Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-00165,
IPR2015-00168, and IPR2015-00169.
Lynn Freeman, McCarter & English, LLP, Boston, MA, for
appellant. Also represented by Thomas F. Foley, Wyley Sayre
Lloyd Abramic, Steptoe & Johnson, LLP, Chicago, IL, for
appellee. Also represented by Jamie Lucia, San Francisco, CA;
Katherine Dorothy Cappaert, Washington, DC.
Newman, Lourie, and Reyna, Circuit Judges.
Therapeutics, Inc. moves to dismiss these appeals on the
basis that our review is barred by 35 U.S.C. § 314(d).
BioDelivery Sciences International, Inc. opposes the motion.
Having considered the parties' arguments, we grant the
motion and dismiss these appeals.
October 2014, BioDelivery filed three petitions for inter
partes review ("IPR") of U.S. Patent No. 8,
765, 167. The petitions contained a combined total of
seventeen grounds. The petition in IPR2015-00165 included
seven grounds, the petition in IPR2015-00168 included five
grounds, and the petition in IPR2015-00169 included five
Patent Trial and Appeal Board ("Board" or
"PTAB") instituted review on a single ground in
each petition. For the fourteen other non-instituted grounds,
the Board found that BioDelivery failed to establish a
reasonable likelihood of prevailing on the merits. In the
final written decisions, the Board sustained the
patentability of all claims subject to the instituted
challenges in each proceeding. BioDelivery appealed.
oral argument in the appeals, the Supreme Court issued its
decision in SAS Institute, Inc. v. Iancu, 138 S.Ct.
1348 (2018). BioDelivery subsequently moved to remand the
appeals based on SAS's requirement that IPR
proceedings must proceed "'in accordance with'
or 'in conformance to' the petition,"
id. at 1356 (quoting Pursuant, Oxford
English Dictionary, http://www.oed.com/view/Entry/155073),
including "'each claim challenged' and 'the
grounds on which the challenge to each claim is based,
'" id. at 1355 (quoting 35 U.S.C. §
granted BioDelivery's motion without deciding the merits
of any of the appealed issues and vacated the Board's
final written decisions in the three IPR proceedings.
BioDelivery Scis. Int'l, Inc. v. Aquestive
Therapeutics, Inc., 898 F.3d 1205, 1210 (Fed. Cir. 2018)
("Remand Order"). Specifically, we ordered
that "BioDelivery's request for remand to implement
the Court's decision in SAS is granted in [the
three appeals]" and "[t]he PTAB's decisions in
PTAB Nos. IPR2015-00165, IPR2015-00168, and IPR2015-00169,
are vacated." Id.
remand, the Board requested briefing on whether it would be
appropriate to vacate its prior institution decisions and
deny the petitions in their entirety. See BioDelivery
Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc. f/k/a
MonoSol RX, LLC, No. IPR2015-00165, Paper No. 91
(P.T.A.B. Feb. 7, 2019) ("PTAB Remand Dec.
IPR2015-00165"), at 3; BioDelivery Scis. Int'l,
Inc. v. Aquestive Therapeutics, Inc. f/k/a MonoSol RX,
LLC, No. IPR2015-00168, Paper No. 88 (P.T.A.B. Feb. 7,
2019) ("PTAB Remand Dec. IPR2015-00168"), at 3;
BioDelivery Scis. Int'l, Inc. v. Aquestive
Therapeutics, Inc. f/k/a Mono-Sol RX, LLC, No.
IPR2015-00169, Paper No. 89 (P.T.A.B. Feb. 7, 2019)
("PTAB Remand Dec. IPR 2015-00169"), at 3. After
considering the parties' arguments and whether petitioner
had shown a reasonable likelihood of prevailing on all
grounds, including those which were not previously
instituted, the Board modified the institution decisions,
denied the petitions, and terminated the proceedings.
E.g., PTAB Remand Dec. IPR2015-00165 at 3.
Board emphasized its discretion to institute IPR under 35
U.S.C. § 314(a) even upon a showing of a reasonable
likelihood of prevailing on at least one challenged claim.
Id. at 5 (citing SAS, 128 S.Ct. at 1356).
The Board also emphasized its statutory directive to
prescribe regulations for conducting IPR and the
Director's obligation to "consider the effect of any
such regulation on . . . the efficient administration of the
Office." Id. (quoting 35 U.S.C. § 316(b));
see also 37 C.F.R. § 42.1(b) ("This part
shall be construed to secure the just, speedy, and
inexpensive resolution of every proceeding.").
Board considered the merits of the previously non-instituted
grounds and found that BioDelivery had not
"es-tablish[ed] a reasonable likelihood of success in
relation to those claims and grounds." Id. at
7. "Because the overwhelming majority of unpatentability
grounds presented by Petitioner fail to meet the standard for
institution of inter partes review, [the Board
found] that instituting trial as to those grounds at this
time is neither in the interest of the efficient
administration of the Office, nor in the interest of securing
an inexpensive resolution of this proceeding."
BioDelivery argued that the finality requirement of §
314(d) prohibited the Board from reconsidering its decisions
to institute, the Board rejected that argument and noted that
it has previously reconsidered institution decisions and
terminated IPR proceedings without issuing a final decision.
Id. at 8-10 (citing Medtronic, Inc. v. Robert
Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1386 (Fed.
Cir. 2016); GTNX, Inc. v. INTTRA, Inc., 789 F.3d
1309, 1313 (Fed. Cir. 2015)). In applying SAS and
making the "binary choice" to ...