Invalidity dossier
US 6755784
Methods for delivering a drug to a patient while restricting access to the drug by patients for whom the drug may be contraindicated
Current assignee: Celgene Corp.
Added 10/1/2026, 4:04:59 AM
Active provider: DeepSeek · deepseek-v4-flash
Auto-generating section 1 of 2: Extensions…
Each section takes ~30-60s with web-search grounding. Keep this tab open — sections will fill in below as they complete.
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including any 2026 CAFC activity.
Let me verify the independent claim text and check for any Federal Circuit 2026 activity.
Let me do one final targeted check for any appellate or PTAB activity specific to this patent number.
Summary — US Patent 6,755,784 B2
Note on scope of search. I searched for this specific number. I found no 2026 CAFC docket, and no Federal Circuit appeal at all, tied to US 6,755,784. The only Federal Circuit litigation I could confirm in this patent family involved the parent patents (6,045,501 and 6,315,720), which Celgene appealed in Nov. 2017 after PTAB invalidity rulings (Coalition for Affordable Drugs IPRs). That should not be attributed to the '784 patent. Treat "no 2026 CAFC activity for '784" as my finding on the evidence available, not as a certified negative — I could not query PACER/CAFC dockets directly.
Bibliographic data (per Google Patents and FDA Orange Book listings)
| Field | Value |
|---|---|
| Patent number | US 6,755,784 B2 |
| Title | Methods for delivering a drug to a patient while restricting access to the drug by patients for whom the drug may be contraindicated |
| Inventors | Bruce A. Williams; Joseph K. Kaminski |
| Assignee | Celgene Corporation (original and current per Google Patents; Celgene was acquired by Bristol Myers Squibb in 2019) |
| Application no. | 10/383,275 |
| Filed | March 7, 2003 |
| Issued | June 29, 2004 |
| Earliest priority | October 23, 2000 |
| Pre-grant pub. | US 2003/0149345 A1 (Aug. 7, 2003) |
| Status | Expired – Lifetime (expiration listed as Oct. 23, 2020; Google Patents shows adjusted expiration 2020‑11‑26) |
Continuity chain (from the printed patent): App. 10/383,275 is a continuation of Ser. No. 09/965,155 (filed Sep. 27, 2001, now US 6,561,977), which is a continuation of Ser. No. 09/694,217 (filed Oct. 23, 2000, now US 6,315,720). This matches the family of Celgene "distribution patents" covering the S.T.E.P.S.® / RevAssist REMS programs. Terminal disclaimers over 6,315,720, 6,561,977, 7,141,018 and 6,869,399 appear in the file history.
Uncertainty flags:
- The Google Patents timeline entry "2003‑03‑07 Priority to US10/383,275" is a family-linking artifact; the legal priority date is Oct. 23, 2000, as confirmed by the printed "Prior art date."
- One Orange Book excerpt shows a row "6755784 … PED … Nov 14, 2027," which is inconsistent with a 6‑month pediatric extension of an Oct. 2020 expiry. I read this as a likely OCR/table-alignment artifact in the scanned Orange Book PDF; I am not confident in that date.
Abstract (verbatim)
"Methods for delivering a drug to a patients in need of the drug, while restricting access to the drug by patients for whom the drug may be contraindicated are disclosed. The methods are of the type in which prescriptions for the drug are filled by a pharmacy only after a computer readable storage medium has been consulted to retrieve a prescription approval code. Embodiments are provided wherein the patients are assigned to risk groups based upon the risk that taking the drug will lead to an adverse side effect, and certain additional information, such as periodic surveys and diagnostic tests probative of the ongoing risk of the side effect developing are obtained before prescriptions for the drug are approved."
Independent claims (plain language)
Available claim records (FreePatentsOnline, DrugPatentWatch) show claims 1–34, of which claim 1 is the only independent claim; claims 2–34 all depend, directly or indirectly, on claim 1. Caveat: this reflects the claim set as reproduced in secondary databases; I did not view the official USPTO claim sheet.
Claim 1 — A method for delivering a drug to patients while restricting access by contraindicated patients, comprising:
- Gating on an approval code — prescriptions may be filled by a pharmacy only after the pharmacy receives a prescription approval code from a computer-readable storage medium (i.e., the pharmacy is not the decision-maker; it merely retrieves a code).
- Generation of that approval code requires five steps:
- (a) defining a plurality of patient risk groups based on a predefined set of risk parameters for the drug;
- (b) defining a set of information to be obtained from the patient that is probative of whether an adverse side effect is likely if the drug is taken;
- (c) in response to that information, assigning the patient to at least one risk group, and entering the patient, the information, and the risk-group assignment into the medium;
- (d) based on the information and the risk-group assignment, determining whether the risk of the adverse side effect is acceptable; and
- (e) upon determining the risk is acceptable, generating the prescription approval code that the pharmacy must receive before the prescription is filled.
Plain-language gist: This is a method-of-doing-business-style claim to a controlled-distribution ("closed") drug-dispensing system. The inventive hook over the earlier Elsayed et al. patent (US 6,045,501) is the risk-group stratification engine: patients are triaged into risk tiers using drug-specific risk parameters (for a teratogen, keyed to sex/reproductive status, e.g., females of childbearing potential, females of non-childbearing potential, sexually active males, sexually inactive males), and the system only issues a dispensing approval code when the assessed risk is acceptable. The dependent claims layer on counseling/informed consent (4–8), diagnostic and genetic testing (9–12), side-effect loci such as the patient, a fetus, or a recipient of the patient's bodily fluids (13–16), periodic re-collection of information via IVR surveys (17–21), contraceptives (22), teratogenicity and thalidomide-specific embodiments (23–29), and drug-interaction regimes (30–34).
Litigation / regulatory context
- Orange Book: listed for THALOMID (thalidomide) and REVLIMID (lenalidomide), with use codes such as U‑371, U‑731, U‑694, U‑1210, U‑1361 at various times.
- District court cases naming the '784 patent include Celgene v. Hetero Labs (D.N.J. 2:17‑cv‑03387), Celgene v. Hikma (D.N.J. 2:18‑cv‑13477), Celgene v. Aurobindo, and Celgene v. Lannett/Breckenridge/Dr. Reddy's matters — plus antitrust/consumer cases (United Healthcare v. Celgene, D. Minn. 0:20‑cv‑00686; Blue Cross v. Celgene, D.D.C. 1:20‑cv‑01980).
- Several of these suits followed Paragraph IV certifications against the '784 patent, and Chinese/Taiwanese industry commentary lists '784 among the 16 Celgene patents asserted against Lotus/Alvogen over lenalidomide.
- The '784 also appears as a cited reference in unrelated litigation documents (e.g., Jazz v. Avadel), which should not be read as an assertion of the patent in that case.
Bottom line: I do not have authoritative evidence of any pending 2026 CAFC appeal involving US 6,755,784, and the patent is recorded as expired. If you need a definitive docket check, that requires a direct PACER/CAFC query, which I could not perform here.
Generated 10/1/2026, 4:13:33 AM
Cases on file (6)
Group view →Specific litigation cases in our database that name US patent 6755784. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Celgene Corp. v. Hikma Pharmaceuticals International Ltd.filed Aug 31, 20182:18-cv-13477D.N.J.terminated Sep 18, 2019terminated
Defendants: Hikma Pharmaceuticals International Ltd.
Other patents asserted: 6315720, 6561977, 6869399, 7141018, 7230012, 7959566, 8315886, 8626531
- Celgene Corp. v. Dr. Reddy's Laboratories, Ltd. et al.filed Apr 12, 20182:18-cv-06378D.N.J.terminated Sep 17, 2020settled
Defendants: Dr. Reddy's Laboratories, Ltd., Dr. Reddy's Laboratories, Inc.
- Celgene Corporation v. Lannett Holdings, Inc.filed Jan 30, 20152:15-cv-00697United States District Court for the District of New Jerseyunconfirmed
Defendants: Lannett Holdings, Inc.
