Case: 16-1544 Document: 74-1 Page: 1 Filed: 01/09/2017
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`(1 of 16)
`
`NOTICE OF ENTRY OF
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 01/09/2017
`
` The attached opinion announcing the judgment of the court in your case was filed and judgment was entered on
`the date indicated above. The mandate will be issued in due course.
`
` Information is also provided about petitions for rehearing and rehearing en banc. The questions and answers are
`those frequently asked and answered by the Clerk's Office.
`
` Costs are taxed against the appellant in favor of the appellee under Rule 39. The parties are encouraged to
`stipulate to the costs. A bill of costs will be presumed correct in the absence of a timely filed objection. Costs are
`payable to the party awarded costs. In cases between private parties, payment should be made to counsel for the
`party awarded costs. Payment of costs should not be sent to the court. Costs should be paid promptly.
`
` If the court also imposed monetary sanctions, they are payable to the opposing party unless the court's opinion
`provides otherwise. Sanctions should be paid in the same way as costs.
`
` Regarding exhibits and visual aids: Your attention is directed Fed. R. App. P. 34(g) which states that the clerk
`may destroy or dispose of the exhibits if counsel does not reclaim them within a reasonable time after the clerk gives
`notice to remove them. (The clerk deems a reasonable time to be 15 days from the date the final mandate is issued.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`FOR THE COURT
`
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`
`16-1544 - Phigenix, Inc. v. Immunogen, Inc.
`United States Patent and Trademark Office, No. IPR2014-00676
`
`

`

`Case: 16-1544 Document: 74-2 Page: 1 Filed: 01/09/2017
`
`(2 of 16)
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`PHIGENIX, INC.,
`Appellant
`
`v.
`
`IMMUNOGEN, INC.,
`Appellee
`______________________
`
`2016-1544
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2014-
`00676.
`
`______________________
`
`Decided: January 9, 2017
`______________________
`
`GREGORY LAWRENCE PORTER, Andrews Kurth Kenyon
`LLP, Houston, TX, argued for appellant. Also represent-
`ed by ROBERT ALAN GUTKIN, PING WANG, MICHAEL YE,
`Washington, DC.
`
`ELDORA ELLISON, Sterne Kessler Goldstein & Fox,
`PLLC, Washington, DC, argued for appellee. Also repre-
`sented by OLGA A. PARTINGTON, PAULINE PELLETIER,
`BYRON LEROY PICKARD, ERIC K. STEFFE.
`______________________
`
`Before DYK, WALLACH, and HUGHES, Circuit Judges.
`
`

`

`Case: 16-1544 Document: 74-2 Page: 2 Filed: 01/09/2017
`
`(3 of 16)
`
`2
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`WALLACH, Circuit Judge.
`Appellant Phigenix, Inc. (“Phigenix”) sought inter
`partes review of U.S. Patent No. 8,337,856 (“the ’856
`patent”), alleging that claims 1–8 (“the Asserted Claims”)
`of the subject patent are unpatentable as obvious over
`various prior art references. In its final written decision,
`the U.S. Patent and Trademark Office’s (“USPTO”) Pa-
`tent Trial and Appeal Board (“PTAB”) found the Asserted
`Claims nonobvious. See generally Phigenix, Inc. v. Immu-
`noGen, Inc., No. IPR2014-00676, 2015 WL 6550500
`(P.T.A.B. Oct. 27, 2015).
`Phigenix appeals. We possess subject matter jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). Be-
`cause Phigenix has not offered
`sufficient proof
`establishing that it has suffered an injury in fact, it lacks
`standing to bring suit in federal court. We dismiss.
`BACKGROUND
`The ’856 patent generally relates to “huMab4D5
`ANTI-ErbB2 antibody-maytansinoid conjugates.” ’856
`patent, Title. The claimed methods of treatment purport
`to combat a variety of cancers. See id. col. 4 ll. 26–42.
`The subject dispute involves three principal parties,
`each of whom allege to have some relation to the ’856
`patent. The first party, Appellee ImmunoGen, Inc. (“Im-
`munoGen”), is the assignee of the ’856 patent. Immuno-
`Gen provided
`the second party, Genentech
`Inc.
`(“Genentech”), with a “worldwide exclusive license” to the
`subject patent, which Genentech uses to produce the drug
`Kadcyla®TM (“Kadcyla”). Phigenix, Inc. v. ImmunoGen,
`Inc., No. 2016-1544, Docket No. 23 at Ex. A, ¶ 3 (Fed. Cir.
`Mar. 4, 2016) (ImmunoGen’s Mot. to Dismiss (“Immuno-
`Gen’s MTD”)); see id. at Ex. A, ¶ 2. The third party,
`Phigenix, describes itself “as a for-profit discovery stage
`biotechnology, pharmaceutical, and biomedical research
`company” that focuses “on the use of novel molecular
`
`

