Biodelivery Sciences Intl., Inc. v. Aquestive Therapeutics, Inc., Nos. 2017-1265, 2017-1266, and 2017-1268 (Fed. Cir. July 31, 2018)

The petitioner filed three petitions for inter partes review (IPR) of U.S. Patent No. 8,765,167. In the first petition, the Patent Trial and Appeal Board (PTAB) instituted review on less than all challenged claims and less than all asserted grounds. In the second and third petitions, the PTAB instituted review on less than all asserted grounds but did institute on all challenged claims. The petitioner appealed the three decisions to the Federal Circuit. 

The Federal Circuit heard oral argument in February. In April, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), which held that “it’s the petitioner, not the director, who gets to define the contours of” IPR proceedings. After the SAS decision was handed down, the petitioner moved to remand the case to the PTAB to consider non-instituted claims and non-instituted grounds in accordance with the SAS decision.

The patent owner and director argued that the petitioner waived its right to seek SAS-based relief by not raising the issue at an earlier time, and further argued that the petitioner’s motion was untimely. Noting that “SAS represented a significant change in the law that occurred during the pendency of [the petitioner’s] appeals,” the Federal Circuit held it was clear that waiver did not apply. The Federal Circuit further found that the petitioner’s requests were not untimely where the petitioner made its first request nine days after the SAS decision and made its second request soon after the Federal Circuit began ordering SAS-based remands.

Accordingly, the Federal Circuit granted the petitioner’s motion to remand the case to implement the SASdecision.

A copy of the opinion can be found here