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Federal Circuit Affirms PTAB’s Final Written Decision, Holding That The Passing Of The Statutory Deadline Did Not Deprive The Board Of Authority To Issue Its Decision
12/13/2023On November 21, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding claims 1–17 of U.S. Patent No. 9,693,961 (“’961 patent”) unpatentable for lack of written description and anticipation.
In September 2017, Purdue Pharma L.P. (“Purdue”) brought suit against Collegium Pharmaceutical, Inc. (“Collegium”) for infringement of the ’961 patent. On March 13, 2018, Collegium petitioned the Board for post grant review (“PGR”) of claims 1–17 of the ’961 patent. The district court infringement case proceeded in parallel to the PGR. The Board instituted the PGR. Under 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c), the Board thereafter had one year to issue a Final Written Decision subject to a six-month extension for “good cause.”
Purdue filed a Notice of Bankruptcy Filing and Imposition of Automatic Stay on September 24, 2019. Subsequently, the PGR and district court case were stayed. Two days before the one-year statutory deadline (October 4, 2019), the Chief Administrative Patent Judge found good cause to grant a six-month extension so the bankruptcy court could assess whether the automatic stay applied to PGRs. Petitioner Collegium took the position that the Automatic Stay provision was not applicable to Board proceedings. Purdue, on the other hand, contended that the bankruptcy automatic stay applied to PGRs. Neither party sought guidance from the bankruptcy court nor asked the bankruptcy court to lift the stay prior to the six-month extension period’s expiration on April 4, 2020.
On July 2, 2020, Purdue moved at the bankruptcy court for the automatic stay to be partially lifted so the district court case could proceed. Collegium opposed the request and argued that if the stay were lifted for the district court case, it should also be lifted for the PGR proceeding. The bankruptcy court lifted the stay for both the district court case and the PGR proceeding on September 1, 2020.
After the stay was lifted, Purdue filed a motion to terminate the PGR proceeding, arguing that the Board no longer had the authority to issue a Final Written Decision because the 18-month statutory deadline had passed. The Board denied the motion and issued its Final Written Decision.
On appeal, Purdue argued that, if the Board fails to meet the deadline established by 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c) (one year plus the six-month extension), the Board no longer has the authority to issue a Final Written Decision.
The CAFC held that statutory interpretation is an issue of law reviewed de novo, and applied the Supreme Court decision in United States v. James Daniel Good Real Prop., 510 U.S. 43, 63 (1993). Therein, the Supreme Court established that, “if a statute does not specify a consequence for non-compliance with statutory timing provisions, the federal courts will not in the ordinary course impose their own coercive sanction.” Id. at 63. Because the statute governing PGR proceedings does not provide consequences for non-compliance with the deadline, the CAFC concluded that the Board had authority to issue a Final Written Decision.
