No En Banc Review of Non-Institution Decision After Remand of Partial Institution

By on January 29, 2020

Addressing a panel decision that affirmed a Patent Trial and Appeal Board (PTAB) holding denying institution of an inter partes review (IPR) after an earlier partial institution decision, the US Court of Appeals for the Federal Circuit denied both a panel rehearing and a rehearing en banc over a dissent from Judge Newman. BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., Case Nos. 19-1643, -1644, -1645 (Fed. Cir. January 13, 2020) (Newman, J, dissenting).

In late 2014, BioDelivery filed three IPR petitions collectively asserting 17 different invalidity grounds against a single patent owned by Aquestive Therapeutics. For each petition, the PTAB partially instituted IPR proceedings based on a single invalidity ground, but ultimately upheld the patentability of all claims. BioDelivery appealed those decisions and the Federal Circuit remanded in view of the Supreme Court’s decision against partial institutions in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5). On remand, the PTAB vacated its earlier partial institutions and instead denied institution of all three petitions. BioDelivery again appealed and a Federal Circuit panel affirmed by a 2-1 ruling that the denial was a proper implementation of its mandate, which the majority interpreted as an instruction to the PTAB to reconsider its institution decisions (IP Update, Vol. 22, No. 9). Judge Newman dissented based on the view that the PTAB had violated its mandate, which she interpreted as an order to convert the partial institutions to full institutions.

BioDelivery sought rehearing of that decision both at the panel level and en banc, which the Federal Circuit has now denied. Judge Newman again wrote in dissent. In Judge Newman’s view, the panel’s affirmance was incorrectly premised on the non-reviewability of IPR institution decisions when it should have held that the institution decision was foreclosed by the remand order. According to Judge Newman, the panel opinion thus ratified a PTAB decision refusing to comply with the Court’s mandate.

Alexander P. Ott
Alexander (Alex) P. Ott focuses his practice on litigating complex patent disputes and representing clients in a variety of high technology industries, including the semiconductor, consumer electronics, telecommunications, pharmaceutical and software industries. He is a registered patent attorney with significant experience in patent prosecution matters. Alex has represented clients in federal district courts, in Section 337 investigations before the US International Trade Commission (ITC), in inter partes review (IPR) and post-grant review (PGR) proceedings at the US Patent and Trademark Office, and before the US Court of Appeals for the Federal Circuit. Read Alexander (Alex) P. Ott's full bio.