- Celgene Corporation v. Natco Pharma Limited et al.filed Oct 8, 20102:10-cv-05197 (SDW)(LDW); consolidated with 2:12-cv-04571 (SDW)(LDW)U.S. District Court, District of New Jersey (Newark)terminated Jan 5, 2016settled; consent judgment entered
Defendants: Natco Pharma Limited, Arrow International Limited, Watson Laboratories, Inc.
Other patents asserted: 6555554, 5635517, 6045501, 6315720, 6561976, 6561977, 7119106, 7465800, 6281230, 8288415
- Celgene Corporation v. Barr Laboratories, Inc.filed Aug 23, 20072:07-cv-04050United States District Court for the District of New Jerseyunconfirmed
Defendants: Barr Laboratories, Inc.
- Celgene Corp. et al. v. Barr Laboratories, Inc.filed Jan 18, 20072:07-cv-00286D.N.J.terminated May 26, 2010dismissed
Defendants: Barr Laboratories, Inc.
Other patents asserted: 6045501, 6315720, 6561976, 6561977, 6869399, 7141018
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 6755784. Let me start with the litigation databases and the case numbers already associated with this patent.
Let me search for details on the specific case numbers associated with this patent.
I was able to retrieve substantial litigation data before hitting my search-step limit. Below is what I can ground in the sources I retrieved, with clear flags on the cases where I could confirm the '784 patent specifically versus cases tied to the patent family (per Google Patents' "Family has litigation" list). I did not auto-correct any numbers.
Principal point
US 6,755,784 ("Methods for delivering a drug to a patient while restricting access to the drug by patients for whom the drug may be contraindicated") is a Celgene (now Bristol Myers Squibb) "distribution"/REMS patent (the S.T.E.P.S. family; inventors Bruce A. Williams and Joseph K. Kaminski). It expired Oct. 23, 2020 (Orange Book), and was asserted in several Hatch-Waxman/ANDA infringement suits plus referenced in follow-on antitrust litigation.
Cases I can confirm asserting the '784 patent
| Case | Plaintiff | Defendant | Jurisdiction | Case No. | Filed | Status/Outcome |
|---|---|---|---|---|---|---|
| Celgene Corp. et al. v. Barr Labs, Inc. | Celgene Corp. & Children's Medical Center Corp. | Barr Laboratories, Inc. | D.N.J. | 2:07-cv-00286 (SDW)(MCA) | 2007-01-18 | Dismissed; stipulation 2010-05-21, order 2010-05-26, after Barr withdrew its thalidomide ANDA. Barr's antitrust counterclaims dismissed with prejudice; patent claims dismissed without prejudice. The '784 patent is listed among the patents-in-suit (along with '501, '720, '976, '977, '399, '018). |
| Celgene Corp. v. Natco Pharma Ltd. (and Arrow/Watson) | Celgene Corp. | Natco Pharma Ltd., et al. | D.N.J. | 2:10-cv-05197 (SDW)(MCA) (consolidated with No. 12-4571) | 2010-10-08 (2d action 2012-07-20) | Settled; Consent Judgment entered 2016-01-04. '784 was among the asserted patents (with '517, '501, '720, '554, '976, '977, '106, '800). This is the Natco settlement that became the centerpiece of later reverse-payment antitrust claims. |
| Celgene Corp. v. [Dr. Reddy's Laboratories, Ltd.](/litigations/by-plaintiff/Dr.%20Reddy's%20Laboratories%2C%20Ltd.) et al. | Celgene Corp. | Dr. Reddy's Laboratories, Ltd.; Dr. Reddy's Laboratories, Inc. | D.N.J. | 2:18-cv-06378 | 2018-04-12 | Settled 2020-09-17 (announced by BMS); Consent Judgment (ECF No. 67) entered. Patents named: 6,315,720; 6,561,977; 6,755,784; 8,626,531. DRL licensed to sell volume-limited generic lenalidomide after March 2022, unlimited from no earlier than Jan. 31, 2026. |
| Celgene Corp. v. Hikma Pharmaceuticals International Ltd. | Celgene Corp. | Hikma Pharmaceuticals International Ltd. | D.N.J. | 2:18-cv-13477 | 2018-08-31 | Terminated 2019-09-18. Patents named: 6,315,720; 6,561,977; 6,755,784; 6,869,399; 7,141,018; 7,230,012; 7,959,566; 8,315,886; 8,626,531. |
| Celgene Corp. v. Apotex Inc. | Celgene Corp. | Apotex Inc. | D.N.J. | 2:19-cv-13994 | 2019-06-19 | Terminated 2021-03-10. Patent list includes 6,755,784 (with '720, '977, '740, '800, '363, '217, '886, '717, '531, '929, '120). |
Sources: Google Patents (https://patents.google.com/patent/US6755784/en); DrugPatentWatch case pages (e.g., https://www.drugpatentwatch.com/p/litigation/casename/index.php?query=CELGENE+CORPORATION+v.+HI=HIKMA...; .../CELGENE+CORPORATION+v.+APOTEX+INC.%7C2%3A19-cv-13994); CourtListener dockets for 2:07-cv-00286; BMS settlement press release (https://www.biospace.com/...) and the In re Revlimid/Thalomid litigation records; IP NAVI record for 2:18-cv-06378 (https://www.ip-navi.or.kr/disputenews/disputenewsIpDetail.navi?news_seq=[178093](/patent/178093)).
Cases tied to the family but NOT confirmed to assert '784 specifically
Google Patents' "Family has litigation" section (family=24787895) also lists these, which I could not verify as asserting the '784 patent in particular (they may involve sibling patents '720/'977/'531/etc.):
- 2:17-cv-06842 (D.N.J.)
- 2:18-cv-00461 (D.N.J.) — and a same-numbered case in E.D. Tex. (2:18-cv-00461)
- 2:18-cv-11518 (D.N.J.)
- 2:15-cv-00697 (D.N.J.)
- 2:18-cv-00461 (E.D. Tex.)
Note: 2:07-cv-04050 (D.N.J.) is not a separate matter — per the Barr stipulation of dismissal, it (and 07-5458 and 08-3357) were consolidated into 2:07-cv-00286. That stipulation text refers to "Civil Action Nos. 07-4050, 07-5458 and 08-3357 consolidated therewith."
Also relevant, though the '784 patent itself is not asserted there: the '784 S.T.E.P.S. family is central to the follow-on antitrust actions (e.g., In re Revlimid and Thalomid Purchaser Antitrust Litigation; a 2025 BMS/Celgene antitrust complaint in D.N.J., Case 1:25-cv-05237-ER, filed 2025-06-24), where plaintiffs allege the distribution patents were fraudulently obtained and used in "sham" serial litigation. These are antitrust claims about the patent family, not infringement counts on '784.
Limits / caveats
- I reached my tool-call limit, so I could not independently pull PACER dockets for the five family-level case numbers above to confirm whether '784 was actually pleaded. I'm flagging that gap rather than guessing.
- Litigation over the REMS/distribution patents frequently involved multiple sibling patents (the '501/'720/'976/'977/'784/'399/'018 family). Where a docket summary lists only one representative patent (e.g., DrugPatentWatch's 2:07-cv-00286 page shows only 6,869,399), the underlying complaint still enumerates the full family including '784.
- Case outcomes for the settled ANDA suits were confidential in their financial terms; the public data points are the consent judgments/license entry dates.
If you want, I can attempt to verify the five unconfirmed family cases (2:17-cv-06842, 2:18-cv-00461, 2:18-cv-11518, 2:15-cv-00697) against PACER/Unified Patents in follow-up searches.
Generated 10/1/2026, 4:13:41 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.
Current assignee: Celgene Corp.
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.
I'll start by verifying the ODP "no proceedings" signal against public sources, since this patent family has a heavy litigation history.
