general compound according to claim 1) enumerates:

• chloride, bromide, iodide, sulphate, phosphate, methanesulphonate, nitrate, malcate, acetate, benzoate, citrate, salicylate, trifluoroacetate, fumarate, tartrate, oxalate, succinate, p-toluenesulphonate.

Claims 12–13 similarly tie anion enumeration to dependent substituent sets (claims 2 and 3 respectively).

Design-around levers

• Salt substitution: If the competitor uses a salt that is outside the enumerated anion sets, they may still face Claim 1’s “single negative charge” generality. In practice, claim strategy will focus on whether the competitor’s chosen anion fits the “single negative charge” definition and how the patent’s interpretation constrains “anion with a single negative charge” beyond enumerated examples.
• Solid form: Even with a covered salt, claim 6 only explicitly protects crystalline forms (and crystalline tautomers/hydrates/solvates). If commercial supply uses an amorphous form not argued as “crystalline,” that may shift risk.

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What formulations are protected: pharmaceutical compositions and solid forms in US 7,220,742?

Composition claim (Claim 7)

• A pharmaceutical composition comprising the Claim 1 compound and a pharmaceutically acceptable carrier.

This is a broad “mixing” claim with no dosage form limitations stated in the excerpt, so it can read on tablets, capsules, solutions, inhalation suspensions, etc., as long as the composition contains a compound that falls within Claim 1.

Solid state claim (Claim 6)

• compound is in crystalline form, optionally in crystalline tautomers, crystalline hydrates, or crystalline solvates.

Scope implication: Claim 6 does not cover amorphous forms in its face. If a competitor’s commercial product is amorphous (or a crystalline form not argued to be within the claim’s crystalline characterization), solid-form risk depends on:

• how the relevant commercial material is characterized analytically (crystallinity),
• whether the patent reads on the specific hydrate/solvate polymorphs.

Intermediate/protecting group chemistry (Claims 9–10)

• Claim 9: OPG is a protected hydroxyl function, where OPG is —O—C1–C4-alkyl, —O-benzyl, or —O—CO—C1–C4-alkyl.
• Claim 10: ties OPG plus substituent definitions back into an enumerated set.

Landscape implication: These claims can be used to pressure supply-chain chemistry (process route), even if the final API salt is formulated differently. In practice, infringement depends on whether commercial manufacturing or intermediates are made, isolated, and used in a way that meets the “compound of formula 5/7” intermediate scope (not shown fully in the excerpt).

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What method-of-treatment patents protect “respiratory complaints” and how broad are they?

Independent method claim (Claim 8)

• administering a therapeutically effective amount of the Claim 1 compound for respiratory complaints.

Dependent method claims (Claims 14–18)

• Claims 14–18 restate “respiratory complaints” with narrowing tethering to Claims 2–6.

Scope implication: The “respiratory complaints” term is broad and can map to multiple respiratory indications. Method infringement risk rises when:

• the labeled indication falls within “respiratory complaints,” and
• the accused product uses a compound that meets the chemical claim boundaries (Formula 1, ≥85% ee, and relevant salt/tautomer/hydrate/solvate status).

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How does US 7,220,742 compare with typical US small-molecule patent strategies (scope breadth vs. design-around)?

Breadth profile of US 7,220,742 based on excerpted claims

• Chemical scaffold breadth: broad (Formula 1 with multiple substitution options).
• Stereochemical boundary: moderate (≥85% ee is a meaningful constraint).
• Salt boundary: broad at the “single negative charge anion” level, then narrower via enumerations in dependent claims.
• Solid form boundary: selective to crystalline forms/hydrates/solvates (claim 6).
• Indication boundary: broad in language (“respiratory complaints”) and not limited to a specific disease (e.g., COPD vs asthma vs bronchitis), based on the excerpt.

Typical design-around pathways likely assessed by competitors

1. Non-Formula-1 scaffold: avoid the structural definition.
2. Enantiomeric purity shift: use <85% ee compositions, if still acceptable clinically and regulatorily.
3. Salt engineering: select an anion outside enumerated lists and argue it falls outside claim interpretation for the product used.
4. Solid-state engineering: commercialize amorphous/non-crystalline forms (shifting off claim 6).
5. Indication carve-out: reduce method-of-use risk by avoiding the claimed “respiratory complaints” use, though label positioning is a practical regulatory constraint.

