Case: 19-1513   Document: 72     Page: 1   Filed: 04/27/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                     PFIZER INC.,
                       Appellant

                            v.

       CHUGAI PHARMACEUTICAL CO., LTD.,
                     Appellee
              ______________________

                  2019-1513, 2019-1514
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 01357, IPR2017-01358.
                  ______________________

                 Decided: April 27, 2020
                 ______________________

     JOHN P. SCHEIBELER, White & Case LLP, New York,
 NY, argued for appellant. Also represented by DIMITRIOS
 T. DRIVAS, DANIEL LEDESMA, NICOLE LIEBERMAN, CATALIN
 SEBASTIAN ZONTE; ELIZABETH K. CHANG, Palo Alto, CA.

     JON STEVEN BAUGHMAN, Paul, Weiss, Rifkind, Wharton
 & Garrison LLP, Washington, DC, argued for appellee.
 Also represented by MEGAN FREELAND RAYMOND.
                 ______________________
Case: 19-1513     Document: 72       Page: 2    Filed: 04/27/2020




 2              PFIZER INC.   v. CHUGAI PHARMACEUTICAL CO., LTD



     Before PROST, Chief Judge, BRYSON and DYK, Circuit
                           Judges.
 BRYSON, Circuit Judge.
      Chugai Pharmaceutical Co., Ltd., owns U.S. Patent
 Nos. 7,332,289 (“the ’289 patent”) and 7,927,815 (“the ’815
 patent”). In two inter partes review proceedings, Pfizer
 Inc. petitioned the Patent Trial and Appeal Board to inval-
 idate most of the claims of the ’289 and ’815 patents. In
 each IPR, the Board held that Pfizer did not prove that any
 of the challenged claims were unpatentable, and Pfizer ap-
 pealed. Because Pfizer has failed to establish that it has
 Article III standing for purposes of the proceedings before
 this court, we dismiss both appeals.
                                 I
      The ’289 patent and the ’815 patent share a common
 specification. The patents describe methods for purifying
 proteins by “removing contaminant DNA from a sample
 containing a physiologically active protein.” ’289 patent,
 col. 1, ll. 5–8. According to the patents, the inventors
 “made the surprising finding that contaminant DNA can
 be efficiently removed from a sample containing a physio-
 logically active protein without using complicated chroma-
 tographic processes . . . .” Id. at col. 1, ll. 59–62.
     Pfizer petitioned for inter partes review of claims 1–8
 and 13 of the ’289 patent and claims 1–7, 12, and 13 of the
 ’815 patent. The Board instituted inter partes review of all
 the challenged claims on all the grounds that were as-
 serted. In its final written decisions, however, the Board
 held that Pfizer had not proved that any challenged claim
 was unpatentable. Pfizer appealed, asserting that we have
 jurisdiction under 35 U.S.C. § 141 and 28 U.S.C.
 § 1295(a)(4)(A).
Case: 19-1513       Document: 72     Page: 3   Filed: 04/27/2020




