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Details for Patent: 8,110,606
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Which drugs does patent 8,110,606 protect, and when does it expire?
Patent 8,110,606 protects ZIPSOR and is included in one NDA.
Summary for Patent: 8,110,606
| Title: | Method of treating post-surgical acute pain |
| Abstract: | A method is provided for treating pain in patients recovering from post-surgical trauma by administering between about 13 to about 30 mg of diclofenac potassium in a liquid dispersible formulation over a period of at least 24 hours, wherein the daily total amount of diclofenac potassium administered is less than or equal to about 100 mg. The method is particularly useful in treating acute pain in bunionectomy patients. |
| Inventor(s): | Mark M. Kowalski, James L. Young, Keith A. Moore |
| Assignee: | Assertio Therapeutics Inc |
| Application Number: | US12/706,117 |
| Patent Litigation and PTAB cases: | See patent lawsuits and PTAB cases for patent 8,110,606 |
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Patent Claim Types: see list of patent claims | Use; Formulation; Dosage form; |
| Patent landscape, scope, and claims: | Scope, Claim Construction, and US Patent Landscape for Diclofenac Potassium Dispersible Liquid to Treat Acute Post-Bunionectomy Pain (US Patent 8,110,606) US Patent 8,110,606 is a method-of-treatment patent focused on orally administered diclofenac potassium in a dispersible liquid formulation for acute post-bunionectomy pain, with claim scope anchored to tight dosing, schedule, and exposure-related pharmacokinetic/clinical efficacy parameters. The estate is likely to create infringement risk for generics attempting to copy the specific dose range (13 to 30 mg), total daily cap (≤100 mg), dosing interval (about every 4 to 8 hours), and duration (at least 24 hours), especially where clinical end points and PK markers are matched. What does US Patent 8,110,606 claim and what is its core scope for diclofenac potassium post-bunionectomy pain?Immediate answer (claim center of gravity): Claim dependency map (how breadth is built)Independent Claim 1 is the broadest method frame. Dependent claims carve out:
Key claim elements (practical infringement triggers)
Business implication: A product that matches the indication + route + formulation + dosing scheme is the highest-risk target. The PK/clinical parameters can also be used as evidentiary anchors even when not strictly required for literal infringement, depending on claim interpretation and how dependent claims are framed in the infringement analysis. How do the claim terms narrow or broaden infringement risk (dispersible liquid, dosing interval, daily cap)?“Dispersible liquid formulation” scopeThe patent constrains infringement to diclofenac potassium delivered as a dispersible liquid formulation. In practice, this typically covers a dosage form where drug is dispersed in an aqueous medium prior to administration or is formulated for rapid dispersal in the GI tract, depending on claim construction. The claim does not require a specific excipient package in the text provided, but the formulation category itself is a major differentiator versus immediate-release tablets, enteric-coated formulations, or generic liquid syrups not designed as dispersible liquids. Dose and schedule: the mathematical boundaryClaim 1 enforces an interacting triad:
Highest-risk template within Claim 1: 25 mg dosing four times in 24 hours:
“About” and discrete embodimentsClaim 7 lists discrete dose amounts as alternate embodiments. This is important because it reduces design-around options: even if a competitor argues “about 25 mg” vs 25 mg, the claim already enumerates 27.5, 28, etc. The “about” term plus enumeration increases literal coverage for near-neighbor dose strengths. Duration expansion: Claim 6 multiplies covered timelinesClaim 6 enumerates durations up to 7 days. If the method is used beyond the first day and still fits the daily cap and interval framework, the risk remains. What pharmacokinetic and clinical endpoints are built into the claim set (Tmax ~0.47h, elimination in first 2 hours, onset 60–70 minutes)?Claims 8–16 introduce performance characteristics that can matter in:
PK anchors
These parameters imply a formulation enabling rapid absorption and short exposure persistence, consistent with an orally administered dispersible system rather than slower release forms. Clinical anchors (pain scales and timing)
