Genentech, Inc.Download PDFPatent Trials and Appeals BoardMay 26, 2020PGR2019-00043 (P.T.A.B. May. 26, 2020) Copy Citation Trials@uspto.gov Paper No. 25 571-272-7822 Entered: May 26, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ELI LILLY AND COMPANY, Petitioner, v. GENENTECH, INC. Patent Owner. ____________ Case PGR2019-00043 Patent 10,011,654 B2 ____________ Before SUSAN L. C. MITCHELL, CRISTOPHER G. PAULRAJ, and DAVID COTTA, Administrative Patent Judges. MITCHELL, Administrative Patent Judge. JUDGMENT AND FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b) PGR2019-00043 Patent 10,011,654 B2 2 INTRODUCTION On April 2, 2019, Eli Lilly and Company (“Petitioner”) filed a Petition for Post Grant Review of claims 1–7 of U.S. Patent No. 10,011,654 B2 (“the ’654 patent,” Ex. 1001). Paper 1. Genentech, Inc. (“Patent Owner”) timely filed a Preliminary Response to the Petition. Paper 6. On October 7, 2019, we instituted post grant review of claims 1–7 of the ’654 patent. Paper 11. On February 24, 2020, Patent Owner filed a Request for Adverse Judgment (“the Request” or “Patent Owner’s Request”). Paper 22. Petitioner filed a response on February 28, 2020. Paper 23. DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has expressly requested judgment against itself for “pursuant to 37 C.F.R. § 42.73(b)(4),” which constitutes abandonment of the contest. Paper 22. Petitioner does not oppose Patent Owner’s request. Paper 23. Accordingly, entry of judgment adverse to the Patent Owner is appropriate. Having determined that entry of judgment is appropriate, we turn now to the form of that judgment. In its Response, Petitioner asked that we order cancellation of claims 1–7 of the ’654 patent, and order that Genentech is precluded from taking any action inconsistent with the adverse judgment pursuant to 42.73(d)(3). Paper 23, 1. We first note that when we issue a final written decision in a post-grant review and any time for appeal has expired or any appeal has terminated, “the Office will issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable . . .” 37 C.F.R. PGR2019-00043 Patent 10,011,654 B2 3 § 42.80. It is not appropriate that we do so in our order here. We also note that “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim . . . .” See 37 C.F.R. § 42.73(d)(3); Arthrex, Inc. v. Vite Technolgoies, Inc., IPR2016-00381, Paper 13, 2 (PTAB Oct. 31, 2016). We need not expressly include this stricture in the Order here. In view of Patent Owner’s express request for entry of adverse judgment against itself (Paper 22), we grant the request for entry of judgment adverse to Patent Owner. ORDER Accordingly, it is: ORDERED that Patent Owner’s Request for Adverse Judgment pursuant to 37 C.F.R. § 42.73(b)(4) is granted; and FURTHER ORDERED that adverse judgment hereby is entered against Patent Owner pursuant to 37 C.F.R. § 42.73(b)(4); FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that, because this is a Final Written Decision, parties to the proceeding seeking judicial review of the decision must comply with the notice and service requirements of 37 C.F.R. § 90.2. PGR2019-00043 Patent 10,011,654 B2 4 For PETITIONER: Lawrence Burwell Jeffrey Jacobstein FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP scott.burwell@finnegan.com Jeffrey.jacobstein@finnegan.com Scott Warren Katherine Helm Blaine Hackman DECHERT LLP scott.warren@dechert.com khelm@dechert.com blaine.hackman@dechert.com Mark Stewart Alejandro Martinez ELI LILLY AND COMPANY stewart_mark@lilly.com amartine@lilly.com For PATENT OWNER: Matthew Kreeger Parisa Jorjani Stephanie Blij MORRISON & FOERSTER LLP mkreeger@mofo.com pjorjani@mofo.com sblij@mofo.com Copy with citationCopy as parenthetical citation