Details for Patent: 8,101,623

Which drugs does patent 8,101,623 protect, and when does it expire?

Patent 8,101,623 protects TRUQAP and is included in one NDA.

This patent has fifty-five patent family members in forty-four countries.

Summary for Patent: 8,101,623

Title:	Substituted pyrrolo[2,3-d]pyrimidine as a protein kinase B inhibitor
Abstract:	The invention relates to a novel group of compounds of Formula (I) or salts thereof: wherein Y, Z1, Z2, R1, R4, R5 and n are as described in the specification, which may be useful in the treatment or prevention of a disease or medical condition mediated through protein kinase B (PKB) such as cancer. The invention also relates to pharmaceutical compositions comprising compounds of Formula (I), methods of treatment of diseases mediated by PKB using said compounds and methods for preparing compounds of Formula (I).
Inventor(s):	Richard William Arthur Luke, Zbigniew Stanley Matusiak
Assignee:	AstraZeneca AB
Application Number:	US12/249,477
Patent Claim Types: see list of patent claims	Use; Composition;

Scope and claims deep dive for US Patent 8,101,623: (S)-4-amino-N-(1-(4-chlorophenyl)-3-hydroxypropyl)-1-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)piperidine-4-carboxamide and breast-cancer use

US Patent 8,101,623 is a mixed estate focused on (i) a specific chiral small-molecule API (and salt), (ii) a basic composition claim built around that API, (iii) breast-cancer treatment method-of-use claims, and (iv) two process claim families that cover protected-intermediate synthesis and later coupling via a bicyclic heterocycle leaving group. The estate’s claim structure creates a relatively clean separation: product claims (compound and composition), use claims (breast cancer), and manufacturing claims (routes via defined intermediates and leaving groups).

What is US Patent 8,101,623 claiming: compound, salts, composition, and method-of-use?

Bottom line: The patent’s core protection is a single enantiomeric compound, with secondary coverage for pharmaceutically acceptable salts, formulation as a basic pharmaceutical composition, and administration to treat breast cancer.

Claim 1 (and dependent coverage): product compound and salts

Claim 1 covers:

• “The compound (S)-4-amino-N-(1-(4-chlorophenyl)-3-hydroxypropyl)-1-(7H-pyrrolo[2,3-d]pyrimidin-4-yl)piperidine-4-carboxamide”
• or a pharmaceutically acceptable salt thereof.

Practical scope impact

• This is a strict, closed definition around the compound identity and stereochemistry (S).
• It is not a Markush class claim in the text you provided; the claim tracks a specific structure.
• Salt coverage expands literal infringement to those salts that are pharmaceutically acceptable but does not expand beyond the same anion/cation salt concept tied to the same base compound.

Claims 2 and 5: pharmaceutical composition as API + carrier/diluent

Claim 2 covers:

• a pharmaceutical composition comprising the compound of claim 1 (or salt),
• together with a pharmaceutically acceptable diluent or carrier.

Claim 5 is the same structure but anchored to claim 4 (which is identical to the compound of claim 1 based on your claim list).

Practical scope impact

• Composition coverage is broad as to diluent/carrier, but narrow as to the API: it still requires the same compound (or salt).
• Because the composition claim is not limited to dosage form or specific excipients in your excerpt, it is at risk if a competitor uses a different salt form or a different API; but it is strong against variants that use the same API compound.

Claims 3 and 6: method of treating breast cancer

Claim 3 covers:

• “A method of treating breast cancer in a mammal comprising administering an effective amount” of the compound of claim 1 (or salt).

Claim 6 mirrors claim 3 for claim 4.

Practical scope impact

• This is a classic method-of-use claim tied to a medical indication.
• It is broad on “mammal,” on “effective amount,” and on route/timing unless the specification further restricts administration.
• If a competitor’s label includes breast cancer treatment using the same compound, method claim risk increases; if breast cancer is not used, risk changes based on actual infringing use.

Which parts of the molecule and stereochemistry matter most for claim coverage?

Bottom line: The claims are anchored on a fully specified stereochemical small molecule and specific substituent pattern.

Key structural elements named in the claim text:

• (S) configuration at the stereocenter of the side chain segment defining “3-hydroxypropyl” connectivity
• 4-chlorophenyl group on the 3-hydroxypropyl substituent
• “7H-pyrrolo[2,3-d]pyrimidin-4-yl” on the piperidine nitrogen substituent
• piperidine-4-carboxamide functionality with 4-amino substituent

Scope consequence

• A competitor attempting to design around by:
  • switching enantiomer (R instead of S),
  • removing/altering the 4-chlorophenyl,
  • changing the bicyclic heteroaryl (pyrrolo[2,3-d]pyrimidine core), or
  • changing carboxamide substitution pattern would likely avoid literal coverage of claim 1.

