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`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` _________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` _________
`
` COLLEGIUM PHARMACEUTICAL, INC.,
` Petitioner,
`
` v.
`
` PURDUE PHARMA L.P., PURDUE PHARMACEUTICALS L.P.,
` AND THE P.F. LABORATORIES INC.,
` Patent Owner
`
` _________
`
` Case PGR2018-00048
` U.S. Patent No: 9,693,961
`
` TELECONFERENCE
`
` SEPTEMBER 4, 2020
`
` 1:00 P.M.
`
`Reporter: Heather E. Carlotto, RPR, CRR
`
`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 1 (1)
`
`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 1
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 JUDGE PAULRAJ: This is Judge Paulraj.
` 2 With me on the line is panel members Richard J. Smith
` 3 and Kristi L.R. Sawert. This is case PGR2018-00048.
` 4 Let's start with roll call. Petitioner's counsel
` 5 first and then followed by Patent Owner's counsel.
` 6 MR. HOLDREITH: Yes, Your Honor.
` 7 Good afternoon. This is Jake Holdreith
` 8 for the petitioner. I'll be the main attorney
` 9 addressing the panel on the petitioner's side. With
`10 me are Cy Morton and Chris Pinahs, all of Robins
`11 Kaplan who have also appeared in the case. We've also
`12 asked our bankruptcy colleague, Scott Gochi
`13 (phonetic), to be available on the line; although, I
`14 don't expect him to address the Court today.
`15 JUDGE PAULRAJ: Thank you, Mr.
`16 Holdreith.
`17 Who do we have on for Patent Owner?
`18 MR. LaROSA: Good afternoon, Your
`19 Honor, this is Gasper LaRosa from Jones Day. I'm
`20 joined on the phone today by my partner, John Normile.
`21 We also have bankruptcy counsel on the phone, Kevyn
`22 Orr and Dan Moss, in case there are any issues that
`23 need to be addressed.
`24 JUDGE PAULRAJ: Thank you, Mr. LaRosa.
`25 Do we have a patent -- I'm sorry. Do
`
`Page 2
`
` 1 and issue its final written decision. As the panel no
` 2 doubt recalls, the notice of bankruptcy came just a
` 3 few days before the original decision date under
` 4 326(a)(11), stayed the case, and so now that it's
` 5 lifted we are hoping for the panel to be able to,
` 6 relatively soon, be in a position to issue the final
` 7 written decision.
` 8 I know that Patent Owner's got some
` 9 arguments about why the action should no longer exist,
`10 I won't anticipate those arguments, but we think
`11 briefing on that issue would just delay entry of the
`12 final written decision and so we do not think that
`13 that's an issue that needs to be briefed.
`14 JUDGE PAULRAJ: Thank you, Mr.
`15 Holdreith.
`16 Have you entered the bankruptcy court
`17 order into the record yet?
`18 MR. HOLDREITH: We have not. We didn't
`19 want to act before being given permission to enter it
`20 into the record, but we're happy to do that if you
`21 would like us to.
`22 JUDGE PAULRAJ: All right. Let's see
`23 how we want to address that -- during this call -- but
`24 let me turn it over to Mr. LaRosa. And I do
`25 understand that Patent Owner has some arguments as to
`Page 4
`
` 1 we have a court reporter on the line today?
` 2 MR. HOLDREITH: Yes, Your Honor,
` 3 Petitioner has arranged for a court reporter.
` 4 JUDGE PAULRAJ: Okay. As is normal
` 5 practice, we'd ask you to submit a copy of the
` 6 transcript into the record as soon as it becomes
` 7 available, whenever that is. Is that fair?
` 8 MR. HOLDREITH: Yes, sir, we will do
` 9 that.
`10 JUDGE PAULRAJ: All right. So we got
`11 an exchange of emails from Petitioner's counsel as
`12 well as Patent Owner's counsel with respect to the
`13 lift of the bankruptcy stay, and I also got Mr.
`14 LaRosa's follow-up email correcting the statement from
`15 the prior email of August 27, 2020. So we have a
`16 sense of what the issues are, but, since we initially
`17 got the email from Petitioner's counsel, Mr.
`18 Holdreith, I'll let you go ahead and address the
`19 situation and then let Mr. LaRosa respond.
`20 MR. HOLDREITH: Thank you, Judge
`21 Paulraj.