Let me dig deeper with targeted queries on the PTAB docket and the litigation family.
Key lead: IPR2015-01103 (CFAD VI v. Celgene) against the sibling '720 patent. Let me pin down whether the '784 patent itself was challenged.
Proceedings overview
Total AIA trial proceedings on file for U.S. Patent No. 6,755,784: zero. The USPTO Open Data Portal structured block returns no IPR, PGR, or CBM proceedings for this patent — no petitioner has ever challenged the '784 claims at the PTAB — which means there is no PTAB-driven claim cancellation, no institution decision, and no § 315(e)(2) estoppel attaching to this patent; a defendant today faces a patent whose claims are entirely "untested" at the Board, but also one that expired on 2020-11-26 (adjusted expiration per the Google Patents legal-status record; the sibling REMS patents '501 and '720 expired 2020-10-23), so the practical defensive posture is "expired patent — past-damages exposure only," not "hardened by surviving an IPR."
There are therefore no proceedings to rank. Below I cover the closest analogues in the same REMS patent family — clearly labeled as not proceedings on the '784 — because they drive the real invalidity narrative a defendant would use.
Related PTAB activity (NOT on U.S. 6,755,784 — context only)
The '784 shares its Oct. 23, 2000 priority chain with the two REMS patents that were attacked: U.S. 6,045,501 (the '501) and U.S. 6,315,720 (the '720). Those proceedings are the template a defendant would borrow — and the reason the '784 was never separately petitioned is plausibly that its siblings fell first.
IPR2015-01092 — Coalition for Affordable Drugs VI LLC v. Celgene Corp.
- Type: Inter Partes Review (AIA)
- Patent challenged: U.S. 6,045,501 (not the '784)
- Filed: 2015-04-23
- Status: Final Written Decision issued 2016-10-26 holding claims 1–10 unpatentable
- Institution decision: instituted 2015-10-27 on a single ground — obviousness under § 103 over Powell + Mitchell + Dishman
- FWD: all ten '501 claims unpatentable as obvious; rehearing denied 2017-09-08
- Appeal: Celgene appeal No. 18-1171; affirmed, Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019). Cert petition filed 2020-02-26, No. 19-1074 (disposition not shown in the sources retrieved here — verify).
- Source records: https://www.supremecourt.gov/DocketPDF/19/19-1074/[134252](/patent/134252)/20200226155847157_Celgene%20Corp.%20v.%20Peter%20-%20Cert%20Petition%20-%20Appendix.pdf ; https://portal.unifiedpatents.com/ptab/case/IPR2015-01092
IPR2015-01103 — Coalition for Affordable Drugs VI LLC v. Celgene Corp.
- Type: Inter Partes Review (AIA)
- Patent challenged: U.S. 6,315,720 (the '720 — this is the direct parent/sibling in the '784 family) (not the '784)
- Filed: 2015-04-23
- Status: FWD issued 2016-10-26; Celgene's rehearing request granted as to a certain claim (2017-09-08), distinguishing it from the '501 outcome
- Appeal: Celgene appeal No. 18-1167; affirmed, 931 F.3d 1342 (Fed. Cir. 2019)
- Source records: https://portal.unifiedpatents.com/ptab/case/IPR2015-01103 ; Jones Day engagement page: https://www.jonesday.com/en/practices/experience/2015/04/celgene-defends-rems-patents-against-kyle-bass-ipr-petitions
The rest of the CFAD campaign
CFAD VI filed four IPR petitions in April–May 2015 against Celgene's REMS family — IPR2015-01092, -01096, -01102, -01103 (plus IPR2015-01169 against U.S. 5,635,517). Jones Day's own description confirms "four IPR petitions … against U.S. Patent Nos. 6,045,501 and 6,315,720," and cites IPR2015-01102. I have confidently confirmed the patent mapping only for -01092 ('501) and -01103 ('720); I could not confirm from these results which of -01096 / -01102 maps to which patent, and neither is the '784. Celgene's SEC disclosure summarizes the campaign: petitions filed 2015-04-23, institution 2015-10-27, oral hearing 2016-07-21, decisions 2016-10-26 invalidating the '501 and '720 as obvious, appeals filed 2017-11-06 and 2017-11-09. Note also Celgene's statement that it "retain[s] other patents covering certain aspects of our REMS program" — the '784 being one of them.
Strategic summary
Claim status on the '784: 100% untested at the PTAB. No claim of 6,755,784 has been canceled, and none has been held patentable by the Board — there simply is no Board record. Because none of the '501/'720 holdings name '784 claims, you cannot represent to a court that any '784 claim is dead. But the practical picture is more favorable than "untested" suggests: the '784 is a continuation in the same Oct. 23, 2000 family as the '501 and '720 (see the cross-reference to Ser. Nos. 09/965,155 → 6,561,977 and 09/694,217 → 6,315,720), it was terminally disclaimed against those prior patents, and the Federal Circuit has now affirmed that the core REMS-method claims of '501 and '720 are obvious over Powell, Mitchell, and Dishman (Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019)). The '784's own § 103 vulnerability is therefore well-mapped public terrain, even though no petition was ever filed against it. Separately, the '784 expired 2020-11-26 (Google Patents adjusted-expiration entry; Orange Book lists Oct. 23, 2020 for the '784, with pediatric exclusivity tagged to certain NDAs — remember pediatric exclusivity is an FDA marketing bar, not patent term). If the demand letter targets post-2020 conduct, the patent-term story ends at 2020-11-26.
Estoppel landscape: essentially empty — which cuts for a defendant. Because no IPR/PGR was ever instituted on the '784, no petitioner carries § 315(e)(2) estoppel on these claims, and no privy of CFAD (or of any generic ANDA filer) is barred from raising Powell/Mitchell/Dishman-type art against the '784. Conversely, there is also no favorable estoppel you can borrow: the CFAD FWDs and the Federal Circuit affirmance bind only the parties as to the '501 and '720. What you can do is (a) adopt the admitted record in the '501/'720 IPRs as your invalidity roadmap, and (b) note that the '784's claims recite the same retrieval-of-a-prescription-approval-code architecture the Board and the Federal Circuit found obvious in the sibling patents.
Pattern signals. No defensive aggregator (Unified Patents, RPX, etc.) ever petitioned the '784; the only PTAB actor in this family was Coalition for Affordable Drugs VI LLC — the Kyle Bass hedge-fund entity — a one-shot, litigation-funded campaign that died with the 2015–2017 wave and that Celgene fought to a Federal Circuit affirmance. That cuts both ways: the '784 was never picked up by any post-SAS, post-Fintiv professional petitioner, suggesting either (i) residual doubt about the art or (ii) the patent's near-term 2020 expiry made a $200K+ IPR uneconomic. Celgene, for its part, litigated the family hard in the district courts — the '784 appears in the New Jersey and Eastern District of Texas dockets in the "PTAB proceedings on file" block and was among the 16 patents Celgene asserted against Lotus/Alvogen, and in Celgene v. Hetero (D.N.J. 2:17-cv-03387).
Recommended next steps
- Do not represent that any '784 claim has been canceled. No FWD exists for this patent. If the demand letter cites the '784, the correct framing is "expired patent with a sibling-family invalidity record," not "claims-invalidated patent."
- Lead with the expiration date. Confirm the '784 term date (Google Patents adjusted expiration: 2020-11-26) against the USPTO Patent Center and the Orange Book entry for the relevant NDA, and confirm whether any pediatric exclusivity still blocks generic approval (that is an FDA question, not a patent one). Any liability theory must be limited to pre-expiration conduct, subject to § 286's six-year lookback.
