Share This Page
Details for Patent: 8,013,002
✉ Email this page to a colleague
Which drugs does patent 8,013,002 protect, and when does it expire?
Patent 8,013,002 protects ESBRIET and is included in two NDAs.
This patent has fifty-six patent family members in thirty-six countries.
Summary for Patent: 8,013,002
| Title: | Methods of administering pirfenidone therapy | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | The present invention relates to methods involving avoiding adverse drug interactions with fluvoxamine and pirfenidone or other moderate to strong inhibitors of CYP enzymes. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Williamson Ziegler Bradford, Javier Szwarcberg | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Legacy Pharma Inc Sezc | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US13/049,894 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 8,013,002 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
|
Patent Claim Types: see list of patent claims | Use; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | United States Patent 8,013,002: Scope, Claims, Expiration, and Pirfenidone Patent LandscapeUS Patent 8,013,002 protects a narrow dosing protocol for pirfenidone when administered with fluvoxamine, a strong CYP1A2 inhibitor. Its core commercial relevance is the reduced pirfenidone regimen used when fluvoxamine increases pirfenidone exposure. The principal claimed regimen is approximately 800 to 801 mg/day, generally administered three times daily, followed by restoration of approximately 2,400 mg/day after fluvoxamine is discontinued. The patent is a method-of-treatment patent. It does not broadly claim pirfenidone, fluvoxamine, a tablet, a formulation, or the chemical combination itself. Its enforceability depends on proving the claimed co-administration, dose reduction, patient treatment, and, for narrower claims, IPF and food-related limitations. The patent has a nominal 20-year term measured from its earliest effective nonprovisional filing date, placing expiration in September 2026, subject to any applicable patent-term adjustment or extension recorded by the USPTO. The commercial impact is concentrated in branded Esbriet use involving fluvoxamine rather than ordinary pirfenidone monotherapy. What does US Patent 8,013,002 cover?US 8,013,002 covers methods for adjusting pirfenidone dosing during concurrent administration of fluvoxamine. The claims address two related clinical sequences:
The patent therefore targets a drug-drug interaction management protocol. The claimed subject matter is narrower than a general claim to treating IPF with pirfenidone. Patent identification
The USPTO patent record and patent-family data control the final expiration calculation, including any patent-term adjustment. [1] How should independent claim 1 be interpreted?Claim 1 requires all of the following:
The claim does not expressly require IPF. IPF appears in dependent claim 3. Claim 1 can therefore reach a patient receiving the claimed drug combination for another condition, provided the other elements are satisfied. The term "about 801 mg/day" creates a claim-construction issue. A literal reading identifies approximately 801 mg per day, while clinical dosing commonly uses 267 mg three times daily, which totals 801 mg/day. The claim appears designed to capture the 267 mg tablet administered three times daily rather than a single daily dose. The claim also requires concurrent administration. A short overlap or same-treatment-period administration may satisfy the concurrency requirement, but merely prescribing fluvoxamine and pirfenidone at different times without an overlapping treatment period would present a weaker infringement case. What do dependent claims 2 through 5 add?Claim 2: three-times-daily administrationClaim 2 narrows claim 1 by requiring pirfenidone administration three times daily. At approximately 801 mg/day, the expected dose is approximately 267 mg per administration. This limitation maps closely to the commercial pirfenidone