 PFIZER INC.   v. CHUGAI PHARMACEUTICAL CO., LTD              3



                                II
      Any person or entity may petition the Patent and
 Trademark Office to institute an IPR proceeding, even if
 they do not have Article III standing. JTEKT Corp. v. GKN
 Auto. LTD., 898 F.3d 1217, 1219 (Fed. Cir. 2018); Fisher &
 Paykel Healthcare Ltd. v. ResMed Ltd., 789 F. App’x 877,
 878 (Fed. Cir. 2019). A party that appeals to this court
 from a decision of the Board, however, must have Article
 III standing in order for this court to consider the merits of
 the appeal. Consumer Watchdog v. Wis. Alumni Research
 Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014); JTEKT, 898
 F.3d at 1219.
      To establish Article III standing, an appellant must
 show that it has “(1) suffered an injury in fact, (2) that is
 fairly traceable to the challenged conduct of the defendant,
 and (3) that is likely to be redressed by a favorable judicial
 decision.” Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547
 (2016). “That said, where Congress has accorded a proce-
 dural right to a litigant, such as the right to appeal an ad-
 ministrative decision, certain requirements of standing—
 namely immediacy and redressability, as well as pruden-
 tial aspects that are not part of Article III—may be re-
 laxed.” Consumer Watchdog, 753 F.3d at 1261 (citing
 Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)). None-
 theless, a “party invoking federal jurisdiction must have ‘a
 personal stake in the outcome’” in order to meet the injury
 in fact requirement. Consumer Watchdog, 753 F.3d at 1261
 (quoting City of Los Angeles v. Lyons, 461 U.S. 95, 101
 (1983)).
     “To qualify as a case fit for federal-court adjudication,
 ‘an actual controversy must be extant at all stages of re-
 view . . . .’” Arizonans for Official English v. Arizona, 520
 U.S. 43, 67 (1997) (quoting Preiser v. Newkirk, 422 U.S.
 395, 401 (1975)); see also Momenta Pharm., Inc. v. Bristol-
 Myers Squibb Co., 915 F.3d 764, 770 (Fed. Cir. 2019) (not-
 ing that standing requires that the requisite personal
Case: 19-1513     Document: 72       Page: 4    Filed: 04/27/2020




 4              PFIZER INC.   v. CHUGAI PHARMACEUTICAL CO., LTD



 interest “exist at the time of commencement of the litiga-
 tion”); Vanda Pharm. Inc. v. W. Ward Pharm. Int’l Ltd., 887
 F.3d 1117, 1125 (Fed. Cir. 2018). In order to demonstrate
 the requisite injury in fact in an IPR appeal where the ap-
 pellant is not currently engaging in infringing activity, the
 appellant typically must show that it has concrete plans for
 future activity that creates a substantial risk of future in-
 fringement or would likely cause the patentee to assert a
 claim of infringement. JTEKT, 898 F.3d at 1220; E.I.
 DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996,
 1005 (Fed. Cir. 2018).
      As the party seeking judicial review, Pfizer bears the
 burden of establishing standing. See Phigenix, Inc. v. Im-
 munogen, Inc., 845 F.3d 1168, 1171 (Fed. Cir. 2017). An
 appellant must “‘supply the requisite proof of an injury in
 fact when it seeks review of an agency’s final action in a
 federal court,’ by creating a necessary record in this court,
 if the record before the Board does not establish standing.”
 JTEKT, 898 F.3d at 1220 (quoting Phigenix, 845 F.3d at
 1171–72). “When the record before the Board is inade-
 quate,” an appellant “‘must supplement the record to the
 extent necessary to explain and substantiate its entitle-
 ment to judicial review,’ such as by submitting ‘affidavits
 or other evidence to demonstrate its standing.’” JTEKT,
 898 F.3d at 1220 (quoting Phigenix, 845 F.3d at 1173).
     Pfizer has not established that it had suffered a con-
 crete and particularized injury in fact at the beginning of
 this appeal. Pfizer contends that its purported injury in
 fact stems from Pfizer’s launch of its product Ruxience® in
 January 2020. Ruxience® is a biosimilar product to a ritux-
 imab drug made by Genentech, a competitor of Pfizer.
 Pfizer contends that Genentech is a wholly owned subsidi-
 ary of the Roche Group and that F. Hoffmann-La Roche Ltd
 is the majority owner of appellee, Chugai. Pfizer entered
 into a settlement agreement with Genentech that author-
 ized Pfizer to begin selling its biosimilar rituximab drug in
 January 2020. Chugai was not a party to that settlement
Case: 19-1513       Document: 72    Page: 5    Filed: 04/27/2020