`22 We can confirm that the bankruptcy
`23 court has now lifted the automatic stay and entered
`24 that order, and so our view is the automatic stay has
`25 now been lifted and the panel is now free to go ahead
`
`Page 3
`
` 1 why we shouldn't proceed to a final written decision.
` 2 So, Mr. LaRosa, the floor is yours.
` 3 MR. LaROSA: Thank you, Your Honor.
` 4 The basis for our request to file a
` 5 motion here is to request that the Court terminate the
` 6 action and/or dismiss it for a couple of reasons. The
` 7 first is that the statutory language here is quite
` 8 clear in that Section 326(a)(11) requires that the
` 9 final determination be made not later than one year
`10 after the date in which the institution decision comes
`11 down, which is not to be extended by more than six
`12 months. You know, this is consistent with what is in
`13 the legislative history both from Senate reports and
`14 from -- also from the House report on a requirement
`15 here that an institution or a final determination be
`16 issued within 18 months of the institution decision.
`17 The -- there was some -- and I'm not
`18 going to spend too much time here, it doesn't seem
`19 like the major issue -- or -- there doesn't seem to be
`20 a dispute between the parties that the deadline, in
`21 fact, has passed here; that -- the original deadline
`22 was April 6th -- I mean, the extended deadline was
`23 April 6th. That has come and gone already so,
`24 effectively, what the petitioner's asking for is to
`25 issue a final written decision out of time. There
`
`Page 5
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`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 2 (2 - 5)
`
`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 2
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 doesn't seem to be a dispute here that there was no
` 2 holding up those deadlines in connection with the
` 3 issue of the -- of the stay. There is some question
` 4 as to whether the petitioner would like to reserve its
` 5 rights to argue that certain provisions of the
` 6 bankruptcy code -- in particular, 108(c)(2) -- would
` 7 hold those dates. But, ultimately, my understanding
` 8 of the petitioner's argument is focused on some
` 9 case-based arguments that -- in effect, that the
`10 statutory provision should be -- should not apply
`11 here, that we shouldn't be required to file a
`12 statutory provision, and, instead, that the panel
`13 should be able to issue its final written decision out
`14 of time. I can address those cases if counsel is
`15 planning to address them, but I don't think there -- I
`16 don't think they change the case here, which is, you
`17 know, this is not -- the bottom line is, this is not
`18 like the cases that counsel has cited to us where the
`19 board here has -- in all those cases it was a
`20 situation where the administrative body didn't do what
`21 it was supposed to. Here, the PTAB followed the
`22 statute, ceding to the bankruptcy court on the issue
`23 of the automatic stay and provided clear instruction
`24 to Collegium as to what was to happen next.
`25 In Paper 44, the chief ABJ explained
`
`Page 6
` 1 that the six-month extension that was provided was to
` 2 give time for the bankruptcy court to address the
` 3 issues of the automatic stay. In order number 45,
` 4 this panel stated the petitioner should seek any
` 5 relief it deems appropriate from the bankruptcy court.
` 6 On February 26th, they -- Collegium's counsel sent us
` 7 an email where they confirmed that they made a
` 8 deliberate decision on their part not to bring this
` 9 issue to the bankruptcy court, not to seek a lifting
`10 of the stay. In the meet-and-confer today, again,
`11 Collegium's counsel confirmed that it made a
`12 deliberate decision not to use the six months provided
`13 by the panel to seek relief from the automatic stay.
`14 So it's really here -- the reason that the time period
`15 expired is because Collegium's failure to act here and
`16 that's the reason we're asking for a termination of
`17 the PGR pursuant to 42-12. We understand that
`18 Collegium's counsel believes that that wouldn't be
`19 appropriate, but that they understand it's within the
`20 Board's discretion to do so.
`21 So, those are the reasons that we're
`22 asking for briefing on the issue as to whether this
`23 proceeding should be terminated and/or dismissed.
`24 JUDGE PAULRAJ: All right. Thank you.
`25 I think we've got a sense of your position, Mr.
`
`Page 7
`
` 1 LaRosa. So, let me get a sense of exactly how -- the
` 2 relief you want. You want -- so, as of now, my
` 3 understanding is that the stay that we entered due to
` 4 the bankruptcy order has been lifted. You want us to
` 5 file -- or -- you want to file a motion to terminate
` 6 so we can -- so, basically, to terminate this
` 7 proceeding without us entering -- upon our written
` 8 decision; is that right.
` 9 MR. LaROSA: That's correct, Your
`10 Honor.
