In BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Nos. 19-1643, 19-1644, 19-1645 (Fed. Cir. Aug. 29, 2019), the Federal Circuit granted Aquestive Therapeutics, Inc.’s (“Aquestive”) motion to dismiss BioDelivery Sciences International, Inc.’s (“BDSI”) appeals of the PTAB’s decision, on remand from the Federal Circuit, to decline instituting IPRs altogether on the asserted claims in BDSI’s petitions, even though these IPRs had been previously partially instituted.

Referencing Cuozzo Speed Techs., LLC v. Lee, the Court determined that BDSI’s appeals merely challenged the Board’s determination not to institute review, something the Board has discretion to do even upon a showing that there is “a reasonable likelihood of success with respect to at least 1 claim challenged” in the petition. 136 S. Ct. 2131, 2142 (2016) (“Where a patent holder merely challenges the Patent Office’s ‘determination that the information presented in the petition . . . shows that there is a reasonable likelihood’ of success ‘with respect to at least 1 of the claims challenged,’ . . . § 314(d) bars judicial review.”) In arriving at this conclusion, the Court reasoned that 35 U.S.C. § 314(d) is not limited to an initial determination to the exclusion of a determination on reconsideration. The Court noted that here, the Board merely corrected its partial institution errors by revisiting its institution decision after SAS Institute, Inc. v. Iancu was decided, and it properly exercised its discretion not to institute review at all. 138 S. Ct. 1348 (2018).

Judge Newman dissented, arguing that the PTAB failed to comply with the Court’s Remand Order instructing the Board to implement the Supreme Court’s decision in SAS, which was “that SAS is entitled to a final written decision addressing all of the claims it has challenged.” 138 S. Ct. at 1359-60. Judge Newman argued that BDSI was entitled to such a decision.