Trials@uspto.gov Paper No. 79
`
`571-272-7822
` Entered: August 27, 2018
`
`
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,1
`Patent Owner.
`____________
`
`Cases IPR2015-00165,
`IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B22
`____________
`
`Before JACQUELINE WRIGHT BONILLA, Vice Chief Administrative
`Patent Judge, FRANCISCO C. PRATS and ZHENYU YANG,
`Administrative Patent Judges.
`
`Per Curiam.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The caption of the Order remanding these proceedings to the Board
`identifies “AQUESTIVE THERAPEUTICS, INC., fka MonoSol Rx, LLC”
`as the Patent Owner. BioDelivery Scis. Int’l. v. Aquestive Therapeutics, Inc.,
`2018 WL 3625151 (Fed. Cir. 2018). The parties are reminded of their
`obligation to maintain up-to-date Mandatory Notices. See 37 C.F.R. § 42.8.
`
`2 This order addresses issues involving all of the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`all three proceedings, provided that such heading includes a footnote
`attesting that “the word-for-word identical paper is filed in each proceeding
`identified in the heading.”
`
`
`
`571-272-7822
` Entered: August 27, 2018
`
`
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`MONOSOL RX, LLC,1
`Patent Owner.
`____________
`
`Cases IPR2015-00165,
`IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B22
`____________
`
`Before JACQUELINE WRIGHT BONILLA, Vice Chief Administrative
`Patent Judge, FRANCISCO C. PRATS and ZHENYU YANG,
`Administrative Patent Judges.
`
`Per Curiam.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 The caption of the Order remanding these proceedings to the Board
`identifies “AQUESTIVE THERAPEUTICS, INC., fka MonoSol Rx, LLC”
`as the Patent Owner. BioDelivery Scis. Int’l. v. Aquestive Therapeutics, Inc.,
`2018 WL 3625151 (Fed. Cir. 2018). The parties are reminded of their
`obligation to maintain up-to-date Mandatory Notices. See 37 C.F.R. § 42.8.
`
`2 This order addresses issues involving all of the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are authorized to use this style heading when filing a single paper in
`all three proceedings, provided that such heading includes a footnote
`attesting that “the word-for-word identical paper is filed in each proceeding
`identified in the heading.”
`
`
`
`IPR2015-00165, IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B2
`
`
`In response to requests by BioDelivery Sciences International, Inc.
`
`(“Petitioner”), the United States Court of Appeals for the Federal Circuit
`
`(“Federal Circuit”) has remanded Petitioner’s appeals of this Board’s final
`
`decisions in each of IPR2015-00165, IPR2015-00168, and IPR2015-00169
`
`to “implement the [Supreme] Court’s decision in SAS [Institute Inc. v. Iancu,
`
`138 S. Ct. 1348 (2018)].” BioDelivery Scis. Int’l. v. Aquestive Therapeutics,
`
`Inc., 2018 WL 3625151 at *4 (Fed. Cir. 2018).
`
`In its Order, the Federal Circuit stated that the Board’s “decisions in
`
`PTAB Nos. IPR2015-00165, IPR2015-00168, and IPR2015-00169, are
`
`vacated.” Id.
`
`In SAS, the Supreme Court held that a decision to institute under 35
`
`U.S.C. § 314 may not institute a review proceeding on fewer than all claims
`
`challenged. SAS, 138 S. Ct. at 1354. The Federal Circuit directs that, if the
`
`Director institutes a proceeding, “SAS requires institution on all challenged
`
`claims and all challenged grounds.” BioDelivery v. Aquestive, 2018 WL
`
`3625151 at *3 (citing PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360
`
`(Fed. Cir. 2018) (“Equal treatment of claims and grounds for institution
`
`purposes has pervasive support in SAS.”)).
`
`Pursuant to the Federal Circuit’s Order to implement the Supreme
`
`Court’s decision in SAS, we direct the parties to submit briefing addressing
`
`specifically whether an appropriate course of action going forward would be
`
`to vacate our prior institution decisions in these proceedings and deny the
`
`petitions in their entireties at this time.
`
`The parties are reminded that, at the original institution stage of these
`
`proceedings, a significant majority of the grounds presented by Petitioner
`
`
`
`2
`
`
`
`IPR2015-00165, IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B2
`
`were determined on the merits not to meet the standard for institution of
`
`trial. See IPR2015-00165, Paper 6, 10–31 (instituting as to one of seven
`
`grounds of unpatentability; four of seven grounds determined not to meet
`
`institution standard on the merits; two other grounds denied because
`
`presented on contingent basis); IPR2015-00168, Paper 6, 9–18 (instituting as
`
`to one of five grounds; four of five grounds determined not to meet
`
`institution standard on the merits); IPR2015-00169, Paper 6, 10–23
`
`(instituting as to one of five grounds; four of five grounds determined not to
`
`meet institution standard on the merits). In addition, in relation to each
`
`instituted ground in each case, as addressed in our final written decisions in
`
`the three IPRs at issue, we determined that Petitioner had not shown by a
`
`preponderance of the evidence that any challenged claim of the ’167 patent
`
`was unpatentable.
`
`Because we previously denied institution as to a significant majority
`
`of grounds presented by Petitioner, and because we “sustained the
`
`patentability of all instituted claims of the ’167 Patent on all instituted
`
`grounds” in our final written decisions, we direct the parties to submit
`
`briefing addressing specifically whether an appropriate course of action
`
`would be to vacate our prior institution decisions and deny the petitions now,
`
`in view of the Federal Circuit’s recent decision to vacate and remand our
`
`final written decisions “to implement the Court’s decision in SAS.”
`
`BioDelivery Scis., 2018 WL 3625151 at *1, *4.
`
`The parties’ briefing regarding the propriety of denying institution
`
`shall be no more than ten (10) pages long, and shall be submitted no later
`
`than September 10, 2018.
`
`
`
`3
`
`
`
`IPR2015-00165, IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B2
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that by September 10, 2018, the parties shall, either
`
`jointly or separately, in accordance with the directions above, submit
`
`briefing that addresses specifically whether denying institution is the
`
`appropriate course of action at this stage in all three proceedings, in view of
`
`the Federal Circuit’s decision to vacate and remand our final written
`
`decisions in view of SAS.
`
`
`
`4
`
`
`
`IPR2015-00165, IPR2015-00168, and IPR2015-00169
`Patent 8,765,167 B2
`
`PETITIONER:
`
`Dannielle L. Herritt
`Deborah M. Vernon
`Kia L. Freeman
`MCCARTER & ENGLISH, LLP
`djerrott@mccarter.com
`devernon@mccarter.com
`kfreeman@mccarter.com
`
`
`
`PATENT OWNER:
`
`Daniel A. Scola Jr.
`Michael I. Chakansky
`HOFFMANN & BARON, LLP
`dscola@hbiplaw.com
`mchakansky@hbiplaw.com
`165ipr@hbiplaw.com
`
`
`
`
`
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