`

`Case: 16-1544 Document: 74-2 Page: 3 Filed: 01/09/2017
`
`(4 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`3
`
`therapeutics” designed to fight cancer. Phigenix, Inc. v.
`ImmunoGen, Inc., No. 2016-1544, Docket No. 26 at Ex. 1,
`¶ 4 (Fed. Cir. Mar. 14, 2016) (Phigenix’s Resp. to Immu-
`noGen’s MTD (“Phigenix’s Resp. to MTD”)). Phigenix
`does not manufacture any products, but purportedly “has
`developed, and is developing, an extensive intellectual
`property portfolio” that
`includes U.S. Patent No.
`8,080,534 (“the ’534 patent”). Id. at Ex. 1, ¶ 5; see id. at
`Ex. 1, ¶ 7. Phigenix alleges that the ’534 patent covers
`Genentech’s “activities relating to Kadycla[]” and, thus,
`the subject matter claimed in the ’856 patent. Id. at Ex.
`1, ¶ 7; see id. at Ex. 1, ¶¶ 8–9, and Ex. 2, ¶ 14. Phigenix
`alleges that it “was forced” to bring litigation in various
`fora when Genentech refused its offer to license the ’534
`patent. Id. at Ex. 1, ¶ 8.
`In that vein, and “[t]o further its commercialization
`efforts with respect to its patent portfolio,” Phigenix
`sought inter partes review of the Asserted Claims of the
`’856 patent. Id. at Ex. 1, ¶ 10. When the PTAB found the
`Asserted Claims nonobvious, Phigenix sought further
`review in this court.
`
`DISCUSSION
`I. Phigenix Lacks Article III Standing
`Before the parties fully briefed the subject appeal,
`ImmunoGen filed a motion to dismiss, asserting that
`Phigenix lacked standing to appeal the PTAB’s Final
`Written Decision. See generally ImmunoGen’s MTD.
`Phigenix opposed. See generally Phigenix’s Resp. to MTD.
`A single judge of this court denied the Motion, “deem[ing]
`it the better course for the parties to address the standing
`issue in their briefs.” Phigenix, Inc. v. ImmunoGen, Inc.,
`No. 2016-1544 (Fed. Cir. Apr. 20, 2016) (order denying
`ImmunoGen’s MTD).
`In its response brief, ImmunoGen argues anew that
`Phigenix lacks standing, Appellee’s Br. 29–37, and Phige-
`
`