tablet strength and the reduced-dose regimen described in the FDA labeling. [2] Claim 3: idiopathic pulmonary fibrosisClaim 3 adds IPF. An accused regimen must involve a patient with idiopathic pulmonary fibrosis. This limitation materially narrows the claim because a fluvoxamine-pirfenidone regimen for another fibrotic disorder would fall outside claim 3, although it could remain within claim 1 or claim 2. Claim 4: administration with foodClaim 4 requires administering pirfenidone with food. This limitation aligns with the Esbriet label, which instructs patients to take pirfenidone with food to reduce gastrointestinal adverse reactions and improve tolerability. [2] The phrase "with food" generally requires administration in connection with a meal or food intake. A prescribing instruction alone may not establish that the patient actually followed the limitation unless the relevant infringement theory includes inducement based on labeling. Claim 5: stopping fluvoxamine and continuing pirfenidoneClaim 5 requires:
The claim does not specify the post-discontinuation pirfenidone dose. It can therefore cover a broad range of effective post-fluvoxamine pirfenidone regimens, subject to the limitations inherited from claim 1. What does independent claim 6 cover?Claim 6 is the second principal claim group. It requires:
The mathematical endpoint is approximately 800 mg/day. The claim is directed to a dose-transition process rather than simply administering low-dose pirfenidone with fluvoxamine. This distinction matters. An accused party that starts a patient directly at approximately 800 mg/day with fluvoxamine may implicate claim 1 but may not satisfy claim 6 because claim 6 requires titration downward from approximately 2,400 mg/day. Claim 7: approximately 800 mg/dayClaim 7 adds the approximate 800 mg/day endpoint. The difference between 800 mg/day in claims 6 and 7 and 801 mg/day in claim 1 reflects the use of "about" and likely addresses practical dosing with 267 mg tablets. The 800/801 mg distinction is unlikely to be clinically material, but it can be legally significant. A court would likely evaluate the numerical ranges, specification disclosures, prosecution history, and whether the terms were used consistently during prosecution. Claims 8 through 10: administration frequency, IPF, and foodThese claims add the same narrowing concepts found in claims 2 through 4:
Claims 8 through 10 are narrower and more fact-dependent than claim 6. They may be easier to prove when a product label expressly instructs the full regimen, but they also contain more limitations that an accused party can attempt to avoid. Claim 11: restoration of the higher doseClaim 11 requires discontinuation of fluvoxamine followed by administration of approximately 2,400 mg/day of pirfenidone. This claim protects the reverse transition. It is not limited to the initial downward titration unless the inherited limitations of claim 6 are satisfied. Because claim 11 depends on claim 6, the sequence must begin with the claimed reduction from approximately 2,400 mg/day while fluvoxamine is co-administered. What is the strongest claim coverage in US 8,013,002?The strongest practical coverage is concentrated in claims 1, 2, 6, and 7.
Claim 1 is the broadest operational claim. Claim 6 may provide stronger protection against a protocol that follows the exact dose-reduction sequence but could be avoided by initiating therapy at the lower dose. How does the patent relate to the FDA-approved Esbriet dosing regimen?The FDA-approved Esbriet labeling recommends titration to a maintenance dosage of 801 mg three times daily, or 2,403 mg/day, for eligible IPF patients. The label also addresses dose modification when pirfenidone is administered with strong CYP1A2 inhibitors, including fluvoxamine. [2] The supplied claims use approximately 2,400 mg/day and approximately 801 mg/day. The labeled maintenance dose of 801 mg three times daily totals 2,403 mg/day, while the reduced regimen of 267 mg three times daily totals 801 mg/day.
