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ARTICLE · 03 MAY 2024

PTAB's Authority To Issue A Final Written Decision After A Statutory Deadline

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In September 2017, Purdue Pharma L.P. ("Purdue") sued Collegium Pharmaceutical, Inc. ("Collegium") for infringement of US Pat. No. 9,693,961.

United StatesIntellectual Property
Theo Mayer
Theo Mayer
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In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023), the case addresses the Patent Trial and Appeal Board's ("PTAB's") authority to issue a Final Written Decision in a post grant review ("PGR") after the prescribed statutory deadline.

Background

In September 2017, Purdue Pharma L.P. ("Purdue") sued Collegium Pharmaceutical, Inc. ("Collegium") for infringement of US Pat. No. 9,693,961 ("the '961 patent").

In March 2018, Collegium petitioned the PTAB for PGR of claims 1-17 of the '961 patent. Based on a finding that the challenged claims lacked sufficient written description, the PTAB instituted PGR in October 2018. Under 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c), the PTAB had one year to issue a Final Written Decision, subject to a six month extension for "good cause." The one year deadline fell on October 4, 2019.

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