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

SAS-Type IPR Remand Ordered Post Oral Argument, Finding No Waiver

BioDelivery Services International, Inc. v. Aquestive Therapeutics, Inc., __ F.3d __, 2018 WL 3625151 (Fed. Cir. July 31, 2018) (NEWMAN, Lourie, Reyna) (PTAB) (3 of 5 stars)

Fed Cir remands IPR appeal for consideration of non-instituted claims and grounds, citing SAS Institute, 138 S. Ct. 1348 (2018). Though oral argument in this appeal was held in February, BioDelivery did not waive its right to such a remand. The opinion discusses how no waiver resulted notwithstanding that BioDelivery did not discuss the partial institution/SAS-type issues in its briefing or oral argument, as BioDelivery promptly sought remand once SAS issued in April. The opinion also declines to find that BioDelivery waived any right to remand for non-instituted grounds (as opposed to claims). Though its initial post-SAS remand request addressed only non-instituted claims, BioDelivery filed an updated request shortly after the issuance of Polaris, 724 F. App’x 948 (Fed. Cir. 2018), and similar cases. BioDelivery’s updated request was not untimely notwithstanding that it came some time after the PTO issued informal “guidance” that SAS required treatment of all petitioned claims and grounds in a final decision.

KEYWORDS: INTER PARTES REVIEW; INSTITUTION; WAIVER