August 22, 2022

Federal Circuit Summary for Week Ending August 19, 2022

Click-to-Call Technologies LP v. Ingenio, Inc, No. 2022-1016 (August 17, 2022) (unanimous decision, precedential); Patent No. 5,818,836

Key point(s):

  • 35 U.S.C §315 (e)(2) estoppel prevents an IPR petitioner from litigating in a civil action on any ground that the petitioner reasonably could have raised during the IPR.
  • It is the petitioner’s contentions that define the scope of an IPR controversy and thus the extent of the estoppel (so long as the IPR ends in a final written decision).

Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc. (August 18, 2022) (precedential) (3-0); Patent Nos. 9,744,209 and 9,750,785

Key point(s):

  • 35 U.S.C. § 271(e)(2) requires that a patentee show that an ANDA is for a drug which actually infringes a claim, not merely that the drug is close to infringing and may infringe while it sits on a shelf.
  • If the ANDA describes a drug outside the patented claims, the courts can rely on those representations absent evidence that the alleged infringer will not comply with them.
  • In an ANDA case under § 271(e)(2) the specification in the ANDA controls.


Related Team:

Craig Depew

Senior Counsel