Business implication: Any generic attempting to “slot in” with the same dosage but with slower onset is more exposed to these dependent claim embodiments, especially the time-to-effect measures. Which related dependent claims create the tightest design-around barriers (internal fixation, capsule, no opioid)?Claim 2: internal fixation during bunionectomyThis limitation can reduce coverage if an accused method does not include internal fixation, but it also offers a fallback claim path. If clinical practice in the studied trial population includes internal fixation, the patentee’s enforcement record may align to that setting. Claim 18: capsule containmentIf a generic uses a different packaging concept (e.g., sachet or tablet) while still meeting “dispersible liquid formulation,” enforceability will hinge on how “contained in a capsule” is construed. Many generics could be designed around capsule packaging, but that depends on product design. Claim 20: no opioid co-administrationIf the method of treatment includes opioid rescue or co-medication, literal infringement could be challenged. However, in pain trials, “no opioid” language can be complicated by rescue allowances; the claim text you provided implies the method requires no opioid co-administration. That becomes a factual and protocol-specific issue. What is the patent landscape around US 8,110,606 for diclofenac formulations and buinionectomy pain? (relationships and typical coverage patterns)The provided claim set is method-centric. In the broader landscape for diclofenac-based acute pain, typical patent families include:
How US 8,110,606 likely fits: it is written to preserve enforceable coverage even if competitors produce a generic diclofenac potassium product that matches drug identity but misses a specific regimen, timing, or formulation presentation. The “dispersible liquid formulation” plus PK/clinical endpoints indicates the patentee is using trial performance to distinguish. Typical adjacent claim families to expect in parallelEven without listing other patent numbers here, the claim wording signals adjacency to:
When does US 8,110,606 lose exclusivity (expiration timeline framework for a method patent)?The exact expiration date depends on the patent’s filing date, priority, and any patent term adjustments under US law. Those data are not provided in the prompt, so a precise date cannot be calculated from the claim text alone. Actionable enforcement window concept: For a method-of-treatment patent, exclusivity is governed by the patent’s legal life in the US. Even after expiration, generics can practice the same method if not blocked by other active patents (for example, formulation patents or additional method-of-use patents that do not expire simultaneously). What Paragraph IV and litigation risks exist for generics challenging diclofenac potassium post-bunionectomy pain dosing?Why Paragraph IV exposure is high even for “same dose” productsHatch-Waxman litigation risk is not limited to copying the active ingredient. For US 8,110,606, the following can be infringement hinges:
What a generic must design aroundThe design-around should be evaluated against each limitation in order:
Practical note: A generic label may not need to instruct physicians to follow a covered method, but if the product is marketed and prescribed in a way that fits the method claim, infringement theories can still arise through induced/contributory infringement under the right facts. What formulations are protected by US 8,110,606 (capsule dispersible liquid) and how does it compare to tablet or enteric-coated diclofenac?Direct formulation constraintUS 8,110,606 is limited to a diclofenac potassium dispersible liquid formulation. That is narrower than “any oral diclofenac potassium.” Comparison: likely outside scope
Comparison: capsule embodimentEven if a competitor uses dispersible liquid chemistry, it may still avoid Claim 18 if the dispersible liquid is not “contained in a capsule.” How strong is the patent estate for this regimen (claim structure and enforceability signals)?Based on the claim text alone, the enforceability strength comes from three features:
Potential weakness (infringement defensibility):
Key Takeaways
FAQs1) Does US 8,110,606 cover diclofenac potassium tablets for post-bunionectomy pain? 2) What dose regimen in the patent is the most explicit? 3) Can a generic avoid infringement by using opioid rescue? 4) How do the PK limitations affect generic risk? 5) Is internal fixation required to practice the patented method? References
More… ↓ |
Drugs Protected by US Patent 8,110,606
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Cosette | ZIPSOR | diclofenac potassium | CAPSULE;ORAL | 022202-001 | Jun 16, 2009 | AB | RX | Yes | Yes | 8,110,606 | ⤷ Start Trial | NONSTEROIDAL ANTI-INFLAMMATORY DRUG INDICATED FOR RELIEF OF MILD TO MODERATE ACUTE PAIN | ⤷ 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 |
