Details for Patent: 9,265,740

Which drugs does patent 9,265,740 protect, and when does it expire?

Patent 9,265,740 protects NUZYRA and is included in two NDAs.

This patent has eleven patent family members in eleven countries.

Summary for Patent: 9,265,740

Title:	Minocycline compounds and methods of use thereof
Abstract:	Methods and compositions for using a tetracycline compound to treat bacterial infections are described. In one embodiment, for example, the invention provides a method of treating a subject for an infection, comprising administering to said subject an effective amount of 9-[(2,2-dimethyl-propyl amino)-methyl]-minocycline or a salt thereof, such that said subject is treated, wherein said infection is selected from the group consisting of MSSA, MRSA, B-streptococci, Viridans Streptococci, Enterococcus, or combinations thereof.
Inventor(s):	Sean M. Johnston, Robert D. Arbeit, Thomas J. Bigger, Dennis P. Molnar, S. Ken Tanaka
Assignee:	Paratek Pharmaceuticals Inc
Application Number:	US14/258,847
Patent Claim Types: see list of patent claims	Use; Composition; Delivery; Dosage form;

United States Patent 9,265,740: Scope, Claims, Expiration, and Omadacycline Patent Landscape

U.S. Patent No. 9,265,740 protects specific oral treatment regimens and oral and intravenous pharmaceutical compositions containing omadacycline, the aminomethylcycline antibiotic also known as 9-[(2,2-dimethyl-propylamino)methyl]minocycline. The core method claims are directed to complicated skin and skin structure infections, including MRSA and MSSA infections, with mild gastrointestinal adverse events and defined clinical-success outcomes. The composition claims are broader because they do not require use for a particular infection.

What drug and technology does U.S. Patent 9,265,740 cover?

The claimed active ingredient is omadacycline, formerly described as 9-[(2,2-dimethyl-propylamino)methyl]minocycline. The drug is marketed in the United States as Nuzyra by Paratek Pharmaceuticals.

Omadacycline is a tetracycline-class aminomethylcycline. Its chemical modification is intended to overcome common tetracycline-resistance mechanisms, including ribosomal protection and efflux. Nuzyra is approved in oral and intravenous formulations for adults with community-acquired bacterial pneumonia and acute bacterial skin and skin structure infections, commonly abbreviated ABSSSI [1].

The patent claims do not cover every use of omadacycline. They focus on:

• Treatment of complicated skin and skin structure infections.
• Oral administration.
• Daily doses of approximately 100 mg to 300 mg.
• A preferred 200 mg daily oral dose.
• Treatment periods of up to seven, eight, nine, 10, or 14 days.
• Mild gastrointestinal adverse events.
• Treatment without discontinuation caused by gastrointestinal adverse events.
• Defined clinical-success rates.
• Oral and intravenous compositions containing specified dosage amounts.

How many independent claims does U.S. Patent 9,265,740 have?

The listed claims contain three independent claims: claims 1, 10, and 12.

Independent claim	Claim category	Principal scope
Claim 1	Method of treatment	Oral treatment of a human subject with complicated skin and skin structure infection using omadacycline or a salt, with mild GI adverse events
Claim 10	Pharmaceutical composition	Oral composition containing approximately 100 mg to 300 mg of omadacycline or a salt
Claim 12	Pharmaceutical composition	Intravenous composition containing approximately 50 mg to 150 mg of omadacycline or a salt

Claims 2 through 9 and 15 through 23 depend directly or indirectly from claim 1. Claims 11 and 14 depend from claim 10. Claim 13 depends from claim 12.

The claims therefore divide into two commercial protection groups:

1. A method-of-use group covering specified treatment of skin infections.
2. A dosage-formulation group covering oral and intravenous products at defined strength ranges.

What does claim 1 protect?

Claim 1 requires all of the following elements:

1. A human subject.
2. A complicated skin and skin structure infection.
3. Oral administration.
4. An effective amount of omadacycline or a salt thereof.
5. Treatment of the subject.
6. Gastrointestinal adverse events associated with treatment that are mild.

The claim is narrower than a general claim to administering omadacycline for any bacterial infection. A potential infringing product or treatment would need to satisfy the infection, route, drug, efficacy, and GI-adverse-event limitations.

The phrase “such that said subject is treated” is a treatment-result limitation. The phrase “wherein gastrointestinal adverse events associated with treatment are mild” is also outcome-oriented. These limitations create potential proof issues in litigation because infringement analysis may require clinical or patient-level evidence rather than only review of a product label.

A generic label that directs oral omadacycline use for ABSSSI would present a stronger method-of-use risk than a product labeled only for an unrelated indication. The risk would depend on the approved label, prescribing information, dosage instructions, and the patent’s enforceability at the time of launch.

What infections and pathogens are covered by the dependent claims?

