Celgene Corp. v. Peter, No. 18-1167 (Fed. Cir. 2019)Annotate this Case
A teratogen is an agent known to disturb the development of an embryo or fetus. Teratogenic drugs, such as thalidomide, can cause birth defects or other abnormalities following fetal exposure during pregnancy. Celgene’s 501 and 720 patents are generally directed to methods for safely distributing teratogenic or other potentially hazardous drugs while avoiding exposure to a fetus to avoid adverse side effects of the drug. The patents describe the System for Thalidomide Education and Prescription Safety that compiles information about patients and prescribers to prevent the prescription from being filled before appropriate counseling. The Coalition for Affordable Drugs (CFAD) sought inter partes review. The Patent Trial and Appeal Board determined that all of the claims of the 501 patent and multiple claims of the 720 patent were obvious. The Federal Circuit affirmed and held that the retroactive application of IPR proceedings to pre-Leahy-Smith America Invents Act, 125 Stat. 284-341, patents is not an unconstitutional taking under the Fifth Amendment. IPRs do not differ sufficiently from the PTO reconsideration avenues available when the patents here were issued to constitute a taking.