United States Patent 9,522,919: Oxycodone Composition Claims, Patent Scope, Expiration, and Competitive Landscape

U.S. Patent No. 9,522,919 protects oxycodone hydrochloride compositions containing controlled levels of two specified impurities: 8α,14-dihydroxy-7,8-dihydrocodeinone and, in a narrower claim group, 14-hydroxycodeinone. The patent also reaches crystalline oxycodone hydrochloride, oral dosage forms, sustained-release matrices, melt-extruded multiparticulates, and osmotic formulations with a polyethylene oxide core.

The core commercial issue is whether an oxycodone manufacturer, generic applicant, or finished-dose developer makes or sells oxycodone HCl meeting the claimed impurity thresholds. The patent is primarily a composition and formulation patent. It does not claim a particular manufacturing process in the supplied claims.

What does U.S. Patent 9,522,919 cover?

The patent covers oxycodone hydrochloride containing no more than 0.04%, measured by HPLC, of 8α,14-dihydroxy-7,8-dihydrocodeinone relative to oxycodone HCl.

The claims divide into four principal categories:

Claim category	Claims	Principal limitation
Oxycodone HCl composition	1-3	Oxycodone HCl plus 8α,14-dihydroxy-7,8-dihydrocodeinone at 0.04% or less
Pharmaceutical formulation	4-11	Same impurity ratio in a pharmaceutically acceptable formulation
Higher-purity oxycodone composition	12-17	Same impurity ratio plus less than 100, 25, 15, or 10 ppm of 14-hydroxycodeinone
Higher-purity pharmaceutical formulation	18-28	The same 14-hydroxycodeinone limits applied to dosage forms and release technologies

The independent claims are claims 1, 4, 12, and 18. Claims 1 and 4 require the controlled ratio of the first impurity. Claims 12 and 18 add a second impurity threshold.

How does the 0.04% impurity limitation define infringement risk?

The 0.04% limitation equals 400 parts per million relative to oxycodone HCl, assuming the ratio is expressed on a comparable mass basis. A composition containing the named impurity at a concentration above that threshold would fall outside the literal scope of the claims that require "0.04% or less," subject to the patent’s specified HPLC method and claim-construction issues.

The claims are unusual because they require the presence of the impurity rather than its complete absence. A product can therefore satisfy the claims if it contains a measurable amount of 8α,14-dihydroxy-7,8-dihydrocodeinone at or below the stated limit.

The central analytical questions are:

How the HPLC ratio is calculated.
Whether the denominator is oxycodone HCl concentration, peak area, mass, or another validated quantity.
Whether the assay method used by the patent holder and an accused manufacturer is materially comparable.
Whether the impurity is present in the active pharmaceutical ingredient, the finished dosage form, or both.
Whether sampling, degradation, or formulation processing changes the measured ratio.

Because the claims expressly refer to HPLC measurement, analytical-method evidence would likely be important in any infringement dispute.

What do claims 1 through 11 protect?

Claims 1 through 11 establish the basic composition and formulation platform.

Claim 1 covers oxycodone HCl with the specified impurity at no more than 0.04%. Claim 2 narrows the product to crystalline oxycodone HCl. Claim 3 requires preparation of at least 1 kilogram, which targets commercial-scale production rather than laboratory quantities.

Claim 4 extends the same impurity limitation to a pharmaceutically acceptable formulation. Claims 5 and 6 add crystalline oxycodone HCl and an oral dosage form.

Claims 7 through 9 target sustained-release technology:

A sustained-release matrix.
Preparation by melt-extrusion or melt-granulation.
Melt-extruded multiparticulates.

Claims 10 and 11 address an osmotic or semipermeable-wall architecture. The formulation has a homogeneous core surrounded by a semipermeable wall, with polyethylene oxide in the core.

These claims can reach different stages of the product chain. Claims 1-3 are directed primarily to the active pharmaceutical ingredient or bulk composition. Claims 4-11 can reach finished dosage forms using that material.

What do claims 12 through 28 add?

Claims 12 through 28 impose a second purity requirement involving 14-hydroxycodeinone.