Claims 4, 5, 15 through 19 narrow the method claims to specified disease presentations and pathogens.

Claim group	Covered condition or organism
Claim 4	Injury, major abscess, or cellulitis
Claim 5	Traumatic injury
Claims 15 and 16	Staphylococcus aureus, including MRSA and MSSA
Claims 17 and 18	Beta-hemolytic streptococci and Streptococcus pyogenes
Claim 19	Infection characterized by erythema, edema, or induration

These dependent claims provide fallback positions if claim 1 is challenged. They also create narrower infringement theories for products or treatment protocols directed at cellulitis, abscesses, traumatic wounds, MRSA, MSSA, or S. pyogenes.

Claim 15 uses “Staphylococcus aureus, Streptococci, or a combination thereof.” Claims 16 through 18 identify specific bacterial subgroups. The claims do not appear limited to resistant organisms alone because they cover both MRSA and MSSA.

What dosage regimens are protected?

Claims 6, 7, 20, 21, and 23 cover dosage and duration limitations.

Claim	Limitation
Claim 6	Approximately 100 mg to approximately 300 mg orally per day
Claim 7	Approximately 200 mg orally per day
Claim 20	Once-daily administration
Claim 21	Treatment for up to 7, 8, 9, 10, or 14 days
Claim 23	Approximately 300 mg orally per day

Nuzyra’s approved ABSSSI regimen includes an initial loading regimen followed by maintenance dosing. The commercial label must be compared carefully with each claim because a loading dose, maintenance dose, and total treatment duration can affect literal infringement analysis [1].

The use of “about” broadens the numerical limitations beyond exact 100 mg, 200 mg, and 300 mg values. The effective scope depends on the patent specification, prosecution history, accepted measurement conventions, and the degree of deviation that a court would regard as equivalent.

What clinical-success limitations appear in the patent?

Claims 8 and 9 require specific treatment outcomes:

• Claim 8 requires a clinical success rate greater than approximately 93.2%.
• Claim 9 requires a microbiologically evaluable clinical success rate greater than approximately 93.7%.

These claims are unusual because the numerical performance requirements are not merely dosage or disease limitations. They require a defined clinical result. The relevant population, endpoint definition, evaluability criteria, timing, and statistical calculation would likely be central to any validity or infringement dispute.

A clinical-success limitation can narrow enforceable scope but may also complicate proof. A patent owner would need to establish that the accused regimen produces the claimed result under the relevant claim construction. A generic applicant could challenge the claims on written-description, enablement, indefiniteness, or obviousness grounds if the specification does not adequately support the claimed rates across the full scope.

What GI adverse-event limitation does claim 1 impose?

Claim 1 requires that GI adverse events associated with treatment are mild. Claim 22 narrows this further by requiring that GI adverse events do not result in discontinuation of therapy.

These limitations distinguish the claimed treatment from a regimen that causes severe or treatment-limiting gastrointestinal toxicity. The specification and clinical data would be important in determining how “mild” is defined. Relevant factors may include adverse-event grading, nausea and vomiting frequency, diarrhea rates, discontinuation rates, and the clinical-trial population.

The claims do not require that the subject experience a GI adverse event. They require that GI adverse events associated with treatment be mild. That language may be construed as describing the safety profile of the treatment rather than requiring a particular patient to suffer an adverse event.

What oral formulations are protected?

Claims 10, 11, and 14 cover oral pharmaceutical compositions.

Claim	Oral composition scope
Claim 10	Approximately 100 mg to approximately 300 mg of omadacycline or a salt with a pharmaceutically acceptable carrier
Claim 11	Approximately 200 mg of omadacycline
Claim 14	Approximately 150 mg of omadacycline

Claim 10 is not expressly limited to treatment of skin infections. It is a product claim to a composition containing the active ingredient in the recited quantity and a pharmaceutically acceptable carrier for oral administration.

This distinction matters. A marketed oral tablet or capsule may implicate claim 10 even when prescribed for a different approved indication, provided the product falls within the claim’s dosage range and other limitations.

The claim does not expressly require a tablet, capsule, particular excipient, release profile, coating, particle size, polymorph, or salt. Those features may be covered by separate formulation or chemical patents in the broader omadacycline estate.

What intravenous formulations are protected?

Claims 12 and 13 cover intravenous compositions.

Claim	Intravenous composition scope
Claim 12	Approximately 50 mg to approximately 150 mg of omadacycline or a salt with a pharmaceutically acceptable carrier
Claim 13	Approximately 100 mg of omadacycline

The intravenous claims are composition claims rather than method claims. They do not expressly require treatment of ABSSSI, pneumonia, or another infection. A competing intravenous product could face exposure based on the product’s composition even if its label uses different clinical language.

The claims also do not expressly identify a specific excipient system or infusion concentration. The prosecution history and specification may limit the interpretation of “pharmaceutically acceptable carrier” and the active-ingredient quantity.

