The case is Phigenix, Inc. v. ImmunoGen, Inc., 2017 WL 74762 (Fed. Cir. Jan. 9, 2017). Both Phigenix and ImmunoGen had apparently secured patents to the same technology: Phigenix had secured rights to the '534 patent; Immunogen had secured rights to the '856 patent. Both parties offered license agreements to a third-party, Genentech, who wanted to practice that particular technology. Genentech executed a license to Immunogen's '856 patent, but did not execute a license to Phigenix's '534 patent.
Phigenix then viewed Immunogen as a potential competitor, and subsequently brought an action to invalidate Immunogen's '856 patent, reasoning that Genentech's licensing revenue would inure to Phigenix once the '856 patent had been knocked out. The PTAB upheld the validity of the '856 patent, and Phigenix appealed.
The Federal Circuit held that Phigenix lacked standing because Phigenix could not prove that it would suffer an "injury in fact" if the '856 patent was not invalidated. For one thing, there was never any evidence presented that Phigenix itself risked an infringement lawsuit related to the '856 patent if the '856 patent was not invalidated.
However, Phigenix claimed that it had suffered an "injury in fact" since the '856 patent had diverted licensing revenue away from Phigenix and instead to ImmunoGen. The Federal Circuit simply did not accept Phigenix's claim that if the '856 patent was invalidated, that Genentech's licensing revenue would have instead flowed to Phigenix. The Federal Circuit brought up the point that no party had ever licensed the '534 patent.
More information on this case can be found here at Fish & Richardson:
http://fishpostgrant.com/alert/patent-challengers-must-show-harm-to-appeal-final-ptab-decisions/
Phigenix then viewed Immunogen as a potential competitor, and subsequently brought an action to invalidate Immunogen's '856 patent, reasoning that Genentech's licensing revenue would inure to Phigenix once the '856 patent had been knocked out. The PTAB upheld the validity of the '856 patent, and Phigenix appealed.
The Federal Circuit held that Phigenix lacked standing because Phigenix could not prove that it would suffer an "injury in fact" if the '856 patent was not invalidated. For one thing, there was never any evidence presented that Phigenix itself risked an infringement lawsuit related to the '856 patent if the '856 patent was not invalidated.
However, Phigenix claimed that it had suffered an "injury in fact" since the '856 patent had diverted licensing revenue away from Phigenix and instead to ImmunoGen. The Federal Circuit simply did not accept Phigenix's claim that if the '856 patent was invalidated, that Genentech's licensing revenue would have instead flowed to Phigenix. The Federal Circuit brought up the point that no party had ever licensed the '534 patent.
More information on this case can be found here at Fish & Richardson:
http://fishpostgrant.com/alert/patent-challengers-must-show-harm-to-appeal-final-ptab-decisions/
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