Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. (United States Patent and Trademark Office intervening), Appeal No. 2022-1482 (Fed. Cir. Nov. 21, 2023)

In the Federal Circuit’s only precedential patent opinion last week, the Court held the Patent Trial and Appeal Board may issue final decisions in post-grant review proceedings even after the statutory deadline has passed.  It was the first time the Court had considered this issue.

Appellant and patent owner Purdue sued Collegium in 2017, alleging infringement of Purdue’s Patent No. 9,693,961.  In 2018, Collegium petitioned the Board for PGR of the ’961 patent.  The district court proceeding continued in parallel to the PGR.  Under 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c), the Board had one year—until October 4, 2019—in which to issue a final decision in the PGR, with a six-month extension available for good cause.  On September 24, 2019, Purdue filed a Notice of Bankruptcy Filing and Imposition of Automatic Stay, staying both the PGR and district court proceedings.  On October 2, 2019—two days before the original deadline for the PGR decision—the Board found good cause for a six-month extension so the bankruptcy court could assess whether the automatic stay applied to PGRs.  The parties disagreed as to whether the bankruptcy court’s stay applied to the PGR, but neither party sought guidance from the bankruptcy court or asked the court to lift the stay.

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C. 

Jason A. Wrubleski, Shareholder

Contributors:

Tyler Hall, Associate