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`JOINT DEFENSE AND CONFIDENTIALITY AGREEMENT
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`THIS JOINT DEFENSE AND CONFIDENTIALITY AGREEMENT (the "Agreement") is made
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`as of October 21, 2022 (the "Effective Date"), by and between the undersigned counsel for and on
`behalf
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`of their respective clients to further the defense and interests of those clients subject to, or
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`who are or may be impacted by, Petitions IPR2023-00070 against U.S. Patent No. 7,541.179 ("the
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`'179 Patent") and IPR2023-000074 against U.S. Patent No. 8,058,061 ("the '061 Patent") filed by
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`bluebird bio, Inc. a Delaware corporation, before the United States Patent Trial and Appeal Board
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`WHEREAS, the Parties share a common interest in defending the validity of the claims of the' 179
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`and '061 Patents, including as challenged in IPR2023-00070 and IPR2023-00074, (collectively,
`the "IPR Proceeding").
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`WHEREAS, the Parties recognize that by virtue of the Parties' patent license agreement for the
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`'179 and '061 Patents, and their interest in protecting the validity of the such patents, they have a
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`common interest in defending the IPR Proceeding and in developing defenses and strategies with
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`respect to the IPR Proceeding. While the Parties desire to continue to pursue their separate but
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`common interests in responding to the various legal issues raised in the lP.K Proceeding, the Parties
`acknowledge
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`and agree that their common interests will best be served if they are able to share
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`with the other Parties confide�tial infotmation and materials and engage in communications
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`relating to the IPR Proceeding without waiving any otherwise applicable privilege or protection
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`with respect to such information, materials and/or communications.
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`WHEREAS, in order to confirm the Parties' understanding and to preserve the confidentiality
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`and/or privileged nature(s) of information shared or exchanged between the Parties pursuant to
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`of privileged of the confidentiality allegation or claim of waiver this Agreement and to avoid any
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`communications or documents, the Parties hereby agree as follows:
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`l.Joint Defense Materials.
`The Parties may, in their sole and absolute discretion, determine that
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`the sharing and disclosure of certain information with the other Parties and their legal counsel
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`may be in furtherance of their common legal interests in the defense of the IPR Proceeding.
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`Such disclosures may entail confidential attorney-client communications, opinion work
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`product, and ptivileged work product materials (collectively referred to as the "Joint Defense
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`Materials"). The Joint Defense Materials may be disclosed orally, in writing, electronically or
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`without limitation, factual information, mental
`in any other format and may include,
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`impressions, legal research and analysis, strategy, communications, inte1view reports,
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`memorandum, reports of experts and consultants, discovery materials, meetings between
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`counsel and/or the Parties and/or their employees or representatives, meetings with potential
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`witnesses or experts, and any other information relevant to the Parties' common interests in
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`the defense of the IPR Proceeding. All information and communications exchanged or shared
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`between the Parties pursuant to this Agreement shall constitute Joint Defense Materials and
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`will be subject to this Agreement. With respect to all tangible Joint Defense Materials, the
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`Parties shall endeavor to mark such materials as "Privileged Joint Defense Materials" prior to
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`any disclosure thereof. However, the failure by any Party to mark any Joint Defense Materials
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`will not be deemed a waiver of the joint defense privilege. For purposes of this Agreement, the
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`term "Counsel" shall include both outside and in-house counsel for the Parties. This Agreement
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`and the identity of the Parties hereto shall be deemed to constitute Joint Defense Materials.
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`SKI Exhibit 2005
`Page 1 of 7
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`It is the Parties' intention that any communications
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`2.Disclosure of Joint Defense Materials.
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`made and/or materials provided between the Parties in furtherance of their common legal
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`interests in the IPR Proceeding shall be treated in strict confidence and shall be, to the fullest
`extent
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`permitted by law, protected from disclosure to any third party pursuant to, among other
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`privileges, the attorney-client privilege and attorney work product privilege. The Joint Defense
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`Materials provided under this Agreement shall at all times remain confidential and subject to
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`the attorney-client privilege. No Party shall disclose any Joint Defense Materials to any third
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`party without the prior written consent of all the other Parties to the Agreement, which consent
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`shall be at such other Parties' sole discretion. It is the intent of the Parties that no claim of
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`attorney-client privilege, work product privilege, or other privilege shall be waived by reason
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`of the disclosure of the Joint Defense Materials to any other Party hereto. The Parties further
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`agree that all such communications will be treated by the Parties in such a manner that will
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`preserve any and all privileges applicable to any information shared or disclosed by the Parties
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`pursuant to this Agreement.
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`3.Use of Joint Defense Materials.
`(a) Joint
`Defense Materials shall only be used by the Parties and their Counsel in furtherance
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`of their common legal interests related to the IPR Proceeding and any other challenge to
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`the validity of the '179 and '061 Patents. A Party may disclose without the consent of
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`the other Parties any Joint Defense Materials that originated with the disclosing Party or
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`which is acquired or developed independent of this Agreement.
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`(b)Each Party shall take all commercially reasonable measures to maintain the
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`confidentiality of the Joint Defense Materials. The Parties shall only disclose Joint
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`Defense Materials received hereunder to its directors, officers, employees and counsel
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`who are actively participating in and have a need to know such information in
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`furtherance of the defense or prosecution of the IPR Proceeding. Each Party shall advise
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`all persons who are provided access to the Joint Defense Materials that such materials
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`are privileged and are subject to the terms and restrictions set forth in this Agreement
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`and each such person shall agree to comply with the terms of this Agreement. The
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`Parties, though their Counsel, may also disclose to or receive Joint Defense Materials
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`from consultants, expert witnesses, and other litigation service providers retained by a
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`Party with respect to the IPR Proceeding, provided that all such persons have been made
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`aware of and have agreed to abide by the terms of this Agreement, and such persons have
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`entered into a written confidentiality agreement precluding them from disclosing any
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`Joint Defense Materials to any other person or party at least as restrictive as this
`Agreement.
