Invalidity dossier

US 11402372

Methods for screening cereblon modifying compounds

Current assignee: Celgene Corp

Added 9/24/2026, 2:39:24 PM

At a glanceNo PTAB challengesNo litigation on fileBiotechnology

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Patent summary

Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.

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Let me search for litigation/docket activity and confirm the full independent claim set.

Let me retrieve the full claim set and check for any CAFC docket activity specific to this patent.

Summary of US Patent 11,402,372 B2

Caveat on scope of this report: I verified the bibliographic data and claim 1 below through web search of Google Patents, Justia Patents, and related patent databases. I do not have direct API access to USPTO PatentCenter, PAIR, or the CAFC docket system in this session, so my litigation search is a web-search proxy, not an authoritative docket query. See "Uncertainties" at the end.


Bibliographic data

Field Value
Patent number US 11,402,372 B2 (granted patent)
Title Methods for screening cereblon modifying compounds
Application no. 16/244,667
Pre-grant publication US 2019/0219562 A1 (published 2019‑07‑18)
Filing date January 10, 2019
Priority date January 12, 2018 (per Google Patents; presumed provisional)
Issue/grant date August 2, 2022
Assignee Celgene Corporation (Summit, NJ) — original and current assignee as listed. (Celgene is now a Bristol‑Myers Squibb subsidiary; some commercial databases list these inventors under "Bristol‑Myers Squibb.")
Inventors Mary Matyskiela (San Diego, CA); Philip Chamberlain (San Diego, CA); Suzana Sturlini Couto (La Jolla, CA); Katherine Stamp (Montclair, NJ); Philip J. Sherratt (Scotch Plains, NJ); Gang Lu (San Diego, CA); Julia Hui (Basking Ridge, NJ)
Primary examiner Shafiqul Haq
Legal status "Active," adjusted expiration 2039‑12‑02 (Google's own note: the status is an assumption, not a legal conclusion). The ~327‑day extension past the nominal 20‑year date is consistent with patent term adjustment.
Representative CPC G01N 33/5005, G01N 33/68, G01N 33/5017, C12N 9/104, G01N 2440/36, G01N 2333/91074
Family/continuation Google Patents records a later filing claiming priority to this application: US 17/851,936 (filed 2022‑06‑28), which issued as US 12,590,953 B2. Foreign counterparts include JP 7267289 B2 and JP 2021510816 A.

Abstract (as published)

"A method of screening a cereblon modifying compound for treating a disease or disorder, comprising: obtaining a sample; determining a first protein level of SALL4; administering the cereblon modifying compound to the sample; determining a second protein level of SALL4; comparing the first level and the second protein level of SALL4 to determine if the cereblon modifying compound induces degradation of SALL4; and selecting the cereblon modifying compound that does not induce degradation of SALL4."

Note an internal tension worth flagging: the published abstract describes a SALL4 protein-degradation screen, but the issued claim 1 (below) is narrower and recites a SALL4–cereblon interaction screen. That is normal when a broad genus is claimed in an abstract and the grant is narrowed during prosecution.


Plain-language overview of the independent claim(s) I could verify

Claim 1 (independent — the only independent claim I could positively confirm as issued):

A method of screening a cereblon-modifying compound, comprising four steps:

  1. (a) Obtain a sample that contains both Sal-like protein 4 (SALL4) and cereblon.
  2. (b) Administer the cereblon-modifying compound to that sample.
  3. (c) After adding the compound, determine whether SALL4 and cereblon interact. Critically, the interaction must be measured by looking at one of two specific regions of the SALL4 protein:
    • amino acid residues 405–432 of SALL4 (SEQ ID NO: 3), or
    • amino acid residues 410–432 of SALL4 (SEQ ID NO: 11).
  4. (d) Select the compound that does not induce the SALL4–cereblon interaction as determined in step (c).

In plain terms: you take a test drug, expose SALL4 and cereblon to it, and ask whether the drug acts as a "molecular glue" that makes cereblon grab SALL4 (via that zinc-finger glycine-degron region). If it does not induce that binding, you keep/select it. The therapeutic logic, per the specification, is that cereblon-modifying drugs (thalidomide, pomalidomide, lenalidomide) recruit neosubstrates for ubiquitination; the patent asserts SALL4 degradation is a driver of teratogenicity (limb defects, drawing on SALL4 loss-of-function syndromes such as Okihiro, Holt–Oram, IVIC, and acro-renal-ocular syndromes). So compounds that fail to engage SALL4 are predicted to carry reduced reproductive/embryopathic risk.

Claim 2 (dependent on claim 1): Adds a degradation readout — determine a first SALL4 protein level before compound administration, a second level after, compare the two to determine whether the compound induces SALL4 degradation, and select compounds that do not induce SALL4 degradation.

Plain terms: claim 2 layers the abstract's idea (measuring SALL4 protein loss) onto the claim 1 interaction screen, so the selected compound must both avoid recruiting SALL4 to cereblon and avoid lowering SALL4 protein levels.


Subject matter that is described but whose claim status I could not verify

The specification's summary and the pre-grant publication (US 2019/0219562 A1) recite several further screening concepts — SALL4 ubiquitination-level screening, reduced-degradation-versus-a-reference-compound (thalidomide/pomalidomide/lenalidomide) selections, and methods of determining whether a compound induces a teratogenic effect via degradation, ubiquitination, or SALL4–cereblon interaction. It is plausible some of these appear as further independent claims in the issued patent, but I could not confirm the complete issued claim set (my source truncated after claim 2). Treat any claim-by-claim statement beyond claim 1/2 as unverified. There is also a possibility the ubiquitination- and teratogenicity-based subject matter was pursued in the continuation now issued as US 12,590,953 B2.


Litigation / CAFC 2026 docket check

  • No CAFC 2026 appeal or docket activity specifically identifying patent 11,402,372 surfaced in my searches. I found no IPR/petition, no district-court complaint, and no Federal Circuit appeal citing this patent number. That is a negative search result from web sources, not a verified docket clearance.
  • The Celgene/IP news I did find is adjacent but not about this patent: a Cigna-backed class action (Second Circuit, docketed activity around July 30, 2026) alleges BMS/Celgene fraudulently obtained patents and filed sham suits to protect Pomalyst (pomalidomide). Law360 headline: "Health Plans Ask 2nd Circ. To Revive Celgene Cancer Drug Row." Whether '372 is among the patents at issue in that antitrust matter is not established by the sources I retrieved.

Explicit uncertainties

  1. Full claim set not verified. I positively confirmed only independent claim 1 and dependent claim 2 from a secondary transcript (Justia). The number of independent claims, any kit/method-of-treatment claims, and the exact count of total claims are unconfirmed.
  2. Transcription artifact: the Justia rendering of claim 1 step (c) spells cereblon as "cerebion" — almost certainly an OCR/transcription typo, but I am reporting the identifier literally as found rather than correcting it.
  3. Assignee nuance: Google Patents lists "Celgene Corp" as current assignee; third-party inventor-leaderboard pages attribute the inventors to Bristol-Myers Squibb. BMS acquired Celgene in 2019, after this application's 2018 priority date, so the discrepancy is best explained by corporate succession — but I have not verified a recorded assignment to BMS.
  4. Legal status is Google's own disclaimer-level field ("Active, expires 2039‑12‑02"), including the adjusted expiration date; I have not independently confirmed maintenance-fee payment or the PTA calculation.
  5. No authoritative USPTO/CAFC query was performed; my statements about the absence of litigation are limited to what public search indexing returned.

Primary sources consulted: https://patents.google.com/patent/US11402372/en; https://patents.justia.com/patent/11402372; https://patents.google.com/patent/US12590953B2/en (family); https://www.patents-review.com/a/20190219562-methods-screening-cereblon-modifying-compounds.html; https://www.law360.com/ip/... (Cigna/Celgene Second Circuit item, July 30, 2026).

Generated 9/30/2026, 10:42:11 AM

Cases on file (0)

Specific litigation cases in our database that name US patent 11402372. The free-form analysis below may also discuss cases beyond this list.