`11 JUDGE PAULRAJ: Okay. What I'm trying
`12 to figure out, and it may be more of a formality, is
`13 whether we need a motion to lift the stay at the Board
`14 level or if the district court -- I'm sorry -- the
`15 bankruptcy court's order is effective in lifting the
`16 stay that went into effect.
`17 MR. LaROSA: I think -- my thinking on
`18 it, Your Honor, would be that -- similar to how the
`19 Board issued the stay in the first instance, and then
`20 without the bankruptcy court, that an order -- a
`21 separate order might be required here, but I can defer
`22 to bankruptcy counsel. I don't know if the effect of
`23 that order was, in fact, to lift the stay or only to
`24 lift the applicability of the bankruptcy stay to the
`25 PTAB proceeding.
`
`Page 8
`
` 1 JUDGE PAULRAJ: And it may be related.
` 2 The question, I think, is one of jurisdiction. I
` 3 mean, I think we -- like we said in our prior order, I
` 4 say giving effect to the bankruptcy stay provision,
` 5 you know, we were going to wait until the bankruptcy
` 6 court acted, and the bankruptcy court did act.
` 7 Do we have jurisdiction now over this
` 8 case again to do whatever we deem appropriate and
` 9 necessary and either issue a final written decision or
`10 terminate the proceeding based on whatever motion
`11 Patent Owner will file?
`12 MR. LaROSA: From the patent owner's
`13 perspective, we believe that the PTAB now has
`14 jurisdiction to issue an order terminating the
`15 proceeding. Obviously, we disagree with the ability
`16 of the Board now to issue a final written decision
`17 because of the expiration of the statutory time
`18 period.
`19 JUDGE PAULRAJ: Okay. And I understand
`20 there were certain stipulations made, and, perhaps,
`21 we'll get a sense of the nature and concurrence of
`22 those stipulations more in whatever filing we may
`23 authorize. But could you, kind of, explain the
`24 impetus and the detail as to why -- or, perhaps, what
`25 conditions, perhaps, the bankruptcy court lifted the
`
`Page 9
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`Depo International, Inc.
`
`Page 3 (6 - 9)
`
`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 3
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 stay? You know, it seems like Petitioner is barred
` 2 from making certain arguments about whether the stay
` 3 extended or precluded the deadlines that we have in
` 4 this proceeding and the petitioner's also barred from
` 5 -- I mean, I'm reading your corrected email. The
` 6 petitioner's also barred from arguing that the
` 7 bankruptcy stay provision extends the statute of
` 8 limitations or of the deadline. So, my understanding
` 9 from your email is that the Court indicated that
`10 Section 108(b)(2) of the bankruptcy court does not
`11 apply to extend any deadline in the PTAB action unless
`12 it's determined in a non-bankruptcy forum that the
`13 PTAB action is a civil action and that the PTAB is a
`14 court for purposes of Section 108(b) of the bankruptcy
`15 court. Is that right?
`16 MR. LaROSA: Yeah, that's my
`17 understanding, Your Honor. I think there's really --
`18 also, 108(c) issue is the only one really still alive
`19 here. And what the bankruptcy court found was there
`20 was some -- there was some briefing on this issue and
`21 ultimately they issued an order barring Collegium from
`22 arguing that there was any tolling of any of the
`23 statutory deadlines or provisions unless there was a
`24 determination of two things: One, that the PTAB is,
`25 in fact, a court; and, two, that the PGR is, in fact,
`
`Page 10
`
` 1 a civil action. We think it's very clear from the
` 2 Supreme Court cases, including oil states and Kuzo
` 3 (phonetic) and others that that cannot, in fact, be
` 4 the case, but I understand that Collegium's counsel's
` 5 reserving the right to make those arguments.
` 6 JUDGE PAULRAJ: All right. Let me put
` 7 you on hold -- actually, let me turn it over back to
` 8 Mr. Holdreith. I think I'd like to get Petitioner's
` 9 positions. I know he was going to defer until he
`10 heard your argument on this call before addressing,
`11 perhaps, the issue to discuss. Let me turn it back to
`12 Mr. Holdreith to see what he has to say about the stay
`13 and other issues.
`14 MR. HOLDREITH: Yes, sir, thank you.
