From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`LaRosa, Gasper J.
`Pinahs, Christopher A.; Trials
`Holdreith, Jake M.; Morton, Cyrus A.; Langer, Oren D.; McElveen, Kelsey J.; Buck, Lori H.; Miller, Beth A.;
`Normile, John J.; Nix, Kelsey I.; Geers, Sarah A.
`RE: Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P. et al., PGR2018-00048
`Friday, August 28, 2020 5:00:32 PM
`image001.png
`
`To the Patent Trial and Appeal Board,
`
`I represent Patent Owner in the above captioned Post Grant Review. I write to correct a statement
`in my email from yesterday, August 27, 2020, regarding the Bankruptcy hearing that took place on
`August 26th, 2020. In particular, it has come to our attention that the description of one of the
`limitations on the Bankruptcy Court’s anticipated Order lifting the stay was not correct. In particular,
`with respect to section 108(c)(2) of the Bankruptcy Code (which is the code section that extends
`statutes of limitations and similar deadlines), the Court indicated that Section 108(c)(2) of the
`Bankruptcy Code does not apply to extend any deadline in the PTAB Action unless it is determined in
`a non-bankruptcy forum that the PTAB Action is a “civil action” and that the PTAB is a “court” for
`purposes of Section 108(c) of the Bankruptcy Code.
`
`Please forgive the error in my original email. This change does not impact Patent Owner’s requested
`relief, including Patent Owner’s request for a teleconference regarding Patent Owner’s request for
`leave to file a motion to terminate the proceedings.
`
`Respectfully submitted,
`
`Gasper LaRosa
`
`Counsel for Patent Owner
`
`Gasper J. LaRosa (Bio)
`Partner
`JONES DAY® - One Firm Worldwide℠
`250 Vesey Street
`New York, NY 10281-1047
`Tel.: (212) 326-7885
`Fax: (212) 755-7306
`gjlarosa@jonesday.com
`
`From: LaRosa, Gasper J.
`Sent: Thursday, August 27, 2020 3:13 PM
`To: 'Pinahs, Christopher A.' <CPinahs@RobinsKaplan.com>; Trials@USPTO.gov
`Cc: Holdreith, Jake M. <JHoldreith@RobinsKaplan.com>; Morton, Cyrus A.
`
`PGR2018-00048
`Ex. 3001 p. 1 of 4
`
`

`

`<CMorton@RobinsKaplan.com>; Langer, Oren D. <OLanger@RobinsKaplan.com>; McElveen, Kelsey
`J. <KMcElveen@RobinsKaplan.com>; Buck, Lori H. <LBuck@RobinsKaplan.com>; Miller, Beth A.
`<BMiller@RobinsKaplan.com>; Normile, John J. <jjnormile@jonesday.com>; Nix, Kelsey I.
`<knix@jonesday.com>; Geers, Sarah A. <sgeers@jonesday.com>
`Subject: RE: Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P. et al., PGR2018-00048
`
`To the Patent Trial and Appeal Board,
`
`I represent Patent Owner in the above captioned Post Grant Review. On Wednesday, August 26, the
`bankruptcy court did indeed indicate that it will issue a written order to lift its bankruptcy stay as to
`this action (PGR2018-00048) and the related District Court action that includes the ‘961 patent.
`Patent Owner also confirms that it intends to seek an termination Order concerning this PGR on the
`grounds that, due to Petitioner’s failure to timely seek an Order from the Bankruptcy Court lifting
`the stay, a Final Written Decision has not issued within the 18-month extended statutory deadline
`set forth in 35 U.S.C. § 326(11) and it may not issue now outside that deadline.
`
`Patent Owner respects the Board’s clear direction that emails such as these are not the place for
`argument before the Board. Due to Petitioner’s failure to make any effort to meet and confer with
`Patent Owner’s counsel before submitting the email below to the Board, however, Patent Owner is
`compelled to bring to the Board’s attention two important conditions of the Bankruptcy Court’s
`hearing that place Petitioner’s misleading characterization of those proceedings in the proper
`context. While the Bankruptcy Court indicated it would lift the stay, that lifting will come with two
`critical conditions: (1) Collegium is barred from contending in any non-bankruptcy forum that the
`automatic stay imposed upon Patent Owner’s bankruptcy tolled, extended or precluded the
`imposition of any deadline imposed upon it or upon the PTAB in the PTAB proceeding, and (2)
`Collegium is also barred from contending that section 108(c)(2) of the Bankruptcy Code (which is the
`code section that extends statutes of limitations and similar deadlines) would apply to extend such a
`deadline unless it is determined in a non-bankruptcy forum that the PTAB action is not a civil action
`and/or that the PTAB is not a court for purposes of section 108(c) of the Bankruptcy Code.
`
`In view of the foregoing, Petitioner respectfully requests a teleconference regarding Patent Owner’s
`request for leave to file a motion to terminate the proceedings.
`
`Respectfully submitted,
`
`Gasper LaRosa
`
`Counsel for Patent Owner
`
`Gasper J. LaRosa (Bio)
`Partner
`JONES DAY® - One Firm Worldwide℠
`
`PGR2018-00048
`Ex. 3001 p. 2 of 4
`
`

