Genentech, Inc.

Patent Trials and Appeals Board

May 26, 2020

PGR2019-00043 (P.T.A.B. May. 26, 2020)

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

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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