No cases on file mention this patent. Upload a CSV or add a case manually in Admin → Manage litigation cases.

Litigation summary

Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.

✓ Generated

I'll search for litigation involving US patent 11402372 across the requested sources.

Let me search the specialized litigation databases directly.

Summary of Findings

I found no litigation (district court, Federal Circuit, or PTAB) specifically involving U.S. Patent No. 11,402,372. Based on the sources searched (Google Patents/legal-status data, Unified Patents-linked materials, CourtListener/Justia PACER-derived dockets, Docket Alarm, USPTO PTAB materials, DrugPatentWatch, and general web results), there is no complaint, counterclaim, IPR, PGR, or appeal that names 11,402,372 as an asserted or challenged patent.

What I did find (context, not litigation)

Item Detail
Patent U.S. 11,402,372 B2, "Methods for screening cereblon modifying compounds"
Application US 16/244,667, filed 2019-01-10
Priority date 2018-01-12 (provisional)
Granted 2022-08-02
Assignee Celgene Corporation (now a Bristol-Myers Squibb subsidiary)
Inventors Matyskiela, Chamberlain, Sturlini Couto, Stamp, Sherratt, Lu, Hui
Family Continuation US 12,590,953 B2 (from US 17/851,936); pre-grant pub. US 2019/0219562 A1
Google Patents legal status Active, adjusted expiration 2039-12-02 — no litigation events listed

The patents.google.com page for 11,402,372 shows only prosecution/assignment events (assignment to Celgene recorded 2019-04-10). No "Litigation" or "IPR" section appears. Unified Patents' public materials surfaced in the search concern other patents (e.g., the '685 patent in IPR2024-00923; the '723 patent in IPR2022-00230) — none involving the '372 patent at issue.

Important caution against ID confusion

Several search hits contain "372" but are different patents and must not be conflated with U.S. 11,402,372:

  • U.S. 11,492,372 — asserted in Amgen v. DRL (D.N.J., counterclaim filed Jan. 9, 2026). A different patent number.
  • The '372 patent in Scale Video Coding LLC v. Cisco (E.D. Tex. 4:23-cv-00803) and in Nellcor Puritan Bennett v. Masimo — unrelated patents using the same trailing digits.
  • All the Celgene/Revlimid, Thalomid, Pomalyst ANDA and antitrust matters I found (Celgene v. Natco, Celgene v. Mylan (1:20-cv-00003), Celgene v. Zydus, Celgene v. Apotex, Celgene v. Sandoz (2:2025cv16878), the Cigna/Celgene antitrust complaint) involve patents such as the '740, '800, '217, '569, '717, '498, '095, '120, '621, '622, '357, '219, and '598 patents — not 11,402,372.

Reasons this is plausible

11,402,372 claims screening/assay methods (measuring SALL4 degradation, SALL4–cereblon interaction, or SALL4 ubiquitination to assess teratogenicity of cereblon-modifying compounds). It is a research-tool/method patent rather than an Orange Book–listed drug-product or distribution patent, which makes it much less likely to be asserted in Hatch-Waxman ANDA litigation or targeted in IPR.

Limitations / caveats

  • I could not directly query paywalled databases (Docket Navigator, LexisNexis, full PACER, Unified Patents' interactive portal) or Bloomberg Law in this session. My conclusion rests on publicly indexed sources.
  • A recently filed (last few weeks) suit or a thinly reported case could exist without appearing in indexed results.
  • The Google Patents "legal status" is expressly an assumption and not a legal conclusion, but its absence of litigation entries is consistent with what I found elsewhere.
  • Confidence: moderate-to-high that no litigation is currently on record for this specific patent. If you need a definitive negative, I recommend a paid Docket Navigator or LexisNexis Patent Litigation search keyed strictly to 11,402,372 (and family member 12,590,953), plus a PACER "patent number" field search, to confirm.

Generated 9/30/2026, 10:42:03 AM

Proceedings on file (0)

All PTAB activity →

AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.

No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.

PTAB challenges

AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.

✓ Generated

I'll verify the structured data against public sources before reporting.

PTAB Proceedings — US 11,402,372 B2 ("Methods for screening cereblon modifying compounds")

Source of record: USPTO Open Data Portal (ODP) structured block, which reports zero AIA trial proceedings on file for this patent as of the most recent ingest. I ran independent web searches to catch anything the ODP index had not yet picked up (IPR/PGR/CBM petition dockets, PTAB decision pages, CAFC dockets, CourtListener). I found nothing additional. Details and caveats below.


Proceedings overview

Total AIA trial proceedings on file: 0 — no IPRs, no PGRs, no CBMs, no derivation proceedings (0 active / 0 claims invalidated / 0 claims sustained / 0 settled / 0 institution denied), which means the patent has never been tested at the PTAB and issues all of its original claims, intact and un-estopped; a defendant facing assertion today cannot point to any canceled claim, but also faces no adverse PTAB estoppel and no PTAB record constraining the patent owner.

Two definitional notes before the proceeding-by-proceeding sections:

  1. The ODP block is the canonical list, and it is empty. I did not invent proceeding numbers to fill the template, and I am not going to present a zero-count patent as if it had a PTAB history.
  2. A high-volume source of false positives. Web searching "'372 patent" + "IPR" returns a large body of unrelated material on U.S. Patent No. 8,995,372 (Pantech, wireless communications, IPR2025-00887) and U.S. Patent No. 11,737,372 (IP Datascape/IP Bridge, IPR2024-01448). Neither is this patent. Likewise, the well-known Celgene PTAB litigation — Coalition for Affordable Drugs VI LLC v. Celgene Corp., IPR2015-01092 and related, invalidating U.S. Patents 6,045,501 and 6,315,720 (the thalidomide/lenalidomide REMS "distribution method" patents), affirmed in Celgene Corp. v. Peter (Fed. Cir. July 30, 2019) — involves different patents and a different family. It shows Celgene has been a PTAB target before; it says nothing about the '372 patent. (Fed. Cir. affirmance coverage)

Per-proceeding detail

None. There are no proceedings to report.

Because the template asks for a per-proceeding block, here is what the record supports instead — the negative findings I verified, so a reader can replicate them:

Check performed Result
USPTO ODP structured block (canonical) No AIA trial proceedings
Web search: US11402372 PTAB, "11,402,372" PTAB petition, 11402372 IPR No PTAB petition, institution decision, FWD, or termination order on this patent
Web search for CAFC appeal of a PTAB decision on this patent None found
Web search for ex parte reexamination / PGR on this patent None found (PGR window also long closed — see below)

Statutory posture that explains part of the silence:

  • Patent issued: 2022-08-02. PGR window (9 months, § 321(c)) closed 2023-05-02 — a PGR is no longer available to anyone, on any ground, including § 112 and § 101.
  • CBM review is unavailable entirely — the transitional program expired 2020-09-16 (see AIA § 18(f) sunset), before this patent even issued.
  • IPR remains available on § 102/§ 103 grounds for the life of the patent (§ 311(b); § 315(b) one-year bar runs from service of an infringement complaint). Adjusted expiration listed as 2039-12-02.
  • Patent owner / assignee: Celgene Corporation (now a Bristol Myers Squibb company). Inventors: Matyskiela, Chamberlain, Couto, Stamp, Sherratt, Lu, Hui. Priority date 2018-01-12 (provisionals 62/617,112 and 62/710,401).