`

`Case: 16-1544 Document: 74-2 Page: 4 Filed: 01/09/2017
`
`(5 of 16)
`
`4
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`nix again opposes, Appellant’s Br. 24–25 (incorporating
`the arguments made in Phigenix’s Resp. to MTD); Appel-
`lant’s Reply 3–16. “We have an obligation to assure
`ourselves of litigants’ standing under Article III” of the
`Constitution, DaimlerChrysler Corp. v. Cuno, 547 U.S.
`332, 340 (2006) (internal quotation marks and citation
`omitted), including when a party appeals from a final
`agency action, see Massachusetts v. EPA, 549 U.S. 497,
`505–06, 516–26 (2007). As the party seeking judicial
`review, Phigenix bears the burden of establishing that it
`has standing. See DaimlerChrysler, 547 U.S. at 342.
`A. General Article III Standing Requirements
`“Standing to sue is a doctrine rooted in the traditional
`understanding of a case or controversy” required by
`Article III. Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547
`(2016); Hollingsworth v. Perry, 133 S. Ct. 2652, 2661
`(2013) (explaining that Article III discusses the powers
`granted to the Judicial Branch and, inter alia, “confines
`the judicial power of federal courts to deciding actual
`‘Cases’ or ‘Controversies’” (quoting U.S. Const. art. III,
`§ 2)). “[T]he irreducible constitutional minimum of stand-
`ing” consists of “three elements.” Lujan v. Defs. of Wild-
`life, 504 U.S. 555, 560 (1992). 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.”1 Spokeo,
`136 S. Ct. at 1547 (citations omitted).
`
`
`1 We recite the standing framework using the des-
`ignations “appellant” and “appellee,” rather than “plain-
`tiff” and “defendant,” because we are the court of first
`instance in an appeal challenging the PTAB’s final writ-
`ten decision in an inter parties review. 35 U.S.C. § 141(c)
`(2012) (“A party to an inter partes review . . . who is
`dissatisfied with the final written decision of the
`
`

`

`Case: 16-1544 Document: 74-2 Page: 5 Filed: 01/09/2017
`
`(6 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`5
`
`As to the first element, “the injury-in-fact require-
`ment requires [an appellant] to allege an injury that is
`both concrete and particularized.” Id. at 1545 (internal
`quotation marks and citation omitted). To constitute a
`“concrete” injury, the harm must “actually exist,” id. at
`1548 (citation omitted), or appear “imminent,” Lujan, 504
`U.S. at 560 (internal quotation marks and citation omit-
`ted)—a “conjectural or hypothetical” injury will not suf-
`fice, id. (internal quotation marks and citation omitted).
`And an injury is “particularized” if it affects an appellant
`“in a personal and individual way.” Spokeo, 136 S. Ct. at
`1548 (internal quotation marks and citation omitted).
`“[A]lthough Article III standing is not necessarily a
`requirement to appear before an administrative agency,”
`Consumer Watchdog v. Wis. Alumni Research Found., 753
`F.3d 1258, 1261 (Fed. Cir. 2014) (citation omitted), an
`appellant must nevertheless supply the requisite proof of
`an injury in fact when it seeks review of an agency’s final
`action in a federal court,2 see Massachusetts, 549 U.S. at
`517 (explaining that, when a party appeals from a final
`agency action, it must demonstrate that it suffers an
`injury “that is either actual or imminent” (quoting Lujan,
`504 U.S. at 560–61)). Indeed, the Supreme Court has
`recognized that not every party will have Article III
`standing in an appeal from a PTAB final written decision.
`See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2143–44 (2016) (explaining that, although a party that
`
`
`[PTAB] . . . may appeal the [PTAB]’s decision only to
`the . . . Federal Circuit.”).
`2 An appellant’s obligation to establish an injury in
`fact remains firm even though it need not “‘meet[] all the
`normal standards for redressability and immediacy’”
`when, as here, a statute provides the appellant with a
`right to appeal. Massachusetts, 549 U.S. at 517–18 (quot-
`ing Lujan, 504 U.S. at 572 n.7).
`
`

