Understanding the Scope and Claims of United States Patent 9,974,742
Introduction
United States Patent 9,974,742, hereafter referred to as the '742 patent, is part of a series of patents held by Heron Therapeutics, Inc., and is central to several ongoing patent infringement lawsuits. This analysis will delve into the scope, claims, and the broader patent landscape surrounding this patent.
Patent Overview
The '742 patent is one of several patents related to Heron Therapeutics' products, particularly those involving the substance P/neurokinin 1 receptor antagonist, aprepitant, used to treat nausea and vomiting caused by chemotherapy and surgery[4].
Scope of the Patent
The scope of a patent is a critical factor in determining its protective breadth and the potential for infringement. The scope is largely defined by the claims of the patent.
Claim Length and Scope
Research indicates that the length of the first claim of a patent is a significant indicator of its scope. A longer first claim typically implies a narrower scope because it includes more specific details that must be met for another invention to be considered infringing[3].
For the '742 patent, the claims are detailed and specific, suggesting a narrower scope. This means that any potential infringer would need to meet all the conditions outlined in the claims to be considered in violation of the patent.
Claims of the Patent
The '742 patent includes multiple claims that define the invention and its boundaries.
Infringement Allegations
In the lawsuits filed by Heron Therapeutics, it is alleged that various generic drug manufacturers, such as Mylan and Fresenius, have submitted Abbreviated New Drug Applications (ANDAs) to the FDA that infringe on the claims of the '742 patent. Specifically, it is claimed that these generic products meet or embody all elements of one or more claims of the '742 patent, thus constituting infringement under 35 U.S.C. § 271(e)(2)(A)[2][5].
Patent Landscape
The '742 patent is part of a larger portfolio of patents related to aprepitant and its formulations.
Related Patents
Heron Therapeutics holds several patents related to aprepitant, including U.S. Patent Nos. 9,561,229, 9,808,465, 9,974,793, 9,974,794, 10,500,208, 10,624,850, 10,953,018, 11,173,118, and 11,744,800. These patents collectively protect various aspects of the drug, its formulations, and its methods of use[2][5].
Expiration Dates
The '742 patent, along with several other related patents, is set to expire in 2035, which is a critical consideration for both the patent holder and potential generic competitors[4].
Jurisdiction and Venue
The lawsuits related to the '742 patent are filed under the Patent Laws of the United States, specifically 35 U.S.C. §§ 100 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-02. The jurisdiction is based on 28 U.S.C. §§ 1331, 1338(a), 2201, and 2202, as well as 35 U.S.C. § 271[2][5].
Infringement and Enforcement
Heron Therapeutics seeks declaratory judgments and permanent injunctions to prevent the alleged infringers from manufacturing, using, selling, or importing the infringing products. The company argues that without such injunctions, it would suffer irreparable harm and lacks an adequate remedy at law[2][5].
Expert Insights
Patent attorneys and experts emphasize that broad patents offer more protection against infringers because they are harder to design around. However, the '742 patent, with its detailed claims, suggests a more targeted protection that is narrower in scope but still significant in its specific area of technology[3].
Statistical and Empirical Analysis
Studies on patent scope measurement suggest that traditional measures such as the number of patent classes or citations are not as predictive as the length of the first claim. For the '742 patent, this implies that its scope is well-defined and less likely to be circumvented by minor variations in the invention[3].
Key Takeaways
- Scope and Claims: The '742 patent has a narrow scope due to its detailed claims, which must be met in full for an invention to be considered infringing.
- Patent Landscape: It is part of a broader portfolio of patents protecting aprepitant and its formulations.
- Infringement Allegations: Heron Therapeutics has filed lawsuits alleging infringement by generic drug manufacturers.
- Jurisdiction and Venue: The lawsuits are filed under U.S. patent laws and the Declaratory Judgment Act.
- Expiration Dates: The patent is set to expire in 2035.
- Expert Insights: The patent's narrow scope is significant in its specific area of technology.
FAQs
Q1: What is the '742 patent related to?
The '742 patent is related to the substance P/neurokinin 1 receptor antagonist, aprepitant, used to treat nausea and vomiting caused by chemotherapy and surgery.
Q2: Who is the patent holder of the '742 patent?
The patent holder is Heron Therapeutics, Inc.
Q3: What are the allegations in the lawsuits related to the '742 patent?
The lawsuits allege that generic drug manufacturers have submitted ANDAs to the FDA that infringe on the claims of the '742 patent.
Q4: How is the scope of the '742 patent determined?
The scope is determined by the length and specificity of its claims, indicating a narrower scope.
Q5: When is the '742 patent set to expire?
The patent is set to expire in 2035.
Sources
- Heron Therapeutics, Inc. v. Slayback Pharma LLC - Casetext
- IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT - Insight.RPXCorp
- The Ways We've been Measuring Patent Scope are Wrong - Boston University Law
- Aprepitant: Uses, Interactions, Mechanism of Action - DrugBank Online
- IN THE UNITED STATES DISTRICT COURT - Insight.RPXCorp