`15 So, first of all, we agree that the
`16 bankruptcy court has lifted its stay and returned to
`17 the PTAB jurisdiction control over your own action and
`18 your proceedings, and has indicated that you should
`19 decide what is the status of the PGR and how to
`20 dispose of it. And so you have that power. You've
`21 raised a good question, Your Honor, about whether the
`22 formality of the Board lifting its own stay is
`23 necessary or not, if that is deemed a separate stay
`24 from the automatic stay in bankruptcy.
`25 In terms of -- I won't argue our case
`
`Page 11
`
` 1 in detail, but our view is that the time for a final
` 2 written decision under 326(a)(11) of your statute
` 3 provides no indication that an action is terminated if
` 4 you are unable to issue your decision within that time
` 5 frame. And the very clear binding precedent in a
` 6 federal circuit case from 2011 states that, absent an
` 7 expressed statutory directive, that your power to act
` 8 is terminated by a deadline. Your power to act is not
` 9 terminated and it's just the opposite. In fact, what
`10 326(a)(11) would do, if anything, is create a right in
`11 the parties to seek to compel action if it is not
`12 forthcoming by the deadline. So we have a very
`13 different reading of 326(a)(11). We actually think
`14 the federal circuit precedent on this point is very
`15 clear and is dispositive.
`16 We're troubled that Purdue has demanded
`17 that you and we forebear from any action during the
`18 pendency of the automatic stay and now contends that
`19 because you and we respected the bankruptcy court's
`20 automatic stay, your effort should be wasted and we
`21 should be prejudiced, and we think that's -- there's
`22 just no basis for it in the law. So our concern is
`23 briefing on this issue will just delay your decision
`24 further after it's already been delayed by Purdue's
`25 bankruptcy and demands for compliance with the
`
`Page 12
`
` 1 bankruptcy stay, and we don't want that delay.
` 2 I'll just mention that the bankruptcy
` 3 issues that Mr. LaRosa has raised in his email relate
` 4 to the bankruptcy court finding that -- you should
` 5 decide how your own statute applies, what the meaning
` 6 of 326(a)(11) is. If the bankruptcy court provided
` 7 guidance that you are permitted, if you wish, to make
` 8 certain findings about how the bankruptcy law does or
` 9 doesn't toll your deadline, we think you should decide
`10 based on your own statute, that you have power to
`11 issue the final written decision and that you will go
`12 ahead and do that, and that there's no need if you do
`13 so to reach the bankruptcy issues. So we would urge
`14 you to proceed that way.
`15 If the bankruptcy issues become
`16 relevant, then, the way I read the bankruptcy court's
`17 order, Judge Drain there has said you are permitted to
`18 find, if you wish, that 108(c)(2) of the bankruptcy
`19 code extended the time for the final written decision.
`20 And I would suggest a nuance in the way Mr. LaRosa
`21 characterized it in his email, I think the bankruptcy
`22 judge said the required finding by you would be that
`23 you are in the nature of a court and this is in the
`24 nature of a civil action. But our view is that the
`25 better course is to simply rely on your own statute
`
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`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 4 (10 - 13)
`
`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 4
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 and your own power to act here, which we think is
` 2 clear under 328 of your statute that provides for a
` 3 final written decision in case of institution where
` 4 there's no dismissal and that there's no grounds for
` 5 dismissal here.
` 6 I could go on, but maybe I'll pause
` 7 there. Our request is, obviously, that the panel go
` 8 ahead and issue the final written decision as properly
` 9 as it can and not pause for a delay in briefing.
`10 The last procedural thing I'll mention
`11 is that we believe Purdue has argued that if 108(c)(2)
`12 were to become relevant here, that there may be a
`13 30-day clock running where 108(c)(2) of the bankruptcy
`14 code would extend that final written decision deadline
`15 for, perhaps, as short as 30 days after the stay was
`16 lifted, or until September 30th, and so that put some
`17 time constraints on what we're doing here if Purdue
`18 would raise that argument.
`19 JUDGE PAULRAJ: Okay. Thank you, Mr.
`20 Holdreith. I think we've got a sense of what your
`21 head -- at this point, I think we are inclined to
`22 allow the parties to brief the issues. I am concerned
`23 what I just heard you said in terms of the 30-day
`24 clock. I think that was certainly constraintive. I
`25 may turn back to Mr. LaRosa about that particular
`
`Page 14
`
` 1 point. But I did want to bring up what Mr. LaRosa has
`
` 2 said about Petitioner's more or less failure to seek a
`
` 3 lift of bankruptcy court -- or -- lifted the stay from
`
` 4 the bankruptcy court. From my recollection -- I went
`
` 5 back and looked at the record in this case, and I
`
` 6 recall we had a conference call in this case in
`
` 7 February, and I also recall specifically asking
`
` 8 Petitioner whether they sought any relief from the
`
` 9 bankruptcy court at that point, and my recollection
`
`10 was Petitioner had not, but that's consistent with
`
`11 what Mr. LaRosa has also said.