Claim group	14-hydroxycodeinone limit
Claims 12 and 18	Less than 100 ppm
Claims 13 and 19	Less than 25 ppm
Claims 14 and 20	Less than 15 ppm
Claims 15 and 21	Less than 10 ppm

The claims are nested. A product containing less than 10 ppm would generally satisfy the progressively broader thresholds of less than 15, 25, and 100 ppm, assuming all other limitations are met.

Claims 16 and 17 add crystallinity and a minimum 1-kilogram preparation. Claims 22 through 28 apply the same formulation limitations found in claims 5 through 11, including oral delivery, sustained-release matrices, melt processing, multiparticulates, semipermeable walls, and polyethylene oxide cores.

The narrower claims may have greater practical value where commercial oxycodone APIs routinely meet stringent impurity specifications. They also create multiple fallback positions if a broader claim is challenged or found invalid.

What is the patent’s likely expiration date?

U.S. Patent No. 9,522,919 was granted on December 20, 2016. Its enforceable term depends on the earliest effective nonprovisional priority date, patent-term adjustment, terminal disclaimers, and any patent-term extension. The patent record should be read together with the USPTO Patent Center file history and the patent’s front-page term information. [1]

The patent appears to belong to a family with an earliest priority date in the 2009 period. On that basis, the ordinary twenty-year term would generally place expiration in or around 2029, before any available patent-term adjustment. The exact enforceable expiration date should be taken from the current USPTO record and any FDA Orange Book listing rather than calculated solely from the grant date.

Event	Date or period
Earliest family priority	2009 period
U.S. patent grant	December 20, 2016
Ordinary twenty-year term	Approximately 2029, subject to adjustment
Regulatory exclusivity	Separate from patent term
Post-expiration generic entry	Dependent on other listed patents, litigation, and FDA approval

Patent expiration does not automatically authorize immediate generic marketing if other valid patents remain listed for the relevant oxycodone product.

What is the Orange Book status of U.S. Patent 9,522,919?

The Orange Book question is product-specific. FDA lists patents by reference to an approved drug product and its NDA, not merely by therapeutic ingredient. A patent may be relevant to oxycodone products without being listed against every oxycodone product.

For a listed patent, an ANDA applicant may need to provide one of four certifications:

Certification	Meaning
Paragraph I	No patent information is listed
Paragraph II	The patent has expired
Paragraph III	The applicant will wait until patent expiration
Paragraph IV	The patent is invalid, unenforceable, or will not be infringed

A Paragraph IV notice can trigger patent litigation under the Hatch-Waxman Act. If suit is filed within the statutory period, FDA approval may be stayed for up to 30 months, subject to statutory exceptions and court action. [2, 3]

The patent’s impurity and formulation claims are capable of supporting a Paragraph IV dispute because an ANDA applicant may argue that its oxycodone API or finished dosage form does not satisfy the impurity ratio, does not contain the claimed formulation architecture, or uses a different analytical method.

Which companies are most exposed to the patent?

The primary exposure is concentrated in companies that:

Manufacture oxycodone HCl API for U.S. sale.
Supply oxycodone HCl to finished-dose manufacturers.
Market extended-release oxycodone products.
Use melt-extruded multiparticulates.
Use osmotic tablets with polyethylene oxide cores.
Produce crystalline oxycodone HCl at commercial scale.

The patent is less likely to affect an ordinary immediate-release product if the product does not satisfy the impurity limitations or the formulation claims. It is more relevant to extended-release and abuse-deterrent products using specialized matrix or osmotic technologies.

Potentially relevant market participants include the sponsors of branded extended-release oxycodone products, generic oxycodone manufacturers, contract API suppliers, and companies developing abuse-deterrent opioid formulations. The patent itself does not establish that any particular company infringes.

How does Patent 9,522,919 compare with other oxycodone patents?

The patent occupies a different position from patents claiming abuse deterrence, tablet architecture, pharmacokinetic profiles, or manufacturing processes.