`

`Case: 16-1544 Document: 74-2 Page: 6 Filed: 01/09/2017
`
`(7 of 16)
`
`6
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`initiated an inter partes review “need not have a concrete
`stake in the outcome,” it “may lack constitutional stand-
`ing” to sue in federal court).
`B. The Legal Requirements to Demonstrate Standing in
`an Appeal from a Final Agency Action
`In the nearly thirty-five years since the court’s incep-
`tion, we have not established the legal standard for
`demonstrating standing in an appeal from a final agency
`action. This standard must identify the burden of produc-
`tion;3 the evidence an appellant must produce to meet
`that burden; and when an appellant must produce that
`evidence. We discuss each item in turn.
`As to the burden of production, the Supreme Court
`has held that each element is “an indispensable part of”
`an appellant’s case and “must be supported in the same
`way as any other matter on which the [appellant] bears
`the burden of proof, i.e., with the manner and degree of
`evidence required at the successive stages of the litiga-
`tion.” Lujan, 504 U.S. at 561. Interpreting Lujan, the
`D.C. Circuit has held that an appellant’s burden of pro-
`duction is “the same as that of a plaintiff moving for
`summary judgment in the district court.” Sierra Club v.
`EPA, 292 F.3d 895, 899 (D.C. Cir. 2002) (citation omitted).
`At least four of our sister circuits have adopted the D.C.
`Circuit’s standard, see Sierra Club v. EPA, 793 F.3d 656,
`662–663 (6th Cir. 2015), cert. denied sub nom., Ohio v.
`Sierra Club, 136 S. Ct. 1491 (2016); N. Laramie Range
`All. v. FERC, 733 F.3d 1030, 1034 (10th Cir. 2013); Iowa
`
`
`3
`“Burden of production” means “[a] party’s duty to
`introduce enough evidence on an issue to have the issue
`decided by the fact-finder, rather than decided against the
`party in a peremptory ruling such as a summary judg-
`ment or a directed verdict.” Burden of Production, Black’s
`Law Dictionary (10th ed. 2014).
`
`

`

`Case: 16-1544 Document: 74-2 Page: 7 Filed: 01/09/2017
`
`(8 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`7
`
`League of Cities v. EPA, 711 F.3d 844, 869–70 (8th Cir.
`2013); Citizens Against Ruining the Env’t v. EPA, 535
`F.3d 670, 675 (7th Cir. 2008), and two others appear to
`have followed it, see Ass’n of Pub. Agency Customers v.
`Bonneville Power Admin., 733 F.3d 939, 971 n.7 (9th Cir.
`2013) (Alarcón, J., dissenting) (explaining that the Ninth
`Circuit has appeared to follow, but not expressly adopted,
`the burden of production standard articulated in Sierra
`Club, 292 F.3d 895); Manufactured Hous. Inst. v. EPA,
`467 F.3d 391, 398 (4th Cir. 2006) (similar).4 Our review
`of Lujan and the Supreme Court’s subsequent decisions
`leads us to conclude that the summary judgment burden
`of production applies in cases where an appellant seeks
`review of a final agency action and its standing comes into
`doubt. See Lujan, 504 U.S. at 561 (explaining that a
`party challenging government action may demonstrate its
`standing, inter alia, “at the summary judgment stage”);
`see also Massachusetts, 549 U.S. at 521–23 (relying upon
`evidence typically produced at the summary judgment
`stage (i.e., affidavits and declarations) to find that a party
`possessed standing in an appeal from a final agency
`action).
`Having established the relevant burden of production,
`we turn to what evidence will meet the burden. The D.C.
`Circuit has held that, in some cases, an appellant’s
`“standing to seek review of administrative action is self-
`evident; no evidence outside the administrative record is
`necessary for the court to be sure of it.” Sierra Club, 292
`F.3d at 899–900. Self-evident standing typically arises
`when an appellant “is ‘an object of the action (or forgone
`
`
`4 The First, Second, Third, Fifth, and Eleventh Cir-
`cuits do not appear to have addressed the precise issue
`before us.
`
`

`

`Case: 16-1544 Document: 74-2 Page: 8 Filed: 01/09/2017
`
`(9 of 16)
`
`8
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`action) at issue.’”5 Id. at 900 (quoting Lujan, 504 U.S. at
`561–62). “When the [appellant]’s standing is not self-
`evident, however, the [appellant] must supplement the
`record to the extent necessary to explain and substantiate
`its entitlement to judicial review.” Id. In so doing, an
`appellant may submit “arguments and any affidavits or
`other evidence” to demonstrate its standing. Id. Taken
`together, an appellant “must either identify . . . record
`evidence sufficient to support its standing to seek review
`or, if there is none because standing was not an issue
`before the agency, submit additional evidence to the court
`of appeals,” such as “by affidavit or other evidence.” Id. at
`899 (internal quotation marks and citation omitted).
`Finally, we must determine when an appellant should
`produce the evidence establishing its standing. Because
`standing involves threshold questions over a court’s
`authority to hear a dispute, see Massachusetts, 549 U.S.
`at 505, an appellant must identify the relevant evidence
`demonstrating its standing “at the first appropriate” time,
`whether in response to a motion to dismiss or in the
`opening brief, Sierra Club, 292 F.3d at 900; see id at 901.
`Imposing on an appellant the dual obligations of produc-
`ing the evidence and producing the evidence early in the
`litigation comports with the reality that such evidence is
`“necessarily peculiar to” the appellant and “ordinarily
`within its possession.” Id. at 901. Thus, if there is no
`record evidence to support standing, the appellant must
`produce such evidence at the appellate level at the earli-
`est possible opportunity.
`
`
`5
`“[W]hen the [appellant] is not himself the object of
`the government action or inaction he challenges, standing
`is not precluded, but it is ordinarily substantially more
`difficult to establish.” Lujan, 504 U.S. at 562 (internal
`quotation marks and citations omitted).
`
`