`
`12 Can you address, perhaps, that point,
`
`13 you know, given that Petitioner didn't seek relief
`
`14 within, perhaps, what might have been considered the
`
`15 six-month good cause extension and we could have acted
`
`16 in time, no -- continue with that particular issue.
`
`17 MR. HOLDREITH: Sure. So let me start
`
`18 by saying I think what Purdue is suggesting is that if
`
`19 the PTAB finds itself unable to issue a final written
`
`20 decision within the time provided by 326(a)(11) for
`
`21 whatever reason, that, either it becomes impossible
`
`22 for you to act or that you should -- you should not
`
`23 act. And we don't view the statute as saying that at
`
`24 all, just the opposite. So we think the premise of
`
`25 Mr. LaRosa's argument is faulty.
`
`Page 15
`
` 1 What happened in this case is that we
` 2 made an argument to you that the automatic stay should
` 3 not apply to PTAB proceedings, and we lost on that
` 4 argument. You recognized the stay, an automatic stay,
` 5 in view of the bankruptcy code, and Purdue has
` 6 asserted forcefully that such a stay applied to you
` 7 and the bankruptcy court has agreed that such a stay
` 8 applied to you. The bankruptcy court has no
` 9 obligation to lift that automatic stay when somebody
`10 asks over an objection of a bankrupt like Purdue. And
`11 so Purdue's argument would put you in the position
`12 that you are at the whim of a bankruptcy court and a
`13 bankruptcy court can pause your proceedings even when
`14 trial is completed to be wasted simply because it
`15 chooses not to lift the automatic stay.
`16 Where we found ourselves after your
`17 stay was imposed is that no bankruptcy court has ever
`18 lifted a stay on a PTAB proceeding over a patent
`19 owner's objection. And we had no reason to believe
`20 that, in this case, acquiescing in the stay, as the
`21 bankruptcy policy encourages, would even cause Purdue
`22 to make an argument that your power was somehow
`23 curtailed or that the action no longer existed. The
`24 situation was that the relating proceedings -- related
`25 proceedings were stayed by the automatic stay in
`
`Page 16
`
` 1 bankruptcy, so they were not being prejudiced by any
` 2 delay in your issuing a final written decision. You
` 3 had stayed your proceedings. And so we choose to
` 4 acquiesce in the stay once Purdue told us there was an
` 5 automatic stay, you told us there was, the related
` 6 proceedings judge in Boston told us there was. And
` 7 Purdue never suggested to you that they would argue
` 8 that this action would cease to exist if the stay
` 9 outlasted the 326(a)(11) date. Your order didn't make
`10 any suggestion. We didn't read your order as ordering
`11 us to seek relief in the bankruptcy court. I've
`12 reread it now and I don't see that there. And I don't
`13 know what we would have been able to tell the
`14 bankruptcy court about why it should lift the stay
`15 over the debtor's objection because we did not have a
`16 basis to argue, and didn't believe it was the case,
`17 that this action would expire or that our rights would
`18 be prejudiced if we all simply respected the stay, did
`19 as we had been ordered to ask -- ordered and asked to
`20 do -- you and us -- and simply waited for the stay to
`21 be lifted. And we don't think that it would be just
`22 or based in law, for now you and us having acquiesced
`23 in that automatic stay, to have your work be wasted
`24 and our rights be prejudiced.
`25 JUDGE PAULRAJ: Thanks, Mr. Holdreith.
`
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`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 5
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 I would, perhaps, correct something
` 2 slightly what you said. I'm going back and looking at
` 3 the Paper No. 45 in our -- in the case here, and we
` 4 did specifically state -- asked Petitioner to seek --
` 5 should seek any relief as deemed appropriate from the
` 6 record. At least my understanding was that, you know,
` 7 to the extent that you wanted the bankruptcy court to
` 8 lift the stay, you would have done it. But I do agree
` 9 with the broader claim that, perhaps, the issue of
`10 what would happen if we went past the six-month
`11 deadline wasn't specifically addressed prior to this
`12 call, so I'll state that that -- I also didn't see a
`13 transcript from our February conference call. Is that
`14 correct, there was no transcript entered into the
`15 record?
