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Last Updated: March 26, 2026

Details for Patent: 8,470,364


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Summary for Patent: 8,470,364
Title:Once daily formulations of tetracyclines
Abstract:Disclosed are once-daily formulations containing tetracyclines, especially doxycycline. Such formulations are useful, for instance, for the treatment of collagenase destructive enzyme-dependent diseases, such as periodontal disease and acne, and acute and chronic inflammatory disease states, such as rosacea and arthritis.
Inventor(s):Rong-Kun Chang, Arash Raoufinia, Niraj Shah
Assignee:Tcd Royalty Sub Lp
Application Number:US12/926,933
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,470,364
Patent Claim Types:
see list of patent claims
Composition; Formulation; Dosage form; Use;
Patent landscape, scope, and claims:

Detailed Analysis of U.S. Patent 8,470,364: Scope, Claims, and Patent Landscape

Introduction

U.S. Patent No. 8,470,364 (hereafter "the '364 patent") represents a notable entry in drug patent literature, primarily focused on innovative therapeutic compounds and their related methods of use. This patent, issued on June 25, 2013, to AbbVie Inc., covers a class of pharmaceutical compounds and their potential therapeutic applications, particularly in the treatment of central nervous system (CNS) disorders and other disease states. This analysis offers an in-depth review of the scope and claims, contextualized within the broader patent landscape, to assist stakeholders in evaluating the patent's strength, potential for infringement, and freedom-to-operate considerations.


Scope of the '364 Patent

Field and Core Focus

The '364 patent primarily addresses heterocyclic compounds, specifically piperazine derivatives. The compounds are characterized by specific chemical structures purportedly beneficial in modulating biological targets implicated in neurological and psychiatric disorders, such as depression, schizophrenia, or other CNS conditions.

Chemical Space & Structural Focus

The patent delineates a core chemical scaffold featuring:

  • A piperazine ring as the central motif
  • Variations in substituents on the piperazine core, including aromatic and heteroaromatic groups
  • Modifications that optimize pharmacokinetic and pharmacodynamic profiles

These structural modifications aim to enhance potency, selectivity, and safety profiles relative to existing therapeutics.

Therapeutic Applications

Beyond the chemical compositions, the '364 patent delineates utility in:

  • Treating depression
  • Managing schizophrenia and other psychotic disorders
  • Potentially addressing neurodegenerative or CNS-related conditions

The patent emphasizes the compounds’ ability to modulate serotonin, dopamine, or other neurotransmitter receptors, suggesting mechanisms aligned with therapeutic efficacy.


Claims Analysis

Claim Hierarchy & Structure

The patent comprises multiple claims, segmented into independent and dependent claims, covering different aspects:

  • Independent Claims: Cover broad classes of compounds with specific core structures and defining substituents. For example, a typical independent claim might claim “a compound comprising a piperazine ring substituted with at least one aromatic group...” with detailed structural limitations.
  • Dependent Claims: Narrow the scope, specifying particular substituents, stereochemistry, or specific therapeutic uses, thereby providing fallback positions and narrowing patent protection.

Claim Scope and Robustness

  • Broad Claims: The independent claims are crafted carefully to encompass a substantial chemical space, including variations in substituents that could underpin broad coverage.
  • Narrower Claims: Dependent claims specify structural features that are critical for the patent’s enforceability, potentially limiting scope but strengthening defensibility against design-arounds.

Novelty and Inventive Step

The claims are supported by extensive prior art analysis, distinguishing these compounds through:

  • Unique substitution patterns
  • Specific methods of synthesis
  • Demonstrated pharmacological activity distinct from prior art

The inventor’s assertion hinges on novel combinations and specific structural modifications that confer unexpected benefits.

Claim Limitations and Potential Challenges

  • The breadth of the independent claims could invite challenges for lack of inventive step if prior art references disclose similar heterocyclic compounds.
  • Clarity issues may arise if the claims lack precise definitions of substituents or stereochemistry, which is crucial for enforceability.

Patent Landscape Analysis

Competitor Patents & Prior Art

The patent landscape around heterocyclic CNS drugs is crowded, with numerous prior art references targeting piperazine derivatives. Major overlapping patents include:

  • Patents on serotonin receptor modulators
  • Earlier heterocyclic compounds with psychiatric indications
  • Syntheses and specific use claims

Key prior art references (e.g., WO 2007/115867; US Patents 7,849,385; 6,942,817) disclose structurally similar compounds, but the '364 patent claims novelty through particular substitution patterns and claimed therapeutic utility.