`

`Case: 16-1544 Document: 74-2 Page: 9 Filed: 01/09/2017
`
`(10 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`9
`
`C. Phigenix Has Not Demonstrated Injury in Fact
`Having identified the operative standards, we turn to
`the question of Phigenix’s standing. Phigenix has argued
`its standing in several submissions, see generally Phige-
`nix’s Resp. to MTD; Appellant’s Br.; Appellant’s Reply, as
`well as put into evidence two declarations that purported-
`ly demonstrate its standing, see Phigenix’s Resp. to MTD
`at Ex. 1 (“Donald Decl.”) and Ex. 2 (“Gold Decl.”). In these
`documents, Phigenix does not contend that it faces risk of
`infringing the ’856 patent, that it is an actual or prospec-
`tive licensee of the patent, or that it otherwise plans to
`take any action that would implicate the patent. See
`generally Phigenix’s Resp. to MTD; Appellant’s Br.; Appel-
`lant’s Reply. Instead, Phigenix asserts that it has suf-
`fered an actual economic injury because the ’856 patent
`increases competition between itself and ImmunoGen, see
`Phigenix’s Resp. to MTD at 6, and “‘[i]ncreased competi-
`tion represents a cognizable Article III injury,’” id. (quot-
`ing Liquid Carbonic Indus. Corp. v. FERC, 29 F.3d 697,
`701 (D.C. Cir. 1994)).
`Phigenix argues that “[t]he existence of ImmunoGen’s
`’856 patent has . . . encumber[ed] Phigenix’s licensing
`efforts while ImmunoGen receives millions of dollars in
`licensing revenue.” Id. at 9; see id. at 9–10 (citing Gold
`Decl. at ¶¶ 10, 15). Phigenix contends “[t]he most reason-
`able and commonsense conclusion is that at least a por-
`tion of that licensing revenue would inure to Phigenix if
`the ’856 patent were invalidated.” Appellant’s Reply 9–
`10. Phigenix does not substantiate these arguments with
`record evidence developed before the PTAB. See generally
`Phigenix’s Resp. to MTD; Appellant’s Br.; Appellant’s
`Reply. Instead, Phigenix relies principally upon the
`declarations accompanying its response to ImmunoGen’s
`Motion to Dismiss and another non-record document.
`Rule 56(c)(4) explains that a “declaration used to sup-
`port . . . a motion must be made on personal knowledge,
`
`

