Addressing a Patent Trial and Appeal Board (PTAB) decision vacating an earlier partial institution of inter partes reviews (IPRs) in view of an intervening Supreme Court decision against such partial institutions, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s decision to instead not institute any review. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. Aug. 29, 2019) (Reyna, J) (Newman, J, dissenting).

In late 2014, BioDelivery filed three IPR petitions against a patent owned by Aquestive Therapeutics. The three petitions collectively asserted 17 different grounds, but the PTAB instituted partial reviews of only one ground from each petition. The PTAB ultimately issued final written decisions upholding the patentability of all claims, which BioDelivery appealed. During the pendency of that appeal, the Supreme Court of the United States issued its opinion in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5) finding that partial institution decisions were not permitted under the IPR statute. The Federal Circuit therefore remanded BioDelivery’s appeals with instructions to the PTAB to implement the Supreme Court’s SAS decision.

On remand, the PTAB vacated its earlier partial institution decisions and instead denied institution of all three petitions. In doing so, the PTAB relied on its discretionary authority to make institution decisions and its conclusion that most of the 14 other grounds not previously instituted were deficient. BioDelivery again appealed.

The Federal Circuit affirmed the PTAB’s decisions not to institute. The Court held that there is no requirement for IPRs to reach a final written decision after being instituted and noted that the statute explicitly allows for dismissal after institution. As for the propriety of denying institution on remand, the Federal Circuit found this to be proper because it viewed its earlier mandate to implement the Supreme Court’s SAS decision as an instruction to make the binary yes-or-no decision on whether to institute review.

Judge Newman wrote a dissenting opinion that disagreed on the interpretation of the earlier mandate, which she read as an order to the PTAB to convert its partial institution decision into a full institution decision.