Share This Page
Details for Patent: 9,855,335
✉ Email this page to a colleague
Which drugs does patent 9,855,335 protect, and when does it expire?
Patent 9,855,335 protects TIGECYCLINE and is included in one NDA.
This patent has eight patent family members in eight countries.
Summary for Patent: 9,855,335
| Title: | Tigecycline composition for injection | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Abstract: | Disclosed is a tigecycline composition for injection, comprising the active component, tigecycline, and a propping agent. Also included is a stabilization agent. Also disclosed is a stable, pharmaceutically acceptable reconstitution liquid having freeze-dried tigecycline. The tigecycline composition for injection of the present invention has good redissolution, and can dissolve without intense shaking, thereby avoiding foams caused by intense shaking. Upon testing, the tigecycline composition and the tigecycline composition-diluted reconstitution liquid prepared in the present invention prove to have substantially lowered oxidation degradation and epimer generation and increased stability of the tigecycline preparation. Compared to the compositions currently in clinical use, the composition of the present invention can increase the treatment effect of tigecycline, avoid safety risks caused by lactose, is easy to produce and store, and has a clinical usage stability, satisfying the requirements for clinical medicine. | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Inventor(s): | Jihong Quin | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Assignee: | Galenicum Health SL | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Application Number: | US14/413,854 | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
|
Patent Claim Types: see list of patent claims | Use; Composition; Formulation; | ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
| Patent landscape, scope, and claims: | US Patent 9,855,335: Tigecycline Injectable Formulation Claims, Scope, Expiration and Patent LandscapeUS Patent No. 9,855,335 protects a freeze-dried tigecycline injectable formulation using L-arginine or an L-arginine salt as the primary bulking or “propping” agent. The broadest independent claim covers a lyophilized composition containing tigecycline, a qualifying arginine-based propping agent, a pH-adjusting component producing a pre-lyophilization pH of 4.0 to 6.0, and an optional stabilizer. The commercial center of gravity is a 50-mg vial reconstituted with saline, dextrose, or lactated Ringer's solution. The patent is formulation-specific. It does not broadly cover tigecycline as an active ingredient, all tigecycline injections, the tigecycline molecule, or every lyophilized tigecycline product. Infringement generally requires the accused product to satisfy the formulation, excipient, ratio, pH, and dosage-form limitations of at least one asserted claim. What does US Patent 9,855,335 protect?The patent protects four related product categories:
The broadest claim requires all of the following:
The claim uses a weight-ratio framework rather than an absolute excipient concentration. A 50-mg vial therefore falls within claim 1 if the arginine-based agent is present at 15 mg to 200 mg per 50 mg of tigecycline, subject to the other limitations. How do the independent claims differ?Claim 1: Core lyophilized formulationClaim 1 is the principal composition claim. It requires a freeze-dried tigecycline product with arginine-based bulking material and a pre-lyophilization pH from 4.0 to 6.0. The claim does not require:
The claim does require that the listed formulation components be present as freeze-dried solids. A liquid tigecycline formulation would not satisfy the dosage-form limitation. Claim 6: Reconstituted pharmaceutical compositionClaim 6 covers the product obtained when the freeze-dried composition of claim 1 is reconstituted with a pharmaceutically acceptable diluent. Because claim 6 depends on claim 1, the underlying powder must still contain the claim 1 formulation. Claim 8: Reconstituted solutionClaim 8 is directed to a stable, pharmaceutically acceptable reconstituted tigecycline solution prepared from the claimed powder. It does not create an independent pathway around claim 1. The solution must originate from a freeze-dried composition meeting claim 1. Claims 10 to 14: Specific working-ratio embodimentsClaims 10 to 14 identify five narrower ratio embodiments:
These claims are narrower than claim 1 because they fix the pH at 4.5 and specify the propping agent and ratio. What formulations are protected by US 9,855,335?The patent covers formulations containing L-arginine or L-arginine hydrochloride within the claimed ratio ranges. It also reaches certain other salts formed by L-arginine with an acid or alkali, subject to claim construction and enablement limits. L-arginine formulationsL-arginine is expressly covered. Claim 2 narrows claim 1 to L-arginine or L-arginine hydrochloride. Claim 10 identifies a 0.5:1 L-arginine-to-tigecycline ratio, while claim 19 covers L-arginine at a broader 1.2-to-2.4 ratio. L-arginine hydrochloride formulationsL-arginine hydrochloride is expressly covered in claims 2 and 11 to 14. The listed examples include ratios of 0.3, 0.61, 1.2, and 2.4 parts per part tigecycline. Other arginine saltsClaims 1 and 21 extend to a salt formed by L-arginine with an acid or alkali. The scope may raise claim-construction questions because the phrase is broader than the specifically named hydrochloride salt. A product using a chemically distinct arginine salt would require analysis of:
Sodium chloride as stabilizerClaim 3 identifies sodium chloride as the stabilizing agent. Sodium chloride is not required by claim 1. A product without sodium chloride can still fall within claim 1 if it satisfies the remaining elements. The stabilizer ratio is stated as 0 to 2 relative to tigecycline. The “0” value means the broad claim permits no stabilizer. Claims 1 and 3 therefore distinguish between an optional stabilizer in the broad formulation and sodium chloride in the narrower embodiment. pH adjustersClaim 4 identifies hydrochloric acid, sodium hydroxide, or a mixture of the two as the pH adjuster. The independent claim does not limit the pH adjuster to these chemicals, but the formulation must produce a pH of 4.0 to 6.0 before freeze drying. The pH limitation is measured before lyophilization, not necessarily after reconstitution. This creates a potential evidentiary issue in product testing because the relevant pH may not be recoverable directly from the finished vial without manufacturing records or validated analytical reconstruction. How do the ratio limitations affect infringement?The ratio limitations are central to the patent's enforceability and design-around analysis. Broad ratio rangeClaim 1 covers a propping-agent-to-tigecycline ratio from 0.3 to 4.0. For a 50-mg tigecycline vial, that corresponds to:
Claims 15 and 17 create narrower ratio bands:
Claims 16 and 18 add the 50-mg dose limitation. Claims 19 and 20 separately specify L-arginine and L-arginine hydrochloride for the 1.2-to-2.4 range. Boundary issuesA formulation at exactly 0.3, 0.61, 1.2, 2.4, or 4.0 would ordinarily fall within the stated numerical range unless the patent's prosecution history or claim-construction rules establish a different interpretation. A formulation just below or above a boundary may present a literal infringement design-around, but doctrine-of-equivalents exposure would depend on the technical effect of the changed ratio and any prosecution disclaimer. The ratio must be calculated consistently. Key issues include:
What dosage forms and diluents are covered?The patent is directed to parenteral, freeze-dried tigecycline compositions. Claim 5 and claims 16 and 18 identify 50 mg as a protected dose, but the broad composition claim is not limited to 50 mg. Claim 7 identifies the following diluents:
These diluents are recited in dependent claims 7 and 9. The broader reconstitution claims use the phrase “pharmaceutically acceptable diluent,” so other diluents may fall within claims 6 and 8 if the underlying lyophilized formulation satisfies claim 1. The original Tygacil product is supplied as a lyophilized powder for intravenous infusion and is reconstituted before administration. The FDA-approved label identifies a 50-mg vial and specifies reconstitution and dilution instructions for intravenous use.[2] What is the patent's likely legal scope?Literal infringementA competing product has the highest literal-infringement exposure if its product and manufacturing records show:
A product can infringe claim 1 even if it does not use sodium chloride, because sodium chloride is optional in that claim. Product-by-process and manufacturing evidenceThe claims are primarily composition claims, but some limitations refer to the state before freeze drying. That creates a mixed infringement analysis. The accused manufacturer may need to produce batch records showing:
Finished-product testing alone may not establish the pre-lyophilization pH or the exact ratio if the product has undergone processing changes. Doctrine of equivalentsThe most plausible equivalence disputes would concern:
The doctrine of equivalents is less useful for replacing arginine with an unrelated excipient because the patent expressly identifies the arginine-based propping-agent concept as a central technical feature. Prosecution history may also limit arguments for equivalents around the numerical ranges. When does US Patent 9,855,335 lose exclusivity?The patent issued on January 2, 2018.[1] The standard US patent term is generally 20 years from the earliest effective nonprovisional or international filing date, subject to patent-term adjustment, patent-term extension, terminal disclaimers, and other statutory adjustments.[3] The issue date alone does not establish the precise expiration date. The controlling term must be taken from the patent's continuity data and USPTO patent-term records. A formulation patent of this type would ordinarily expire substantially later than the original tigecycline compound patent if its effective filing date was later.