- Weaponize the sibling Family record. Pull the FWDs in IPR2015-01092 (Paper 73) and IPR2015-01103 (Paper 76) and the Federal Circuit opinion in Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019), via PTAB E2E (https://ptacts.uspto.gov/ptabweb/) and CourtListener. Use the Powell/Mitchell/Dishman obviousness rationale as your § 103 template for the '784 claims, and anchor claim construction on the filing-date prosecution record (the '784 family's independent claims recite retrieval of a prescription approval code before pharmacy dispensing — see the prosecution history reproduced at https://www.courtlistener.com/docket/[6323341/250](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=6323341-0250)/30/celgene-corporation-v-hetero-labs-limited/).
- Confirm the cert disposition yourself. The cert petition in No. 19-1074 was filed 2020-02-26; my retrieved sources show the petition and appendix but not the disposition, so verify on the Supreme Court docket before citing it as final.
- Absence-of-IPR is a signal, but a weak one here. A 20-year-old, already-expired REMS patent that no aggregator ever petitioned is not "hardened by surviving IPRs" — it is "never worth petitioning." Say that plainly rather than letting an opponent frame the empty PTAB docket as a validity endorsement.
Generated 10/1/2026, 4:13:58 AM
Ownership chain (2)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2000-10-23 · recorded 2001-01-05 · reel 11469/0882 · Assignment
Bruce A. Williams; Joseph K. KaminskiCelgene Corporation
inventor-to-company
? · recorded 2003-04-23 · Assignment
Joseph K. Kaminski; Bruce A. WilliamsCelgene Corporation
continuation assignment
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.
I'll start by cross-checking the assignment record and ownership history across the sources named.
Inventors
| Inventor | Residence at filing | Employer at time of filing |
|---|---|---|
| Bruce A. Williams | 37 Winding Way, Flemington, NJ | Celgene Corporation (listed on the patent as assignee; the inventors appear to have been Celgene personnel working on the Thalomid/Revlimid restricted-distribution program). |
| Joseph K. Kaminski | Hampton, NJ | Celgene Corporation (same). |
Confirmed via the complaint caption of Celgene Corporation v. Hikma Pharmaceuticals International Ltd., D.N.J. 2:18-cv-13477: "(75) Inventors: Bruce A. Williams, Flemington, NJ (US); Joseph K. Kaminski, Hampton, NJ (US)" and the assignee listing "(73) Assignee: Celgene Corporation, Summit, NJ."
Pattern notes: No unusual inventor-departure signal. Williams and Kaminski are the named inventors across the entire REMS patent family (US 6,315,720; 6,561,977; 6,755,784; 6,869,399; 7,141,018; 7,959,566; 8,315,886; 8,626,531). Both remained associated with the same small family across a decade of continuations (2000–2012), and their names continued to appear on the family's later continuations. This is a long, stable corporate-inventor pattern, not a pre-fire-sale exit.
Original assignee
Celgene Corporation, Summit, NJ (corporate address used at issuance; an earlier-recorded assignment form in the family used "7 Powder Horn Drive, Warren, New Jersey 07059"). The patent states: "the FDA has recently approved an application by Celgene Corporation, which is the assignee of the present patent application, to market thalidomide for the treatment of ENL."
- Product embodying the claims: Yes. The claims cover the restricted-distribution method underlying Celgene's Thalomid/Revlimid REMS (S.T.E.P.S.®) program. US 6,755,784 is listed in the FDA Orange Book against LENALIDOMIDE (REVLIMID, NDA 021880), with a patent expiration of Oct 23, 2020 and pediatric exclusivity to Nov 14, 2027 (Orange Book 41st ed.). It was also listed against THALIDOMIDE (THALOMID, NDA 020785).
- Primary line of business: Branded biopharmaceuticals (oncology/immunology).
- Current status: Operating, but no longer independent. Celgene was acquired by Bristol-Myers Squibb in a ~$74B cash-and-stock transaction announced 2019-01-03 and completed 2019-11-20; Celgene became a wholly owned BMS subsidiary. Not bankrupt, not dissolved.
Assignment timeline
I want to be transparent about source quality. The USPTO Assignment Center / Assignment Search UI was not directly retrievable in my searches, so the entries below are reconstructed from (a) Google Patents legal-events data on the patent page, and (b) assignment documents reproduced in the Celgene ANDA litigation record (CourtListener). Where a reel/frame is not directly verified for US 6,755,784, I say so.
Executed on or about 2000-10-23 / recorded 2001-01-05 — Reel 11469, Frame 0882 (parent patent, US 6,315,720 — see note)
- Conveyance: Assignment of assignors' interest
- Assignor: Bruce A. Williams; Joseph K. Kaminski
- Assignee: Celgene Corporation (Delaware corporation)
- Correspondent: not captured in available sources.
- Context: Original inventor-to-company assignment for the family's foundational application (Ser. No. 09/694,217). This reel/frame is stated verbatim in Celgene's Patent Owner filing in IPR2015-01103: "The Assignment was recorded with the United States Patent and Trademark Office on January 5, 2001, at Reel 11469, Frame 882." It covers the '720 patent, not US 6,755,784 directly, but is the root of the chain.
Executed ~2003 (application filed 2003-03-07) / recorded 2003-04-23 — Reel/Frame not directly verified for the '784 patent
- Conveyance: Assignment of assignors' interest ("ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS)")
- Assignor: Joseph K. Kaminski; Bruce A. Williams
- Assignee: Celgene Corporation
- Correspondent: not captured. (A candidate reel/frame — 013982/0697, naming assignee "Celgene Corporation, 7 Powder Horn Drive, Warren, New Jersey 07059" — appears in the Celgene v. Hetero exhibit bundle, D.N.J. 2:17-cv-03387, Doc. 250-30, but I could not confirm that this reel/frame attaches specifically to US 6,755,784 rather than to a sibling family member. Treat as unverified.)
- Context: Routine continuation-application assignment of the same inventors' rights to Celgene — a single corporate assignment, not a transfer to any third party.
No post-2003 assignment, security agreement, license, merger, or change-of-name record relating to US 6,755,784 was found in any source consulted. In particular, I found no recorded assignment transferring the patent to Bristol-Myers Squibb following the 2019 merger, and no transfer to any licensing entity, holding LLC, or patent monetization firm. If the Assignment Center shows additional records, they would be maintenance-fee/terminal-disclaimer administrative entries rather than ownership conveyances.
Timeline diagram
timeline
title Ownership of US 6755784
2000 : Foundational application filed
2001 : Inventors assign rights to Celgene
2003 : Continuation filed for 6755784
: Inventors assign to Celgene
2004 : Patent 6755784 issued to Celgene
2007 : Celgene files first suits on the family
2017 : Celgene sues generic makers under ANDA
2018 : More REMS patent suits filed
2019 : Celgene acquired by Bristol Myers Squibb
2020 : Patent term ends
NPE / troll-pattern signals
Shell-entity transfer — Not present. The only recorded ownership transfer is inventors → Celgene Corporation (2003-04-23). No assignment to any entity with an "IP / Patents / Licensing / Holdings / Ventures" suffix; no single-purpose LLC; no registered-agent address in the chain. The 013982/0697 reel (if it is the '784 record) names Celgene's own Warren, NJ corporate address as assignee, not an agent service.
Known asserter in the chain — Not present. Neither current nor prior assignee matches the Acacia / Marathon / IV / Wi-LAN / Conversant / Vringo / Pendrell / Round Rock / Spangenberg category. Celgene and Bristol-Myers Squibb are operating biopharma manufacturers.
Repeat correspondent across the chain — Unclear / insufficient data. I could not retrieve correspondent-of-record data for any of the family's assignments; the assignment forms reproduced in the litigation record do not expose the recording attorney in the snippets available. The terminal-disclaimer filing for the sibling application 11/437,551 (docket "CELG-0508") shows a prosecution docket, not a recording correspondent, so it does not support this call.
Cascading transfers — Not present. A single assignment (inventors → Celgene, recorded 2003-04-23); no chained LLC transfers; no transfers within 24 months of issuance other than the original corporate assignment that pre-dated issuance.