`16 MR. HOLDREITH: That is true, Your
`17 Honor.
`18 JUDGE PAULRAJ: Okay. But can we
`19 confirm on the record that I did recall -- what I
`20 recall in terms of asking counsel at the end -- I
`21 think I asked Petitioner's counsel, either you or Mr.
`22 Pinahs at the time -- as to whether you did seek
`23 relief before the bankruptcy court and you said at
`24 that time no; is that right?
`25 MR. HOLDREITH: Your Honor,
`
`Page 18
`
` 1 unfortunately, I'm unable, from memory, to positively
` 2 answer that question. That certainly seems plausible
` 3 to me, but I don't know the answer as I sit here. And
` 4 I don't know if either of my colleagues -- Mr. Morton
` 5 or Mr. Pinahs who are on the phone -- are able to more
` 6 specifically confirm that.
` 7 JUDGE PAULRAJ: I'll wait for Mr.
` 8 Morton or Mr. Pinahs. I know I've had a few
` 9 conference calls with Petitioner's counsel. I don't
`10 know if either Mr. Morton or Mr. Pinahs can confirm
`11 that. And I don't want to put you on the spot, I just
`12 want to make sure that my recollection wasn't
`13 mistaken.
`14 MR. MORTON: Yeah, Your Honor, this is
`15 Cy Morton. And I've conferred with Mr. Pinahs as
`16 well, and we're in the same position, I'm afraid. I
`17 can't remember the exact discussions and arguments
`18 made by each party or the exact statement by the
`19 Board, so I apologize.
`20 JUDGE PAULRAJ: Fair enough. So we are
`21 where we are right now. Let me briefly turn it back
`22 to Mr. LaRosa to ask about the 30-day argument, which
`23 is something I just heard for the first time from Mr.
`24 Holdreith, and then -- I'm premising that by, perhaps,
`25 a concern that if we do order the relief that Mr.
`
`Page 19
`
` 1 LaRosa is asking in terms of, at least, a motion to
` 2 terminate, that may well take up the 30 days. And I'd
` 3 hate for the clock to start and then somehow by the
` 4 end of the briefing Mr. LaRosa has an additional
` 5 argument that we haven't -- you know, even if we had
` 6 time to file our written decision now, 30 days from
` 7 now we don't have that ability.
` 8 Can you address that, Mr. LaRosa?
` 9 MR. LaROSA: Absolutely, Your Honor.
`10 So, you know, I'm a little bit at a
`11 loss because it doesn't -- in one instance,
`12 Collegium's counsel seems to be saying, well, we
`13 really don't need to address the 108(c) arguments,
`14 that's not really the focus of our argument, but then
`15 they seem to be raising an issue with the timing. You
`16 know, certainly, my view is, I don't have a lot of
`17 experience with that provision and the 30-day clock so
`18 I don't even know at this point whether it's
`19 extendible. I wouldn't have a problem extending that,
`20 if that's something that's possible to do, in order to
`21 get the parties time for the briefing. I guess that
`22 has to be my response with respect to the 30-day
`23 clock, on that issue.
`24 I do want to mention a couple of things
`25 as to what counsel said. I mean, I think, first of
`
`Page 20
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` 1 all, the one point I want to make clear is, this is
` 2 not a -- counsel seems to be suggesting that Purdue
` 3 sort of asked for the initial stay in a discretionary
` 4 way, that it had some ability to not ask for the stay
` 5 under the bankruptcy law, and that is, in fact, not
` 6 the case. Purdue and the Board were both compelled to
` 7 act in accordance with the automatic stay, and then it
` 8 was really up to Collegium at that point to at least
` 9 approach us to try to get the stay lifted, which they
`10 never did, or to go to the bankruptcy court to try to
`11 get the stay lifted, both they never did. Here,
`12 again, the main issue here is that Collegium did
`13 nothing for the six-month time period and then did
`14 nothing even after that until Purdue sought to lift
`15 the stay in the district court case.
`16 So I just wanted to correct the record
`17 on those points to make it somehow that Purdue delayed
`18 here and it's Purdue's fault that we're in this
`19 situation. It is clear in all the other cases -- this
`20 isn't the first case with a bankruptcy proceeding.
