Resolved Decade-Long Patent Suit and Achieved Complete Freedom to Operate for Collegium-Owned BioDelivery Sciences Int’l

Aquestive Therapeutics, Inc. v. BioDelivery Sciences Int’l, Inc., Civ. No. 19-505-D (E.D.N.C.); Indivior Inc. v. BioDelivery Sciences Int’l, Inc., Civ. No. 15-350-D (E.D.N.C.)

When Robins Kaplan client Collegium Pharmaceutical, Inc. acquired BioDelivery Sciences Int’l (BDSI) in March of 2022, that acquisition included two patent litigations pending in the Eastern District of North Carolina where BDSI’s products Bunavail® (buprenorphine and naloxone) buccal film and Belbuca® (buprenorphine) buccal film were accused of infringing Aquestive Therapeutic’s U.S. Patent No. 8,765,167. The parties had been litigating for nearly a decade in federal district courts and in multiple proceedings before the Patent Trial and Appeal Board. 

Upon Robins Kaplan's appearance as substitute counsel, BDSI was on the wrong end of a motion to compel seeking extensive document discovery, and Aquestive and its counsel were seeking monetary and non-monetary sanctions against BDSI and its former counsel. The first mission was to right the ship. The Robins Kaplan team collected, reviewed, and produced relevant documents and responded to a barrage of discovery demands in a timely manner and before the Court-ordered deadline. The team also got up to speed on the cases’ history and began crafting defenses and began affirmatively seeking discovery from Aquestive in support of those arguments. Finally, the team crystallized non-infringement defenses, updated contentions, and fought off Aquestive’s motion for sanctions and its fee application.

In its order denying non-monetary sanctions, the Court noted, “The hearing reassured the court that discovery has gotten back on track after BDSI changed counsel in this case….” After litigating for about eight months, the case settled and Collegium and BDSI were delighted to achieve complete freedom—past, present, and future—to operate for a one-time payment of $8.5 million.