Patent focus	Typical protected subject matter	Relationship to Patent 9,522,919
API impurity control	Chemical composition and impurity thresholds	Core subject of 9,522,919
Sustained release	Release kinetics, matrices, coatings, multiparticulates	Overlaps only where the claimed impurity profile is present
Abuse deterrence	Physical or chemical resistance to crushing, extraction, or tampering	Separate technology unless combined with the claimed composition
Osmotic delivery	Semipermeable wall and osmotic core	Claims 10, 11, 27, and 28 reach a specific formulation structure
Manufacturing process	Purification, crystallization, reaction conditions, scale-up	Not expressly claimed in the supplied claims
Method of use	Treatment of pain or dosing regimens	No method-of-use claims appear in the supplied claims

The patent may operate as a composition-layer patent in a broader product portfolio. A company can avoid one formulation patent and still face a separate API, release-profile, abuse-deterrence, or method-of-use patent.

What manufacturing and analytical barriers does the patent create?

The patent creates a quality-control barrier rather than a conventional process monopoly. A competing manufacturer must manage two impurity specifications:

No more than 0.04% of 8α,14-dihydroxy-7,8-dihydrocodeinone relative to oxycodone HCl.
Less than 100 ppm, with narrower claim tiers at 25, 15, and 10 ppm, of 14-hydroxycodeinone.

The commercial challenge is not only achieving the specification. The manufacturer must also demonstrate reproducibility across batches, crystallization cycles, storage periods, and finished-dose processing.

Relevant technical evidence would include:

Validated HPLC methods.
Reference standards for both impurities.
Batch-release data.
Stability data.
Sampling plans.
API-to-tablet impurity comparisons.
Data showing whether melt processing changes impurity levels.
Evidence concerning crystalline form and particle properties.

The 1-kilogram limitation in claims 3 and 17 is significant because it narrows those claims to preparations at commercial or at least pilot scale. A small laboratory preparation may not satisfy the limitation, although larger-scale production would present a greater risk.

Are there method-of-use claims or biosimilar issues?

No method-of-use claims appear in the supplied claims. The patent is directed to compositions and formulations.

Biosimilar risk is not relevant because oxycodone hydrochloride is a small-molecule drug, not a biologic. The relevant FDA pathway is an ANDA for a generic drug, not a biosimilar application under the Public Health Service Act. Generic applicants may also use a 505(b)(2) application for certain oxycodone products, but the patent-certification consequences depend on the application type and listed patents. [2]

What generic launch scenarios exist?

Launch after patent expiration

A generic applicant may launch after expiration if FDA approval is otherwise complete and no other enforceable patent blocks commercial entry.

Paragraph III certification

The applicant accepts the patent’s validity and waits for the listed expiration date.

Paragraph IV certification

The applicant alleges that the patent is invalid, unenforceable, or not infringed. The main noninfringement theories would likely focus on:

An impurity ratio above the claimed threshold.
Absence of the specified impurity.
A different HPLC methodology.
Lack of crystalline oxycodone HCl.
No sustained-release matrix.
No melt-extruded multiparticulates.
No semipermeable wall.
No polyethylene oxide core.
Less than 1 kilogram prepared for claims containing that limitation.

The main validity theories could include anticipation, obviousness, indefiniteness, written-description issues, enablement, or lack of reproducibility of the HPLC limitation. The strength of those defenses depends on the full specification, prosecution history, cited prior art, and laboratory evidence.

Design-around launch

A manufacturer may seek to formulate or source oxycodone outside the claimed impurity ranges or use a dosage-form architecture outside claims 7-11 and 24-28. A design-around must address both the literal claim language and potential doctrine-of-equivalents arguments.

What litigation and settlement issues matter?

A patent litigation review should examine:

ANDA Paragraph IV notices.
District-court complaints.
Claim-construction rulings.
Preliminary-injunction decisions.
Invalidity and noninfringement judgments.
Federal Circuit appeals.
Consent judgments.
License agreements.
Launch dates under settlement agreements.
Covenants not to sue.
Authorized-generic arrangements.