Pre-litigation transfer — Not present. Contrary to the typical NPE setup, the patent was asserted by the same entity that had continuously owned it since filing. The ~2007 D.N.J. filings (2:07-cv-00286, 2:07-cv-04050, 2:07-cv-05485) are four years after the 2003 assignment, and the 2017–2018 ANDA suits were brought by Celgene as owner/NDA holder, not by an assignee of a recently purchased patent.
Bankruptcy fire-sale — Not present. No bankruptcy of Celgene; the 2019 event was a solvent, all-cash/stock acquisition by Bristol-Myers Squibb.
Privateering — Not present / inverse. The patent was used offensively by the operating NDA holder itself against actual generic competitors:
| Case | Court | Defendants | Patents asserted (incl. '784) |
|---|---|---|---|
| 2:17-cv-03387 | D.N.J. | Hetero Labs | REMS family |
| 2:18-cv-06378 | D.N.J. | Dr. Reddy's | 6,315,720; 6,561,977; 6,755,784; 8,626,531 |
| 2:18-cv-13477 | D.N.J. | Hikma | REMS family |
| 2:18-cv-00461 | E.D. Tex. / D.N.J. | ANDA defendants | REMS family |
Celgene also asserted US 6,755,784 against Lotus/Alvogen (16-patent group including 6,315,720; 6,561,977; 6,755,784; 8,315,886; 8,626,531). This is classic operating-company assertion against real competitors, the opposite of privateering.
- Defensive aggregator — Not present. The chain does not terminate at RPX, AST, LOT, Unified Patents, or OIN. It terminates in an operating biopharma parent (BMS).
Verdict
Operating-company assertion.
US 6,755,784 was assigned once, by its inventors to Celgene Corporation (recorded 2003-04-23), and there is no evidence of any subsequent transfer to a licensing entity, aggregator, or NPE — the family's root assignment appears at Reel 11469/Frame 0882 for the parent patent. Celgene, and after the 2019-11-20 acquisition Bristol-Myers Squibb, is an operating NDA holder that listed the patent in the Orange Book against REVLIMID and asserted it against actual generic competitors in the 2:17-cv-03387, 2:18-cv-06378, 2:18-cv-13477 and related ANDA cases. No shell-entity, cascading-transfer, fire-sale, or pre-litigation-transfer signal is present.
Caveat on data: correspondence-of-record data (Signal 3) and the exact reel/frame for the '784-specific assignment could not be confirmed from the sources reached; the reel/frame 013982/0697 seen in Celgene v. Hetero, D.N.J. 2:17-cv-03387, Doc. 250-30, should be verified directly.
Verify at:
- USPTO Assignment Center: https://assignmentcenter.uspto.gov/ (search patent 6755784)
- Google Patents legal events: https://patents.google.com/patent/[US6755784B2](/patent/US6755784B2)/en
Generated 10/1/2026, 4:13:52 AM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research US 6755784 directly and look for its cited prior-art references.
Let me pull the front-page "References Cited" data for US 6755784 from multiple sources.
Let me try to retrieve the actual front-page "References Cited" list from patent databases.
Prior-Art Analysis — US 6,755,784 B2
Important scope note before the analysis
I was able to confirm the bibliographic record and the specification text for US 6,755,784 (the authoritative full text supplied to me, sourced from Google Patents, plus corroborating records at FreePatentsOnline and Justia). I was not able to retrieve the complete USPTO front-page (56) "References Cited" list for this specific patent in this session — the scraped Google Patents record omitted the "Citations"/"Cited By" tables, and the USPTO PatentCenter/Patent Public Search pages are JavaScript-gated and did not return their contents to ordinary search. Below I therefore separate three tiers of confidence and flag every item. Anything I could not verify is marked as such rather than asserted.
Also, per your instruction to interpret identifiers literally: a number-only search for "6755784" returns several false positives that must not be conflated with US 6,755,784 — e.g., JP S63-35752 Y2 ≡ JP 6755784 U, a Japanese sewing-machine utility model, and unrelated "US 10,781,199 / US 8,457,988 / US 10,046,683" family listings. None of those are US 6,755,784.
1. Verified bibliographic data for US 6,755,784 B2
| Field | Value (as verified in the authoritative text) |
|---|---|
| Patent number | US 6,755,784 B2 |
| Title | Methods for delivering a drug to a patient while restricting access to the drug by patients for whom the drug may be contraindicated |
| Inventors | Bruce A. Williams; Joseph K. Kaminski |
| Original/current assignee | Celgene Corporation |
| Application no. | 10/383,275 |
| Filed | 2003-03-07 |
| Granted | 2004-06-29 |
| Earliest priority | 2000-10-23 |
| Prior-art date listed | 2000-10-23 |
| Status | Expired – lifetime (adjusted expiration 2020-11-26; Orange-Book expiry listed as 2020-10-23) |
| CPC | G16H10/20, G16H10/60, G16H20/10, G16H50/30, G16H70/40, G16H10/40; Y10S128/92 |
Priority chain (from the specification's cross-reference):
- 09/694,217, filed 2000-10-23 → US 6,315,720
- 09/965,155, filed 2001-09-27 → US 6,561,977
- 10/383,275, filed 2003-03-07 → US 6,755,784 (the patent at issue)
Because it was filed in 2003, pre-AIA 35 U.S.C. §§ 102/103 govern.
2. Claim structure being tested for anticipation
The only independent claim is claim 1 (a 5-step method: (a) define risk groups; (b) define information set probative of adverse side effect; (c) assign patient to a risk group and enter patient/information/assignment into the medium; (d) determine whether risk is acceptable; (e) generate the prescription approval code received by the pharmacy before filling). FPO's listing shows claims 2–34 are dependent (registration of physician/pharmacy, counseling, informed consent/OCR, diagnostic testing, survey/IVR, pregnancy testing, contraceptive provision, teratogenicity, thalidomide, drug-interaction variants). Any § 102 attack must therefore focus on claim 1's characterizing steps, since its preamble merely recites the prior-art architecture (registered prescriber/pharmacy/patient, approval code) that the patent itself concedes.
3. Prior-art references
Tier A — Verified: cited on the face of the patent / in the specification
(A-1) U.S. Pat. No. 6,045,501 — Elsayed et al.
- Full citation: US 6,045,501 B1, "Methods for delivering a drug to a patient while preventing the exposure of a foetus or other contraindicated individual to the drug," Elsayed et al. (Celgene).
- Dates: granted 2000-04-04 (filing date not verified in this session).
- Description: Discloses the base architecture relied on by 6,755,784 — a prescription is filled only after a computer-readable storage medium is consulted to confirm the prescriber is registered and qualified to prescribe, the pharmacy is registered and qualified to fill, and the patient is registered and approved to receive the drug.
- Status in the record: this is the only U.S. patent expressly cited in the 6,755,784 specification (Background). The applicant characterizes it as the starting point and states that "improvements to this method may be useful."
- § 102 analysis:
- § 102(b): If the § 102(b) critical date is measured from the actual US filing date (2003-03-07), 6,045,501 (2000-04-04) is more than one year earlier → § 102(b) art. If measured from the earliest supported US filing date (2000-10-23), it is only ~6.5 months earlier → not § 102(b), but still § 102(a)/(e).
- § 102(e): qualifying as a US patent to another filed before the applicant's invention date — likely applies, subject to verifying its filing date.
- Anticipation mapping: At most it anticipates a claim consisting solely of the registration/approval architecture — i.e., dependent claim 2 ("registering in the medium the physician who prescribed the drug") and the pharmacy-registration claim (claim 3), and arguably the preamble of claim 1 if the preamble is treated as limiting. It does not disclose risk-group definition/assignment (steps a–c) or the "acceptable risk" determination and approval-code generation keyed to it (steps d–e). Therefore 6,045,501 does not anticipate independent claim 1 as a whole; it is more properly § 103 art against claim 1 and § 102 art against the registration-only dependents.
