United States Patent 8,653,058: Claim Scope, Kybella Formulation Coverage, and Patent Landscape

U.S. Patent No. 8,653,058 covers non-phosphatidylcholine aqueous compositions containing sodium deoxycholate at approximately 0.5% or 1.0%, with the solution maintained at pH 8.1 to 8.5 and stabilized against precipitation. The narrowest and commercially most relevant claims recite injectable formulations containing sodium deoxycholate, benzyl alcohol, sodium chloride, and, in some claims, sodium phosphate.

The patent is directly relevant to Kybella, the FDA-approved injectable deoxycholic acid product marketed by Kythera Biopharmaceuticals and later Allergan, now part of AbbVie. The Kybella formulation contains 10 mg/mL sodium deoxycholate, equivalent to 1% w/v, at approximately pH 8.3, with benzyl alcohol, sodium chloride, and sodium phosphate.[1]

What does U.S. Patent 8,653,058 protect?

The patent protects composition claims rather than broad claims to the use of deoxycholic acid for reducing submental fat. Its central limitation is a specific concentration and pH-controlled aqueous formulation that does not precipitate.

Claim element	Principal limitation
Active ingredient	A salt of deoxycholic acid
Preferred salt	Sodium deoxycholate
Concentration group 1	0.5% ± 0.1%
Concentration group 2	1% ± 0.1%
pH	About 8.1 to about 8.5
Physical property	No precipitate when maintained at the specified pH
Excluded component	Phosphatidylcholine
Excipients	Solvent, buffer, preservative, lyophilization aid, or combination
Specific preservatives	Benzyl alcohol, including about 0.9%
Specific buffer	Approximately 10 mM sodium phosphate
Specific tonicity agent	Sodium chloride, approximately 0.86% or 75 mM

The claims use “consisting of,” which generally operates as a closed transitional phrase. A composition that contains an additional material not permitted by the claim may fall outside literal infringement, although the legal effect depends on claim construction and whether the additional material is properly characterized as an impurity, processing residue, or excluded component.

How do the independent claims differ?

Claims 1, 2, 10, 11, 14, and 15 are the principal composition claims. Claims 1 and 2 establish the two concentration ranges. Claims 10, 11, 14, and 15 add specific formulation components.

Claims 1 and 2: concentration and precipitation platform

Claim 1 covers a composition containing:

A salt of deoxycholic acid;
A pharmaceutically acceptable excipient;
Approximately 0.4% to 0.6% of the salt;
A pH of approximately 8.1 to 8.5 when dissolved in water;
No precipitate at that pH; and
No phosphatidylcholine.

Claim 2 is structurally similar but covers approximately 0.9% to 1.1% of the deoxycholate salt.

The two claims create separate concentration corridors. A formulation at 0.7% or 0.8% would not literally satisfy either concentration limitation, assuming the percentages are measured on the same basis and the claim construction treats the ranges as exclusive.

Claims 10 and 11: sodium chloride and benzyl alcohol formulations

Claim 10 covers a 0.5% sodium deoxycholate formulation with:

Sterile aqueous solution;
pH of approximately 8.3;
About 0.9% w/v benzyl alcohol;
About 1% w/v sodium chloride; and
Stability against precipitation.

Claim 11 covers the corresponding 1% sodium deoxycholate composition.

These claims are narrower than claims 1 and 2 because they require particular excipients and approximate quantities. They also create potential design-around opportunities through changes to preservative selection, sodium chloride concentration, buffer system, or dosage form.

Claims 14 and 15: phosphate-buffered formulations

Claim 14 covers:

0.5% ± 0.1% w/v sodium deoxycholate;
Approximately 10 mM sodium phosphate;
Approximately 0.9% w/v benzyl alcohol;
Approximately 75 mM sodium chloride;
Sterile aqueous solution;
pH of approximately 8.3; and
No precipitation.

Claim 15 covers:

1% ± 0.1% w/v sodium deoxycholate;
Approximately 10 mM sodium phosphate;
Approximately 0.86% w/v sodium chloride;
Sterile aqueous solution;
pH of approximately 8.3; and
No phosphatidylcholine.

Claim 15 is the closest match to the commercial Kybella formulation. The FDA prescribing information identifies each milliliter of Kybella as containing 10 mg deoxycholic acid, 0.9% benzyl alcohol, sodium chloride, and phosphate buffer at a pH of approximately 8.3.[1]

What is the likely scope of “salt of deoxycholic acid”?

The claims first cover a salt of deoxycholic acid generally. Claim 12 narrows that class to an alkali metal salt, and claim 13 further narrows it to sodium.

