The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way.

This issue was highlighted recently in a precedential decision from the Federal Circuit. In Phigenix Inc. v. ImmunoGen, Inc. (Fed. Cir. Jan. 9, 2017), the Federal Circuit held that a petitioner-appellant from an inter partes review (IPR) proceeding lacked standing to appeal the PTAB’s final written decision in federal court.

A bit of background: ImmunoGen is the assignee of U.S. Patent No. 8,337,856 (the ‘856 patent), directed to immunoconjugates for treating cancer. Phigenix petitioned for inter partes review of the ‘856 patent on the basis that the challenged claims were obvious. After conducting a trial, the PTAB issued a final written decision upholding the challenged claims. Phigenix appealed the PTAB’s decision to the Federal Circuit.

The Federal Circuit dismissed Phigenix’s appeal for lack of standing, finding that Phigenix had failed to establish it had suffered an injury in fact. Phigenix is perhaps unique as compared to a “typical” IPR petitioner-appellant in that Phigenix was not being accused of infringement of the ‘856 patent and, in fact, did not manufacture any products that could infringe the ‘856 patent. Rather, Phigenix’s principal argument for standing was that the mere existence of the ‘856 patent encumbered Phigenix’s efforts to license its own patent directed to similar cancer treatments. Phigenix argued it suffered an economic injury in the form of lost licensing revenue due to competition presented by the existence of the ‘856 patent.

The Federal Circuit, however, found that Phigenix’s alleged licensing injury was largely hypothetical and supported only by conclusory statements in the company’s witness declarations. Phigenix did not present any evidence it risked infringing the ‘856 patent, that it was an actual or prospective licensee of the ‘856 patent, or that it otherwise planned to take any action that would implicate the ‘856 patent. Having failed to substantiate its alleged injury in fact, Phigenix lacked constitutional standing to appeal the adverse IPR decision.

In light of this decision, parties contemplating an IPR challenge should consider whether they have suffered an injury that would provide for appellate standing in the event of an adverse decision at the PTAB. Patent challengers should also be careful to include evidence of standing at the earliest possible opportunity, particularly where standing is not self-evident. It remains to be seen whether the Phigenix decision will deter IPR filings by parties who are only tenuously linked to the underlying patent.