U.S. Supreme Court Denies BDSI’s Petition for Certiorari Seeking to Require the U.S. PTAB to Reconsider Decision to Not Institute Inter Partes Reviews of Aquestive’s U.S. Patent No. 8,765,167, as Drafted/Prosecuted/Defended By Hoffmann & Baron

Aquestive Therapeutics, Inc.’s U.S. Patent No. 8,765,167 (“Uniform films for rapid-dissolve dosage form incorporating anti-tacking compositions”) is a cornerstone of Aquestive’s PharmFilm® rapidly-dissolving, thin-film pharmaceutical technology; the ‘167 Patent was prepared and prosecuted by Hoffmann & Baron.

In 2014, Biodelivery Sciences International, Inc. (“BDSI”) filed four Petitions for Inter Partes Review (“IPR”) of the ‘167 Patent with the USPTO’S Patent Trial and Appeal Board (“PTAB”).  The PTAB refused to institute one entire Petition as unlikely to prevail but did institute IPRs on some grounds raised in the other Petitions. Thereafter, Hoffmann & Baron successfully helped defend the ‘167 Patent, resulting in the PTAB issuing Final Written Decisions in three IPRs upholding the patentability of the challenged claims in the ‘167 Patent based on the strengths drafted into it by Hoffmann & Baron.

The PTAB then denied BDSI’s requests for rehearing (i.e., reconsideration); the Federal Circuit also dismissed BDSI’s later appeals and requests for institution/reinstitution based on SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).  BDSI therefore petitioned the U.S. Supreme Court for certiorari to overturn the Federal Circuit and order the PTAB to institute the IPRs.  On October 5, 2020, the U.S. Supreme Court denied BDSI’s Petition for certiorari.  Therefore, all claims of Aquestive’s ‘167 Patent are alive and well, even after repeated attacks by BDSI.

Representing Aquestive during the Inter Partes Reviews were Hoffmann & Baron attorneys Daniel A. Scola, Jr. and Michael I. Chakansky, among others.

Please contact Daniel A. Scola, Jr. at 973-331-1700 or James F. Harrington at 516-822-3550 if you have any questions or would like to speak to us about protecting your own intellectual property or challenging a competitor’s intellectual property.