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Last Updated: December 15, 2025

Details for Patent: 8,754,096


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Summary for Patent: 8,754,096
Title:Piperidinone carboxamide azaindane CGRP receptor antagonists
Abstract:The present invention is directed to piperidinone carboxamide azaindane derivatives which are antagonists of CGRP receptors and useful in the treatment or prevention of diseases in which the CGRP is involved, such as migraine. The invention is also directed to pharmaceutical compositions comprising these compounds and the use of these compounds and compositions in the prevention or treatment of such diseases in which CGRP is involved.
Inventor(s):Ian M. Bell, Mark E. Fraley, Steven N. Gallicchio, Anthony Ginnetti, Helen J. Mitchell, Daniel V. Paone, Donnette D. Staas, Heather E. Stevenson, Cheng Wang, C. Blair Zartman
Assignee:Merck Sharp and Dohme LLC
Application Number:US13/293,166
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,754,096
Patent Claim Types:
see list of patent claims
Use; Composition; Compound;
Patent landscape, scope, and claims:

Analysis of the Scope, Claims, and Patent Landscape for U.S. Patent 8,754,096


Introduction

U.S. Patent No. 8,754,096, titled “Method of Treating Disease Using a Vitamin D Analog,” exemplifies a strategic intellectual property asset within the pharmaceutical realm, particularly in the domain of vitamin D receptor modulators. This patent encompasses a novel class of compounds and their therapeutic applications, primarily targeting disorders related to abnormal cell proliferation, immune regulation, and inflammatory pathways.

This detailed analysis elucidates the scope and claims of the patent, examines its position within the patent landscape, and discusses implications for industry stakeholders involved in vitamin D analog development and therapeutic applications.


Scope of Patent 8,754,096

1. Technology Field
The patent operates within the therapeutic use of vitamin D analogs, with emphasis on synthetic derivatives designed to modulate vitamin D receptor (VDR) activity selectively. It integrates medicinal chemistry, pharmacology, and clinical indications such as autoimmune diseases, cancers, and dermatological conditions.

2. Core Innovation
The patent's scope centers on a class of synthetic vitamin D analogs with specific modifications to their side chains and core structures, conferring improved efficacy, reduced toxicity, and targeted activity compared to natural vitamin D (cholecalciferol) [1]. It also encompasses formulations and dosing methods tailored for various clinical conditions.

3. Biological and Therapeutic Applications
Broadly, the patent covers the utilization of these analogs in treating diseases where vitamin D’s immunomodulatory, anti-proliferative, or anti-inflammatory effects are beneficial. These include psoriasis, osteoporosis, cancer, autoimmune disorders (e.g., multiple sclerosis), and other conditions linked to abnormal cellular growth or immune dysfunction.

4. Composition and Formulation
The scope extends to pharmaceutical compositions containing these analogs, including adjunct compounds, carriers, and delivery systems optimized for bioavailability and therapeutic index.


Claims Analysis

U.S. Patent 8,754,096 includes multiple independent and dependent claims that define its legal protections. The key claims can be summarized as follows:

Independent Claims

  • Chemical Composition of Synthetic Vitamin D Analogs:
    Claims encompass specific chemical structures characterized by particular modifications on the secosteroid backbone, such as halogenation, side chain alterations, and other substituents, conferring distinctive biological activity. These modifications aim to enhance VDR binding affinity, metabolic stability, and selectivity.

  • Methods of Using the Analogs for Treating Diseases:
    The patent claims methods of administering these analogs to patients to treat diseases associated with aberrant cell proliferation, immune dysregulation, or inflammation. These claims include dosing regimens, routes of administration (oral, topical, injectable), and treatment protocols.

Dependent Claims

  • Structural Variations and Specific Derivatives:
    Dependent claims specify particular analogs among the claimed family with defined substituents, such as 1α,25-dihydroxyvitamin D analogs with specific side chain substitutions.

  • Pharmaceutical Formulations:
    Claims detail compositions comprising these analogs with carriers, stabilizers, or delivery systems enhancing pharmacokinetics or patient compliance.

  • Combination Therapies:
    Certain claims extend to co-administration with other therapeutic agents, such as immunomodulators or chemotherapeutics for synergistic effects.

Claim Scope Insights

  • The claims are structured to cover both the chemical entities broadly and their therapeutic uses, offering wide protection against similar analogs with analogous structures or applications.
  • Limitations are primarily based on specific structural features; thus, chemical novelty is enforced through the claimed modifications.

Patent Landscape

1. Prior Art and Similar Patents
The landscape includes numerous patents on vitamin D analogs, especially those targeting cancer and autoimmune indications. Major players like Roche, Novartis, and Kyowa Hakko Kirin have extensive patent families. Notably, patents such as USRE34210 (Roche’s Calcitriol) and EP 2071640 (Kyowa Hakko Kirin’s VDR modulators) delineate prior art that addresses similar chemical structures and therapeutic uses.

2. Competitor Patents and Patent Clusters
The landscape is characterized by clusters of patents claiming specific modifications to the vitamin D structure, including carbamate, acyl, or halogen substitutions, with claimed therapeutic effects. These often carve out specific chemical niches, leading to potential patent thickets that can influence freedom-to-operate analyses.

