Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-00165,
Carl Bromberg, McCarter & English, LLP, Boston, MA,
argued for appellant. Also represented by Erik Paul Belt, Kia
Lynn Freeman, Wyley Sayre Proctor, Deborah M. Vernon;
Danielle L. Herritt, Womble Bond Dickinson (US) LLP, Boston,
MA; Cora Renae
Howard Warren Levine, Thomas John Sullivan, Finnegan,
Henderson, Farabow, Garrett & Dunner, LLP, Washington,
DC; Charles E. Lipsey, Reston, VA; Jennifer Swan, Palo Alto,
Lloyd Abramic, Steptoe & Johnson, LLP, Chicago, IL,
argued for appellee. Also represented by Cassandra Adams, New
York, NY; Harold Fox, James Francis Hibey, Gretchen P.
Miller, Washington, DC; Jamie Lucia, San Francisco, CA.
R. Silfen, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for intervenor. Also
represented by Thomas W. Krause, Benjamin T. Hickman.
Newman, Lourie, and Reyna, Circuit Judges.
NEWMAN, CIRCUIT JUDGE.
Sciences International, Inc. ("BioDelivery") moves
to remand this case to the Patent Trial and Appeal Board to
consider non-instituted claims and non-instituted grounds in
accordance with the Supreme Court's recent decision in
SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).
Aquestive Therapeutics, Inc. ("Aquestive") and the
PTO Director, who has intervened, oppose. Having considered
the parties' arguments and our recent decisions
interpreting SAS and requests based thereon, we
filed three petitions for inter partes review of
U.S. Patent No. 8, 765, 167 ("the '167
Patent"). In IPR2015-00165, BioDelivery challenged a
total of 22 claims (1, 4, 6-9, 11, 12, 26, 27, 32, 38, 44,
51, 58, 65, 72, 82, 109, and 125-127) based upon seven
grounds of unpatentability. The PTAB instituted review of 15
claims (1, 4, 11, 12, 26, 27, 44, 51, 58, 65, 72, 82, and
125-127) based upon less than all asserted grounds.
Similarly, in IPR2015-00168 and IPR2015-00169, the PTAB
instituted on less than all asserted grounds of
unpatentability but did institute on all challenged claims
(16, 36, 42, 48, 55, 62, 69, 76, 86, 92, 122, and 123 for
IPR2015-00168 and 17, 18, 30, 31, 37, 49, 56, 63, 70, 77, 80,
81, 87, 93, 110-116, and 124 for IPR2015-00169).
Patent Trial and Appeal Board ("PTAB") decided each
petition separately, and issued separate final written
decisions that sustained the patentability of all instituted
claims of the '167 Patent on all instituted grounds, and
included discussion concerning the application of collateral
estoppel between inter partes reexamination and
inter partes review. BioDelivery appealed the
PTAB's three decisions to this court. Aquestive
responded, and the Director intervened to confess error as to
the PTAB's assumption that inter partes
reexamination could give rise to collateral estoppel in
inter partes review.
court received oral argument in the three appeals on February
9, 2018. On April 24, 2018, the Supreme Court issued its
decision in SAS Institute, Inc. v. Iancu, 138 S.Ct.
1348 (2018), explaining that in establishing inter
partes review, Congress set forth "a process in
which it's the petitioner, not the Director, who gets to
define the contours of the proceeding." 138 S.Ct. at
1355. The Court held that if the Director institutes review
proceedings, the PTAB review must proceed "in accordance
with or in conformance to the petition," id. at
1356 (internal quotations omitted), including "'each
claim challenged' and 'the grounds on which the
challenge to each claim is based, '" id. at
1355 (quoting 35 U.S.C. § 312(a)(3)). The Court stated:
"Nothing suggests the Director enjoys a license to
depart from the petition and institute a different
inter partes review of his own design." Id. at
1356 (emphasis in original). Thus the Court emphasized that
"the petitioner's petition, not the Director's
discretion, is supposed to guide the life of the
litigation," id., and that "the
petitioner's contentions, not the Director's
discretion, define the scope of the litigation all the way
from institution through to conclusion," id. at
days after the Court's SAS decision issued,
BioDelivery requested that this court remand the final
decision in IPR2015-00165 to consider the patentability of
the non-instituted claims. See ECF No. 88. In
response, Aquestive argued that BioDelivery had waived any
SAS-based relief for failing to raise any issue of
non-instituted claims during this appeal. Se ...