A settlement may permit an agreed generic launch before the nominal patent expiration date. Such an agreement can materially change the commercial value of the patent even when the patent remains listed. FDA’s Orange Book and court dockets should be reviewed together because Orange Book listing alone does not establish infringement or litigation outcome. [2, 4]

How strong is the patent estate?

The patent has moderate structural breadth but narrow technical boundaries.

Its strengths are:

Independent composition claims.
Multiple impurity thresholds.
Coverage of API and finished formulations.
Crystalline-material claims.
Commercial-scale preparation claims.
Coverage of sustained-release and osmotic delivery structures.
A measurable analytical limitation that can be tested batch by batch.

Its limitations are:

The claims depend heavily on precise impurity measurement.
The 0.04% threshold may permit design-around through impurity control.
Several formulation claims require specific architecture.
No manufacturing-process claims appear in the supplied claims.
No method-of-use claims appear.
The 1-kilogram limitation narrows claims 3 and 17.
The patent does not cover all oxycodone products merely because they contain oxycodone HCl.

The estate is strongest against a product that uses the same oxycodone HCl source, meets the specified impurity profile, and is incorporated into the claimed sustained-release or osmotic architecture.

Key Takeaways

U.S. Patent 9,522,919 targets impurity-controlled oxycodone HCl compositions and formulations.
The principal threshold is 0.04% or less of 8α,14-dihydroxy-7,8-dihydrocodeinone by HPLC.
Claims 12-28 add 14-hydroxycodeinone limits ranging from less than 100 ppm to less than 10 ppm.
The patent reaches crystalline oxycodone HCl, oral dosage forms, sustained-release matrices, melt-extruded multiparticulates, and polyethylene oxide osmotic cores.
The patent is not a general monopoly over oxycodone or every oxycodone formulation.
Generic risk depends on API impurity data, HPLC methodology, formulation architecture, Orange Book listing, and any Paragraph IV litigation.
The ordinary patent term appears to extend into approximately 2029, subject to the official USPTO term record, patent-term adjustment, and related legal events.
Biosimilar analysis is not applicable; the relevant regulatory pathway is generic-drug approval.

Frequently Asked Questions

Does Patent 9,522,919 cover all oxycodone hydrochloride?

No. It covers oxycodone HCl compositions meeting the specified impurity limitations and, for dependent claims, additional structural or manufacturing limitations.

What impurity is limited to 0.04%?

The limitation applies to 8α,14-dihydroxy-7,8-dihydrocodeinone relative to oxycodone HCl, measured by HPLC.

What is the strictest 14-hydroxycodeinone limitation?

The strictest limitation in the supplied claims is less than 10 ppm, appearing in claims 15 and 21.

Does the patent cover immediate-release oxycodone tablets?

Potentially, but only if the composition meets the impurity limitations and the relevant claim elements. The supplied claims expressly identify oral dosage forms and certain sustained-release or osmotic structures, which narrows several formulation claims.

Can a generic manufacturer avoid the patent by using a different HPLC method?

Not automatically. A different method may support a noninfringement position only if it demonstrates that the accused product does not satisfy the claim limitation under the proper claim construction. The patent’s analytical language would likely be central to the dispute.

References

United States Patent and Trademark Office. (2016). U.S. Patent No. 9,522,919, Oxycodone compositions.
U.S. Food and Drug Administration. (2024). Approved drug products with therapeutic equivalence evaluations, Orange Book.
Federal Food, Drug, and Cosmetic Act, 21 U.S.C. § 355(j).
U.S. Courts. (2024). Patent litigation and docket records involving abbreviated new drug applications.

Country	Patent Number	Estimated Expiration	Supplementary Protection Certificate	SPC Country	SPC Expiration
African Regional IP Organization (ARIPO)	2232	⤷ Start Trial
Argentina	049012	⤷ Start Trial
Argentina	118531	⤷ Start Trial
>Country	>Patent Number	>Estimated Expiration	>Supplementary Protection Certificate	>SPC Country	>SPC Expiration

Details for Patent: 9,522,919

Summary for Patent: 9,522,919