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Biodelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc.

United States Court of Appeals for the Federal Circuit

August 29, 2019, Decided

2019-1643, 2019-1644, 2019-1645


 [*1363]  ON MOTION


Aquestive 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.


In 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 grounds.

The Patent Trial [**2]  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  [*1364]  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.

After oral argument in the appeals, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 200 L. Ed. 2d 695 (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,, including "'each claim challenged' and 'the grounds on which the challenge to each claim is based,'" id. at 1355 (quoting 35 U.S.C. § 312(a)(3)).

We 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 [**3]  decisions in PTAB Nos. IPR2015-00165, IPR2015-00168, and IPR2015-00169, are vacated." Id.

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935 F.3d 1362 *; 2019 U.S. App. LEXIS 26281 **; 2019 U.S.P.Q.2D (BNA) 324012; 2019 WL 4062525


Subsequent History: Rehearing denied by, Rehearing denied by, En banc BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 2020 U.S. App. LEXIS 1030 (Fed. Cir., Jan. 13, 2020)

Prior History:  [**1] Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2015-00165, IPR2015-00168, and IPR2015-00169.

BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205, 2018 U.S. App. LEXIS 21223 (Fed. Cir., July 31, 2018)


decisions, grounds, proceedings, remand order, petitions, Patent, instituted, written decision, reasonable likelihood, appeals, challenges, colleagues, inter partes, partial, merits

Business & Corporate Compliance, US Patent & Trademark Office Proceedings, Patent Law, US Patent & Trademark Office Proceedings, Administrative Law, Agency Adjudication, Review of Initial Decisions, Judicial Review, Standards of Review, Deference to Agency Statutory Interpretation, Patent Law, Jurisdiction & Review, Standards of Review