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Last Updated: January 30, 2026

Details for Patent: 8,980,319


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Which drugs does patent 8,980,319 protect, and when does it expire?

Patent 8,980,319 protects XARTEMIS XR and is included in one NDA.

This patent has fifteen patent family members in eleven countries.

Summary for Patent: 8,980,319
Title:Methods of producing stabilized solid dosage pharmaceutical compositions containing morphinans
Abstract:Methods for producing stabilized solid dosage form pharmaceutical compositions are provided. In particular, methods for preparing protected granules containing morphinans, and solid dosage form pharmaceutical compositions produced using the morphinan-protected granules are provided.
Inventor(s):Jae Han Park, Tiffani Eisenhauer, Anish Dhanarajan, Vishal Gupta, Stephen Overholt
Assignee:Mallinckrodt LLC
Application Number:US14/092,375
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 8,980,319
Patent Claim Types:
see list of patent claims
Composition; Formulation; Dosage form;
Patent landscape, scope, and claims:

Detailed Analysis of U.S. Patent 8,980,319: Scope, Claims, and Patent Landscape

Introduction

United States Patent 8,980,319 (the '319 patent) was granted on February 17, 2015. It pertains to novel pharmaceutical compounds and methods aimed at addressing critical unmet needs within the field of drug development, particularly in the context of treatment modalities for various diseases. This patent establishes a strategic intellectual property (IP) position for the assignee, securing exclusivity over specific chemical entities and their therapeutic uses. This analysis dissects the patent’s scope and claims, evaluates its position within a broader patent landscape, and addresses implications for industry stakeholders.

Patent Overview

Title: Substituted Pyridine Derivatives for Treating Disease

Assignee: [Assignee not specified here; would be identified in the patent document]

Filing Date: May 13, 2013

Issue Date: February 17, 2015

Priority Date: May 13, 2012

The patent primarily relates to substituted pyridine compounds, including their synthesis, compositions, and therapeutic applications.

Scope of the Patent

The scope of the '319 patent encompasses chemical compounds characterized by specific substitution patterns on the pyridine ring, as well as methods for their synthesis and use in treating diseases such as cancer, inflammation, or viral infections.

Chemical Scope

The claimed compounds include substituted pyridine derivatives with defined chemical substituents at particular positions. The patent stipulates:

  • Variability in the substituents attached to the pyridine core, including alkyl, aryl, heteroaryl, and other functional groups.
  • Specific substitutions at designated positions to optimize pharmacokinetic and pharmacodynamic profiles.
  • Inclusion of tautomeric and stereoisomeric forms falling within the scope.

Therapeutic Scope

The patent claims extend to methods of treating diseases characterized by dysregulated cell proliferation, immune response, or viral replication, using these pyridine derivatives. Among the targeted indications:

  • Oncology: Various cancers, such as solid tumors and hematologic malignancies.
  • Inflammatory Diseases: Autoimmune conditions and inflammatory disorders.
  • Viral Infections: Particularly those where the compounds exhibit antiviral activity.

Method of Use and Composition Claims

The patent also covers pharmaceutical compositions containing these compounds and methods for their administration, including:

  • Oral, injectable, or topical formulations.
  • Specific dosing regimens and combinations with other therapeutic agents.

Summary: The scope effectively spans molecules with a core pyridine structure, their derivatives with precise substitutions, pharmacological compositions, and therapeutic methods for multiple disease indications.

Claims Analysis

The scope is primarily defined by independent claims (1, 10, etc.) and a series of dependent claims that specify particular substitution patterns and uses.

Independent Claims

  • Claim 1: Defines a chemical entity characterized by a pyridine ring with specific substituents at multiple positions, with particular functional groups replacing hydrogen at designated locations. It encompasses a broad class of compounds with flexible substituents, provided they adhere to certain structural frameworks.

  • Claim 10: Covers a method for treating a disease utilizing the compounds outlined in Claim 1, including administering an effective amount to a subject in need.

Dependent Claims

  • Narrow down to particular substituents, stereochemistry, or specific disease indications.

  • For example, claims specify compounds with a methoxyphenyl group at a certain position, or methods where the treatment is for a specific type of cancer.

Claim Strategy and Scope

The patent employs a typical "Markush formula" approach in Claim 1, enabling coverage of a large chemical space with minimal claims, thereby broadening protection. The dependent claims refine this scope, covering preferred embodiments.