Potentially covered salts include:

Sodium deoxycholate;
Potassium deoxycholate;
Other alkali-metal deoxycholate salts, subject to claim construction and enablement.

A product using free deoxycholic acid rather than a salt could avoid the literal “salt” limitation, although the composition’s actual chemical form in aqueous solution would be relevant. Counterion exchange, dissociation, pH adjustment, and equilibrium between free acid and deoxycholate species could become material in an infringement dispute.

How important is the phosphatidylcholine exclusion?

The express exclusion of phosphatidylcholine is commercially significant. Phosphatidylcholine is associated with earlier injectable lipolysis formulations and can alter the formulation architecture, emulsification behavior, and precipitation profile.

The patent therefore does not broadly cover all deoxycholic acid injectable products. It targets a phosphatidylcholine-free formulation platform. A product containing phosphatidylcholine may avoid literal infringement of the asserted claims, but that design would introduce separate formulation, safety, regulatory, and freedom-to-operate issues.

The exclusion also limits the patent’s relevance to liposomal, vesicular, or phospholipid-containing products. A competing product that uses a phospholipid carrier would require a separate analysis of other patents, including formulation and delivery-system claims.

What formulations are protected by the dependent claims?

Claims 3 through 9 and claims 12 and 13 narrow the general composition claims.

Claims	Covered subject matter
3	Solvent, buffer, preservative, lyophilization aid, or combination
4	Solvent
5	Sterile water
6	Preservative
7	Benzyl alcohol
8	Approximately 0.9% benzyl alcohol
9	pH of approximately 8.3
12	Alkali metal deoxycholate salt
13	Sodium deoxycholate

These claims are composition claims, not independent claims to manufacturing processes. They do not expressly require injection into a patient, treatment of submental fat, fat reduction, cosmetic use, or a particular administration route.

Does the patent cover Kybella?

Kybella appears to fall within the technical profile of the patent, particularly claim 15. Kybella is a sterile injectable containing 10 mg/mL sodium deoxycholate, or approximately 1% w/v, with phosphate buffer, sodium chloride, benzyl alcohol, and a pH of approximately 8.3.[1]

The correspondence is strongest for the following elements:

Patent claim 15 element	Kybella product profile
Sterile aqueous solution	Yes
Approximately 1% sodium deoxycholate	Yes, 10 mg/mL
Approximately 10 mM sodium phosphate	Consistent with labeling
Approximately 0.86% sodium chloride	Consistent with labeling
pH approximately 8.3	Yes
Stable against precipitation	Formulation objective and claimed property
No phosphatidylcholine	Consistent with labeling

Whether a marketed product infringes requires comparison of the approved formulation, manufacturing specifications, batch data, and claim construction. The label establishes a strong technical overlap but does not by itself resolve every legal infringement issue.

When does U.S. Patent 8,653,058 lose exclusivity?

The patent issued on February 18, 2014.[2] Its effective expiration date must be determined from the complete USPTO patent-term record, including the earliest nonprovisional filing date, any patent-term adjustment, terminal disclaimer, and priority claims.

The patent’s practical exclusivity period is also affected by FDA regulatory exclusivity and any later-issued patents listed for Kybella. Patent expiration should therefore be assessed against:

The USPTO Patent Center term calculation;
The FDA Orange Book listing;
Any continuation or divisional patents;
Any patent-term adjustment;
Any regulatory exclusivity applicable to the original NDA; and
Any litigation settlement restricting an authorized generic or ANDA launch.

Patent 8,653,058 should not be treated as the only Kybella-related barrier. A generic applicant could challenge this patent while still facing later-expiring method-of-use, formulation, manufacturing, or other listed patents.

What is the Orange Book status of Patent 8,653,058?

Patent 8,653,058 has been associated with the Kybella NDA and its formulation protection. The Orange Book is the controlling source for current FDA-listed patents and use codes.[3]

The listing is commercially important because an ANDA applicant must address each relevant listed patent through:

Paragraph I certification;
Paragraph II certification;
Paragraph III certification;
Paragraph IV certification; or
A section viii statement that the applicant will omit a patented method of use.

Because Patent 8,653,058 is directed to composition subject matter, a section viii carve-out would generally not remove the formulation patent from the ANDA certification analysis. A generic applicant seeking approval for the same composition would likely need to address the patent directly.

What Paragraph IV risks exist for a sodium deoxycholate generic?

A generic applicant could pursue a Paragraph IV challenge based on noninfringement, invalidity, or both.

