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Last Updated: April 20, 2025

Details for Patent: 9,393,237


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Which drugs does patent 9,393,237 protect, and when does it expire?

Patent 9,393,237 protects BRISDELLE and is included in one NDA.

This patent has forty-four patent family members in twenty-six countries.

Summary for Patent: 9,393,237
Title:Method of treating thermoregulatory dysfunction with paroxetine
Abstract: The present invention relates to a method for treating a patient suffering from a thermoregulatory dysfunction, especially hot flashes and flushes associated with hormonal changes due to naturally occurring menopause (whether male or female) or due to chemically or surgically induced menopause. The method is also applicable to treating the hot flashes, hot flushes, or night sweats associated with disease states that disrupt normal hormonal regulation of body temperature.
Inventor(s): Richards; Patricia Allison Tewes (Bradenton, FL)
Assignee: NOVEN THERAPEUTICS, LLC (Miami, FL)
Application Number:14/577,227
Patent Litigation and PTAB cases: See patent lawsuits and PTAB cases for patent 9,393,237
Patent Claim Types:
see list of patent claims
Use; Dosage form;
Patent landscape, scope, and claims:

United States Patent 9,393,237: A Detailed Analysis of Scope, Claims, and Patent Landscape

Introduction

United States Patent 9,393,237, hereinafter referred to as the '237 patent, is a significant patent in the pharmaceutical sector, particularly related to the use of paroxetine in treating thermoregulatory dysfunction associated with menopause. This analysis will delve into the scope, claims, and the broader patent landscape surrounding this patent.

Background of the Patent

The '237 patent is owned by Sebela Pharmaceuticals and relates to methods of using paroxetine, a selective serotonin reuptake inhibitor (SSRI), for treating hot flashes and other thermoregulatory dysfunctions associated with menopause. The patent was at the center of several high-profile patent infringement cases involving generic drug manufacturers like Actavis and Prinston Pharmaceutical Inc.[4][5].

Scope of the Patent

The '237 patent covers specific methods of using paroxetine to treat thermoregulatory dysfunctions. The scope includes the administration of paroxetine in a dosage form that is specifically designed to alleviate symptoms such as hot flashes. The patent's claims are narrowly tailored to ensure that the method of treatment is distinct from other uses of paroxetine, such as treating depression or anxiety.

Claim Structure

The patent includes multiple claims, each detailing different aspects of the method of treatment. These claims typically include:

  • The specific dosage of paroxetine.
  • The frequency of administration.
  • The target population, specifically menopausal women.
  • The therapeutic outcome, which is the alleviation of thermoregulatory dysfunctions.

For example, the claims might specify that "a method of treating hot flashes in a menopausal woman, comprising administering a dosage of paroxetine in the range of 7.5 mg to 10 mg once daily."[4].

Patent Infringement Actions

The '237 patent has been the subject of several patent infringement actions. Sebela Pharmaceuticals accused generic drug manufacturers, such as Actavis and Prinston Pharmaceutical Inc., of infringing the '237 patent through their Abbreviated New Drug Applications (ANDAs) for generic versions of paroxetine.

Direct Infringement

Sebela alleged that the defendants' commercial manufacture, use, sale, offer for sale, and importation of their generic paroxetine products constituted direct infringement under 35 U.S.C. § 271(a)[1][4].

Induced and Contributory Infringement

In addition to direct infringement, Sebela also claimed induced and contributory infringement. The allegations included that the defendants knew their generic products would be used in a manner that infringed the '237 patent and that there was no substantial non-infringing use for these products[1][4].

Legal Proceedings and Outcomes

The patent infringement cases involving the '237 patent were complex and involved multiple legal proceedings.

District Court Rulings

In the District Court for the District of New Jersey, Sebela's claims of infringement were heard. The court found that Sebela had demonstrated a likelihood of establishing infringement, but the validity of the patent was also challenged. In a related case, claims of another Sebela patent (U.S. Patent Nos. 8,658,663 and 8,946,251) were found invalid as obvious[2][5].