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What is the US patent estate risk profile for competitors (generics, new salts, crystalline forms, and manufacturing routes)?

Direct API risk (claims 1–5 + 11–13)

If a competitor markets an API that:

• is within Formula 1,
• has ≥85% ee,
• uses an anion that fits X− as construed, then claims 1–5 and their anion-enumerated dependents create high chemical overlap.

Product form risk (claim 6 + claim 7)

Even if the competitor picks a different salt variant within the same chemical class, they still face:

• crystalline-form risk (claim 6),
• composition risk (claim 7) if the product includes the claimed compound and standard carriers.

Method-of-use risk (claims 8 and 14–18)

Method exposure is strongest when the competitor’s FDA label or actual promotional use targets “respiratory complaints,” and the API matches the chemical claim boundary.

Manufacturing/process risk (claims 9–10)

Protected hydroxyl intermediates (OPG) suggest the patent can cover steps in synthetic routes if the intermediate is used or produced in a way that falls within those intermediate claims. That is particularly relevant for supply-chain licensing and contract manufacturing disclosures.

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What patent litigation and FDA/Orange Book status affect exclusivity and generic entry timing?

No litigation docket, Orange Book listing, FDA approval date, or NDA/ANDA mapping is included in the provided information. With no assignable link to a specific marketed product, launch timing, or Orange Book reference number, a complete timeline cannot be produced from the excerpt alone.

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Key Takeaways

• US 7,220,742 claim scope is centered on a Formula 1 chemical class with ≥85% ee as a hard stereochemical boundary.
• R1–R4 substitution freedom is broad, with R3 including OH and specific oxygen-linked carboxyl/alkylcarboxyl patterns.
• Salt scope is broad at the “single negative charge anion” level and becomes more specific via enumerated anions in dependent claims.
• Protection extends beyond API to pharmaceutical compositions, respiratory method-of-use, and crystalline forms/hydrates/solvates.
• Design-around risk is driven by three levers: exiting the Formula 1 scaffold, missing the ≥85% ee requirement, and managing solid form (crystalline vs non-crystalline) and salt/anionic fit.

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FAQs

1) Does US 7,220,742 cover amorphous forms or only crystalline forms?

Claim 6 explicitly covers crystalline form and crystalline tautomers/hydrates/solvates. Amorphous coverage is not established in the excerpt.

2) Can a competitor avoid infringement by using a different salt that still has a single negative charge?

The excerpt’s Claim 1 language covers any single negative charge anion. That creates intrinsic pressure to show the alternative anion is outside the claim’s construed scope, not merely that it differs from enumerated examples.

3) Are method-of-use claims likely to be implicated by off-label respiratory use?

Method claims read on “administering … for respiratory complaints.” Practical risk is highest when the accused use aligns with what the claims cover; actual label and promotional evidence typically drive enforcement.

4) What role does the ≥85% ee limit play in infringement analysis?

It is a gating element of Claim 1. If a competitor’s marketed enantiomeric composition is below that threshold, they can argue the Claim 1 definition is not met for the accused compound.

5) Do the OPG claims mean the patent can reach manufacturing intermediates?

Claims 9–10 focus on protected hydroxyl (OPG) definitions tied to additional structural parameters. That suggests potential reach into intermediate chemistry, depending on whether accused intermediates map to the claimed intermediate formulas.

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References (APA)

1. United States Patent 7,220,742. (as provided in the user’s claim excerpt).

Drugs Protected by US Patent 7,220,742

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate

Foreign Priority and PCT Information for Patent: 7,220,742

Foriegn Application Priority Data
Foreign Country	Foreign Patent Number	Foreign Patent Date
Germany	10 2004 024 454	May 14, 2004

International Family Members for US Patent 7,220,742

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
Australia	2005243469
Brazil	PI0511102
Canada	2562859