Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020)

On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on remand a partially-instituted IPR decision with directions to fully institute the IPR on all petitioned grounds. Instead of fully instituting the IPR, the PTAB declined to institute the IPR at all. Petitioner appealed, and the Federal Circuit dismissed.

Petitioner sought en banc rehearing, which was denied. Judge Newman filed a 7 ½ page dissent, where she stated:

“Instead of complying with the Remand Order, the PTAB withdrew all of its past actions as to these proceedings, although past actions were not the subject of the remand. Neither this court’s order nor the Supreme Court’s ruling in SAS Institute related to aspects that had already been decided. Nonetheless, my colleagues hold that the PTAB is not required to comply with the court’s Remand Order, and further hold that this non-compliance is not reviewable. This action raises critical issues of agency authority, judicial responsibility, and the constitutional plan.

*****

In the interest of achieving a viable and effective administrative process, and the nation’s critical need for an effective system of innovation law and practice, the PTAB’s action is seriously flawed. From my colleagues’ inaction, I respectfully dissent.”

Slip op. at 2-3, 7.