`

`Case: 16-1544 Document: 74-2 Page: 10 Filed: 01/09/2017
`
`(11 of 16)
`
`10
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`set out facts that would be admissible in evidence, and
`show that the . . . declarant is competent to testify on the
`matters stated.” Fed. R. Civ. P. 56(c)(4) (emphasis add-
`ed). A “conclusion[] of law” in a declaration “cannot be
`utilized [i]n a summary-judgment motion.” 10B Charles
`Alan Wright & Arthur R. Miller, Fed. Prac. & Proc. § 2738
`(4th ed. 2016) (internal quotation marks and footnotes
`omitted); accord F.R.C. Int’l, Inc. v. United States, 278
`F.3d 641, 643 (6th Cir. 2002); Schubert v. Nissan Motor
`Corp. in U.S.A., 148 F.3d 25, 30–31 (1st Cir. 1998); Or-
`thopedic & Sports Injury Clinic v. Wang Labs., Inc., 922
`F.2d 220, 224 (5th Cir. 1991); Barfield v. Orange Cty., 911
`F.2d 644, 650 (11th Cir. 1990); Toro Co. v. Krouse, Kern &
`Co., 827 F.2d 155, 162 n.3 (7th Cir. 1987).
`Phigenix’s documents do not have such supporting
`facts. As stated above, Phigenix relies upon the Gold
`Declaration to argue that “[t]he existence of ImmunoGen’s
`’856 patent has . . . encumber[ed] Phigenix’s licensing
`efforts.” Phigenix’s Resp. to MTD at 9; see id. at 9–10
`(citing Gold Decl. at ¶¶ 10, 15). Phigenix also alleges that
`a letter highlighting concerns over the ’856 patent’s
`validity that its attorney sent to ImmunoGen “under-
`scores the actual, concrete controversy” between the
`parties. Appellant’s Br. 25. In that letter, counsel stated
`that Phigenix “believes that it has a strong patent portfo-
`lio” and “believes” that the ’856 patent is invalid. J.A.
`6446.
`The Gold Declaration and the attorney letter are in-
`sufficient to demonstrate injury in fact. It is possible
`that, if Phigenix had licensed the ’534 patent to the same
`parties to which ImmunoGen had licensed the ’856 pa-
`tent, the invalidation of the ’856 patent might have in-
`creased Phigenix’s revenues. However, there is simply no
`allegation here 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
`ImmunoGen ’856 patent. The conclusory statements in
`
`

`

`Case: 16-1544 Document: 74-2 Page: 11 Filed: 01/09/2017
`
`(12 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`11
`
`the Gold Declaration and the letter as to the hypothetical
`licensing injury therefore do not satisfy the requirements
`of Rule 56(c)(4).6 See Lujan v. Nat’l Wildlife Fed’n, 497
`U.S. 871, 888 (1990) (explaining that “[t]he object” of Rule
`56 “is not to replace conclusory allegations of the com-
`plaint or answer with conclusory allegations of an affida-
`vit”).
`Phigenix’s remaining arguments do not necessitate a
`different conclusion. Phigenix contends that it has suf-
`fered an injury in fact because 35 U.S.C. § 141(c) “pro-
`vides a statutory basis for appeal,” Phigenix’s Resp. to
`MTD at 16, and Spokeo recognizes that “[t]he violation of
`a procedural right granted by statute can be sufficient in
`
`
`6 Several aspects of the Declarations submitted by
`Phigenix also fail to lay the requisite foundation to be
`“admissible in evidence,” as Rule 56(c)(4) requires. See
`10B Charles Alan Wright & Arthur R. Miller, Fed. Prac.
`& Proc. § 2738 (4th ed. 2016) (explaining that “the rules of
`evidence and their exceptions determine what allegations
`the affidavit may contain” (footnote omitted)); see also
`Fed. R. Evid. 901(a) (“To satisfy the requirement of au-
`thenticating or identifying an item of evidence, the propo-
`nent must produce evidence sufficient to support a finding
`that the item is what the proponent claims it is.”). For
`example, Dr. Carlton D. Donald testified that “Phigenix
`and
`Genentech
`had
`multiple
`discussions
`through . . . telephone
`conversations
`concerning
`the
`Phigenix technology and its patent portfolio,” Donald
`Decl. at ¶ 8; however, Dr. Donald does not establish that
`(1) a particular number was dialed; (2) the number dialed
`was “assigned at the time” to Genentech; or (3) “the call
`related to business reasonably transacted over the tele-
`phone,” Fed. R. Evid. 901(b)(6).
`
`