The label creates potential inducement risk because a generic or branded label that instructs the exact patented interaction-management protocol may encourage performance of the claimed method. A product sale alone does not necessarily establish direct infringement of a method claim. The relevant analysis would focus on prescribing information, promotional materials, clinical support, and physician or patient conduct. What is the Orange Book status of US 8,013,002?US 8,013,002 is associated with the Esbriet patent estate and concerns a method of using pirfenidone for which FDA-approved labeling has interaction-related dosing instructions. The Orange Book is the controlling source for the current listing, use code, expiration date, and any delisting or dispute history. [3] For an abbreviated new drug application, the practical issues are:
A section viii strategy may be difficult if the reduced-dose interaction instructions remain in the proposed label. Removing the patented use from labeling may reduce inducement exposure, but the FDA-approved labeling must remain adequate for safe use. When does US 8,013,002 lose exclusivity?The nominal patent expiration is in September 2026 based on the patent family’s 2005 priority and 2006 filing history. The patent’s actual enforceable expiration depends on the USPTO-calculated patent-term adjustment and any applicable extension. [1] The commercial exclusivity timeline is separate from patent expiration:
The existence of an approved generic pirfenidone product does not necessarily eliminate method-patent risk. A generic may launch for unpatented uses while carving out or omitting the patented fluvoxamine-related use. Which companies are relevant to the pirfenidone patent landscape?The principal commercial entities are Roche and Genentech, following Roche’s acquisition of InterMune, and generic manufacturers seeking approval for pirfenidone tablets or capsules. Innovator and license-chain considerationsPirfenidone was developed through a patent and commercialization history involving Shionogi and InterMune. Roche acquired InterMune in 2014 and obtained control of the Esbriet business and associated intellectual-property assets. [4] The relevant rights may differ by jurisdiction and patent family. A commercial review should distinguish:
Generic manufacturersGeneric competition focuses mainly on pirfenidone composition, dosage form, and ordinary IPF treatment. A generic company can seek approval through an ANDA and address listed patents through Paragraph IV certifications or a section viii statement. The principal generic launch risks are:
What Paragraph IV challenges could affect this patent?A Paragraph IV challenge to US 8,013,002 could attack patentability or enforceability on several grounds: Lack of noveltyThe challenger could argue that prior art disclosed:
The strongest novelty defense would require a single prior-art reference disclosing every claim element. ObviousnessObviousness would likely be the more substantial challenge. A challenger could combine:
The patent holder would rely on unexpected exposure, safety, tolerability, or efficacy results and the specific magnitude of the claimed reduction. IndefinitenessPotential indefiniteness issues include:
The use of approximate numerical terms is common in pharmaceutical claims, but the specification must provide an objective basis for determining the scope. Written description and enablementA challenger could argue that the specification does not support the full range encompassed by "about," or does not enable all methods covered by broad claims involving any therapeutically effective fluvoxamine dose, patient population, or treatment context. What formulation patents and manufacturing barriers remain relevant?US 8,013,002 is not a formulation patent. It does not claim:
The broader pirfenidone estate may contain separate composition, formulation, process, or use patents. Those rights must be analyzed independently from US 8,013,002. For generic entry, formulation and manufacturing barriers can be more commercially important than this interaction patent if:
Pirfenidone is a small molecule. Biosimilar risk is therefore not applicable. Competition proceeds through the generic-drug pathway rather than the biosimilar pathway under the Public Health Service Act. [5] How does pirfenidone patent risk compare with nintedanib?Pirfenidone and nintedanib compete in IPF, but their patent risks differ.
US 8,013,002 is unusually specific because it claims a drug-drug interaction protocol rather than the primary pirfenidone treatment method. What litigation and settlement issues affect the patent?A current litigation conclusion cannot be derived from the claim text alone. The relevant sources are PACER, USPTO assignment and litigation records, FDA Paragraph IV notices where publicly available, and the Orange Book patent dispute information. For this patent, litigation would likely focus on:
