In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc.,1 Purdue Pharma L.P. ("Purdue") appealed from a judgment of the Patent Trial and Appeal Board ("Board") finding Purdue's claims unpatentable. The Board issued its Final Written Decision after the statutory deadline had passed, and Purdue contended the Board lost its jurisdiction for failure to abide by the statutory deadline. The Federal Circuit concluded that the Board's failure to comply with the statutory deadline did not deprive the Board of the authority to issue a Final Written Decision.
Procedural History
The Board instituted Collegium Pharmaceutical, Inc.'s ("Collegium") post grant review ("PGR") challenging Purdue's patent. Under 35 U.S.C. § 326(a)(11) and 37 C.F.R. § 42.200(c), the Board then had one year to issue a Final Written Decision, subject to a six-month extension for "good cause." During the PGR, Purdue initiated bankruptcy proceedings and sought an automatic stay of the PGR under section 362 of the bankruptcy code. The one-year deadline fell on October 4, 2019; however, a six-month extension until April 4, 2020 was granted to determine whether the automatic bankruptcy stay applied to PGRs.2 After the extended deadline passed, the bankruptcy court granted the parties' requests to lift the district court and PGR stays. Purdue subsequently filed a motion to terminate the PGR, arguing the Board no longer had authority to issue a Final Written Decision as the statutory deadline had passed. Nearly 18 months after the extended deadline, the Board denied Purdue's motion and issued its Final Written Decision, finding the challenged claims unpatentable. Purdue appealed to the Federal Circuit. This appeal was a matter of first impression for the Court.
Federal Circuit Decision
The Court determined that neither section 326(a)(11) nor section 42.200(c) specifies consequences for non-compliance with the statutory deadline. The Court explained that, under Supreme Court precedent, "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."3 As such, the Court determined that the Board retained its authority to issue a Final Written Decision even after the statutory deadline had passed.
In coming to this conclusion, the Court rejected each of Purdue numerous arguments based on the statutory language of section 326(a)(11). First, Purdue pointed to section 326(a)(11)'s use of "shall" and "requiring," as well as negative phrases such as "not later than 1 year" and "by not more than 6 months," as mandating a decision within the statutory deadline. It argued that section 326 requires conducting PGRs "in accordance with" 35 U.S.C. § 6, which is the source of the Board's jurisdiction, and, thus, the Board's jurisdiction expires when the section 326(a)(11)'s statutory deadline passes. Lastly, Purdue argued that section 326 provided two limited exceptions under which the Board may issue a Final Written Decision after the deadline, preventing the Board from doing so in any other instance.
The Court cited various Supreme Court cases in rebutting Purdue's arguments. First, it noted instances when the Supreme Court analyzed analogous phrasing involving a statutory deadline but found that such language failed to divest an agency's jurisdiction after a deadline passes.4 Next, the Court cited Supreme Court cases explaining that a court's power is only cabined if "Congress has 'clearly state[d]' as much" and the alleged link between sections 326 and 6 failed to meet this requirement.5 Finally, the Board cited another Supreme Court case finding that "enunciation of two exceptions does not imply an exclusion of a third."6 Further, the Court compared language in other sections of title 35—noting that section 328(a) mandates a Final Written Decision and sections 315(b) and 321(c) use quite different language to bar action after deadlines pass.
The Court also struck down Purdue's legislative history arguments, noting that stripping the Board of its jurisdiction for failing to meet a statutory requirement would in fact hinder Congress' intent "to allow parties to challenge a granted patent through a[n] expeditious and less costly alternative to litigation."7 If the Court had adopted Purdue's position, then the parties would be forced to litigate the issues in a district court proceeding, resulting in duplicative efforts by multiple branches of the government.
The Court, however, clarified that the Board does not have free reign to ignore statutory deadlines, explaining that a party may seek relief through a writ of mandamus if the Board does not issue a decision within the statutory deadline of section 326(a)(11) immediately upon the deadline's expiration.
Accordingly, the Court affirmed the Board's authority to issue a Final Written Decision after the statutory deadline had passed.
Take Away
This holding finds that a Board's failure to comply with its statutory deadline to issue a Final Written Decision does not deprive the Board of authority to issue the decision. However, if the Board fails to meet its deadline, parties should consider whether to seek mandamus relief to compel the Board to act.
Footnotes
1. 86 F.4th 1338 (Fed. Cir. 2023).
2. The Federal Circuit did not reach the question of whether the bankruptcy automatic stay applies to PGRs.
3. United States v. James Daniel Good Real Prop., 510 U.S. 43, 63 (1993).
4. Brock v. Pierce Cnty., 476 U.S. 253, 266 (1986); Barnhart v. Peabody Coal Co., 537 U.S. 149, 159 (2003); Dolan v. United States, 560 U.S. 605, 611 (2010); Liesegang v. Sec'y of Veterans Affs., 312 F.3d 1368, 1376-77 (Fed. Cir. 2002).
5. United States v. Wong, 575 U.S. 402, 409 (2015) (alteration in original) (citation omitted).
6. Barnhart v. Peabody Coal Co., 537 U.S. 149, 170-71 (2003).
7. Introduction of Patent Reform Act, 153 Cong. Rec. E774 (Apr. 18, 2007).
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