`

`Case: 16-1544 Document: 74-2 Page: 12 Filed: 01/09/2017
`
`(13 of 16)
`
`12
`
`
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`some circumstances to constitute an injury in fact,”7
`Appellant’s Reply 16 (emphasis added) (quoting 136 S. Ct.
`at 1549). In relevant part, § 141(c) provides that “[a]
`party to an inter partes review . . . who is dissatisfied
`with the final written decision of the [PTAB] . . . may
`appeal the [PTAB]’s decision” to this court. Phigenix
`cannot base its injury in fact upon a violation of § 141(c)
`because it has been permitted to file its appeal, and the
`exercise of its right to appeal does not necessarily estab-
`lish that it possesses Article III standing. See Raines v.
`Byrd, 521 U.S. 811, 820 n.3 (1997) (“Congress cannot
`erase Article III’s standing requirements by statutorily
`granting the right to sue to [an appellant] who could not
`otherwise have standing.” (citation omitted)). As the
`Supreme Court has observed, statutorily “broadening the
`categories of injury that may be alleged in support of
`standing is a different matter from abandoning the re-
`quirement that the party seeking review must himself
`have suffered an injury.” Sierra Club v. Morton, 405 U.S.
`727, 738 (1972); accord Massachusetts, 549 U.S. at 516–17
`(discussing the need for injury in fact to pursue appeal
`from a final agency action); Lujan, 504 U.S. at 578 (same).
`Finally, Phigenix asserts an injury in fact based on 35
`U.S.C. § 315(e), arguing that “the estoppel effect of the
`[PTAB]’s decision adversely impacts Phigenix’s ability to
`provide a contractual warranty.” Appellant’s Reply 11
`(capitalization modified). If the PTAB issues a final
`written decision in an inter partes review on a patent
`
`
`7 To the extent Phigenix alleges that Spokeo over-
`ruled the Supreme Court’s prior decisions on standing,
`that argument ignores governing law. See Hohn v. United
`States, 524 U.S. 236, 252–53 (1998) (“Our decisions re-
`main binding precedent until we see fit to reconsider
`them, regardless of whether subsequent cases have raised
`doubts about their continuing vitality.” (citation omitted)).
`
`