What salts are expressly covered?

Claims 2 and 3 identify two salts:

• Hydrochloride salt.
• Tosylate salt.

Claim 1 broadly covers “a salt thereof,” while claims 2 and 3 provide explicit species. The hydrochloride and tosylate claims strengthen the patent’s position against products using those forms. The broad salt language may reach other pharmaceutically acceptable salts if supported by the specification and legally enabled.

The chemical identity of the marketed active ingredient and the exact salt or solid form used in a product should be confirmed through regulatory chemistry, manufacturing, and controls documentation. A salt-specific distinction can matter where a competitor uses a different counterion or solid-state form.

What is the likely patent term and expiration framework?

U.S. Patent No. 9,265,740 issued on February 23, 2016. Its enforceable term is not calculated as 20 years from the issue date. It is generally calculated from the applicable earliest nonprovisional filing date, subject to patent-term adjustment, terminal disclaimers, patent-term extension, and family-specific prosecution history [2].

The key timing points are:

Event	Date or status
Patent grant	February 23, 2016
Drug approval for Nuzyra	October 2, 2018
FDA approval holder	Paratek Pharmaceuticals
Patent type	Method of treatment and pharmaceutical composition
Small-molecule pathway	NDA, not a biosimilar pathway
Term calculation	Earliest effective nonprovisional filing date, adjusted by applicable statutory rules

FDA approval of Nuzyra does not itself establish the patent expiration date. Any Orange Book listing, patent-term extension, pediatric exclusivity, terminal disclaimer, or later continuation patent must be reviewed separately [3].

What is the Orange Book status of the patent?

The Orange Book is the controlling FDA source for patents submitted by an NDA holder as covering an approved drug, its use, or a method of use. A patent can be enforceable without being listed in the Orange Book, and an Orange Book listing does not establish validity or enforceability [3].

For Nuzyra, the relevant Orange Book analysis should separate:

• Drug-substance patents.
• Composition and formulation patents.
• Method-of-use patents.
• Patents covering oral products.
• Patents covering intravenous products.
• Pediatric exclusivity and regulatory exclusivity.
• Patent expiration dates reported for each listed patent.

U.S. Patent 9,265,740 should be assessed against the active Orange Book listing for the specific NDA and dosage forms. A listing directed to a method of use can support a Paragraph IV notice if an ANDA applicant seeks approval before the listed patent expires.

Which companies are challenging Nuzyra patents?

A Paragraph IV challenge is an ANDA applicant’s certification that an Orange Book-listed patent is invalid, unenforceable, or will not be infringed by the proposed generic product. The certification can trigger patent litigation under the Hatch-Waxman Act.

The principal commercial question is whether a generic applicant can:

1. Carve out the patented ABSSSI method.
2. Avoid the claimed oral dosage range.
3. Use a nonclaimed salt or formulation.
4. Challenge the patent’s clinical-outcome limitations.
5. Wait for patent expiration before launching.
6. Launch at risk after litigation or settlement.

Publicly available regulatory and patent records should be reviewed for the specific Nuzyra NDA and current ANDA litigation docket. No conclusion about a particular challenger, Paragraph IV notice, or settlement should be drawn solely from the claim text.

Does biosimilar risk apply to omadacycline?

No. Omadacycline is a small-molecule drug. Generic competition would proceed primarily through the ANDA pathway, not the biosimilar pathway under the Public Health Service Act.

The relevant competitive risks are therefore:

• Paragraph IV litigation.
• Section viii statements and label carve-outs.
• Abbreviated new drug applications.
• Salt or formulation design-arounds.
• At-risk generic launches.
• Post-expiration entry by multiple manufacturers.

Biosimilar interchangeability, reference-product exclusivity, and biologic patent dance procedures do not apply to Nuzyra.

How strong is the patent estate for omadacycline?

U.S. Patent 9,265,740 is strongest against a product that matches the following profile:

• Oral omadacycline.
• ABSSSI treatment.
• Approximately 100 mg to 300 mg daily.
• Once-daily use.
• A seven-to-14-day treatment course.
• Treatment involving MRSA, MSSA, streptococci, cellulitis, abscess, or traumatic injury.
• A clinical safety profile involving mild GI adverse events.

Its composition claims are potentially stronger for product-based enforcement because they do not require proof that a patient was treated successfully. Claims 10 and 12 may be more commercially significant than the outcome-dependent method claims if the accused generic product contains the claimed active amount and carrier.

The estate’s overall strength depends on related patents covering the active compound, solid forms, salts, formulations, manufacturing processes, and approved methods of use. A single patent should not be treated as the full exclusivity position.

What manufacturing and IP barriers affect generic entry?