Claims of the patent (for the narrowing analysis)

The Google Patents full text supplied to me does not reproduce the claims section, so I am citing a secondary source and flagging it as unverified against the official grant: Justia's patent page reports a two-claim patent, with a single independent claim. (Justia — US 11,402,372 claims)

  • Claim 1 (independent): a method of screening a cereblon modifying compound comprising (a) obtaining a sample containing SALL4 and cereblon; (b) administering the cereblon modifying compound; (c) determining an interaction between SALL4 and cereblon, wherein that interaction is determined by determining the interaction between amino acid residues 405–432 of SALL4 (SEQ ID NO: 3) with cereblon or between amino acid residues 410–432 of SALL4 (SEQ ID NO: 11) with cereblon; and (d) selecting the compound that does not induce the SALL4–cereblon interaction.
  • Claim 2 (dependent on 1): adds steps (i) determining a first SALL4 protein level before administration; (ii) determining a second SALL4 protein level after; (iii) comparing them to determine whether the compound induces SALL4 degradation; and (iv) selecting a compound that does not induce SALL4 degradation.

Status of every claim: UNTESTED. No claim is canceled, disclaimed, or judicially invalidated as of 2026-09-30. Verify the full claim set against USPTO Patent Center / PTAB E2E before relying on the two-claim characterization in a brief.


Strategic summary

Claim-by-claim status. All claims — including sole independent claim 1 — are sustained by default because they have never been challenged in an AIA proceeding. There is no cancellation certificate, no adverse judgment, no disclaimer on record. For a defendant, that cuts two ways: you get no free invalidity finding to wave at the plaintiff, but you also inherit no estoppel and a completely clean slate on the merits. Note the practical consequence of the claim scope: claim 1 is a wet-lab screening method tied to a specific polypeptide fragment (residues 405–432 or 410–432 of SALL4), and claim 2 layers in a two-timepoint protein-level comparison. Neither claim reads on making, using, or selling a cereblon-modifying drug. Direct infringement requires a party performing the recited screening steps, so the realistic assertion targets are branded and generic drug developers doing deliberate SALL4-teratogenicity screening — a narrow field — plus anyone who has contractually warranted such screening. Assess the actual accused conduct before investing in invalidity work.

Estoppel landscape. Because no IPR has ever been instituted on this patent, § 315(e)(2) estoppel has attached to no one. There is no petitioner, no real party in interest, and no privy whose prior-art grounds have been foreclosed. Every § 102/§ 103 ground remains available to every defendant, unbounded by anything in the PTAB record. The corollary: if you are the first to file, you go first, and you bear the full cost of building the art yourself. There is also no § 325(d) "same or substantially the same art" shield for the patent owner to hide behind against you — but equally, no Board has yet blessed any reference, so you get no roadmap of what worked.

Prior-art availability (analytical caveat, flagged as my inference, not a verified fact). The claimed priority date is 2018-01-12. The two landmark SALL4–cereblon publications — Donovan et al., eLife 7:e38430, and Matyskiela et al., Nat. Chem. Biol. 14:981–987 — are 2018 publications. If, as I believe, both appeared in the second half of 2018, they post-date the effective filing date and are not § 102(a)(1) prior art to this patent. That materially narrows the obviousness case: the art from which an IPR would be built has to predate January 2018, which largely means generic immunoblot/immunoprecipitation/mass-spec protein-quantitation methodologies plus the pre-existing cereblon substrate literature (Ikaros, ZFP91, CK1α). That is a genuine but harder argument than the "the whole discovery was public" intuition suggests. It also plausibly explains why no IPR exists — the natural references are not § 102-eligible. Confirm the exact publication dates before committing.

Pattern signals. (a) No serial-petitioner pattern exists on this patent — there is no petitioner to have filed a first, let alone a second, petition. (b) No defensive aggregator (Unified Patents, Askeladden, etc.) appears in any chain touching this patent; the searches surfaced no Unified Patents docket for it. (c) Patent owner appeals posture: Celgene historically litigates CAFC appeals to the end where patents matter commercially — it appealed the adverse PTAB outcome on its REMS patents to the Federal Circuit and lost (Celgene Corp. v. Peter, Fed. Cir. July 30, 2019). Expect a vigorous defense and an appeal if an FWD goes against it. (d) Family risk: the ODP block records a continuation, US 17/851,936, issued as US12590953B2 (priority claim dated 2022-06-28). A successful IPR/JDJ attack on the '372 patent's two claims would not automatically clear the continuation, and vice versa. I did not find PTAB activity on the continuation either, but flag that as a search gap rather than a verified negative — budget a separate ODP/E2E check before treating the family as clean.

The strategic point a PTAB practitioner should raise first. No one has filed an IPR in the four-plus years since issuance, including the four years this patent has been enforceable. That silence is informative. The most likely reasons are (i) the § 102 prior-art problem above, and (ii) the claims' § 101 exposure: claims 1–2 recite a screening/correlation method with no drug administration to a patient and no transformation — the classic Mayo/Alice two-step target. § 101 is not available in an IPR (§ 311(b) limits IPRs to §§ 102 and 103). So an accused party's best invalidity vehicle here is almost certainly a § 101 motion in district court or the ITC, not a PTAB petition. Conversely, for the patent owner, the absence of IPR activity means the PTAB has never had the chance to gut it, but also that a § 101 challenge has never been tested either.


Recommended next steps

If you are a defendant facing assertion of US 11,402,372:

  1. Do not argue canceled claims. Nothing is canceled. If opposing counsel or a demand letter implies otherwise, that implication is false. Conversely, do not assume you can rely on any PTAB outcome — there isn't one. Your validity defense must be built from scratch.
  2. Build the § 101 case first. Claims 1–2 are method-of-screening/correlation claims keyed to a naturally occurring protein interaction. Under Alice step two, look hard for an inventive concept: the claims recite a known protein, a known binding partner, and generic administration/detection steps. This is the highest-value attack and it is unavailable at the PTAB.
  3. Scope-check infringement before spending on invalidity at all. Claim 1 requires the accused party to (a) hold a sample containing both SALL4 and cereblon, (b) administer the compound, (c) determine the interaction specifically via residues 405–432 (SEQ ID NO: 3) or 410–432 (SEQ ID NO: 11), and (d) select a non-inducing compound. A § 271(a)/§ 271(g) analysis should focus on whether anyone actually performs that fragment-specific determination step. In-house screening workflows using full-length SALL4 western blots, or Ikaros/ZFP91 surrogates, may fall outside the literal claim; run a DOE-lite review and check prosecution history equivalents/estoppel for the SEQ ID NO narrowing.
  4. If you still want a PTAB bite, the practical attack is a single IPR on § 103 over pre-January-2018 method references, filed within one year of service of the complaint (§ 315(b)) — and note this is the only AIA vehicle left, since PGR closed 2023-05-02 and CBM is sunset. Weigh the risk that a FWD upholding the claims hardens them and hands the patent owner a favorable PTAB record.
  5. Clear the family. Separately verify the status of US12590953B2 (continuation, app. 17/851,936) via USPTO Patent Center and PTAB E2E. If the continuation carries broader or differently-scoped claims, a win on the '372 patent could be pyrrhic.

If you are the patent owner:

  • The patent has an unblemished record — use it. There is no IPR estoppel against any defendant, no PTAB claim construction on the books, and no adverse FWD to distinguish. Your exposure is concentrated in § 101 and in the narrow, fragment-specific infringement footprint of claim 1, not in § 102/§ 103.
  • Consider whether claim 2's two-timepoint protein-level comparison gives you a broader or at least more easily provable enforcement theory than claim 1's fragment-specific interaction determination, and build your infringement contentions and any reissue/continuation strategy around whichever claim your accused products actually practice.

Verification note and limitations. My conclusions rest on (i) the ODP structured block supplied with this task, which reports no AIA trial proceedings, and (ii) web searches that returned no petition, institution decision, FWD, termination, or CAFC appeal for this patent. Primary-source anchors: Google Patents — US11402372B2; Justia — claims of US 11,402,372; USPTO Patent Trial and Appeal Board E2E. I could not independently confirm the full granted claim set from an official USPTO source with the tools available, and I could not exhaustively rule out a very recently filed petition that has not yet posted to the public docket — the ODP ingest is explicitly flagged as potentially stale. Before relying on this in a filing or a board memo, re-pull PTAB E2E and Patent Center for US 11,402,372 and US 17/851,936 on the day you rely on it.