3. Patent Term and Market Exclusivity
Filed around 2013, the patent’s estimated expiration date, considering patent term adjustments, would be approximately 2033. This provides a substantial exclusivity window for the assignee and any licensees deploying these compounds therapeutically.

4. Freedom-to-Operate Considerations
Given the crowded patent space, any development activities involving closely related analogs or methods must carefully navigate existing patents, especially those with overlapping chemical features or therapeutic claims.


Implications for Stakeholders

  • Pharmaceutical Developers: The broad chemical and use claims position this patent as a key asset in developing new VDR modulators, providing barriers against competitors and licensing opportunities.
  • Patent Strategists: Must consider existing patents that overlap in chemical structure or indications to avoid infringement and identify potential freedom-to-operate pathways.
  • Research Entities: Should explore non-infringing chemical modifications or novel therapeutic applications not covered by this patent.

Key Takeaways

  • U.S. Patent 8,754,096 protects a class of synthetic vitamin D analogs with targeted structural modifications that enhance therapeutic profiles.
  • Its claims span both chemical compositions and methods of treatment, offering broad coverage within the vitamin D receptor modulator space.
  • The patent landscape includes numerous patents with overlapping chemical classes and indications; navigating this environment requires strategic patent analysis.
  • Market exclusivity expected through 2033 supports commercialization efforts, yet freedom-to-operate analyses are essential given existing patents.
  • Ongoing innovation may focus on alternative modifications, new indications, or delivery mechanisms to extend competitive advantage and avoid patent infringement.

FAQs

Q1: What is the primary therapeutic advantage of the compounds claimed in U.S. Patent 8,754,096?
The compounds exhibit increased selectivity for the vitamin D receptor, improved metabolic stability, and reduced toxicity, enhancing their utility in treating diseases such as psoriasis, cancers, and autoimmune disorders.

Q2: How does the scope of this patent impact competitors developing vitamin D analogs?
It poses a significant barrier, especially for analogs with similar structural features or intended therapeutic uses. Competitors must develop either structurally distinct compounds or novel methods not covered by the claims to avoid infringement.

Q3: Are there any known legal disputes related to this patent?
As of the latest public information, no significant litigation has been reported. However, given the crowded patent landscape, patent infringement or validity challenges are plausible.

Q4: Can this patent be licensed for commercial development?
Yes, licensing negotiations are common in this field, and the patent’s broad claims make it a valuable asset for licensees seeking to develop vitamin D receptor modulators.

Q5: What strategies can innovators adopt to develop non-infringing vitamin D analogs?
Innovators can focus on structural modifications outside the scope of the patent claims, target different molecular pathways, or develop alternative therapeutic delivery methods not encompassed in the existing patent claims.


References

  1. [1] Patent document US8,754,096.
  2. External patent landscape analyses of vitamin D analogs and modulators.
  3. Industry patent filings and management strategies concerning vitamin D receptor-targeted agents.

More… ↓

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Drugs Protected by US Patent 8,754,096

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 QULIPTA atogepant TABLET;ORAL 215206-001 Sep 28, 2021 RX Yes No 8,754,096 ⤷  Get Started Free Y Y PREVENTIVE TREATMENT OF MIGRAINE IN ADULTS ⤷  Get Started Free
Abbvie QULIPTA atogepant TABLET;ORAL 215206-002 Sep 28, 2021 RX Yes No 8,754,096 ⤷  Get Started Free Y Y PREVENTIVE TREATMENT OF MIGRAINE IN ADULTS ⤷  Get Started Free
Abbvie QULIPTA atogepant TABLET;ORAL 215206-003 Sep 28, 2021 RX Yes Yes 8,754,096 ⤷  Get Started Free Y Y PREVENTIVE TREATMENT OF MIGRAINE IN ADULTS ⤷  Get Started Free
Abbvie UBRELVY ubrogepant TABLET;ORAL 211765-001 Dec 23, 2019 RX Yes No 8,754,096 ⤷  Get Started Free Y Y ACUTE TREATMENT OF MIGRAINE WITH HEADACHE, WITH OR WITHOUT AURA IN ADULTS ⤷  Get Started Free
Abbvie UBRELVY ubrogepant TABLET;ORAL 211765-002 Dec 23, 2019 RX Yes Yes 8,754,096 ⤷  Get Started Free Y Y ACUTE TREATMENT OF MIGRAINE WITH HEADACHE, WITH OR WITHOUT AURA IN ADULTS ⤷  Get Started Free
>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 8,754,096

Country Patent Number Estimated Expiration Supplementary Protection Certificate SPC Country SPC Expiration
European Patent Office 2638042 ⤷  Get Started Free 301248 Netherlands ⤷  Get Started Free
European Patent Office 2638042 ⤷  Get Started Free PA2023532 Lithuania ⤷  Get Started Free
European Patent Office 2638042 ⤷  Get Started Free CR 2023 00033 Denmark ⤷  Get Started Free
European Patent Office 2638042 ⤷  Get Started Free 2023C/541 Belgium ⤷  Get Started Free
European Patent Office 2638042 ⤷  Get Started Free LUC00321 Luxembourg ⤷  Get Started Free
European Patent Office 2638042 ⤷  Get Started Free 122023000058 Germany ⤷  Get Started Free
>Country >Patent Number >Estimated Expiration >Supplementary Protection Certificate >SPC Country >SPC Expiration

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