 PFIZER INC.   v. CHUGAI PHARMACEUTICAL CO., LTD               5



 agreement, and Pfizer did not get a license from Chugai for
 the patents at issue in this appeal. Pfizer suggests that
 Chugai is likely to accuse Pfizer’s rituximab biosimilar
 product of infringing the patents at issue in this appeal be-
 cause Pfizer’s biosimilar uses Protein A chromatography,
 and because the patents “concern methods of purifying pro-
 teins involving the use of protein A chromatography.”
      Although Pfizer suggests that Chugai is likely to assert
 a claim of infringement, Pfizer did not address in its brief-
 ing or supplemental evidence when that risk arose. Pfizer
 filed its notice of appeal on January 30, 2019, and the ap-
 peal was docketed several days later. But the only evidence
 of standing that Pfizer has provided to this court relates to
 events that occurred much later in 2019. Specifically,
 Pfizer submitted evidence that the FDA approved its ritux-
 imab biosimilar in July 2019 and that Pfizer announced at
 the end of October 2019 that it would begin selling the bio-
 similar in the United States in January 2020. Pfizer did
 not, however, cite any evidence regarding its activities or
 plans relating to its rituximab biosimilar before July 2019.
 Pfizer thus failed to supply any evidence that it was suffer-
 ing from an injury in fact when this appeal began. Nor has
 Pfizer offered evidence that would allow us to evaluate
 whether it practices or intends to practice the patented
 methods in the course of making its biosimilar product. See
 Fisher, 789 F. App’x at 878 (“Fisher has not provided any,
 let alone sufficient, detail regarding features of its future
 products to enable us to determine that its activities create
 a substantial risk of future infringement of the ’556 patent.
 Absent such a showing, Fisher cannot establish standing
 to maintain this appeal, and this court lacks authority to
 consider the merits.”).
      At oral argument, Pfizer’s counsel said that it was “self-
 evident to the parties” that there was “a product at issue”
 when the appeal began. Oral Argument at 4:00. It is not
 self-evident to the court, however, that there was standing
 at the outset of the appeal, or even later. It was Pfizer’s
Case: 19-1513      Document: 72       Page: 6    Filed: 04/27/2020




 6               PFIZER INC.   v. CHUGAI PHARMACEUTICAL CO., LTD



 responsibility to submit evidence to make its standing evi-
 dent to the court, which it failed to do.
      It appears that Pfizer’s “self-evident” theory stems
 from the fact that Pfizer listed “rituximabIPR@win-
 ston.com” in its petitions as its service email address for
 the IPR proceedings. Chugai, in turn, listed Genentech,
 Inc., as a potential real party in interest in the IPR pro-
 ceedings and subsequent appeals because Genentech sells
 a rituximab product and Pfizer’s service email suggested
 that Pfizer believed the litigation related to rituximab. But
 Pfizer’s service email address and Chugai’s response do not
 tell the court anything useful about Pfizer’s plans for its
 biosimilar, Ruxience®, as of the beginning of 2019, when
 this appeal began. Nor does that evidence establish with
 sufficient likelihood that the processes used to prepare
 Pfizer’s product would infringe Chugai’s patents. The court
 will therefore not find standing based on that evidence.
     Pfizer also contends that the statutory estoppel effect
 of 35 U.S.C. § 315(e) “enhances Pfizer’s stake in the out-
 come of this case.” But the estoppel provision does not con-
 stitute an injury in fact when, as here, there is no evidence
 that the appellant was or is engaged in any activity that
 would give rise to a possible infringement suit. AVX Corp.
 v. Presidio Components, Inc., 923 F.3d 1357, 1362–63 (Fed.
 Cir. 2019); Gen. Elec. Co. v. United Techs. Corp., 928 F.3d
 1349, 1355 (Fed. Cir. 2019); Argentum Pharm. v. Novartis
 Pharm. Corp., Case No. 2018-2273 (Fed. Cir. Apr. 23,
 2020).
      Because Pfizer has failed to establish that it was suf-
 fering a cognizable injury at all stages of these appeals suf-
 ficient to give Pfizer Article III standing to seek relief in
 this court, we dismiss the appeals.
     No costs.
                          DISMISSED