Generated 9/30/2026, 10:42:26 AM

Ownership chain (1)

Asserters network →

Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.

  1. 2019-04-10 · Assignment

    Mary Matyskiela; Philip Chamberlain; Suzana Sturlini Couto; Katherine Stamp; Philip J. Sherratt; Gang Lu; Julia HuiCELGENE CORPORATION

    internal capture of employee inventorship

Assignment history

Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.

✓ Generated

I'll research the assignment record for US 11,402,372, starting with the USPTO Assignment Center and cross-referencing sources.

Let me try more targeted searches on the assignment record and the patent's legal events.

Let me look for the specific reel/frame records and check the patent family continuation.

Assignment & Ownership Analysis — U.S. Patent No. 11,402,372

Scope note / limitation. I was unable to open the USPTO Assignment Center UI directly in this session (tool step limit), so I could not pull the reel/frame numbers or the correspondent-of-record fields first-hand. The chain below is reconstructed from the records that are indexed — the Google Patents legal-events feed embedded in the authoritative patent text, the pre-grant publication US 2019/0219562 A1, and USPTO assignment PDFs that surfaced in search. Where a field could not be confirmed, I say so rather than guess. Verify at: https://assignmentcenter.uspto.gov/ and https://assignment.uspto.gov/patent/index.html (search 11402372).


Inventors

Seven named inventors, per the issued patent and pre-grant publication US 2019/0219562 A1. Employer is inferred from the correspondence addresses on the publication and the subject matter (cereblon biology, Celgene's core research program); it is not directly stated as an employer field in the sources retrieved.

Inventor Address of record Employer at filing (inferred)
Mary Matyskiela San Diego, CA Celgene Corporation (San Diego research site)
Philip Chamberlain San Diego, CA Celgene Corporation
Suzana Sturlini Couto La Jolla, CA Celgene Corporation
Katherine Stamp Montclair, NJ Celgene Corporation (Summit, NJ HQ)
Philip J. Sherratt Scotch Plains, NJ Celgene Corporation
Gang Lu San Diego, CA Celgene Corporation
Julia Hui Basking Ridge, NJ Celgene Corporation

Unusual patterns — none observed.

  • All seven inventors appear to be in-house Celgene researchers spanning the San Diego and New Jersey sites; the technology (SALL4/cereblon neosubstrate biology) is squarely within Celgene's R&D.
  • The inventors executed the assignment to Celgene on 2019-04-10, ~3 months after the 2019-01-10 filing — normal corporate practice, not a distress signal.
  • I found no evidence that any inventor departed the assignee within 12 months of filing. I did not locate individual employment histories; this is stated as "not determinable" rather than "no."
  • Contextual caution (not a finding): Celgene was acquired by Bristol-Myers Squibb in Nov 2019 and the San Diego site saw post-merger restructuring. I have no evidence tying any of these seven inventors to that restructuring, and will not speculate.

Original assignee

Celgene Corporation (Delaware corporation; 86 Morris Avenue, Summit, NJ, later Route 206 & Province Line Road, Princeton, NJ 08543).

  • Line of business: large-cap biopharmaceutical company; the patent is directed at screening assays for cereblon-modifying compounds and their teratogenic potential — the mechanistic space behind Revlimid (lenalidomide), Pomalyst (pomalidomide), and Thalomid (thalidomide).
  • Product embodying the claims: the claims are screening/assay methods (measuring SALL4 degradation, SALL4–cereblon interaction, or SALL4 ubiquitination), not compositions. Celgene/BMS sells the drug products whose teratogenicity risk the assay is designed to detect, but the claimed methods are research tools rather than a shipped product. This is the key reason the patent is Orange Book–irrelevant and non-assertion-prone (consistent with the earlier litigation finding of no suits).
  • Current status: operating. Celgene was acquired by Bristol-Myers Squibb (deal closed 2019-11-20, cash-and-stock), and Celgene Corporation survives as a wholly owned BMS subsidiary. Google Patents still lists Celgene Corp as current assignee, which is consistent with the patent remaining inside the surviving legal entity rather than being re-recorded to the parent.

Assignment timeline

Only the original inventor→assignee assignment is on record. No post-issuance transfer, no NPE transfer, no security interest, no release is recorded.

  • 2019-04-10 (recorded 2019-04-10) — Reel/Frame not retrievable in this session (see limitation note above)
    • Conveyance: Assignment of Assignors' Interest ("ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
    • Assignor: the seven named inventors — Matyskiela, Chamberlain, Couto, Lu, Hui, Sherratt, Stamp
    • Assignee: CELGENE CORPORATION
    • Correspondent: not determinable from the data retrieved. For context only — a separate, contemporaneous Celgene assignment (App. 16/150,345, an unrelated cis-4-... process application) was drafted via Jones Day and recorded in the ~reel 047920 series, which illustrates Celgene's early-2019 practice of using outside counsel for inventor assignments. That is a different application and is not confirmed as the correspondent of record for the '372 patent. Do not treat it as the '372 correspondent.
    • Context: internal capture of employee inventorship — inbound assignment from in-house inventors to the corporate employer. Routine.
    • Duplicate-indexing note: the Google Patents legal-events feed shows two entries both dated 2019-04-10, both styled "Assigned to CELGENE CORPORATION / reassignment," listing the same seven assignors in slightly different order. This is most consistent with a single conveyance indexed twice (or two cover sheets for the same transaction), not two distinct transfers. I flag it rather than count it as two links.

What is not in the chain (and why that matters):

  • No assignment to any "IP / Holdings / Licensing / Ventures" entity.
  • No security agreement / lien recorded against the patent.
  • No merger assignment to Bristol-Myers Squibb recorded on this patent (parent-level mergers of a surviving subsidiary do not require a §3.73(b) recording where the owning entity — Celgene Corporation — persists).
  • No release, change of name, or correction.
  • Related family member: continuation US 12,590,953 B2 (from App. 17/851,936, filed 2022-06-28), same title. No separate assignment trail is documented for it in the sources retrieved; absent a recording, it flows with the parent ownership.

Timeline diagram

timeline
    title Ownership of US 11402372
    2018 : Priority application filed
    2019 : Application 16 244 667 filed
         : Inventors assign rights to Celgene
         : Bristol-Myers Squibb acquires Celgene
    2022 : Patent 11402372 granted
         : Continuation application filed
    2026 : Celgene Corp remains owner

NPE / troll-pattern signals

  1. Shell-entity transfer — not present. The sole recorded assignee is Celgene Corporation, a large operating pharmaceutical company. No "IP/Holdings/Licensing/Ventures" transferee appears; no single-purpose Delaware/Texas LLC; no registered-agent service address.

  2. Known asserter in the chain — not present. Neither Celgene Corporation nor Bristol-Myers Squibb appears on any NPE/asserter list (Acacia, Marathon, IV, IPNav, Wi-LAN, Conversant, Vringo, Round Rock, Spangenberg entities, etc.). No such entity appears in the record. (Consistent with the separate finding that this patent has no litigation history.)

  3. Repeat correspondent across the chain — unclear / not established. There is effectively only one link, so recurrence cannot exist. The correspondent of record was not retrievable in this session, so this signal can neither be confirmed nor excluded. Per the constraints, I will not call it on naming or inference alone.

  4. Cascading transfers — not present. One recorded conveyance (inventors → Celgene). The two same-date 2019-04-10 entries are indexed duplicates of a single transaction, not a chain. No successive LLC-to-LLC hops in <24 months.

  5. Pre-litigation transfer — not present. There is no assertion of this patent (per the litigation summary), so there is no suit to precede; and no assignment occurs within 6 months of any identified suit.

  6. Bankruptcy fire-sale — not present. Celgene's end came via an acquisition by Bristol-Myers Squibb (closed 2019-11-20), not a Chapter 7/11. No bankruptcy sale, no court-supervised patent disposition.

  7. Privateering — not present. No operating company→NPE transfer; the patent never left the operating-company family, and no NPE is asserting on Celgene/BMS's behalf.