Settlement agreements would require review of the FTC pharmaceutical patent-settlement database and the parties’ court filings. A standard settlement could provide a licensed entry date before patent expiration, but no settlement term should be inferred from the patent record alone. [6] How strong is the patent estate for US 8,013,002?The patent is strongest when the accused conduct follows the labeled clinical sequence:
Its weaknesses are structural:
What generic launch scenarios exist?Scenario 1: Full-label generic launch after patent expirationThe generic launches with the full FDA-approved pirfenidone labeling after the patent expires. This presents the lowest patent risk. Scenario 2: Paragraph IV challengeThe generic challenges US 8,013,002 before expiration. The patent holder may sue within 45 days, potentially triggering the statutory 30-month stay under the Hatch-Waxman framework. [7] Scenario 3: Section viii carve-outThe generic omits the patented fluvoxamine-related use if FDA labeling and safety requirements permit. This reduces label-based inducement risk but does not eliminate all off-label use or other patent exposure. Scenario 4: At-risk launchThe generic launches before final resolution after litigation or an unfavorable preliminary assessment. This creates potential damages and injunction exposure. Scenario 5: Settlement-based entryThe generic receives a contractually defined entry date, potentially before September 2026, in exchange for resolving the patent dispute. What is the geographic coverage of US 8,013,002?US 8,013,002 has territorial effect only in the United States. It does not directly block:
International risk requires separate review of corresponding patent-family members, national-phase filings, expiration dates, opposition proceedings, supplementary protection certificates, and local regulatory exclusivity. The US patent should not be treated as a global right. Key Takeaways
FAQsDoes US 8,013,002 cover all pirfenidone treatment for IPF?No. It covers specific methods involving concurrent fluvoxamine administration and defined pirfenidone dose adjustments. Ordinary pirfenidone treatment without fluvoxamine is outside the principal scope of this patent. Does taking pirfenidone and fluvoxamine on the same day infringe claim 1?Potentially, but same-day use alone may not establish every limitation. The claim requires concurrent administration, therapeutically effective amounts of both drugs, and approximately 801 mg/day of pirfenidone. Is 267 mg three times daily equivalent to 801 mg/day?Yes, arithmetically. Three doses of 267 mg total 801 mg/day. That regimen is the clearest commercial embodiment of the reduced-dose limitation. Can a generic omit the fluvoxamine dosing instructions?A generic may seek a section viii carve-out, but the FDA must accept the proposed labeling and the omitted use must be separable from required safety information. The patent and regulatory analyses are distinct. Does Roche still control every patent related to pirfenidone?Not necessarily. Ownership, licensing, and expiration can differ by patent family, country, and asset. Roche’s acquisition of InterMune transferred the Esbriet business and related rights, but each patent record and assignment chain must be reviewed separately. References
More… ↓ |
Drugs Protected by US Patent 8,013,002
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Legacy | ESBRIET | pirfenidone | CAPSULE;ORAL | 022535-001 | Oct 15, 2014 | AB | RX | Yes | Yes | 8,013,002 | ⤷ Start Trial | METHOD FOR ADMINISTERING PIRFENIDONE TO REDUCE DRUG INTERACTIONS WITH FLUVOXAMINE | ⤷ Start Trial | |||
| Legacy | ESBRIET | pirfenidone | TABLET;ORAL | 208780-001 | Jan 11, 2017 | AB | RX | Yes | No | 8,013,002 | ⤷ Start Trial | ADMINISTERING PIRFENIDONE CONCURRENTLY WITH FLUVOXAMINE, THE PIRFENIDONE AT A DOSE OF ABOUT 801 MG/DAY TO REDUCE DRUG INTERACTIONS WITH FLUVOXAMINE | ⤷ Start Trial | |||
| Legacy | ESBRIET | pirfenidone | TABLET;ORAL | 208780-001 | Jan 11, 2017 | AB | RX | Yes | No | 8,013,002 | ⤷ Start Trial | MODIFYING PIRFENIDONE ADMINISTRATION FROM A DOSE OF ABOUT 2400 MG/DAY DOWNWARD BY ABOUT 1600 MG/DAY WHILE CO-ADMINISTERING FLUVOXAMINE TO REDUCE DRUG INTERACTIONS WITH FLUVOXAMINE | ⤷ Start Trial | |||
| Legacy | ESBRIET | pirfenidone | TABLET;ORAL | 208780-002 | Jan 11, 2017 | DISCN | Yes | No | 8,013,002 | ⤷ Start Trial | ADMINISTERING PIRFENIDONE CONCURRENTLY WITH FLUVOXAMINE, THE PIRFENIDONE AT A DOSE OF ABOUT 801 MG/DAY TO REDUCE DRUG INTERACTIONS WITH FLUVOXAMINE | ⤷ 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 8,013,002
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| African Regional IP Organization (ARIPO) | 3155 | ⤷ Start Trial | |||
| Austria | E526024 | ⤷ Start Trial | |||
| Australia | 2010212490 | ⤷ Start Trial | |||
| Australia | 2011201462 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