Tier B — Priority-family documents (relevant as § 102(e)/double-patenting, NOT as anticipating art)
These are the parent applications in the same chain. They are the applicants' own earlier work and are cited of record chiefly for double-patenting/terminal-disclaimer purposes (the record confirms a terminal disclaimer was filed in the related application 11/437,551 to obviate double patenting over US 7,141,018). They cannot anticipate 6,755,784 because they share the same inventive entity/priority and disclose the same subject matter.
- (B-1) U.S. Pat. No. 6,315,720 B1 — Ser. No. 09/694,217, filed 2000-10-23 (parent of the chain; also listed in the Thalomid Orange-Book entry, use code U-731).
- (B-2) U.S. Pat. No. 6,561,977 B2 — Ser. No. 09/965,155, filed 2001-09-27 (immediate parent; continuation basis recited in 6,755,784).
- Descendants claiming priority to this family (for completeness; these are later than 6,755,784 and thus not prior art to it): US 6,869,399 (from 10/762,880, 2004-01-22), US 7,141,018 (11/028,144, 2005-01-03), US 7,959,566 (11/437,551, 2006-05-19), US 8,315,886 (12/966,261, 2010-12-13), US 8,626,531 (13/591,622, 2012-08-22), and US 2013/0046554 (13/655,928).
Tier C — Non-patent literature (corroborated via the IDS of the related application 11/437,551; flagged as likely on the 6,755,784 record)
These three items appear as references listed on the Information Disclosure Statement filed in the same-inventor continuation application 11/437,551 (Williams & Kaminski, Art Unit 3736, Examiner Michael Astorino), which is the strongest available evidence they were also cited in the 6,755,784 chain:
- (C-1) "Preventing Birth Defects Due To Thalidomide Exposure," Sheraton Colony Square Hotel, March 26, 1997, 27 pages.
- (C-2) Pregnancy Prevention Program for Women on Accutane (isotretinoin) — Accutane Therapy for Women of Childbearing Potential, Physicians' and Healthcare Professionals' Guide, Roche, 1994. (This corresponds to the Accutane/Slone Epidemiology Unit program discussed in the 6,755,784 Background — "voluntary" enrollment, representativeness problems, and no mechanism to limit distribution to participants.)
- (C-3) Guide to the CLOZARIL Patient Monitoring Service — A Reference Manual for the CLOZARIL Patient Monitoring Service, First Edition, November 1997, 45 pages. (White-blood-cell monitoring system for clozapine — the paradigm for a mandatory, registration-gated distribution program.)
§ 102(b) status of Tier C: each predates 2000-10-23 by more than one year (1994, 1997, 1997) → printed publications under § 102(b). However, as printed guides, none of them is shown to disclose the complete claim-1 combination (computer-readable medium + approval code + risk-group assignment + acceptability determination); their probable role is § 103 motivation/teaching (i.e., that mandatory, registration-gated, test-monitored distribution programs for teratogens were known), and § 102 support for the counseling/survey/pregnancy-test dependent claims (claims 4–8, 17–21, 28).
Tier D — Additional U.S. patents appearing on cited-reference lists of related Celgene distribution patents (CONFIRM before relying on)
- US 5,758,095 — Albaum et al., 1998-05-26 (prescription-management/order-entry system).
- US 5,832,449 — Cunningham, 1998-11-03 (medical-record/data system).
- US 6,561,976 and US 6,908,432 — Elsayed et al. (siblings of 6,045,501).
These numbers repeatedly appear in the "U.S. Patent Documents" lists of related Celgene patents (e.g., US 8,204,763; US 10,781,199; US 11,571,397). I could not confirm that each sits on the 6,755,784 front page specifically. If present, 5,758,095 would map against the prescription-routing/approval elements (claim 1 preamble; claims 2–3), and 5,832,449 against the data-storage elements — again not against the full claim 1.
4. Summary § 102 mapping
| Reference | Date | Best § 102 theory | Claims potentially anticipated |
|---|---|---|---|
| US 6,045,501 (Elsayed) | 2000-04-04 | § 102(a)/(e), possibly § 102(b) | Claim 2 ( |
| US 5,758,095 (Albaum) | 1998-05-26 | § 102(b) (if of record) | Claim-1 preamble; claims 2–3 (~) |
| US 5,832,449 (Cunningham) | 1998-11-03 | § 102(b) (if of record) | Data-storage elements of claim 1 (~) |
| Accutane PPP (Roche) | 1994 | § 102(b) printed publication | Counseling/survey/pregnancy-test dependents (claims 4–8, 17–21, 28) (~); § 103 as to claim 1 |
| CLOZARIL Monitoring Guide | 1997-11 | § 102(b) printed publication | Registration/monitoring dependents (~); § 103 as to claim 1 |
| "Preventing Birth Defects…" (NIH/FDA workshop materials) | 1997-03-26 | § 102(b) printed publication | Background/§ 103 motivation |
| US 6,315,720; US 6,561,977 (same family) | 2000-10-23 / 2001-09-27 | Not prior art; double-patenting / § 102(e) formality | n/a (terminal disclaimer territory) |
Bottom line: No reference I could verify anticipates independent claim 1 under § 102. The closest art (Elsayed US 6,045,501, explicitly conceded in the specification) discloses the registration/approval architecture but not the risk-group definition, information-set collection, risk-group assignment, and "acceptable-risk" determination that generate the approval code. The realistic invalidity posture for claim 1 is § 103 (Elsayed in view of the Accutane and CLOZARIL non-patent literature), with § 102 available only against the narrow registration/counseling/survey/pregnancy-test dependent claims. This is consistent with the extensive Orange-Book use-code (U-371/U-694/U-731/U-1210/U-1361) and the multi-front litigation record (Celgene v. Barr, 2:07-cv-00286; Celgene v. Hikma, 2:18-cv-13477; Celgene v. Hetero, 2:17-cv-03387; plus 2:15-cv-00697, 2:10-cv-05197, 2:18-cv-00461).
5. What you should do to make this airtight
- Pull the official (56) References Cited list and (56) Examiner-cited list from the USPTO Patent Public Search → "Patent Full-Text" → US 6,755,784, or the USPTO PatentCenter "Patent Bibliography/References Cited" tab, to replace my Tier B–D inferences with the exact of-record list.
- Cross-check the Global Dossier / EP equivalent for the "Patent documents cited in the description" table (the EPO tables I found for sibling filings list the whole Celgene distribution-patent cluster: 6045501; 6315720; 6395754; 6561976; 6561977; 6755784; 6869399; 6908432; 7141018; 7230012; 7820697; 7874984; 7959566; 8204763; 8315886; 8589188; 8626531; …).
- Confirm the filing date of US 6,045,501 and the § 102(b) critical date the courts applied in the Celgene litigations, since that determines whether Elsayed is § 102(a)/(e) or § 102(b) art.
If you can grant me access to the PatentCenter/Global-Dossier page contents (or upload the front-page PDF), I will replace Tiers B–D with the verbatim of-record citation list and re-run the § 102 element-by-element (claim-chart) comparison for claim 1 and each dependent claim.
Generated 10/1/2026, 4:14:22 AM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll start by gathering the prior-art references associated with this patent, since the provided page text includes the specification and family/classification data but omits the explicit citations list.
I have the key prior-art landscape. Now let me retrieve the actual claim set of US 6,755,784 and the front-page references, since the supplied text is truncated before the claims.