What manufacturing steps are protected: protecting-group route and heterocycle coupling route?

Bottom line: Two process claim families protect “how you make it.” One covers coupling of a protected intermediate acid (Formula II) with a defined amino alcohol, then deprotection and salt formation. The other covers an end-stage reaction between a defined “piperidine-4-carboxamide” and a bicyclic heterocycle reagent via a leaving group (L1), with an emphasized embodiment where L1 is chlorine.

Claim 7: process anchored to acid of Formula (II) + (S)-3-amino-3-(4-chlorophenyl)propan-1-ol

Claim 7 covers:

• reacting an acid of Formula (II) with (S)-3-amino-3-(4-chlorophenyl)propan-1-ol
• where P1 is a suitable protecting group
• then:
  • removing protecting groups, and if needed
  • forming a pharmaceutically acceptable salt.

Claim 7 scope character

• This is a defined “route through protected intermediates” approach.
• It is not simply “make the compound.” It requires the specified intermediate pair and a protecting-group structure concept tied to P1.

Design-around relevance

• A manufacturing route that avoids reacting the Formula (II) acid with that specific (S)-amino alcohol may avoid literal infringement.
• Using a different amino-alcohol precursor, different acid partner, or a route that does not rely on P1 protecting-group intermediates as described could reduce risk, depending on whether the claim is interpreted broadly around “Formula (II)” and “suitable protecting group.”

Claim 8: embodiment specifying tert-butoxycarbonyl (Boc) as P1

Claim 8 tightens claim 7 by specifying:

• P1 represents a tert-butoxycarbonyl protecting group.

Scope impact

• Claim 8 is narrower than claim 7 and is strongest against processes using Boc-protected intermediates as the explicit protecting group step.
• Claim 7 remains the more general process claim, with claim 8 functioning as a fallback narrower embodiment.

Claim 9: process using bicyclic heterocycle of Formula (V) with leaving group L1

Claim 9 covers:

• reaction of:
  • “(S)-4-amino-N-(1-(4-chlorophenyl)-3-hydroxypropyl)piperidine-4-carboxamide”
• with a bicyclic heterocycle of Formula (V)
• where L1 is a suitable leaving group
• then, if needed, forming a pharmaceutically acceptable salt.

Claim 9 scope character

• This appears to cover installation of (7H-pyrrolo[2,3-d]pyrimidin-4-yl) through coupling with a heterocycle reagent bearing a leaving group at the relevant position.
• The leaving group element makes this claim potentially medium-to-high risk if competitors use the same (or equivalent) heterocycle coupling strategy.

Claim 10: embodiment where L1 is chlorine

Claim 10 specifies:

• L1 is chlorine.

Scope impact

• Narrower but highly relevant. Many medicinal chemistry routes use chloro-substituted heterocycles for nucleophilic aromatic substitution.
• If a competitor’s route uses a chloro heterocycle reagent in a similar coupling to the same amino carboxamide intermediate, claim 10 risk is elevated.

How do these claims interact: product vs. process vs. use?

Bottom line: Even without enforcement of one category, the estate can still reach competitors through alternative theories.

Infringement mechanics by claim type

• Product (claim 1 / 4): requires making/using/selling/importing the specific compound or salt.
• Composition (claim 2 / 5): requires a formulation containing that same compound/salt plus a carrier/diluent.
• Use (claim 3 / 6): requires administering the compound in treating breast cancer.
• Process (claim 7-10): targets manufacturing steps and intermediate chemistry, which can be enforced even when the competitor’s final formulation differs (though process claim enforceability depends on jurisdiction and proof standards).

Litigation leverage

• If a competitor’s product is the same API, claims 1 and 2 create the cleanest literal infringement path.
• If the competitor uses the same API but manufactured with different routes, process claims 7-10 become critical for additional leverage.
• If the competitor’s API is different but manufactured similarly, process claims still may apply only if the target process necessarily produces the claimed compound.

What does the claim set say about breadth vs. design-around space?

Bottom line: The claim set is not a broad genus of analogs. It is structurally tight and stereochemistry-specific.

Breadth strengths

• Encompasses:
  • the single S-enantiomer
  • pharmaceutically acceptable salts
  • basic pharmaceutical compositions (no excipient limitation in your excerpt)
  • breast cancer therapeutic use in mammals
• Process claims are described with intermediate formulas and functional steps (protecting-group removal; leaving-group coupling).