Noninfringement theories

Potential noninfringement positions include:

Using a concentration outside the 0.4% to 0.6% and 0.9% to 1.1% ranges;
Using a non-sodium deoxycholate salt;
Using free deoxycholic acid;
Selecting a pH outside approximately 8.1 to 8.5;
Including phosphatidylcholine;
Omitting benzyl alcohol where the asserted claim requires it;
Replacing sodium phosphate with another buffer;
Using a different sodium chloride concentration;
Demonstrating that the formulation precipitates under the claimed conditions, although that route would create regulatory and product-quality concerns; or
Marketing a formulation that does not satisfy the closed “consisting of” limitations.

The strongest design-around strategy would usually involve a formulation change that remains pharmaceutically acceptable and stable while clearly avoiding at least one required claim element.

Invalidity theories

Potential invalidity arguments include:

Anticipation by an earlier deoxycholate formulation;
Obviousness based on known deoxycholate salts, pH control, preservatives, and isotonicity agents;
Lack of written description for the full concentration and pH ranges;
Lack of enablement across the claimed composition space;
Indefiniteness of terms such as “about,” “does not form a precipitate,” or “stable against precipitation”; and
Double-patenting, depending on related patent families and terminal disclaimers.

The patent’s strength is greater against an exact Kybella-like formulation than against the broader conceptual category of deoxycholate compositions. The composition claims combine common excipients with narrower pH, concentration, and precipitation limitations. Prior-art quality and experimental evidence concerning precipitation stability would be central to an obviousness challenge.

How strong is the patent estate for Kybella?

Patent 8,653,058 is a focused formulation patent with meaningful blocking value for an exact or near-exact copy of Kybella. Its strength is lower against materially different formulations.

Risk area	Assessment
Exact 1% sodium deoxycholate formulation	High
Same pH and phosphate buffer	High
Same benzyl alcohol and sodium chloride profile	High
Alternative deoxycholate concentration	Moderate to high, depending on range
Alternative buffer system	Lower under claims 14 and 15
Phosphatidylcholine-containing product	Lower under the supplied claims
Free deoxycholic acid formulation	Potentially lower
Noninjectable formulation	Claims do not expressly require injection
Method-of-use product	Requires separate patent review
Manufacturing process	Not covered by the supplied claims

The patent is strongest as a formulation barrier, not as a complete product monopoly over all therapeutic uses of deoxycholic acid.

Are there biosimilar risks for Kybella?

No. Kybella is a chemically defined small-molecule drug, not a biologic. A competitor would generally seek approval through the ANDA pathway under section 505(j) of the Federal Food, Drug, and Cosmetic Act rather than through the biosimilar pathway under section 351(k) of the Public Health Service Act.[4]

The relevant competitive risk is generic or hybrid drug entry, not biosimilar substitution. FDA approval would depend on pharmaceutical equivalence, bioequivalence where applicable, manufacturing compliance, labeling, and resolution of listed patents.

Which companies are challenging Kybella exclusivity?

Publicly confirmed Paragraph IV litigation and settlement activity must be checked against current FDA, PACER, and district-court records. Patent 8,653,058 alone does not establish that a particular company has filed a challenge.

Potential entrants would include generic manufacturers capable of producing sterile injectable sodium deoxycholate. The principal barriers are:

Sterile injectable manufacturing;
Control of pH and precipitation;
Preservative compatibility;
Container-closure integrity;
Analytical characterization of deoxycholate;
Injectable quality-system compliance;
Orange Book patent certifications;
Potential 30-month stays; and
Commercial scale-up economics.

The absence of a biosimilar pathway does not eliminate litigation risk. An ANDA applicant could still trigger patent litigation through a Paragraph IV certification.

What manufacturing and intellectual-property barriers remain?

The patent does not claim a manufacturing process, but the formulation itself creates technical manufacturing constraints. Sodium deoxycholate is a surfactant-like bile acid salt whose solubility, aggregation behavior, and precipitation profile can vary with pH, ionic strength, temperature, concentration, and excipient selection.

A competing manufacturer would need to control:

Active concentration within the claimed range or outside it;
pH at release and throughout shelf life;
Buffer capacity;
Sodium chloride concentration;
Benzyl alcohol concentration;
Visible and subvisible particles;
Precipitation after dilution or temperature excursion;
Sterility and endotoxin levels; and
Container compatibility.

A formulation that avoids the patent by changing pH or excipients may create a separate regulatory problem if it has lower stability, local tolerability, or comparability to the reference product.

How does Patent 8,653,058 compare with method-of-use patents?

The supplied claims do not claim treatment of submental fullness, adipose tissue, or aesthetic contouring. They also do not claim injection into the submental area or any dosing schedule.

This distinction matters:

Formulation claims can block sale of a product regardless of the use promoted on the label, subject to applicable infringement rules.
Method-of-use claims may be avoidable through a label carve-out.
Manufacturing claims may apply even where a competitor changes the label.
Device claims may cover injection systems or delivery configurations separately.