  8. Defensive aggregator (anti-NPE) — not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. It terminates at Celgene Corporation / BMS (operating).


Verdict

Insufficient data (specifically: only the original assignment is on record)

Per the taxonomy, this category expressly covers the case of "only the original assignment." The entire recorded chain is a single transaction: the seven in-house inventors assigning to Celgene Corporation, executed/recorded 2019-04-10 (plus a same-date duplicate indexing). The owner is a large operating pharmaceutical company that was subsequently acquired by Bristol-Myers Squibb, with no shell-entity transfer, no NPE/asserter in the chain, no security interest, no cascading LLC hops, and no defensive-aggregator terminus. Every substantive NPE signal is not present; the only open item is signal #3 (correspondent), which I could not retrieve. This is unremarkable, ordinary operating-company ownership of a research-tool method patent — not an NPE pattern.

Verification links: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ ; legacy assignment search — https://assignment.uspto.gov/patent/index.html (query 11402372 and family member 12,590,953). To close the two open gaps, pull the reel/frame and correspondent for the 2019-04-10 recording directly from the Assignment Center abstract.

Confidence: High on the substance (single inventor→Celgene assignment; operating-company owner; no NPE signals). Moderate on completeness — the reel/frame and correspondent fields were not independently retrieved, and a very recently recorded assignment could post-date the indexed sources.

Generated 9/30/2026, 10:42:43 AM

Prior art

Earlier patents, publications, and products that may anticipate or render the claims unpatentable.

✓ Generated

I'll search for the granted patent's cited prior art. Let me run several targeted queries.

Let me pull the full "Referenced Cited" list and check the Google Patents citation tables.

Prior-Art Analysis — U.S. Patent No. 11,402,372 B2

Scope note: I targeted patent number 11,402,372 specifically and screened out same-digit neighbors that the searches returned (e.g., FR 3 023 172 A1, US 2012/232492 A1, US 11,402,372's unrelated "372" surfacing in WO2018002866 and WO2017192391 search reports, and U.S. 11,492,372). None of those are the patent at issue and none are included below.

Source limitation (must read): I do not have direct API access to USPTO PatentCenter/PAIR or to the USPTO "References Cited" field in this session. The list below is reconstructed from the face-of-patent citation tables as transcribed by Google Patents / Justia / Patents-Review. The retrieved citation list was truncated by my sources (the non-patent-literature list cuts off mid-entry at "Lu et al., …"), so this is not a complete, verified list. Treat the items as reported rather than certified. A PACER-style/PatentCenter pull on application 16/244,667 is required to make this exhaustive.

Date discrepancy flag: the session header states today is 2026-09-30, while this task states April 26, 2026. Citation tables are static, so this does not change the analysis, but any "recently cited" or litigation overlay would.

Relation to prior sections: the earlier-generated sections confirmed only claim 1 (independent) and claim 2 (dependent). The Justia transcript I retrieved in this pass shows claim 2 immediately followed by the "Referenced Cited" block, which suggests the issued patent may have only two claims. I flag this as a probable resolution of the earlier "full claim set unverified" caveat — moderate confidence, still secondary-source based. Anticipation mapping below is therefore limited to claims 1 and 2; if further claims exist (e.g., in continuation US 12,590,953 B2), the analysis must be extended.


1. The §102 framework that governs this patent

Application 16/244,667 was filed 2019-01-10, claiming priority to 2018-01-12. Because the filing is post-AIA, 35 U.S.C. §102(a)(1)–(a)(2) with the §102(b)(1)/(b)(2) exceptions applies:

  • §102(a)(1): prior art only if the reference was publicly available before the 2018-01-12 effective filing date.
  • §102(a)(2): a U.S. patent/published application is prior art only if effectively filed before that date.
  • §102(b)(1)(A): the inventors' own disclosure within one year before the effective filing date is excepted (this matters a lot here — see Matyskiela 2018 below).
  • Anticipation (§102) requires a single reference disclosing every claimed element, including claim 1's very specific limitation (interaction measured via amino acid residues 405–432, SEQ ID NO:3, or 410–432, SEQ ID NO:11, of SALL4) and the affirmative "select the compound that does not induce the interaction" step.

Consequence: citations dated after 2018-01-12 cannot be §102(a)(1) art at all. Several listed citations fall in that window, which is the single most important finding of this pass.


2. Patent documents cited (face of patent)

# Citation (literal, as listed) Publication date Description §102 anticipation potential for claims 1–2
1 US 2004/0265230 A1 — Martinez et al. 2004-12-30 Immunomodulatory-compound family application. Title/content not verified by me (my sources list only "Martinez et al."). None. Pre-dates priority, so it is §102(a)(1)/(pre-AIA 102(b)) art as to whatever it discloses; but nothing in it is reported to disclose SALL4, cereblon neosubstrate recruitment, or the 405–432/410–432 degron. Cannot anticipate a claim requiring SALL4–cereblon interaction at SEQ ID NO:3/11. At most a §103 background reference.
2 US 2008/0241110 A1 — Ma 2008-10-02 Probable match (unverified): Yupo Ma / Nevada Cancer Institute SALL4 application — "Targeting of SALL4 for the treatment and diagnosis of proliferative disorders associated with MDS" (cf. AU 2008259976 / WO 2008/151035, Ma Yupo, 2008). None, on its face. Qualifies as §102(a)(1) art (2008) and is the only citation directed to SALL4 itself — but it discloses SALL4 as a marker/therapeutic target in MDS, not SALL4 as a cereblon neosubstrate, and not the 405–432/410–432 interaction readout or the "select non-inducing compound" step. Missing at least two claimed elements → no anticipation. Relevant for §103 only if combined with an IMiD/cereblon reference.
3 US 2020/0348285 A1 (literal: 20200348285) — Fischer 2020-11-05 Appears to be the Fischer-lab (Dana-Farber) SALL4/cereblon application — substantively the closest subject matter to this patent. Not prior art. Published after both the 2018-01-12 priority date and the 2019-01-10 filing date → cannot be §102(a)(1) art. §102(a)(2) would require it to be effectively filed before 2018-01-12; a 2020 publication makes that implausible. This is the key paradox of the file: the most on-point document is unusable as §102 art because of timing. Verifying its effective filing date is recommended before closing this out.
4 WO 2017/161119 (literal: WO 2017161119) Sept 2017 Content not verified by me. It is the only patent-family citation that pre-dates the 2018-01-12 priority date, so it is the only patent document that could be §102(a)(1) art. The only theoretical §102 patent-document candidate. If (and only if) it discloses cereblon-modifying compounds plus SALL4 (or the SALL4 zinc-finger glycine degron) recruitment, it is the one citation that could support a novelty challenge to claim 1. I could not confirm its disclosure; this is the highest-priority reference to pull in full text.
5 WO 2019/094718 (literal: WO 2019094718) May 2019 Appears related to SALL4/thalidomide degradation work. Not prior art. Published after the 2019-01-10 filing date. Its presence on the citation list is best explained as a related/co-pending family document or IDS submission, not a §102 reference.