`21 You know, in the MaxLinear case, which is
`22 IPR2015-0594, and the Twitter case, which is
`23 IPR2017-A29, and in both those cases -- and there's a
`24 Mylan case as well, which is IPR2017-1995. In all
`25 those cases, the parties were able to get the stay
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`Page 21
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`(763) 591-0535 | info@depointernational.com
`Depo International, Inc.
`
`Page 6 (18 - 21)
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`PGR2018-00048
`Collegium v. Purdue
`Collegium Exhibit 1093 - Page 6
`
`

`

`Teleconference - 9/4/2020
`Collegium Pharmaceutical, Inc. vs. Purdue Pharma L.P., et al.
`
` 1 lifted in time to meet the 18-month statutory
` 2 deadline. So it's not like it was something that was
` 3 impossible for -- to happen here so that the Board can
` 4 comply with the statutory guidelines. And we're in
` 5 this position because of Collegium's delay, nothing
` 6 that Purdue did.
` 7 JUDGE PAULRAJ: All right. Thank you,
` 8 Mr. LaRosa.
` 9 I think we have enough from both sides.
`10 Let me put the parties on hold and confer with my
`11 panel members and get back to you.
`12 (Panel members confer.)
`13 JUDGE PAULRAJ: So this is Judge
`14 Paulraj again. Is everyone still on the line?
`15 MR. LaROSA: Yes, Your Honor.
`16 JUDGE PAULRAJ: I heard Mr. LaRosa. I
`17 want to make sure Mr. Holdreith is on.
`18 MR. HOLDREITH: Yes, sir, I'm here too.
`19 JUDGE PAULRAJ: Excellent.
`20 So, I did confer with the panel, and we
`21 are inclined to authorize a motion that Mr. LaRosa
`22 mentioned, so -- just to get the briefing on the
`23 record for us to fully consider the issues that we
`24 discussed on the phone. So -- and given, kind of, the
`25 timing issue, we would ask the parties to submit the
`Page 22
`
` 1 lengths for the opening motion and the opposition
` 2 brief.
` 3 JUDGE PAULRAJ: Sorry about that.
` 4 We're going to give 20 pages each for the motion and
` 5 the opposition and 10 pages each for the reply and the
` 6 third reply.
` 7 MR. HOLDREITH: Thank you. Understood.
` 8 JUDGE PAULRAJ: So, as part of the
` 9 briefing, I'll leave it to the parties to have --
`10 based on what's presented. Mr. LaRosa, I think you
`11 mentioned a -- you mentioned there was briefing
`12 already before the bankruptcy court on the issue of
`13 whether to lift the stay. We would certainly want to
`14 be aware of what the parties argued before the
`15 bankruptcy court. So, in addition to the bankruptcy
`16 order, please submit us exhibits to either the motion
`17 or the opposition. I would say if you can do it as
`18 part of the motion, we can have it upfront any of the
`19 filings that were submitted in the bankruptcy court as
`20 -- related to the question on whether we lift the
`21 stay. Is that fair?
`22 MR. LaROSA: Yes, Your Honor,
`23 absolutely. No problem.
`24 JUDGE PAULRAJ: All right. Any
`25 questions on the schedule and briefing limits that I
`
`Page 24
`
` 1 briefing in a relatively short turnaround, so here's
` 2 the schedule and the page limits we're contemplating.
` 3 If there's any serious concern, please let me know.
` 4 But we're going to authorize Patent Owner to file a
` 5 motion to terminate per your request in the email one
` 6 week from now, so by September 11th. We're going to
` 7 authorize Petitioner to -- (audio disruption.) I'm
` 8 sorry. We're going to authorize Petitioner to file an
` 9 opposition to the motion to terminate by -- one week
`10 after that, by September 18. And each of the motions
`11 and the opposition that I just mentioned, we're going
`12 to -- (audio disruption). You can also submit --
`13 sorry. Anyone who's not muted, can you mute yourself
`14 so we can get through this?
`15 So, with that, I set the motion by
`16 September 11th and the opposition by September 18th.
`17 I'll also authorize a reply within three business days
`18 after September 18th, so September 23rd; and then
`19 we'll also authorize a third reply three business days
`20 after that, September 28th, and the reply -- and the
`21 replies will be ten pages each.
`22 Any questions of what our schedules
`23 are?
`24 MR. HOLDREITH: Your Honor, Jake
`25 Holdreith. I'm sorry. I just didn't hear the page
`
`Page 23
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` 1 just set up?
` 2 MR. LaROSA: Not from t