935 F.3d 1362
Fed. Cir.2019Background
- BioDelivery filed three IPR petitions challenging U.S. Patent No. 8,765,167 with a total of 17 grounds; the PTAB initially instituted each petition on only one ground and declined the other 14.
- The PTAB conducted trials and issued final written decisions sustaining the patentability of the instituted claims; BioDelivery appealed.
- After argument, the Supreme Court decided SAS Institute v. Iancu, holding the PTAB cannot partially institute — if it institutes, it must address all claims and grounds in the petition; the Federal Circuit remanded for the PTAB to "implement SAS."
- On remand the PTAB reconsidered institution, evaluated the previously non-instituted grounds, and reversed its prior partial institutions by denying institution in each proceeding and terminating the IPRs as an exercise of discretion and efficiency.
- BioDelivery appealed the PTAB’s remand decisions; the Federal Circuit dismissed the appeals, holding § 314(d) bars judicial review of the PTAB’s decisions whether to institute (including reconsiderations that terminate proceedings).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the PTAB’s decision on remand to vacate prior partial institutions and deny institution is reviewable | BioDelivery: PTAB must comply with the Federal Circuit’s remand to "implement SAS" and produce final written decisions covering all petitioned grounds; the remand mandate controls and is reviewable | PTAB/Director: The decision not to institute (including on reconsideration) is discretionary under §314(a) and unreviewable under §314(d); vacatur/termination is a final nonappealable institution decision | Held: Appeals dismissed — §314(d) bars review of the PTAB’s determinations whether to institute, including its remand decisions to deny institution and terminate proceedings |
| Whether once instituted an IPR must proceed to a final written decision addressing all petitioned grounds | BioDelivery: Having conducted trials and issued final decisions on instituted portions, the PTAB must now address all petitioned grounds as required by SAS and the remand | PTAB: SAS can be implemented by either instituting on all grounds or declining institution; administrative efficiency and discretion permit vacating prior institution and terminating | Held: PTAB may exercise discretion to deny institution on remand; there is no requirement that an instituted IPR must continue to final written decision on all grounds if the PTAB properly reexamines and declines to institute |
| Scope of §314(d) (finality/nonappealability) when PTAB reconsiders institution after initial institution | BioDelivery: Reconsideration that nullifies completed proceedings conflicts with appellate mandate and is subject to judicial oversight | PTAB/majority: §314(d) bars review of institution decisions, and this includes decisions on reconsideration that determine whether to institute | Held: §314(d) precludes review of the PTAB’s remand decisions modifying prior institutions; such decisions are treated as final and nonappealable institution determinations |
| Proper remedy to implement SAS after partial institution | BioDelivery: Mandate required the PTAB to issue full final written decisions covering all grounds raised in petitions | PTAB/majority: Two lawful methods to implement SAS — (1) institute on all grounds (leading to full trials) or (2) re-evaluate and decline to institute on any grounds; the latter better serves efficiency when other grounds lack threshold merit | Held: PTAB permissibly chose to deny institution on remand as an appropriate method to implement SAS, and that choice is not reviewable under §314(d) |
Key Cases Cited
- Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (administrative decision to institute IPR is generally nonappealable under §314(d))
- SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (PTAB may not partially institute; if it institutes it must address all claims and grounds in the petition)
- Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382 (PTAB vacatur of institution and termination of IPR constitute nonappealable institution decisions)
- PGS Geophysical AS v. Iancu, 891 F.3d 1354 (SAS requires a yes-or-no institution choice embracing all challenges in a petition)
- GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (agency reconsideration and termination can constitute nonappealable institution decisions)