Scope note before the analysis
The authoritative text supplied for US 6,755,784 is truncated in the Description (it ends mid-sentence at "…In certain embodiments of the invention, the methods may require that the registered pharmacy consult the computer readable medium to retrieve a prescription approval code…Thi") and does not include the claims. The Google Patents page as fetched also did not return the "Patents Cited"/"Citations" table. I therefore could not verify the literal wording of claims 1–N of the '784. What I can use, and what I use below, is:
- the "Prior Art" content actually appearing on/behind this page — i.e., the references the specification itself identifies as the state of the art: U.S. Pat. No. 6,045,501 (Elsayed et al.) and the Accutane (isotretinoin) Pregnancy Prevention Program / Slone Epidemiology Unit survey ("Use the results from the Prior Art section of this page");
- the Summary of the Invention, which the patent frames as the claim language ("In one embodiment of the invention, there are provided improved methods comprising the steps of: a. defining a plurality of patient risk groups… b. defining a set of information to be obtained from the patient… c. …assigning the patient to at least one of the risk groups; and d. entering the risk group assignment in the medium before the patient is approved to receive the drug");
- the Abstract, which adds the prescription-approval-code and periodic-survey/diagnostic-test elements.
I flag this limitation explicitly rather than inventing claim text. Source: https://patents.google.com/patent/US6755784/en
1. Framing: this is a Jepson-style improvement claim, so half the case is already conceded
The '784 is a continuation of 09/965,155 (US 6,561,977), itself a continuation of 09/694,217 (US 6,315,720), priority 2000-10-23. Its stated field is:
"the present invention is directed to improved methods … of the type in which prescriptions for the drug are filled only after a computer readable storage medium has been consulted to assure that the prescriber is registered … the pharmacy is registered … and the patient is registered in the medium and approved to receive the drug."
That "of the type in which…" clause is an express admission that the whole registration/verification architecture — prescriber registry, pharmacy registry, patient registry, approval-to-dispense gate — is prior art. The '784 itself tells us which art: "U.S. Pat. No. 6,045,501 to Elsayed et al., provides methods for delivering a drug to a patient while preventing the exposure of a foetus or other contraindicated individual to the drug."
So under § 103 the only question is whether the improvement steps would have been obvious:
| Step | Substance |
|---|---|
| (a) | Define plurality of patient risk groups from a predefined set of risk parameters for the drug |
| (b) | Define a set of information to be obtained from the patient probative of risk of the adverse side effect |
| (c) | Assign the patient to at least one risk group in response to that information |
| (d) | Enter the risk-group assignment in the medium before approving the patient |
Steps (b)–(d) are, at bottom, collect a risk-relevant datum about a person, compare it to a pre-set rule, classify the person, and store the classification in the same database that already stores that person's record. That is the classic KSR setting — "a combination of familiar elements according to known methods" — where the inquiry turns on whether the references supply the motivation and whether the result was predictable.
2. The prior art of record on this page
Primary reference — US 6,045,501 (Elsayed et al.), Celgene, filed 1998-08-28, issued 2000-04-04. Its granted claims are highly material to the '784 (claim text: https://www.drugpatentwatch.com/p/patent-exob/6045501; page: https://patents.google.com/patent/US6045501):
- Claim 1: registering prescribers (a), pharmacies (b), and patients "including information concerning the ability of female patients to become pregnant and the ability of male patients to impregnate females" (c); "retrieving from said medium information identifying a subpopulation of said female patients who are capable of becoming pregnant and male patients who are capable of impregnating females" (d); providing counseling to the subpopulation (e); determining pregnancy (f); authorizing filling (g).
- Claim 2: the drug is thalidomide.
- Claim 3: include male patients capable of impregnating females within the subpopulation.
- Claim 4: determination by pregnancy testing.
- Claim 5: issuance/fulfillment recorded in the medium.
- Claim 6: refilling authorizable only in response to information on the medium.
- Claim 7: prescriptions filled for no more than about 28 days.
- Claim 8: literature warning of drug's effect on foetuses.
- Claim 9: contraception counseling.
- Claim 10: providing contraceptive device or formulation to patients capable of becoming pregnant.
Secondary reference — Accutane/isotretinoin Pregnancy Prevention Program + Slone Epidemiology Unit survey. Described in the '784's own Background (and in the sibling patents' Background, e.g. https://patentimages.storage.googleapis.com/ca/e9/01/d271313bdd183b/[US6908432](/patent/US6908432).pdf): a marketed teratogen; a pregnancy-prevention program coupled to counseling, contraception requirements, and a patient survey designed by Boston University's Slone Epidemiology Unit; >325,000 women enrolled; pregnancy rates during treatment measured; the patentee's only criticism is that enrollment was voluntary and therefore may not be representative.
Tertiary references visible in the same family's "Prior Art" record (https://patents.justia.com/patent/[8589188](/patent/8589188)#3; https://patents.justia.com/patent/[8204763](/patent/8204763)#3):
- Clozaril (clozapine) distribution/monitoring program and Freeman, D.J., et al., "Will routine therapeutic drug monitoring have a place in clozapine therapy?" — i.e., gating continued supply of a dangerous drug on serial laboratory testing.
- US 5,758,095 (Albaum et al., May 26, 1998) — automated patient/health-care record and prescription system: the general-purpose data-processing substrate for registering, storing and retrieving patient records.
- "Isotretinoin Pregnancy Risk Management Program" NPL.
3. Combination 1 (primary): '501 + Accutane/isotretinoin PPP (Slone survey)
What '501 already discloses. Registration of prescriber, pharmacy and patient; storage of pregnancy-capability data; retrieval of a subpopulation of pregnancy-capable women and impregnating-capable men; risk-attendant counseling delivered specifically to that subpopulation; pregnancy testing; authorization of the fill; approval controlled through the database (claims 1, 3–6).
What the PPP supplies. (i) the step of actively collecting risk-relevant information from the patient via a structured instrument (survey/questionnaire) — including the very subject matter the '784 emphasizes (behavior, contraception use, sexual activity); (ii) doing so periodically over the course of treatment, as opposed to only at enrollment; (iii) the idea of using the collected data to evaluate/reduce pregnancy during treatment; and (iv) the scale proof that such a survey is administrable (>325,000 enrollees).
Why a POSITA would combine. The patentee supplies the motivation verbatim in its own Background: "Improvements to this method may be useful, however, to minimize and simplify the demands on the pharmacy, thereby improving compliance with the system of distribution, and reducing the risk that the drug will be dispensed to a contraindicated individual" (identical language recurs in US 6,315,720, https://patents.google.com/patent/[US6315720B1](/patent/US6315720B1)). Express problem statements in the patent against the known art are strong § 103 evidence. Both references are in the same field of endeavor (controlled distribution of teratogens to prevent fetal exposure), address the same problem, and come from the same recognized practice (REM-like restricted distribution of isotretinoin and thalidomide).
What the combination yields, element by element:
| '784 improvement step | '501 | Accutane PPP / Slone survey | Result |
|---|---|---|---|
| (a) plurality of risk groups from predefined risk parameters | claim 1(c)-(d) + claim 3: patients classified by pregnancy-capability / impregnating-capability | program stratification of patients into counseled/contraception-required groups | Fully suggested — "risk group" is a label for a subpopulation already retrieved by '501 |
| (b) define information probative of side-effect risk | claim 1(c) data fields; claim 4 pregnancy test | survey questions on behavior, sexual activity, contraception | Fully suggested |
| (c) assign patient to a risk group in response to that information | claim 1(d) retrieval of the subpopulation | risk-stratified handling of survey respondents | Suggested — mere formalization of an existing classification |
| (d) enter assignment in the medium before approval | claims 5 & 6: record issuance/fulfillment and condition refill on database information | — | Suggested — storing one more field in a record already stored |
For the approval-code element reflected in the '784's Abstract, '501 claim 6 (refill authorizable only in response to database information) plus the registration/eligibility consultation described in both '501 and the '784's admitted preamble point to a database-gated fill. Retrieving an authorization/reference number from a central registry to release a controlled product is an ordinary data-processing practice, and '501 already conditions the fill on the medium.
4. Combination 2 (adds the laboratory-monitoring art): '501 + Accutane PPP + clozapine/TDM art
This combination is aimed at the claims that add periodic diagnostic testing to the approval condition and that reassign risk group when test results change.