3. Non-patent literature cited (face of patent)

Citation Year Description §102 status / anticipation potential
Donovan et al., "Thalidomide promotes degradation of SALL4, a transcription factor implicated in Duane Radial Ray syndrome," eLife 7:e38430 2018 Discloses thalidomide-driven, cereblon-dependent SALL4 degradation — substantively the closest reference in the entire list to claims 1–2's subject matter. Conditional. If the 2018-01-12 priority date holds, it is not §102(a)(1) art. If priority fails (provisional §112 support for the claims is not perfect), it is §102(a)(1) art and a strong anticipation candidate at least for claim 2's degradation steps — and a serious §103 reference for claim 1. It is a third-party publication, so no §102(b)(1)(A) grace-period exception applies to it. Its exact publication date (mid-2018) versus the priority date is decisive and should be verified from the eLife record itself.
Matyskiela et al., "SALL4 mediates teratogenicity as a thalidomide-dependent cereblon substrate," Nat. Chem. Biol. 14:981–987 2018 The inventors' own paper on the same discovery (Matyskiela, Couto, Lu, Hui, Stamp, Chamberlain et al.). Excepted. Even if post-priority, it is the inventors' own disclosure within one year of filing → §102(b)(1)(A) exception. Cannot be used against claims 1–2. (I could not confirm whether it appears verbatim on the '372 face — the list truncated — but the substance is disclosed and the exception applies either way.)
An et al., "pSILAC mass spectrometry reveals ZFP91 as IMiD-dependent substrate of the CRL4^CRBN ubiquitin ligase," Nat Commun 8:15398 2017 Pre-priority; establishes IMiD-dependent, cereblon-directed neosubstrate ubiquitination of a zinc-finger protein (ZFP91). §102(a)(1) art, and the best §103 building block for the general mechanism. Cannot anticipate claims 1–2: it does not name SALL4, does not disclose residues 405–432/410–432, and does not teach selecting a compound that fails to induce SALL4–cereblon binding.
Chamberlain et al., Nat Struct Mol Biol 21(9):803–809 2014 Human cereblon–DDB1–lenalidomide crystal structure. §102(a)(1) art; structural background only. No SALL4. No anticipation.
Gandhi et al., Br J Haematol 164(6):811–821 2014 Lenalidomide/pomalidomide degrade Ikaros/Aiolos via CRL4^CRBN. §102(a)(1) art; mechanism background. No SALL4 → no anticipation.
Krönke et al., Science 343(6168):301–305 2014 Lenalidomide degrades IKZF1/IKZF3 in multiple myeloma. §102(a)(1) art; background. No SALL4 → no anticipation.
Krönke et al., Nature 523(7559):183–188 (+20 pp. supp.) 2015 Lenalidomide induces ubiquitination/degradation of CK1α in del(5q) MDS. §102(a)(1) art; background. No SALL4 → no anticipation.
Hagner et al., "CC-122 …, Blood 126(6):779–789 2015 Pleiotropic pathway modifier / cereblon-binding agent activity in DLBCL. §102(a)(1) art; background. No SALL4 → no anticipation.
Kohlhase et al., J Med Genet 40(7):473–478 2003 SALL4 locus mutations → Okihiro/Holt-Oram/acro-renal-ocular phenotypes overlapping thalidomide embryopathy. §102(a)(1) art; establishes the SALL4 ↔ limb-malformation link. No cereblon, no compound screen → no anticipation.
Kohlhase et al., Birth Defects Res A Clin Mol Teratol 70(8):550–551 2004 SALL4 mutations in patients previously attributed to thalidomide mutagenesis. §102(a)(1) art; same limitation.
Knobloch et al., "Shedding light on an old mystery," Cell Cycle 7(9):1121–1127 2008 Thalidomide-mechanism review. §102(a)(1) art; background. No anticipation.
Fratta et al., Toxicol Appl Pharmacol 7:268–286 1965 Classic thalidomide teratogenicity across rabbit/rat/hamster/mouse. §102(a)(1) art; teratology background. No anticipation.
Emsley et al. (Coot, 2010); Humphrey et al. (VMD, 1996); Harder et al. (OPLS3, 2016) 1996–2016 Crystallography/modeling software and force-field references. No §102 relevance — methodological tool citations.
ISR & Written Opinion, PCT/US2019/013049, dated 2019-05-23 2019 Search report for the instant family's PCT. Not prior art. But it is the single most useful document I could not retrieve: the examiner's own §102/§103 citation set for this family likely appears there.
Lu et al., … (entry truncated in my source) — Presumably Lu et al., Science 2014 (cereblon-dependent Ikaros destruction). §102(a)(1) art; background. No SALL4 → no anticipation. Verify the full entry.

4. Bottom line

  1. No citation listed on the face of US 11,402,372 appears to anticipate claim 1 or claim 2 as issued. Claim 1 requires (i) a sample containing both SALL4 and cereblon; (ii) administration of a cereblon-modifying compound; (iii) determination of the interaction specifically through SALL4 residues 405–432 (SEQ ID NO:3) or 410–432 (SEQ ID NO:11); and (iv) selection of the compound that does not induce that interaction. No listed reference discloses the degron coordinates plus the negative-selection step in a single disclosure.
  2. The citation list is dominated by §103 scaffold, not §102 disclosure: the 1965–2015 teratology, SALL4-genetics (Kohlhase), and cereblon–neosubstrate (An, Gandhi, Krönke, Hagner, Chamberlain) references together supply the pieces the specification assembles, but individually each lacks SALL4 or lacks the screening step.
  3. The two genuinely on-point documents are time-barred or excepted:
  • Donovan et al. 2018 (third party) is the closest §102 risk, but only if the 2018-01-12 priority claim is not perfected. This is the §102 question worth litigating/verifying.
  • Matyskiela et al. 2018 (inventors' own) is shielded by §102(b)(1)(A).
  • US 2020/0348285 (Fischer) and WO 2019/094718 post-date the filing and are categorically unavailable.
  1. Only one listed patent document pre-dates the priority date and is not itself a mere background item: WO 2017/161119. Its content is the highest-value unknown in this analysis and should be pulled full-text immediately.

5. Explicit uncertainties and recommended verification steps

  • Citation list is transcription-based and truncated (my source cut off at "Lu et al., …"). I did not obtain the certified "References Cited" from USPTO PatentCenter for application 16/244,667.
  • Titles/content of US 2004/0265230 A1 (Martinez), US 2008/0241110 A1 (Ma), WO 2017/161119, and WO 2019/094718 were not verified. Identification of Ma as the Nevada Cancer Institute SALL4/MDS application is probable, not confirmed. Under the operating rule to interpret identifiers literally, I have not supplied substitute numbers or corrected any ID.
  • The 2018-01-12 priority date is Google Patents' assertion, repeated in the prior sections. If the provisional does not support the issued claims, Donovan et al. 2018 becomes §102(a)(1) art and the §102 picture changes materially. Verify the provisional's content and the priority claim.
  • Claim count is likely two (claim 2 appears last before "Referenced Cited"), which would resolve the earlier open question — but this is a secondary-source inference.
  • I did not retrieve the ISR for PCT/US2019/013049, which is the most likely source of the family's actual examiner citations.
  • Contradiction check with prior sections: none of substance. The earlier section's note that the abstract recites SALL4 degradation while claim 1 recites interaction is confirmed and consistent with the narrow-claim/no-anticipation picture here. The earlier "no litigation found" finding is unaffected by anything retrieved in this pass.

Sources used: https://patents.justia.com/patent/11402372 (claims 1–2 and "Referenced Cited" block); https://patents.google.com/patent/US11402372/en; https://www.patents-review.com/a/20190219562-methods-screening-cereblon-modifying-compounds.html; RSC citation record for Matyskiela et al., Nat. Chem. Biol. 2018; IPAustralia AU-A-2008259976 (Ma/Yupo, WO 2008/151035) for the probable Ma identification.

Generated 9/30/2026, 10:43:10 AM

Obviousness

Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.

✓ Generated

I'll start by locating the actual prior-art references relied on or cited against this patent, since the "Prior Art section" wasn't included in what was forwarded to me.

Let me pull the specific prior-art citations and the key field references that would be the obviousness candidates.

I could not locate a discrete "Prior Art section" in what was forwarded to me, so I reconstructed the prior art from (a) the reference list embedded in the patent's own specification, (b) the CRBN/IMiD and SALL4 literature of record, and (c) targeted searches. Flagging this as required by the operating rules: the task instruction says "use the results from the Prior Art section of this page," but no such section was included in the material provided. Everything below is therefore reconstructed and labeled as such. I also flag two contradictions with the earlier sections, at the end.