Design-around pressure points

• Enantiomer switch: changing from S to R is the most direct design-around against claim 1/4.
• Core scaffold changes: altering the bicyclic heteroaryl (pyrrolo[2,3-d]pyrimidinyl) is likely outside literal scope.
• Coupling reagent differences: changing L1 away from chlorine or changing the heterocycle class could avoid claims 9/10 depending on how Formula (V) and “suitable leaving group” are construed.
• Route changes: avoiding the specific reactant pairing described in claim 7 can reduce process claim risk.

What is missing for a full “US patent landscape” read?

Bottom line: You provided claim text only. A patent landscape for US 8,101,623 requires bibliographic and procedural data (application number, priority dates, filing/grant/expiration, claim history, continuations, related patents, and Orange Book/FDA linkage, plus any litigation/settlement events). Without those, a complete landscape cannot be produced from the claim excerpt alone.

Because your instruction requires a complete and accurate response, the analysis above is limited strictly to the provided claim scope and how it would map to infringement and design-around in practice.

Key Takeaways

• US 8,101,623 protects a specific stereodefined compound (S-enantiomer) and its pharmaceutically acceptable salts (claims 1 and 4).
• It covers basic pharmaceutical compositions containing that API (claims 2 and 5) with carrier/diluent breadth but API limitation.
• It includes method-of-use claims for breast cancer treatment in mammals via administration of the claimed compound (claims 3 and 6).
• Manufacturing is protected by two process routes: a protected-intermediate route using an acid of Formula (II) plus (S)-3-amino-3-(4-chlorophenyl)propan-1-ol with protecting-group removal and salt formation (claims 7-8), and a coupling route using a bicyclic heterocycle of Formula (V) with leaving group L1 to form the heteroaryl-substituted product (claims 9-10), including an emphasized embodiment where L1 is chlorine.

FAQs

1. Would using the R-enantiomer avoid infringement of claim 1?
   The claim text is S-specific; substituting the R-enantiomer avoids literal coverage of the defined compound unless equivalents arguments succeed.

2. Do claims 2 and 5 cover any dosage form?
   The excerpt limits the composition to “API + pharmaceutically acceptable diluent or carrier” without dosage-form constraints, so scope depends on how broadly “composition” is construed in the claims and specification.

3. Can a competitor manufacture the compound but avoid process claims?
   Potentially, if their route avoids the specific intermediate/reactant pairings and protecting-group and leaving-group steps described in claims 7-10.

4. If a drug is used for a different cancer, is the breast-cancer method claim triggered?
   The method claims require “treating breast cancer”; using the compound for another indication would not match the claimed use unless breast cancer treatment is involved.

5. Is L1 being chlorine essential to claim 10?
   Yes. Claim 10 explicitly requires L1 to be chlorine, while claim 9 covers “suitable leaving group” more generally.

References

1. United States Patent 8,101,623 (claims provided by user excerpt).

Drugs Protected by US Patent 8,101,623

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Astrazeneca	TRUQAP	capivasertib	TABLET;ORAL	218197-001	Nov 16, 2023		RX	Yes	No	8,101,623		Y	Y		TREATMENT WITH FULVESTRANT OF HR-POS. HER2-NEG. LOCALLY ADVANCED OR METASTATIC BREAST CANCER WITH PIK3CA/AKT1/PTEN-ALTERATION(S) FOLLOWING PROGRESSION ON ENDOCRINE THERAPY IN THE METASTATIC SETTING OR RECURRENCE ON OR WITHIN 12 MONTHS OF ADJUVANT THERAPY
Astrazeneca	TRUQAP	capivasertib	TABLET;ORAL	218197-002	Nov 16, 2023		RX	Yes	Yes	8,101,623		Y	Y		TREATMENT WITH FULVESTRANT OF HR-POS. HER2-NEG. LOCALLY ADVANCED OR METASTATIC BREAST CANCER WITH PIK3CA/AKT1/PTEN-ALTERATION(S) FOLLOWING PROGRESSION ON ENDOCRINE THERAPY IN THE METASTATIC SETTING OR RECURRENCE ON OR WITHIN 12 MONTHS OF ADJUVANT THERAPY

International Family Members for US Patent 8,101,623

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
European Patent Office	2201012		C02201012/01	Switzerland
European Patent Office	2201012		301299	Netherlands
European Patent Office	2201012		PA2024532	Lithuania
European Patent Office	2201012		CA 2024 00047	Denmark
European Patent Office	2201012		2024C/543	Belgium
European Patent Office	2201012		CR 2024 00047	Denmark
European Patent Office	2201012		122024000062	Germany