Appeals

Sebela appealed certain aspects of the district court's rulings, particularly to ensure that any alternative invalidity holdings based on written description or utility grounds would not have preclusive effect on other related patent claims. The Federal Circuit affirmed the district court's obviousness ruling but clarified that the alternative invalidity findings did not have preclusive effect[2].

Patent Landscape

The '237 patent operates within a crowded and highly competitive pharmaceutical patent landscape.

Related Patents

Sebela holds several patents related to the use of paroxetine, including U.S. Patent Nos. 8,658,663 and 8,946,251. These patents also relate to methods of treating thermoregulatory dysfunctions but were found invalid as obvious in a separate case[2].

Generic Competition

The approval of ANDAs by generic manufacturers like Actavis and Prinston Pharmaceutical Inc. poses significant competition to branded drugs like BRISDELLE®, which is Sebela's product covered by the '237 patent. The generic competition highlights the importance of patent protection in maintaining market exclusivity for innovative pharmaceutical products[4].

Economic and Strategic Implications

The '237 patent has significant economic and strategic implications for Sebela Pharmaceuticals and the broader pharmaceutical industry.

Market Exclusivity

The patent provides Sebela with market exclusivity for the specific method of using paroxetine to treat thermoregulatory dysfunctions. This exclusivity is crucial for maintaining revenue and market share against generic competitors[4].

Innovation Incentives

The protection afforded by the '237 patent incentivizes innovation in the pharmaceutical sector. By securing exclusive rights for a specific method of treatment, companies like Sebela are motivated to invest in research and development of new therapeutic uses for existing drugs[3].

Key Takeaways

  • Scope and Claims: The '237 patent covers specific methods of using paroxetine to treat thermoregulatory dysfunctions associated with menopause.
  • Infringement Actions: Sebela Pharmaceuticals has pursued several patent infringement actions against generic drug manufacturers.
  • Legal Proceedings: The patent has been subject to various legal challenges, including district court rulings and appeals.
  • Patent Landscape: The patent operates within a competitive pharmaceutical landscape with related patents and significant generic competition.
  • Economic and Strategic Implications: The patent is crucial for maintaining market exclusivity and incentivizing innovation.

FAQs

What is the '237 patent related to?

The '237 patent is related to methods of using paroxetine to treat thermoregulatory dysfunctions associated with menopause.

Who owns the '237 patent?

The '237 patent is owned by Sebela Pharmaceuticals.

What were the main allegations in the patent infringement cases?

Sebela alleged direct, induced, and contributory infringement by generic drug manufacturers like Actavis and Prinston Pharmaceutical Inc.

What was the outcome of the district court rulings?

The district court found that Sebela had demonstrated a likelihood of establishing infringement, but the validity of related patents was challenged and some claims were found invalid as obvious.

How does the '237 patent impact the pharmaceutical industry?

The patent provides market exclusivity for Sebela and incentivizes innovation in the pharmaceutical sector by protecting specific methods of treatment.

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Drugs Protected by US Patent 9,393,237

ApplicantTradenameGeneric NameDosageNDAApproval DateTETypeRLDRSPatent No.Patent ExpirationProductSubstanceDelist Req.Patented / Exclusive UseSubmissiondate
Legacy Pharma BRISDELLE paroxetine mesylate CAPSULE;ORAL 204516-001 Jun 28, 2013 AB RX Yes Yes 9,393,237 ⤷  Try for Free TREATMENT OF MODERATE TO SEVERE VASOMOTOR SYMPTOMS ASSOCIATED WITH MENOPAUSE ⤷  Try for 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
Showing 1 to 1 of 1 entries

International Family Members for US Patent 9,393,237

CountryPatent NumberEstimated ExpirationSupplementary Protection CertificateSPC CountrySPC Expiration
Australia 2007282065 ⤷  Try for Free
Brazil PI0715087 ⤷  Try for Free
Canada 2659577 ⤷  Try for Free
China 101505759 ⤷  Try for Free
Cyprus 1120867 ⤷  Try for Free
Cyprus 1120902 ⤷  Try for Free
Denmark 2068881 ⤷  Try for Free
>Country>Patent Number>Estimated Expiration>Supplementary Protection Certificate>SPC Country>SPC Expiration
Showing 1 to 7 of 7 entries

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