Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2015-00165,
IPR2015-00168, and IPR2015-00169.
Lynn Freeman, McCarter & English, LLP, Boston, MA, filed
a petition for rehearing en banc for appellant. Also
represented by Thomas F. Foley, Wyley Sayre Proctor.
Lloyd Abramic, Steptoe & Johnson, LLP, Chicago, IL, filed
a response to the petition for appellee. Also represented by
Jamie Lucia, San Francisco, CA; Katherine Dorothy Cappaert,
Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O'Malley,
Reyna, Wallach, Taranto, Chen, and Hughes, Circuit Judges.
PETITION FOR REHEARING EN BANC
BioDelivery Sciences International, Inc. filed a petition for
rehearing en banc. A response to the petition was invited by
the court and filed by appellee Aquestive Therapeutics, Inc.
The petition for rehearing and response were first referred
to the panel, and thereafter, to the circuit judges who are
in regular active service. A poll was requested, taken, and
consideration thereof, It Is Ordered That:
petition for panel rehearing is denied.
petition for rehearing en banc is denied.
mandate of the court will be issued on January 21, 2020.
Newman, Circuit Judge, dissenting from denial of the petition
for rehearing en banc.
court has declined to rehear this appeal en banc. I
write because of the significance of the balance of agency
and judicial authority, and the rules of procedural law in
the administrative state.
issue arises from the response of the Patent Trial and Appeal
Board to the Federal Circuit's mandate and order to apply
the Supreme Court's decision in SAS Institute Inc. v.
Iancu, 138 S.Ct. 1348 (2018). In SAS Institute
the Supreme Court held that 35 U.S.C. § 318(a) requires
that in an inter partes review the PTAB must decide
all of the claims and grounds challenged in the petition.
Id. at 1354- 58. Since the PTAB had not met this
requirement for these cases, our Remand Order instructed:
The Court held that if the Director institutes review
proceedings, the PTAB review must proceed "in accordance
with or in conformance to the petition," including"
'each claim challenged' and 'the grounds on which