The patent should not be treated as an automatic bar to every generic tigecycline launch. Its practical value depends on whether it is listed for the reference product, whether the proposed generic uses the claimed excipients and ratios, and whether the applicant files a Paragraph IV certification. What is the Orange Book status of US 9,855,335?The Orange Book is the FDA's authoritative source for patents submitted by an NDA holder and accepted for listing against an approved drug product.[4] A patent number does not establish Orange Book listing by itself. The relevant regulatory distinction is:
Tygacil is an NDA product for intravenous tigecycline. Its approved labeling identifies tigecycline for injection as a lyophilized product in 50-mg vials.[2] The Orange Book must be checked by NDA number and product record, not solely by the patent number, because patent listing, delisting, expiration, and pediatric exclusivity can change over time. How does US 9,855,335 compare with the original tigecycline patent estate?The patent estates address different technical layers.
A generic company can potentially avoid US 9,855,335 by using:
Those alternatives may be commercially difficult because tigecycline is degradation-sensitive and the arginine-based formulation may be used to improve cake structure, reconstitution, stability, or impurity control. A technically viable design-around must satisfy FDA quality requirements, not merely avoid a patent claim. Which companies are challenging the tigecycline formulation estate?ANDA competition for tigecycline has historically involved generic injectable manufacturers. Potential challengers include companies with approved or developing tigecycline injection products, contract manufacturers, and vertically integrated generic suppliers. The decisive legal question is whether a specific applicant has:
A company can challenge the patent without publicly disclosing all formulation details. ANDA litigation records, FDA approval letters, district-court complaints, and settlement filings are therefore more probative than product marketing materials. What Paragraph IV risks exist for a tigecycline generic?A Paragraph IV challenge could attack the patent on several grounds. NoninfringementThe applicant may certify that its formulation does not contain:
This is the most direct route where the generic formulation uses a different excipient system. AnticipationAn anticipation defense would require a single prior-art reference disclosing every limitation of an asserted claim, including the combination of:
Prior art showing tigecycline lyophilization alone would not anticipate claim 1 if it lacks the arginine limitation or the claimed pH and ratio. ObviousnessObviousness is the principal validity risk. A challenger could combine references concerning:
The patent holder would likely rely on unexpected stability, reduced degradation, improved cake structure, or improved reconstitution performance. Comparative data are important. The stronger the improvement over alternative excipients and ratios, the stronger the asserted nonobviousness position. Written description and enablementClaims 1 and 21 cover a broad class of L-arginine salts, while the listed examples focus on L-arginine and L-arginine hydrochloride. A challenger may argue that the specification does not adequately support or enable every acid or alkali salt within the broader language. The broad 0.3-to-4.0 ratio and pH 4.0-to-6.0 range may also be tested against the number of working examples and the amount of experimentation needed to achieve stable products throughout the full range. Indefiniteness“Propping agent” is an unusual term compared with standard pharmaceutical terms such as bulking agent or cake-forming agent. Its meaning would likely be derived from the specification and technical context. The ratio language may create additional disputes if the patent does not specify the measurement basis for tigecycline and arginine salts. What litigation affects US 9,855,335?The patent's litigation significance depends on whether it has been asserted against an ANDA applicant or commercial manufacturer. Relevant proceedings would include:
A litigation search should use the exact patent number, the patent title, the patent owner, the NDA holder, and the active ingredient “tigecycline.” A search limited to the brand name may miss proceedings filed by generic applicants or assignees using corporate names. No litigation conclusion should be drawn solely from the patent's existence. An unasserted patent can have substantial residual FTO relevance, while an asserted patent may have limited commercial value after a noninfringement ruling, claim cancellation, settlement, or expiry. Are there settlement agreements involving this patent?Settlement agreements are commercially important because they can establish a licensed entry date without producing a publicly litigated merits decision. Relevant terms may include:
Settlement analysis must distinguish agreements involving US 9,855,335 from agreements involving separate tigecycline patents. A settlement concerning the compound patent does not necessarily resolve the formulation claims in this patent. How strong is the patent estate for US 9,855,335?The patent has meaningful but concentrated value.
