Federal Circuit Dismisses the Appeal of the PTAB’s Decision in an Inter Partes Review Because the Appellant Lacks Standing
PHIGENIX, INC. v. IMMUNOGEN, INC., No. 2016-1544 (Fed. Cir. January 9, 2017) (precedential). On appeal from PTAB. Before Dyk, Wallach, and Hughes.
Procedural Posture: Appellant Phigenix sought IPR of U.S. Patent No. 8,337,856 (“the ’856 patent”), alleging obviousness in view of the provided prior art. In its final written decision, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) found the Asserted Claims nonobvious. Phigenix appealed the PTAB decision and the CAFC dismissed after finding Phigenix lacked standing.
Standing: Regarding general Article III standing, the CAFC cited Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016), and stated that standing to sue is a doctrine rooted in the traditional understanding of a case or controversy required by Article III. Under Spokeo, an appellant must have (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the appellee, (3) that is likely to be redressed by a favorable judicial decision. With respect to standing in an appeal from a final agency action, the CAFC stated that this standard must identify (a) the burden of production, (b) the evidence an appellant must produce to meet that burden, and (c) when an appellant must produce that evidence. The CAFC ruled that Phigenix had not demonstrated an injury in fact, for the following reasons: it does not face risk of infringing the ’856 patent, it is not an actual or prospective licensee of the patent, and it does not otherwise plan to take any action that would implicate the patent. The CAFC held that the presented evidence did not support an actual economic injury due to the ’856 patent increasing competition with Phigenix’s own U.S. Patent No. 8,080,534 (“the ’534 patent”). The CAFC concluded that there was no allegation that Phigenix has ever licensed the ’534 patent to anyone, much less that it licensed the ’534 patent to entities that have obtained licenses to the challenged ’856 patent.