A generic applicant must address more than the active ingredient’s chemical identity. Relevant barriers include:

• Manufacture of the aminomethylcycline active pharmaceutical ingredient.
• Control of impurities and degradation products.
• Salt selection and conversion.
• Solid-state form and crystallinity.
• Stability of oral and intravenous products.
• Sterility and injectable manufacturing controls.
• Bioequivalence for oral products.
• IV formulation compatibility.
• Labeling and method-of-use carve-outs.
• Orange Book patent certifications.

The composition claims in Patent 9,265,740 may create product risk even where a generic manufacturer avoids the patented ABSSSI indication. Separate process and formulation patents can create additional barriers.

What generic launch scenarios exist?

Scenario	Commercial effect
No Paragraph IV challenge	Generic entry generally waits for relevant patent and regulatory exclusivity expiration
Paragraph IV with settlement	Entry date depends on settlement terms and regulatory approval
Successful invalidity or noninfringement challenge	Earlier launch may occur after litigation resolution
Section viii carve-out	Generic may launch for nonpatented indications if labeling permits
At-risk launch	Generic enters before final judgment, exposing the applicant to damages and injunction risk
Design-around	Competitor changes salt, strength, formulation, or labeling to avoid asserted claims

For Patent 9,265,740, a section viii strategy may be difficult if the generic product’s proposed labeling still includes oral ABSSSI treatment within the claimed regimen. A composition claim cannot ordinarily be avoided solely by removing a method-of-use statement if the product itself falls within the composition claim.

Key Takeaways

• U.S. Patent 9,265,740 covers specific omadacycline methods and dosage-form compositions.
• Claim 1 targets oral treatment of complicated skin and skin structure infections with mild GI adverse events.
• Dependent claims cover cellulitis, abscesses, traumatic injury, MRSA, MSSA, streptococci, once-daily use, and seven-to-14-day treatment.
• Claims 10 and 12 cover oral and intravenous compositions independently of a specified infection.
• The patent includes dosage ranges of approximately 100 mg to 300 mg orally and 50 mg to 150 mg intravenously.
• Claims 8 and 9 impose clinical-success thresholds above 93.2% and 93.7%.
• Omadacycline is a small molecule, so generic rather than biosimilar competition is the relevant risk.
• Orange Book listing, patent-term adjustment, terminal disclaimers, and related family patents determine the practical exclusivity position.
• The broadest commercial exposure may arise from the composition claims, not only the ABSSSI method claims.
• Generic entry analysis requires review of the full Nuzyra patent family, current Orange Book listings, ANDA certifications, and any Hatch-Waxman settlements.

FAQs About U.S. Patent 9,265,740 and Omadacycline

Does Patent 9,265,740 cover all uses of Nuzyra?

No. Its method claims focus on complicated skin and skin structure infections, while its composition claims cover specified oral and intravenous dosage amounts.

Can a generic use a different omadacycline salt?

Possibly, but the answer depends on whether the alternative salt falls within “a salt thereof,” satisfies the composition claims, or is covered by another patent in the omadacycline family.

Do the clinical-success claims automatically cover every successful patient treatment?

No. Claims 8 and 9 recite population-level success-rate thresholds. Their scope depends on the applicable patient population, endpoint definitions, and claim construction.

Can a generic omit the ABSSSI indication and avoid every claim?

No. A label carve-out may address method-of-use claims, but it may not avoid composition claims that cover the generic product itself.

Is intravenous omadacycline outside the patent?

No. Claims 12 and 13 expressly cover intravenous compositions containing approximately 50 mg to 150 mg, including approximately 100 mg.

References

1. U.S. Food and Drug Administration. (2018). Nuzyra (omadacycline) prescribing information.
2. United States Patent and Trademark Office. (2016). U.S. Patent No. 9,265,740, methods of treating bacterial infections with aminomethylcycline compounds.
3. U.S. Food and Drug Administration. (n.d.). Approved drug products with therapeutic equivalence evaluations, Orange Book.

Drugs Protected by US Patent 9,265,740

Applicant	Tradename	Generic Name	Dosage	NDA	Approval Date	TE	Type	RLD	RS	Patent No.	Patent Expiration	Product	Substance	Delist Req.	Patented / Exclusive Use	Submissiondate
Paratek Pharms	NUZYRA	omadacycline tosylate	POWDER;INTRAVENOUS	209817-001	Oct 2, 2018		RX	Yes	Yes			Y
Paratek Pharms	NUZYRA	omadacycline tosylate	TABLET;ORAL	209816-001	Oct 2, 2018		RX	Yes	Yes			Y			TREATMENT OF BACTERIAL SKIN AND SKIN STRUCTURE INFECTIONS

International Family Members for US Patent 9,265,740

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
Australia	2009220171
Brazil	PI0908951
Canada	2717703
Chile	2010000188
China	102015602
European Patent Office	2262754
Japan	2011513404