The US Court of Appeals for the Federal Circuit granted a motion for remand, finding that a party did not waive SAS-based relief when it requested reconsideration of non-instituted claims shortly after the issuance of the Supreme Court of the United States’ SAS decision and again after the Federal Circuit issued its first orders recognizing that SAS required consideration of all grounds raised in an inter partes review (IPR) petition. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc.Case Nos. 17-1265, -1266, -1268 (Fed. Cir. July 31, 2018) (Newman, J).

BioDelivery filed three IPR petitions challenging a patent owned by Aquestive. In the first petition, the Patent Trial and Appeal Board (PTAB) did not institute on all claims and grounds set forth in the petition. In the second and third petitions, review of all claims was instituted, but not on all the challenged grounds. In three separate final written decisions, the PTAB upheld the patentability for all instituted claims and grounds.

BioDelivery appealed each decision, with oral argument occurring in February 2018. On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu (IP Update, Vol. 21, No. 5), where it held that if the PTAB institutes IPR proceedings, it must do so “on each claim challenged” and “the grounds on which the challenge to each claim is based.”

Nine days after the Supreme Court’s SAS decision, BioDelivery filed a motion to remand the decision in its first petition for consideration of the patentability of the non-instituted claims. Shortly after the Federal Circuit began issuing remands where the PTAB instituted fewer than all grounds, BioDelivery filed a second motion for remand in the second and third petitions based on the non-instituted grounds.

Aquestive opposed the motions, arguing that BioDelivery filed the motions too late and should have filed the motions upon the Supreme Court’s decision to hear SAS, during the IPR’s pendency or during the briefing period of the Federal Circuit appeal. The Federal Circuit rejected each argument, citing numerous recent decisions remanding final written decisions based on non-instituted grounds and claims.

Aquestive also argued that the motions for remand of the second and third petitions based on non-instituted grounds should be considered untimely, because it should have been clear from SAS that institution of all claims and grounds was required, thereby eliminating the need to have presented two separate motions. The Federal Circuit disagreed, finding that SAS only explicitly discussed institution of “claims” and not “grounds,” meaning that BioDelivery was not required to predict that the Court would authorize remand requests based on non-instituted grounds. Thus, the Court found that BioDelivery’s motion based on non-instituted grounds being filed shortly after the Federal Circuit authorized such relief was timely.

Practice Note: Although the Federal Circuit is presently sympathetic toward SAS-based relief, failure to diligently move for this relief will be increasingly likely to constitute waiver before the Federal Circuit, given the growing body of case law on the issue.