A complete Kybella freedom-to-operate analysis therefore requires review of the entire U.S. patent family and current Orange Book listings, not only Patent 8,653,058.

What is the commercial exposure from this patent?

Kybella is the principal commercial product associated with the claimed formulation profile. The patent’s commercial exposure depends on whether an entrant can produce a clinically and regulatorily acceptable formulation outside the claims.

Scenario	Commercial effect
Exact Kybella formulation copied	High infringement and litigation risk
Minor excipient adjustment within claimed ranges	Limited design-around value
Concentration outside both claimed bands	Potentially meaningful design-around
Alternative buffer and preservative system	Potentially meaningful, subject to stability
Phosphatidylcholine formulation	Lower risk under these claims, higher development risk
Free-acid formulation	Uncertain technical and legal risk
Delayed entry pending patent expiry	Lower litigation cost, slower market access
Paragraph IV launch	High litigation exposure but possible first-filer advantage

Because the claims cover the 1% sodium deoxycholate concentration used by Kybella, an ANDA applicant that closely copies the reference formulation would face substantial exposure. A materially different formulation could reduce patent risk but would increase development and regulatory risk.

Key Takeaways

U.S. Patent 8,653,058 is a formulation patent centered on sodium deoxycholate concentrations of approximately 0.5% and 1%.
The claimed pH range is approximately 8.1 to 8.5, with pH 8.3 repeatedly specified.
The claims exclude phosphatidylcholine, limiting coverage of phospholipid-containing products.
Claims 14 and 15 closely track the Kybella formulation, particularly the 1% sodium deoxycholate composition.
The patent does not claim a treatment method, injection site, dosing regimen, or manufacturing process in the supplied claims.
A generic competitor would likely address the patent through a Paragraph IV certification if seeking approval for a substantially similar formulation.
Kybella is a small molecule, so biosimilar pathways are not applicable.
The strongest design-around options involve concentration, buffer, preservative, salt, or phosphatidylcholine changes, but each may create technical and regulatory disadvantages.
Current exclusivity must be evaluated with the USPTO patent-term record and the FDA Orange Book, including any related continuation patents and later-listed patents.

FAQs About U.S. Patent 8,653,058

Does Patent 8,653,058 cover all deoxycholic acid products?

No. It covers defined compositions with specified concentration, pH, precipitation, excipient, salt, and phosphatidylcholine limitations. It does not broadly claim every deoxycholic acid composition.

Can a product avoid the patent by using potassium deoxycholate?

Possibly, but not automatically. Claims 1 and 2 broadly recite a salt of deoxycholic acid, while claims 12 and 13 narrow the salt to an alkali metal salt and sodium, respectively. The exact asserted claim and claim construction would control.

Does the patent cover a 2% sodium deoxycholate injectable?

The supplied claims do not recite 2%. A 2% formulation would generally fall outside the express 0.5% ± 0.1% and 1% ± 0.1% concentration ranges, subject to the actual formulation, claim construction, and other patent rights.

Can a competitor use a different preservative?

Claims 1 and 2 do not require benzyl alcohol, but claims 7, 8, 10, and 14 do. A different preservative may avoid the narrower benzyl-alcohol claims, although the broader claims and other patents would still require analysis.

Is a formulation patent enough to block an ANDA?

It can be. An ANDA applicant must address applicable listed patents. A formulation patent may support a Paragraph IV challenge and, if the patent owner sues within the statutory period, may trigger the FDA approval stay applicable to the ANDA.

Is Patent 8,653,058 a method-of-use patent?

No. The supplied claims are composition claims. They do not require treatment of a disease, cosmetic condition, anatomical site, patient population, or administration method.

References

U.S. Food and Drug Administration. (2024). Kybella (deoxycholic acid) injection, for subcutaneous use: Prescribing information. FDA.
United States Patent and Trademark Office. (2014). U.S. Patent No. 8,653,058, deoxycholic acid compositions and methods of use thereof. USPTO.
U.S. Food and Drug Administration. (2024). Approved drug products with therapeutic equivalence evaluations: Orange Book. FDA.
U.S. Food and Drug Administration. (2024). Abbreviated new drug application (ANDA) process and generic drugs. FDA.

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Abbvie	KYBELLA	deoxycholic acid	SOLUTION;SUBCUTANEOUS	206333-001	Apr 29, 2015	AP	RX	Yes	Yes	⤷ Start Trial	⤷ Start Trial	Y				⤷ 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

Details for Patent: 8,653,058

Which drugs does patent 8,653,058 protect, and when does it expire?

Summary for Patent: 8,653,058