Obviousness Analysis — US 11,402,372 B2 (35 U.S.C. § 103)

1. The claim under analysis and the controlling date

Item Value
Patent US 11,402,372 B2, Methods for screening cereblon modifying compounds
App. no. 16/244,667, filed 2019-01-10
Earliest priority 2018-01-12 (Google Patents "prior art date"; presumed provisional)
Claim 1 (verified) Screen comprising: (a) sample containing SALL4 and cereblon; (b) administer cereblon-modifying compound; (c) determine whether SALL4 and cereblon interact, measured via aa 405–432 (SEQ ID NO: 3) or aa 410–432 (SEQ ID NO: 11) of SALL4; (d) select the compound that does not induce the interaction
Claim 2 (verified) Claim 1 + SALL4 protein-level/degradation readout; select compounds that do not induce degradation
Later family US 12,590,953 B2 (from US 17/851,936)

Scope caveat carried forward: the earlier sections positively verified only claims 1 and 2. The specification summary describes additional ubiquitination-based and teratogenicity-determination screens; I cannot tell from the material provided whether these were issued as claims. The §103 analysis below therefore keys on the verified claims 1–2 and flags where the unverified subject matter would change the analysis.

Controlling date: the §103 inquiry is conducted as of the effective filing date, i.e., 2018-01-12, if and only if the provisional supplies §112 support for the SALL4-interaction and SALL4-degradation limitations. This turns out to be the single most important fact in the whole analysis — see §4.


2. Legal framework applied

  • AIA § 103; Graham v. John Deere, 383 U.S. 1 (1966) (scope/content of prior art; differences; PHOSITA level; secondary considerations).
  • KSR Int'l v. Teleflex, 550 U.S. 398 (2007) — combination of known elements, "obvious to try" where the prior art gives identified and predictable solutions with a reasonable expectation of success.
  • § 102(a)(1)/(a)(2) and § 102(b)(1) date rules; the grace period protects only the inventor's own (or derived) disclosures — not an independent third-party disclosure — and only operates within one year of the effective filing date.

PHOSITA (my construction): a Ph.D.-level molecular biologist/biochemist with 2–5 years' experience in ubiquitin biology and targeted protein degradation, familiar with CRL4^CRBN^, the IMiD drugs, zinc-finger degron motifs, immunoblotting/co-IP/quantitative proteomics, and the thalidomide-embryopathy literature.


3. The prior art landscape as of 2018-01-12

3.1 Patent documents

Reference Date Substance Source
WO 2010/137547 A1 2010-12-02 Expressly cited by the patent itself ("CRBN has also been identified as a target for the development of therapeutic agents for diseases of the cerebral cortex. See WO 2010/137547 A1.") — CRBN as a drug target patent text
US 2016/0319005 A1 (Lopez-Girona et al., Celgene) pub. 2016-11-03 "Methods for the treatment of cancer and inflammatory diseases using cereblon as a predictor" — Celgene's own teaching that CRBN status predicts drug response, i.e., CRBN-based assay/screening paradigm patentimages PDF
Other Celgene CRBN-screening family filings 2014–2017 The Celgene portfolio taught CRBN-based selection assays generally search results

3.2 Non-patent literature — the "platform" references (all pre-2018)

Reference Date Teaching Relevance
Ito et al., Science 2010 CRBN is the primary target of thalidomide teratogenicity; thalidomide binds CRBN establishes the causal chain thalidomide→CRBN→birth defects
Krönke et al., Science 343:301 2014 Lenalidomide causes selective CRBN-dependent degradation of IKZF1/IKZF3 supplies the screening paradigm: treat with compound → measure zinc-finger TF protein levels → detect degradation
Lu et al., Science 343:305 2014 Lenalidomide promotes CRBN-dependent destruction of Ikaros same; plus the "different IMiDs, different substrate spectra" insight
Fischer et al., Nature 512:49 2014 Crystal structure DDB1-CRBN-thalidomide/lenalidomide/pomalidomide; enantioselective binding; substrate-binding pocket structural basis for neosubstrate recruitment; the E377/V388 residues the patent itself relies on
Chamberlain et al., Nat Struct Mol Biol 21:803 2014 Human CRBN–DDB1–lenalidomide structure; basis for responsiveness to analogs same
Matyskiela et al., Nature 535:252 2016 A cereblon modulator recruits GSPT1 — a non-zinc-finger neosubstrate proves neosubstrate identity is compound-dependent and broadly screenable
Petzold et al., Nature 532:127 2016 CK1α degron; β-hairpin / glycine neosubstrate recognition motif directly supplies the structural motif recited in claim 1's degron region
SALL4 genetics: Al-Baradie 2002; Kohlhase 2003, 2005; Borozdin 2004 (×2); Koshiba-Takeuchi 2006; Elling 2006; Eildermann 2012; Gassei 2013 2002–2013 SALL4 is a C2H2 zinc-finger developmental transcription factor; heterozygous loss-of-function causes Duane-radial-ray/Okihiro, Holt-Oram, IVIC, acro-renal-ocular syndromes with forearm/limb, ear, eye, heart, kidney defects — a phenotypic phenocopy of thalidomide embryopathy All cited by the patent itself — i.e., admitted background art

Key admission to note: the patent's own specification cites the SALL4-syndrome literature and the CRBN/thalidomide literature as background. Those citations are applicant-admitted prior art usable in a §103 combination without further authentication.

3.3 The two references that look decisive — but are probably not prior art

Reference Publication Issue
Donovan et al., eLife 7:e38430 (PMID 30067223) 2018-08-01 "Thalidomide promotes degradation of SALL4, a transcription factor implicated in Duane Radial Ray syndrome"
Matyskiela et al., Nat Chem Biol 14:981–987 (PMID 30190590) online 2018-09-06 "SALL4 mediates teratogenicity as a thalidomide-dependent cereblon substrate" — same inventors/lab as the patent

Both postdate the 2018-01-12 priority date. On the face of the record they are not §102(a) prior art — and Matyskiela et al. 2018 is the inventors' own work (grace-period-protected under §102(b)(1)(A) regardless). This is almost certainly why the claims issued: as of the priority date, no one had connected SALL4 to cereblon.


4. The linchpin: priority-date validity

Because the SALL4-cereblon connection is the heart of the claim, the priority date determines the entire §103 outcome:

  • If the 2018-01-12 provisional supports claims 1–2 (i.e., it disclosed either the SALL4–cereblon interaction or SALL4 degradation data), then Donovan and Matyskiela 2018 are out, and the strongest §103 case collapses to the "platform + SALL4-as-candidate" combination in §5. That case is arguable but beatable.
  • If the SALL4 data first appeared in the 2019-01-10 non-provisional, then the effective filing date is 2019-01-10, Donovan (Aug 2018) and Matyskiela 2018 (Sep 2018) become §102(a)(1) prior art, and Matyskiela et al. 2018 becomes an anticipatory / near-per-se obviousness reference: it discloses SALL4 as a thalidomide-dependent cereblon neosubstrate, SALL4 degradation, the ZF2 degron, the G416A mutation abolishing binding, and species specificity — i.e., essentially every limitation of claims 1–2. Under that scenario the claims would be in serious §103 jeopardy (and §102 jeopardy for the degradation aspects).

I could not resolve this from the provided text (no provisional serial or filing date appears in the material). This is the highest-value follow-up: retrieve the 2018-01-12 provisional and confirm it contains SALL4 data. If it does not, the family is exposed.


5. Obviousness combinations on the assumption the priority date holds

Even at 2018-01-12, a strong §103 challenge exists. Three progressively broader grounds:

Ground 1 — "Generic CRBN neosubstrate screen" (weakest)

Ito 2010 + Krönke 2014 / Lu 2014 + Matyskiela 2016 (+ Fischer/Chamberlain 2014)

  • Ito establishes CRBN as the teratogenicity target. Krönke/Lu establish the exact assay format — administer an IMiD to cells, measure zinc-finger TF protein levels, detect selective degradation. Matyskiela 2016 proves neosubstrates are discoverable and compound-specific.
  • Motivation: the field's clear, articulated goal was to map the CRBN neosubstrate repertoire to separate wanted (anti-myeloma: IKZF1/3, CK1α) from unwanted (teratogenic) substrates, and to build safer IMiDs. A "screen compounds against candidate substrates" method is the natural, known instrument.
  • Weakness: the steps themselves (obtain sample, add compound, measure a protein) were routine. But claim 1 names SALL4 and specifies aa 405–432 / 410–432. Ground 1 does not supply SALL4 as the substrate — it only supplies the framework. Without a SALL4 teaching, this ground fails on the "arrangement of old elements already known" rationale because the identifying element is missing.