The strongest claims for enforcement are likely claims 10 to 14 if the accused product matches one of the specified 4.5 pH and ratio embodiments. Those claims are narrower but easier to map to a product with matching batch records. Claim 1 has broader coverage but faces more substantial validity and claim-construction challenges. What generic launch scenarios exist?Scenario 1: Non-arginine design-aroundA generic uses another bulking agent and avoids the express arginine limitation. This may reduce literal infringement exposure but could require new stability and lyophilization development. Scenario 2: Ratio design-aroundA generic uses L-arginine or L-arginine hydrochloride outside the 0.3-to-4.0 range. This approach is vulnerable if the change is small and the patent holder asserts equivalents. Scenario 3: pH design-aroundA generic targets a pre-lyophilization pH below 4.0 or above 6.0. The regulatory risk may be greater because pH affects tigecycline degradation, reconstitution, infusion tolerability, and product quality. Scenario 4: Paragraph IV litigationThe applicant certifies that the patent is invalid, unenforceable, or not infringed. A timely suit can trigger the statutory 30-month stay, subject to court action and regulatory exclusivity rules.[5] Scenario 5: Post-expiry launchThe applicant waits until patent expiry or an agreed settlement date. This reduces litigation exposure but may sacrifice early market entry and first-filer advantages. What geographic coverage does the patent provide?US 9,855,335 provides protection in the United States only. Corresponding foreign rights would depend on the patent family, national-stage filings, continuations, and local prosecution outcomes. A global FTO review should separate:
A granted US patent does not establish enforceable rights in those jurisdictions. Foreign family members may have different claims, expiry dates, ownership, prosecution amendments, and legal status. What manufacturing and IP barriers remain after patent expiry?Patent expiry does not eliminate all market barriers. A generic tigecycline injection must still address:
Tigecycline's formulation-sensitive nature can make CMC development a stronger practical barrier than the patent alone. A design-around that avoids arginine but produces inferior stability may be legally viable and commercially unusable. Key Takeaways
FAQsIs US 9,855,335 a patent on Tygacil itself?No. It covers specified freeze-dried tigecycline formulations. It does not broadly claim the tigecycline molecule. Does a tigecycline vial without L-arginine infringe this patent?It is less likely to infringe the literal language of the principal claims because an arginine-based propping agent is required. Other patents and regulatory requirements may still apply. Does using L-arginine hydrochloride automatically create infringement?No. The product must also satisfy the freeze-dried dosage-form, tigecycline, ratio, pH, and other applicable limitations. Can a generic avoid the patent by changing the reconstitution diluent?Usually not if the underlying powder satisfies claim 1. Claims 6 to 9 address reconstituted products, but changing the diluent does not necessarily avoid the composition claims. Does expiration of the original tigecycline compound patent eliminate this formulation patent?No. Compound-patent expiry and formulation-patent expiry are separate events. A generic may face formulation claims after molecule-level protection has ended. References
More… ↓ |
Drugs Protected by US Patent 9,855,335
| Applicant | Tradename | Generic Name | Dosage | NDA | Approval Date | TE | Type | RLD | RS | Patent No. | Patent Expiration | Product | Substance | Delist Req. | Patented / Exclusive Use | Submissiondate |
|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|---|
| Amneal | TIGECYCLINE | tigecycline | POWDER;INTRAVENOUS | 211158-001 | Aug 2, 2018 | AP | RX | No | No | ⤷ 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 |
Foreign Priority and PCT Information for Patent: 9,855,335
| Foriegn Application Priority Data | ||
| Foreign Country | Foreign Patent Number | Foreign Patent Date |
| China | 2012 1 0078509 | Mar 22, 2012 |
| PCT Information | |||
| PCT Filed | April 07, 2013 | PCT Application Number: | PCT/CN2013/000397 |
| PCT Publication Date: | September 26, 2013 | PCT Publication Number: | WO2013/139179 |
International Family Members for US Patent 9,855,335
| Country | Patent Number | Estimated Expiration | Supplementary Protection Certificate | SPC Country | SPC Expiration |
|---|---|---|---|---|---|
| Canada | 2879383 | ⤷ Start Trial | |||
| China | 103315947 | ⤷ Start Trial | |||
| European Patent Office | 2881109 | ⤷ Start Trial | |||
| Spain | 2795421 | ⤷ Start Trial | |||
| Poland | 2881109 | ⤷ Start Trial | |||
| Portugal | 2881109 | ⤷ Start Trial | |||
| Russian Federation | 2015100116 | ⤷ Start Trial | |||
| >Country | >Patent Number | >Estimated Expiration | >Supplementary Protection Certificate | >SPC Country | >SPC Expiration |