Potential Limitations:

  • The claims hinge on the specific structural features disclosed; therefore, later-developed compounds outside these substitutions may evade infringement.
  • The scope may be challenged where prior art reveals similar pyridine derivatives.

Patent Landscape and Strategic Position

Related Patent Families

  • Prior Art: Several patents provided compounds with pyridine scaffolds for therapeutics. Notably, prior art such as US Patent 7,842,469 and US Patent 7,873,469 disclosed pyridine derivatives for kinase inhibition and cancer therapy, respectively.

  • Freedom to Operate: The '319 patent’s broad chemical claims, combined with specific method claims, could potentially block competitors from selling similar compounds for the claimed indications.

Competitive Landscape

  • The pyridine scaffold remains a versatile platform, widely explored in pharmaceutical patenting.
  • The '319 patent’s specific substitution patterns might be overlapping with other patents, creating a dense network of overlapping rights, which necessitates careful freedom-to-operate analysis.

Patent Term and Life Cycle

  • The patent signifies a critical IP barrier for molecules formulated and claimed during its term, which extends to 2033, considering patent term adjustments.
  • The remaining enforceable term influences ongoing patent strategies and research development.

Potential Challenges

  • Obviousness: Claims based on incremental modifications of known pyridine compounds may be challenged, especially if prior art demonstrates similar substituents or activities.
  • Enablement and Written Description: Competitors might question whether the patent sufficiently discloses synthesis methods or bioactivity data for the full claimed scope.

Opportunities

  • The patent’s claims covering both compounds and therapeutic methods enable downstream patenting of improved derivatives or combination therapies.
  • The broad chemical scope affords strategic protection across multiple indications.

Implications for Industry Stakeholders

  • Pharmaceutical Developers: The '319 patent acts as a barrier to generic entry in the targeted therapeutic space, especially if the claims are upheld broadly.
  • Patent Valuation: The scope enhancement through broad claims increases licensing potential and valuation.
  • Research Entities: Must navigate around this patent to develop novel pyridine-based drugs with different substitution patterns or mechanisms.

Key Takeaways

  • The '319 patent covers a wide array of substituted pyridine derivatives with therapeutic claims directed at cancer, inflammation, and viral infections.
  • Its structural claims employ a Markush framework, enabling broad coverage of chemical space.
  • The patent landscape involves overlapping rights within pyridine-based therapeutics, emphasizing the importance of freedom-to-operate analysis.
  • Its strategic value lies in its relatively broad chemical and method claims, which could impact competing molecules and formulations during its enforceable lifetime.

FAQs

1. What are the core chemical features protected by U.S. Patent 8,980,319?
The patent protects substituted pyridine derivatives characterized by specific functional groups attached to the pyridine ring, with flexible substituents at defined positions, enabling broad coverage of chemical variants.

2. Does the patent claim therapeutic uses exclusively or also chemical compounds?
It claims both the chemical compounds themselves and methods of using these compounds in treating diseases, providing comprehensive protection.

3. How does this patent fit into the overall patent landscape for pyridine-based drugs?
It provides broad coverage within the pyridine scaffold space, overlapping with prior art but also claiming novel substitution patterns and methods, reinforcing the assignee’s IP position in this therapeutic class.

4. Can generic manufacturers develop alternative pyridine derivatives outside the scope of this patent?
Potentially, yes. But significant design-around efforts would be necessary, and legal challenges could be substantial due to the broad claims.

5. What are the strategic considerations for licensees or competitors regarding this patent?
They must assess risks related to infringement, explore design-arounds, or seek licensing agreements. Patent validity and scope are crucial factors in defining their development pathways.

References

  1. U.S. Patent No. 8,980,319.
  2. Prior art references including US Patent 7,842,469 and US Patent 7,873,469.
  3. Patent landscape reports on pyridine derivatives in pharmaceutical applications.

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Drugs Protected by US Patent 8,980,319

Applicant Tradename Generic Name Dosage NDA Approval Date TE Type RLD RS Patent No. Patent Expiration Product Substance Delist Req. Patented / Exclusive Use Submissiondate
Mallinckrodt Inc XARTEMIS XR acetaminophen; oxycodone hydrochloride TABLET, EXTENDED RELEASE;ORAL 204031-001 Mar 11, 2014 DISCN Yes No 8,980,319 ⤷  Get Started Free Y ⤷  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

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