Ground 2 — "SALL4 was an identified, obvious-to-try candidate" (the real fight)

Ito 2010 + Krönke/Lu 2014 + Petzold 2016 (β-hairpin/glycine degron) + Matyskiela 2016 + the SALL4-syndrome literature (Al-Baradie 2002 / Kohlhase 2003, 2005 / Borozdin 2004 / Koshiba-Takeuchi 2006 — all cited by applicant)

The combination argument a challenger would make:

  1. Same protein family: Krönke/Lu + Petzold taught that CRBN neosubstrates are C2H2 zinc-finger transcription factors bearing a β-hairpin glycine degron. SALL4 is a C2H2 zinc-finger transcription factor (admitted by the patent's own citation set).
  2. Phenotype match = explicit pointer: SALL4 haploinsufficiency phenocopies thalidomide embryopathy (phocomelia, absent thumbs, ear/eye/heart defects). The pre-2018 literature even noted that SALL4-syndrome carriers had been misdiagnosed as thalidomide victims (Borozdin 2004; Kohlhase 2002/2003, as recounted in the eLife commentary). A PHOSITA seeking the teratogenic CRBN substrate would have been led directly and specifically to SALL4.
  3. Predictability + reasonable expectation of success: by 2016 the degron motif was characterized and the CRBN pocket structurally solved (Fischer/Chamberlain 2014; Petzold 2016), so testing whether SALL4's zinc fingers are CRBN-degradable was a routine immunoblot/ubiquitination experiment with a credible chance of success. KSR "obvious to try."

This is the challenger's best case, and it is a genuinely strong one on motivation. It maps cleanly onto claim 2 (degradation screen) and the specification's other disclosed screens.

Ground 3 — Cite Celgene's own work against itself

WO 2010/137547 A1 + US 2016/0319005 A1 + [any of Ground 1/2]

Celgene's own earlier filings taught (i) CRBN as a therapeutic target and (ii) using cereblon as a predictor/assay readout. Combined with Krönke/Lu's degradation-assay format and the SALL4 pointer, these supply the "administer compound to a cereblon-containing sample and assay" architecture without any inventive step by the applicant. Applicant-admitted art (the specification cites WO 2010/137547) is the easiest to use.

Why a PHOSITA would have been motivated — the articulated rationale

  • Safety-driven, not curiosity-driven. Thalidomide's teratogenicity was the defining liability of the entire class; every second-generation CRBN modulator (lenalidomide, pomalidomide, CC-220) had to address it. The motivation to identify and avoid the teratogenic neosubstrate was explicit and pressing.
  • The method elements were conventional. Immunoblotting, ELISA, IHC, co-IP/pull-down, FRET, MS, and HTRF ubiquitination assays are recited in the patent itself as known techniques ("determination of protein degradation can be performed by any conventional methods known to those skilled in the art"; "any method known to those skilled in the art can be used").
  • Reasonable expectation of success. One substrate of the class (IKZF1/3) had been found by exactly this workflow in 2014; GSPT1 in 2016; CK1α in 2016. Repeating a thrice-validated workflow on a phenotypically-implicated zinc-finger TF is the textbook KSR combination.

6. Reasons the claims likely survive §103 (the rebuttal)

  1. SALL4 selection was not a mere substitution. Hundreds of C2H2 zinc-finger TFs exist; only a subset is CRBN-degradable. The prior art had no teaching that SALL4 — specifically — was a CRBN neosubstrate. Identifying it was the discovery, and the claims name it.
  2. Species specificity was unexplained and non-obvious. The patent's Figs. 1E–1H, 5, 8, 11 show rabbit SALL4 is degraded while mouse SALL4 is not, and that huCRBN mice show ZFP91 degradation but not SALL4 degradation and no limb defects (Fig. 11). That species-specific behaviour was a recognized puzzle pre-2018; the claims' practical utility rests on it.
  3. Specific degron boundaries. Claim 1 requires the interaction be determined via aa 405–432 (SEQ ID NO: 3) or aa 410–432 (SEQ ID NO: 11), and the specification pins the G416A mutation as disrupting binding. Even a PHOSITA who suspected SALL4 would not necessarily have arrived at those boundaries or that residue without experimentation.
  4. Unexpected/surprising result + solution to a long-felt need. Thalidomide's mechanism of teratogenicity had been unresolved for ~60 years. Per Graham, this cuts strongly toward non-obviousness. Caution: to be cognizable, this evidence must be tied to the claimed subject matter (nexus). The claim is a screening method; the argument is that SALL4 downregulation is the teratogenicity driver — a nexus that must be pleaded and supported.
  5. Corroboration by simultaneous independent discovery. Within months, a fully independent group (Donovan/Fischer, eLife Aug 2018) reached the same SALL4 conclusion. This cuts both ways: it evidences non-obviousness (not everyone could see it), but it also shows the answer was reachable by the ordinary skillset, which a challenger will lean on.

Net assessment: the claim set is most vulnerable where it (i) looks like a generic application of a known CRBN-screen workflow, and least vulnerable where claim 1's specific degron sequences and SALL4 identification are enforced. If a challenger can show the specification's own admitted art (SALL4 syndromes + β-hairpin glycine degron) rendered SALL4 an obvious target, claim 2 (degradation) is the more exposed of the two verified claims.


7. Contradictions and open items to flag

  1. Contradiction / missing input: the task directed me to "use the results from the Prior Art section of this page," but no prior-art section was included in the material provided to me. The full-text dump contains a "Definitions" section and a "Prior art keywords" line (sall; cereblon; compound; protein; sample) but no "References Cited" list. My prior art is therefore reconstructed (§3) from the patent's inline citations plus field literature, and should be re-verified against the actual Office action / IDS of record.
  2. Date inconsistency: the previously generated "Litigation summary" references events dated 30 July 2026, while the present task sets the current date as 26 April 2026 and the system clock reads 30 September 2026. These cannot all be correct. I have treated the task-supplied date (2026-04-26) as operative and the July 2026 litigation item as unverified.
  3. Verified claim scope is incomplete. As the earlier sections noted, only claims 1–2 were positively confirmed. If the issued patent contains independent claims to SALL4 ubiquitination screening or to determining teratogenicity, the §103 analysis shifts: ubiquitination/teratogenicity readouts are more vulnerable to the "routine assay of a known substrate" rationale than the sequence-specific interaction claim.
  4. Confidence: moderate on the prior-art reconstruction and the date analysis; low on whether the 2018-01-12 provisional actually contains SALL4 data.
  5. Recommendation: (a) obtain the provisional and the file history/IDS; (b) confirm the issued claim set; (c) verify the exact publication dates of Matyskiela J Med Chem 2018 (61:535–542) and any other early-2018 Celgene papers relative to 2018-01-12 (I could not pin this date precisely).

Sources consulted: US11402372 on Google Patents; Donovan et al., eLife 2018;7:e38430 (PMID 30067223); Matyskiela et al., Nat Chem Biol 2018;14:981–987 (PMID 30190590, online 2018-09-06); Rodríguez-Pérez & Rape, eLife 2018;7:e41002 (commentary noting misdiagnosis of SALL4-syndrome carriers as thalidomide victims); US 2016/0319005 A1 (Lopez-Girona et al., Celgene); the patent's own citations to WO 2010/137547 A1, Al-Baradie 2002, Kohlhase 2003/2005, Borozdin 2004, Koshiba-Takeuchi 2006, Elling 2006, Eildermann 2012, Gassei 2013.

Generated 9/30/2026, 10:43:09 AM

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