In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed.
Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of
standing under Article III of the Constitution, a
petitioner-appellant's (Phigenix) appeal of a PTAB final
written decision that refused to cancel claims challenged in an
IPR. The court's decision demonstrates that statutory right of
appeal from a PTAB final written decision in an inter partes review
does not necessarily establish Article III standing for the
"A party to an inter partes review or a post-grant review
who is dissatisfied with the final written decision of the Patent
Trial and Appeal Board . . . may appeal the Board's decision
only to the United States Court of Appeals for the Federal
Circuit." 35 U.S.C. § 141(c). Article III requires that
in order to have standing an appellant must have (1) suffered an
injury in fact, (2) that is fairly traceable to the challenged
conduct of the [appellee], and (3) that is likely to be redressed
by a favorable judicial decision." Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547
While standing may be self-evident in some cases, such as when
the appellant is the object of the action, in other cases the
appellant must demonstrate its standing. In such cases, the
appellant must supplement the record as necessary to explain and
substantiate its entitlement to judicial review. In particular, the
Phigenix court concluded that an appellant's burden of
production for establishing standing is the same burden required
for summary judgment. Further, the court determined that any
evidence establishing standing must be produced at the earliest
possible opportunity, such as in response to a motion to dismiss or
in the opening brief. Phigenix at 7-8.
Our review of Lujan and the Supreme Court's
subsequent decisions leads us to conclude that the summary judgment
burden of production applies in cases where an appellant seeks
review of a final agency action and its standing comes into
In view of this background, the court concluded that Phigenix,
the IPR petitioner, failed to establish an injury in fact and thus
dismissed its appeal. The court was not persuaded by Phigenix's
argument of economic injury based on what the court termed "a
hypothetical licensing injury," or by Phigenix's arguments
that the injury in fact resulted from the statutory basis to appeal
PTAB final written decisions or the estoppel effect of such
Phigenix does not manufacture any products and made no
contentions that it faced risk of infringing the patent at issue,
that it was an actual or prospective licensee of the ImmunoGen
patent, or that it otherwise planned to take any action that would
implicate the patent. Instead, Phigenix asserted that it suffered
an actual economic injury because the ImmunoGen patent, which was
exclusively licensed to Genentech, encumbered Phigenix's
ability to commercialize its own patent.
In support of its contention, Phigenix submitted a declaration
that stated that the ImmunoGen patent encumbered Phigenix's
licensing efforts and a letter Phigenix's attorney sent to
ImmunoGen indicating that Phigenix believed that it has a strong
patent portfolio and that the ImmunoGen patent was invalid.
Phigenix, however, did not allege that it had ever licensed its
patent to anyone, much less that it licensed its patent to the
entities that also licensed the ImmunoGen patent.
The court concluded that the supporting evidence submitted by
Phigenix was insufficient and amounted to nothing more than
conclusory statements regarding a hypothetical licensing injury.
Phigenix at 10-11. In reaching its conclusion, the court
noted that an injury-in-fact may have been established if Phigenix
demonstrated that it had licensed its patent to the same parties to
which ImmunoGen had licensed the patent at issue, as the
invalidation of the Immunogen patent might have increased
The court also dismissed Phigenix's argument that it had
sufficient injury in fact because 35 U.S.C. § 141(c) provides
a statutory basis for appeal; concluding that Phigenix was
permitted to file its appeal, but that the exercise of its right to
appeal did not necessarily establish standing. Phigenix further
argued, to no avail, that it suffered an injury in fact resulting
from the estoppel effect of the PTAB final written decision and its
adverse impact on Phigenix's ability to provide a contractual
warranty. Citing Consumer Watchdog v. WARF., 753 F.3d 1258 (Fed. Cir.
2014), the Court concluded that estoppel does not constitute an
injury in fact where the appellant is not engaged in any activity
that would give rise to a possible infringement suit.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
Why wait more than a week after the Supreme Court issued its March 21 decision in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, et al. to send a "Breaking News" eAlert? Because the Supreme Court said delay doesn't matter!
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