The Federal Circuit recently ruled in Phigenix Inc. v. ImmunoGen Inc. that a party involved in an Inter Partes Review (IPR) does not have standing to appeal the decision of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office to federal courts unless the party can show an injury occurred or an existing case or controversy still exists.
In this case, Phigenix filed an Inter Partes Review (IPR) with the PTAB, challenging the validity of a patent owned by ImmunoGen. The PTAB upheld the validity of the patent. Phigenix appealed the PTAB’s decision to the Federal Circuit where the appeal was denied for lack of standing on the part Phigenix.
Typically, in order to have standing, a party must have experienced some sort of injury or currently be involved in or potentially be involved in a related case or controversy. In this case, Phigenix wasn’t currently engaged in and did not argue that they potentially could be engaged in infringement litigation regarding ImmunoGen’s patent. Phigenix did attempt to show injury through a potential reduction in license fees caused by the increased competition that ImmunoGen’s patent creates. The Federal Circuit rejected Phigenix’s arguments and denied the appeal.
A result of this ruling may be that the number of IPRs being filed by parties that lack standing in a federal court may potentially decrease because these parties have limited options for appealing the PTAB’s decision.