January 11, 2017

Phigenix v. ImmunoGen (Fed. Cir. 2017) (Wallach, J)

• Even though § 141(c) allows a party to appeal a PTAB’s IPR decision, the statute does not necessarily establish Article III standing.
  • One of Article III’s requirements is proving Injury-in-Fact.
• Even if a petitioner loses an IPR challenge (i.e., Patent is still valid), the Petitioner may still not have standing if the petitioner has not suffered any damages yet. (For Example, the patent owner hasn’t sued the petitioner yet for infringement.)
• Here, Phigenix [petitioner] lost an IPR (i.e., Immunogen [patent owner] won with a ruling of non-obviousness). But Phigenix did not have standing to appeal the IPR loss to the Federal Circuit because Phigenix did not have standing in part because they have not suffered any injury/damages yet.
  • Phigenix did not argue that it risked infringing ImmunoGen’s patent.  Phigenix argued instead that it suffered “actual economic injury” because the mere existence of ImmunoGen’s patent increased competition between itself and ImmunoGen. The Federal Circuit did not find Phigenix’s argument persuasive.

Claims:

Claim 1:  An immunoconjugate comprising an anti-ErbB2 antibody conjugated to a maytansinoid, wherein the antibody is huMAb4D5-8.

Claim 2:  The immunoconjugate of claim 1, wherein the maytansinoid is DM1 having the structure:

Related Blog Posts:

Patently-O Blog Post on Phigenix v. ImmunoGen (Fed. Cir. 2017)

PatentDocs Blog Post on Phigenix v. ImmunoGen (Fed. Cir. 2017)