IPR Institution Is Not Permanent, and Is Nonappealable

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

Photo of John P. Isacson
John Isacson

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.

During the first appeals of the partially instituted IPRs, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).  Thereafter, the Federal Circuit vacated the IPR judgments and remanded the three IPRs back to the PTAB to consider all of the seventeen petitioned grounds.

Rather than consider all of the grounds, the PTAB modified its institution decision and denied the petitions in their entirety even though there had been full trials and judgments on the three instituted grounds.  In doing so, the Board emphasized its discretion to institute under 35 U.S.C. § 314(a).  The Board determined the petitioner Biodelivery had not established a reasonable likelihood of success on all the claims and grounds.

A split panel of the Federal Circuit (Judges Reyna and Lourie) dismissed the second appeals under Section 314(d) (institution decisions are nonappealable).  Judge Newman dissented on the grounds that the PTAB did not comply with the previous remand order to institute on all seventeen grounds.

This situation demonstrates the risks a petitioner takes when presenting a multitude of petitioned grounds.