Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article about a recent Federal Circuit decision addressing estoppel in inter partes review patent proceedings;
  • an article discussing another recent decision in which an “Endo International Plc subsidiary failed to convince the Federal Circuit that a generic version of its bestselling blood-pressure drug infringed its patents”;
  • a third article summarizing another recent decision invoking “the rule prohibiting recapture of subject matter surrendered during prosecution” following an amendment “to overcome a § 101 patent eligibility rejection.”

Steven Brachmann wrote an article for IPWatchdog explaining how the Federal Circuit recently held that “Ingenio was estopped from challenging the validity of a patent claim on grounds it could have reasonably challenged during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB).” Brachmann explained that “the impact of this precedential holding will likely be limited due to the ‘unusual procedural posture’ of this case.” However, he noted how “the Federal Circuit’s decision does underscore the circuitous nature of PTAB proceedings that often add many years to patent lawsuits filed in U.S. district court.”

Samantha Handler authored an article for Bloomberg Law reporting how the Federal Circuit recently concluded that “Eagle Pharmaceuticals Inc.’s generic version of Vasostrict, which treats low blood pressure, doesn’t infringe Endo’s Par Pharmaceutical Inc.’s patents.” Handler explained how the Federal Circuit agreed with a “Delaware judge [who] found that Eagle’s drug’s release and stability pH specifications don’t reach levels that would qualify as infringement.”

Colin Stalter published an article in the National Law Review addressing the Federal Circuit’s recent opinion in In re McDonald. Statler discussed how “the inventor, John McDonald, added a ‘processor’ limitation to certain claims to overcome a § 101 rejection” and “subsequently filed a continuation application.” Statler discussed how the Federal Circuit “explained that a patent may be reissued if the inventor erroneously claimed less than they had a right to claim in the original patent, but that the recapture rule bars a patentee from regaining that which was surrendered during prosecution.”