- Clozaril's program (and the Freeman TDM reference) taught the exact control logic: continued supply of a high-risk drug is gated on serial laboratory monitoring of the patient, with the prescribing/dispensing decision keyed to the lab result. The '784's own Background of the family describes clozapine's agranulocytosis mortality under its first-five-years program — a known risk-management paradigm.
- '501 supplies the registry and the "authorize the pharmacy only through the medium" gate.
- Accutane PPP supplies the periodic patient-reported information channel.
A POSITA combining these gets: risk-classified patient → periodic survey and periodic lab test appropriate to the class → result entered in the medium → approval code released only if the result is satisfactory → reassign/change risk group if it is not. That is precisely the '784's isoniazid and HIV embodiments (monthly serum liver enzymes; viral load; IVR survey), and the specification treats those as mere applications of the same claimed logic.
Motivation: "routine therapeutic drug monitoring" was a recognized clinical practice for drugs with narrow therapeutic windows/high toxicity; converting that practice into a database gate is a predictable use of the '501 infrastructure.
5. Motivation to combine (KSR factors, applied)
- Same field / same problem / same art. '501 and the '784 are literally the same assignee, same drug (thalidomide), same clinical problem; the PPP is the other marketed restricted-distribution teratogen program discussed in the '784's own background.
- Express problem statement in the patent. The specification identifies the deficiency it is fixing (pharmacy burden, compliance, residual dispensing risk) — a roadmap a POSITA would follow.
- Predictable results. Stratifying a population by a known risk factor (reproductive capability, sex, liver function, concomitant drug) and varying the intensity of counseling/testing/authorization by stratum is a routine healthcare-quality and drug-utilization-review technique. Nothing in the claimed steps produces an unpredictable result; the "result" limitations (e.g., avoidance rates above about 50%, up to 100%) are outcomes that follow from the recited steps and, at the 50–95% levels recited, are modest.
- Design incentives / market pressure. Restricted-distribution programs were the recognized regulatory pathway for teratogens; the patentee itself notes Accutane's program "suggests that such a program can be effective."
- Predictable mechanical implementation. The "computer readable storage medium," registration cards, OCR, telephone and integrated voice response entries are all in '501/'720 and are routine design choices for data capture.
6. Dependent-claim mapping (as far as the record permits)
To the extent the '784's dependent claims track the specification's Summary/embodiments, the following are each a separate, weaker § 103 case because the base reference already contains them:
- 28-day maximum fill / no refills — '501 claim 7 and claim 6.
- Pregnancy testing before/during/after and negative-test requirement — '501 claims 1(f), 4.
- Counseling to the subpopulation + literature warnings — '501 claims 1(e), 8.
- Contraception counseling and provision of a contraceptive device — '501 claims 9, 10.
- Informed consent — conventional practice; the novel point asserted ("prescriber rather than pharmacy verifies consent") is a distribution of labor choice with a predictable benefit (fewer pharmacy steps), i.e., a classic obvious design choice.
- Monthly (female) / every 3–6 months (male) surveys; mail, fax, on-line or IVR — periodic interval and communications medium are routine design choices; IVR is already disclosed in the family as the registration channel.
- Diagnostic tests: serum/urine/semen, biopsy, genetic testing, imaging — selection among known body-fluid assays for a stated risk is routine where the reference motivation (detect fetal exposure or organ toxicity) is the same.
- Two, three or more drugs monitored for interactions (e.g., protease inhibitor + rifamycin; isoniazid + alcohol) — drug-interaction screening and therapeutic-drug monitoring are conventional; '501's family record shows an Examiner statement that screening for drug–drug interaction in an exposure-prevention method was allowable over the art then of record (https://docshare.tips/preliminary-response_5857acd6b6d87f8d1c8b6300.html). That is a prosecution-based indication of the narrowness of the allowable difference — but it is also the strongest candidate for the patentee's non-obviousness argument.
7. Where the obviousness case is weakest (and should be tested against the literal claims)
I would not overstate the case. Three limitations could carry patentable weight if the issued claims recite them with specificity:
- The feedback loop: information → risk-group reassignment → changed information requirement → (optionally) withholding the approval code. If claim 1 requires the approval code to be withheld pending satisfaction of a risk-group-specific additional information set, the combination must be shown to suggest not just classifying, but dynamically re-classifying and re-gating.
- The unbundling of pharmacy responsibility: the specification asserts a surprising result — "It has surprisingly been found that by having the prescriber, rather than the pharmacy, verify the patient's informed consent, the methods … may operate more efficiently." Asserted surprising results deserve scrutiny; the Federal Circuit would ask whether the "surprise" is quantified or merely attorney argument. Here, no data is presented, so the assertion is likely unavailing.
- Success / secondary considerations: the record shows intense commercial and litigation activity (Celgene v. Apotex, 2:18-cv-00461; multiple D.N.J. and E.D. Tex. suits; IPR2015-01103 on the related '720 patent, Final Written Decision 26 Oct 2016 — https://pharsight.greyb.com/ingredient/thalidomide and https://portal.unifiedpatents.com/litigation/New%20Jersey%20District%20Court/case/2%3A18-cv-00461). If a nexus is established between S.T.E.P.S.®/Thalomid® success and the claimed risk-grouping, that is the patentee's best answer to Combinations 1–2. I have not verified the outcome of IPR2015-01103 and should not report its result.
Also weigh that the '720 and '784 patents share one specification and one priority date; the PTAB and district-court record on the '720 thus bears directly on what the "Prior Art" panel here considered and on how broadly the risk-group concept can be read. The IPR petition on the '720 (IPR2015-01103, Ex. 1003 = the '501 patent) confirms that the '501 patent was the art of record against the risk-group family itself — i.e., the Office and the petitioner both treated '501 as the primary reference against the very claims described in this page's Summary of the Invention.
8. Bottom line
Primary § 103 ground: US 6,045,501 (Elsayed) in view of the Accutane/isotretinoin Pregnancy Prevention Program and its Slone Epidemiology Unit patient survey (and, for the "computer readable storage medium" mechanics, US 5,758,095 (Albaum)).
Rationale: '501 discloses the entire admitted preamble — registered prescribers, pharmacies and patients, with the medium consulted before dispensing — and expressly discloses storing pregnancy/impregnation-capability data and retrieving a subpopulation of pregnancy-capable women and impregnating-capable men for tailored counseling, pregnancy testing, ≥28-day-limited fills, database-conditioned refills, contraception counseling and contraceptive supply. The PPP/Slone survey discloses periodic collection of risk-probative information from the patient, i.e., steps (b) and the substance of the later limitations. The remaining step (a)/(c)/(d) — grouping patients into named risk strata and storing the assignment — is the formalization of the subpopulation retrieval the '501 already performs, and the patent itself supplies the motivation ("improving compliance … reducing the risk that the drug will be dispensed to a contraindicated individual"). Result: obvious under § 103 as a combination of familiar elements with predictable results and an express design incentive.
Secondary § 103 ground: add the clozapine/TDM monitoring art (including Freeman et al.) to reach the periodic-diagnostic-test-gated approval and risk-reassignment limitations, and add ordinary drug-interaction screening for the multi-drug embodiments.
Verification caveats I will not gloss over: (1) the literal claim text of US 6,755,784 was not available in the material I could retrieve — the supplied Description is truncated and the claims were not returned — so the element-by-element mapping above is built from the Summary of the Invention and Abstract and must be re-verified against the actual claims; (2) the front-page "Patents Cited" table for the '784 was not returned by my searches, so I could not confirm whether Albaum '095, the clozapine NPL, or other references were formally of record; (3) I have not verified the outcomes or docket numbers of the listed litigations (e.g., 2:17-cv-06842, 2:18-cv-00461, IPR2015-01103) and treat those URLs only as pointers.
Generated 10/1/2026, 4:14:23 AM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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