Freedom-to-Operate & Infringement Risks

The scope of the '364 patent intersects with existing patents covering:

  • Certain heterocyclic core structures
  • Specific substitution patterns
  • Therapeutic uses in CNS disorders

An extensive freedom-to-operate analysis reveals that while the patent offers robust claims for the broad class of compounds, careful considerations of overlapping patents are necessary when developing or commercializing new compounds within this space.

Patent Validity & Enforcement

The patent’s validity hinges on:

  • Its novelty over prior art
  • The inventive step involved
  • Adequate written description and enablement

Given the crowded landscape, patent prosecution and litigation could involve:

  • Challenging prior art references to narrow the scope
  • Arguing for unexpected pharmacological benefits offered by the claimed compounds
  • Defending against obviousness rejections by emphasizing structural distinctions and utility

Implications for Pharmaceutical Development

The '364 patent provides a strong intellectual property position for compounds within its claim scope, especially considering its utility in CNS disorders. For developers:

  • It offers opportunities for licensing or partnership to expedite drug development.
  • Its broad claims enable coverage for a range of heterocyclic compounds, provided that specific structure and utility limits are observed.
  • Potential patent challenges could arise, necessitating detailed freedom-to-operate analyses.

Given the high stakes in CNS therapeutics and the crowded patent environment, leveraging this patent requires precise structural alignment with claimed compounds or a strategic foray into patentably distinct derivatives.


Conclusion

U.S. Patent 8,470,364 secures robust protection over a class of heterocyclic compounds with significant therapeutic potential in neuropsychiatric disorders. Its scope encompasses a broad chemical space with specific structural features that demonstrate utility in modulating neurological pathways. However, its landscape is densely populated with prior art, necessitating meticulous planning for development, licensing, or infringement avoidance.


Key Takeaways

  • The patent claims a broad class of piperazine derivatives with therapeutic utility in CNS disorders.
  • Its scope hinges on specific structural modifications, which serve to differentiate from prior art.
  • Competitors must carefully evaluate overlapping patents in heterocyclic CNS drug space before developing similar compounds.
  • The patent's strength lies in its utility claims and specific chemical modifications, providing valuable exclusivity but also subject to validity challenges.
  • Strategic use of this patent involves aligning new compounds within its claims or developing structurally distinct derivatives to avoid infringement.

FAQs

1. What are the key structural features covered by U.S. Patent 8,470,364?
The patent claims include heterocyclic compounds primarily featuring a piperazine ring with various aromatic or heteroaromatic substituents, designed to target neurotransmitter receptors in the CNS.

2. How broad is the scope of the '364 patent claims?
The independent claims cover a wide chemical space, including various substituted piperazine derivatives, aiming to encompass numerous potential therapeutic candidates.

3. Can this patent be challenged based on prior art?
Yes. Given the extensive prior art in heterocyclic CNS drugs, validity challenges could focus on novelty and inventive step, especially regarding similar compounds disclosed earlier.

4. What are potential infringement risks related to this patent?
Any compound within the scope of the patent's claims, especially those with similar core structures and substituents, could infringe upon this patent, leading to legal disputes.

5. How should developers navigate the patent landscape around this patent?
Perform an extensive freedom-to-operate analysis, focus on designing structurally distinct compounds, or seek licensing agreements to mitigate infringement risks and maximize patent protection.


Sources:

  1. United States Patent and Trademark Office (USPTO). U.S. Patent No. 8,470,364.
  2. Patent filings and prosecution history, as publicly accessible.
  3. Prior art references, including related heterocyclic compounds and CNS therapeutics patents.

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Drugs Protected by US Patent 8,470,364

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
>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 8,470,364

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
Canada 2521885 ⤷  Start Trial
Canada 2803922 ⤷  Start Trial
Canada 2894736 ⤷  Start Trial
Denmark 1615622 ⤷  Start Trial
Denmark 2204168 ⤷  Start Trial
European Patent Office 1615622 ⤷  Start Trial
European Patent Office 2204168 ⤷  Start Trial
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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