`

`250 Vesey Street
`New York, NY 10281-1047
`Tel.: (212) 326-7885
`Fax: (212) 755-7306
`gjlarosa@jonesday.com
`
`From: Pinahs, Christopher A. <CPinahs@RobinsKaplan.com>
`Sent: Thursday, August 27, 2020 10:19 AM
`To: Trials@USPTO.gov
`Cc: Holdreith, Jake M. <JHoldreith@RobinsKaplan.com>; Morton, Cyrus A.
`<CMorton@RobinsKaplan.com>; Langer, Oren D. <OLanger@RobinsKaplan.com>; McElveen, Kelsey
`J. <KMcElveen@RobinsKaplan.com>; Buck, Lori H. <LBuck@RobinsKaplan.com>; Miller, Beth A.
`<BMiller@RobinsKaplan.com>; Normile, John J. <JJNormile@JonesDay.com>; Hendler, Pablo D.
`<phendler@jonesday.com>; Nix, Kelsey I. <knix@jonesday.com>; LaRosa, Gasper J.
`<gjlarosa@JonesDay.com>; Geers, Sarah A. <sgeers@jonesday.com>
`Subject: Collegium Pharmaceutical, Inc. v. Purdue Pharma L.P. et al., PGR2018-00048
`
` ** External mail **
`
`Dear Board,
`
`I represent Petitioner in the above-captioned Post-Grant Review. I write to inform the Board that at
`a hearing held on Wednesday, August 26, the bankruptcy court indicated that it will issue a written
`order to lift its bankruptcy stay as to this action (PGR2018-00048) and the related District Court
`action that includes the ‘961 patent. Once that decision by the bankruptcy court issues, Collegium
`believes this Board can lift the PTAB stay as to this action and issue a Final Written Decision.
`
`On September 24, 2019, Patent Owner filed a Notice of Bankruptcy and Imposition of Automatic
`Stay in this proceeding. On October 2, 2019—two days before the Final Written Decision was due—
`this Board ordered that the “proceeding [was] hereby stayed pursuant to the Automatic Stay
`provision of 11 U.S.C. § 362(a)(1), 3.” Paper 45 at 4. For this reason, Collegium is providing notice of
`the bankruptcy court’s intent to lift its stay as to this action.
`
`At yesterday’s hearing, Patent Owner argued to the bankruptcy court that this action “no longer
`exists” due to the passage of the extended time for the Board to issue its final written decision
`during the pendency of the automatic bankruptcy stay. The bankruptcy court declined to make such
`a ruling. Petitioner believes that there is no basis for Patent Owner’s claim that this action “no longer
`exists” and instead that 35 U.S.C. 362(a)(11) requires that a final written decision be issued after the
`order lifting the automatic bankruptcy stay issues. We will provide the Board with a copy of the
`order lifting the stay when it is available. We will be available for a conference call if the Board then
`believes that any discussion or briefing is necessary before the Board issues its Final Written
`Decision.
`
`Respectfully,
`
`PGR2018-00048
`Ex. 3001 p. 3 of 4
`
`

`

`Chris Pinahs
`Counsel for Petitioner
`
`Christopher A. Pinahs
`
`Robins Kaplan LLP | 800 LaSalle Avenue | Suite 2800 | Minneapolis MN 55402
`p 612 349 0162 | f 612 339 4181 | CPinahs@RobinsKaplan.com
`
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`
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`PGR2018-00048
`Ex. 3001 p. 4 of 4
`
`