`

`Case: 16-1544 Document: 74-2 Page: 13 Filed: 01/09/2017
`
`(14 of 16)
`
`PHIGENIX, INC. v. IMMUNOGEN, INC.
`
`13
`
`claim, a petitioner “may not request or maintain a pro-
`ceeding before” the USPTO, the U.S. International Trade
`Commission, or a federal district court “with respect to
`that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes
`review.” 35 U.S.C. § 315(e)(1); see id. § 315(e)(2). In
`Consumer Watchdog, we explained that a similar estoppel
`provision “do[es] not constitute an injury in fact” when, as
`here, the appellant “is not engaged in any activity that
`would give rise to a possible infringement suit.” 753 F.3d
`at 1262 (citation omitted). We see no reason to reach a
`different conclusion on the facts before us.
`CONCLUSION
`Because Phigenix has not substantiated its alleged in-
`jury in fact, it lacks standing to appeal the PTAB’s Final
`Written Decision affirming the patentability of the As-
`serted Claims of the ’856 patent. We have considered
`Phigenix’s remaining arguments to the contrary and find
`them unpersuasive. Accordingly, Phigenix’s appeal is
`DISMISSED
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case: 16-1544 Document: 74-3 Page: 1 Filed: 01/09/2017
`
`(15 of 16)
`
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`Questions and Answers
`
`Petitions for Rehearing (Fed. Cir. R. 40)
`and
`Petitions for Hearing or Rehearing En Banc (Fed. Cir. R. 35)
`
`Q. When is a petition for rehearing appropriate?
`
`A. Petitions for panel rehearing are rarely successful
`because they most often fail to articulate sufficient grounds
`upon which to grant them. For example, a petition for panel
`rehearing should not be used to reargue issues already
`briefed and orally argued; if a party failed to persuade the
`court on an issue in the first instance, a petition for panel
`rehearing should not be used as an attempt to get a second
`“bite at the apple.” This is especially so when the court has
`entered a judgment of affirmance without opinion under
`Fed. Cir. R. 36. Such dispositions are entered if the court
`determines the judgment of the trial court is based on
`findings that are not clearly erroneous, the evidence
`supporting the jury verdict is sufficient, the record supports
`the trial court’s ruling, the decision of the administrative
`agency warrants affirmance under the appropriate standard
`of review, or the judgment or decision is without an error of
`law.
`
`Q. When is a petition for hearing or rehearing en banc
`appropriate?
`
`A. En banc decisions are extraordinary occurrences. To
`properly answer the question, one must first understand the
`responsibility of a three-judge merits panel of the court. The
`panel is charged with deciding individual appeals according
`to the law of the circuit as established in the court’s
`precedential opinions. While each merits panel is
`empowered to enter precedential opinions, the ultimate
`duty of the court en banc is to set forth the law of the
`Federal Circuit, which merit panels are obliged to follow.
`
`Thus, as a usual prerequisite, a merits panel of the court
`must have entered a precedential opinion in support of its
`judgment for a suggestion for rehearing en banc to be
`appropriate. In addition, the party seeking rehearing en
`banc must show that either the merits panel has failed to
`follow identifiable decisions of the U.S. Supreme Court or
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Federal Circuit precedential opinions or that the merits
`panel has followed circuit precedent, which the party seeks
`to have overruled by the court en banc.
`
`Q. How frequently are petitions for rehearing granted by
`merits panels or petitions for rehearing en banc accepted
`by the court?
`
`A. The data regarding petitions for rehearing since 1982
`shows that merits panels granted some relief in only three
`percent of the more than 1900 petitions filed. The relief
`granted usually involved only minor corrections of factual
`misstatements, rarely resulting in a change of outcome in
`the decision.
`
`En banc petitions were accepted less frequently, in only 16
`of more than 1100 requests. Historically, the court itself
`initiated en banc review in more than half (21 of 37) of the
`very few appeals decided en banc since 1982. This sua
`sponte, en banc review is a by-product of the court’s
`practice of circulating every precedential panel decision to
`all the judges of the Federal Circuit before it is published.
`No count is kept of sua sponte, en banc polls that fail to
`carry enough judges, but one of the reasons that virtually
`all of the more than 1100 petitions made by the parties
`since 1982 have been declined is that the court itself has
`already implicitly approved the precedential opinions before
`they are filed by the merits panel.
`
`Q. Is it necessary to have filed either of these petitions
`before filing a petition for certiorari in the U.S. Supreme
`Court?
`
`A. No. All that is needed is a final judgment of the Court of
`Appeals. As a matter of interest, very few petitions for
`certiorari from Federal Circuit decisions are granted. Since
`1982, the U.S. Supreme Court has granted certiorari in only
`31 appeals heard in the Federal Circuit. Almost 1000
`petitions for certiorari have been filed in that period.
`
`October 20, 2016
`
`

`

`Case: 16-1544 Document: 74-4 Page: 1 Filed: 01/09/2017
`
`(16 of 16)
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`INFORMATION SHEET
`
`FILING A PETITION FOR A WRIT OF CERTIORARI
`
`There is no automatic right of appeal to the Supreme Court of the United States from judgments
`of the Federal Circuit. You must file a petition for a writ of certiorari which the Supreme Court
`will grant only when there are compelling reasons. (See Rule 10 of the Rules of the Supreme
`Court of the United States, hereinafter called Rules.)
`
`Time. The petition must be filed in the Supreme Court of the United States within 90 days of the
`entry of judgment in this Court or within 90 days of the denial of a timely petition for rehearing.
`The judgment is entered on the day the Federal Circuit issues a final decision in your case. [The
`time does not run from the issuance of the mandate, which has no effect on the right to petition.]
`(See Rule 13 of the Rules.)
`
`Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with an
`affidavit in support thereof must accompany the petition. (See Rules 38 and 39.)
`
`Authorized Filer. The petition must be filed by a member of the bar of the Supreme Court of the
`United States or by the petitioner representing himself or herself.
`
`Format of a Petition. The Rules are very specific about the order of the required information
`and should be consulted before you start drafting your petition. (See Rule 14.) Rules 33 and 34
`should be consulted regarding type size and font, paper size, paper weight, margins, page limits,
`cover, etc.
`
`Number of Copies. Forty copies of a petition must be filed unless the petitioner is proceeding in
`forma pauperis, in which case an original and