U.S. Court of Appeals Affirms PTAB Decision in Favor of Robins Kaplan Client Collegium

November 30, 2023

Robins Kaplan LLP is pleased to announce that the U.S. Court of Appeals for the Federal Circuit issued its decision affirming a Patent Trial and Appeal Board (PTAB) Final Written Decision finding that all 17 claims brought by Purdue Pharma L.P. against our client Collegium, a specialty pharmaceutical company, are invalid. 

“We are delighted for our client Collegium. We feel that the Federal Circuit correctly concluded that the PTAB had authority to issue its Final Written Decision and are pleased by the decision affirming the finding that the claims of the ʼ961 patent are invalid,” said Robins Kaplan attorney Chris Pinahs.

The ʼ961 patent relates generally to an abuse-deterrent, controlled release oral dosage form. Purdue originally asserted the ʼ961 patent against Collegium in 2017 in a patent infringement suit in the United States District Court for the District of Massachusetts. In March 2018, Collegium filed a Petition for Post-Grant Review (PGR) of the ʼ961 patent with the PTAB. In response, Purdue argued, among other claims, that the ʼ961 patent was not eligible for PGR due to the patent’s purported priority date. The PTAB disagreed and instituted a post-grant proceeding of all claims in October 2018.

Days before the PTAB was set to issue its Final Written Decision, Purdue filed for bankruptcy and later argued, due to the passage of more than eighteen months since institution of the PGR, that the bankruptcy divested the PTAB of jurisdiction. The Board acknowledged that it had “not previously missed” its eighteen-month deadline to issue a Final Written Decision but found that it nevertheless maintained jurisdiction and issued a decision invalidating all claims of the ʼ961 patent.

In its November 21, 2023, opinion, the Federal Circuit acknowledged that this PGR was “the only proceeding [in the history of the American Invents Act] in which the Board had failed to meet the statutory deadline,” meaning the appeal presented “a matter of first impression.” Collegium argued, and the Federal Circuit agreed, that the failure to comply with the statutory deadline did not warrant dismissal, but rather required the PTAB to issue a decision as soon as possible. After concluding that the PTAB had authority to issue its Final Written Decision, the Federal Circuit found all claims of the ʼ961 patent invalid. 

Collegium is represented by Jake Holdreith, Chris Pinahs, Oren Langer, Emily Tremblay, and Brenda Joly. Robins Kaplan is a nationally recognized, leading law firm for disputes in the life sciences. 

Jake M. Holdreith

Partner

Member of Executive Board

Oren D. Langer

Partner

Managing Partner, New York Office

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