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BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc.

PTAB May Reconsider IPR Institution on Remand from SAS-Type Vacatur

BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., __ F.3d __ , 2019 WL 4062525 (Fed. Cir. Aug. 29, 2019) (Newman (dissenting), Lourie, REYNA) (PTAB) (3 of 5 stars)

Fed Cir dismisses appeals from that PTAB’s termination of three IPRs sans final decision. The opinion reasons that the termination decisions, though they came after a series of now-vacated final decisions confirming patentability (the Fed Cir vacated/remanded in 2018 due to partial institution, as per SAS, 138 S. Ct. 1348 (2018)) were, effectively, reconsiderations of the Board’s initial institution decisions. Thus the termination decisions were non-reviewable under 35 U.S.C. § 314(d) and Medtronic, 839 F.3d 1382 (Fed. Cir. 2016), inter alia. “[T]here is no requirement that once instituted, IPRs must proceed through final written decisions.” Op. at 6. The opinion emphasizes the Board’s discretion in determining whether a petition meets the requirements for institution, and its authority to reconsider that determination.

Dissent: Judge Newman would not have dismissed. She views the PTAB in this case as “declin[ing] to execute our [post-SAS] Remand Order,” Dissent at 4, which in her view is beyond the PTAB’s authority.

KEYWORDS: INTER PARTES REVIEW; PARTIAL INSTITUTION; JUDICIAL REVIEW; VACATUR