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`(c)The Parties agree not use any of the Joint Defense Materials against or to the detriment
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`of any other Party, whether in the IPR Proceeding or any other legal proceeding
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`involving the Parties. The Parties agree that the foregoing precludes use or introduction
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`into evidence of the Joint Defense Materials in the proceeding, San Rocco Therapeutics,
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`LLC v. Memorial Sloan-Kettering Cancer Center et al., 1:21-cv-08206-VSB (S.D.N.Y.)
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`(the "SONY Action"), unless the material was produced as part of the course of an
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`otherwise proper discovery request in the SDNY Action, provided however, that all
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`Parties retain the right to object to production of requested information in the SDNY
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`Action for reasons including, but not limited to attorney-client privilege, work product
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`2
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`SKI Exhibit 2005
`Page 2 of 7
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`or any other applicable privilege. Nothing in this Agreement precludes any of the Parties
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`in the SDNY Action from seeking any materials or information they would otherwise be
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`entitled to pursue.
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`It is the intent of the Parties that no attorney-client privilege, attorney
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`4.No Waiver of Privilege.
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`work product privilege or any 0th.er privilege relating to the Joint Defense Materials shall be
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`waived by any Party based on the disclosure of the Joint Defense Materials between the Parties
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`and their respective Counsel. It is also the intent of the Parties that all of the Joint Defense
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`Materials shall be protected from discovery by any third party based on the attorney-client
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`privilege, the attorney work product privilege and any other applicable privilege to the fullest
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`extent permitted by law. No privilege relating to the Joint Defense Materials may be waived
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`by any Party without first obtaining the written consent of all the other Parties. The disclosure
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`by any Party hereto of any of the Joint Defense Materials, whether inadvertent or intentional,
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`in violation of the terms of this Agreement shall not construed as a waiver of any privilege
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`associated with such information.
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`5.No Obligation to Disclose Information. This Agreement shall not create any obligation on
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`the part of any Pa1ty to disclose any materials or information of any kind, whether or not such
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`materials or information is privileged. Each Party hereto shall have sole discretion in
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`determining what information, if any, it wishes to provide to the other Parties in furtherance of
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`their ·common interests with respect to the IPR Proceeding.
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`6.Independent Representation. Neither the disclosure of Joint Defense Materials nor anything
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`else in this Agreement shall affect the Parties' separate and independent representation by their
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`respective legal Counsel. All of the Parties acknowledge and agree that each Party is
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`represented solely by its own attorneys. While Counsel to the Pa1ties to this Agreement must
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`preserve the Joint Defense Materials pursuant to the terms and conditions contained in this
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`Agreement, they are not acting as and will not be representing any other Party other than their
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`own client(s). Each Party understands that this Agreement does not and will not create an
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`attorney-client relationship with any of the other Party's Counsel. Each Party further
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`acknowledges and agrees that the Counsel representing the other Parties have an exclusive
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`duty of loyalty to their own client and not to any other Party. Notwithstanding such right, no
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`Counsel to any Party hereto may disclose any Joint Defense Materials in violation of the terms
`of this Agreement.
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`7.No Disqualification of Counsel. Each Party knowingly and voluntarily waives the right to
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`object
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`to the continued retention by any other Party of its Counsel or the Counsel's law firm,
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`and each Party agrees it will not seek to disqualify any other Party's Counsel based upon the
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`contention that such Counsel has been provided access to any Joint Defense Materials or that
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`such Counsel has a conflict of interest in representing his or her client or is unable to effectively
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`represent the client based upon participation in joint defense activities-permitted under and/or
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`in pursing the common legal interests contemplated by this Agreement.
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`8.Required Disclosures of Confidential Information. In the event that a Party is requested or
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`by legal action (including oral question, interrogatories, requests for information or
`required
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`SKI Exhibit 2005
`Page 3 of 7
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`documents, subpoenas, civii investigation or simiiar process) to disciose any of the Joint
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`Defense Materials, such Party will immediately notify Counsel for all the other Parties to this
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`Agreement and shall provide them with copies of all the documents requesting such
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`information, before it responds to such request. Counsel for each Party shall take all reasonable
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`measures available to prevent the disclosure of such information, including the assertion of
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`any and all applicable privileges associated with the requested Joint Defense Materials. No
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`Party hereto will waive any privilege relating to any of the Joint Defense Materials without
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`first obtaining the written consent of aii the other Parties to the Agreement. Each Party and
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`their Counsel shall fully cooperate and assist, at their own expense, the other Parties and their
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`Counsel in any action taken or in any legal proceeding to prevent (or limit) the disclosure of
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`any Joint Defense Materials. In the event that disclosure is nonetheless required despite such
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`efforts, the Party that received the request shall furnish only that portion of the Confidential
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`Information which it is advised by its legal counsel must be provided pursuant to the request.
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`In the event that a
`9.Withdrawai from the Agreement; Resoiution oi the IPR Proceeding.
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`Party determines in good faith that it no longer shares a common legal interest with the other
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`Parties in the defense of the IPR Proceeding, or has developed legal interests that are adverse to
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`those of another Party (other than the SDNY Action), such Party shall withdraw from this
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`Agreement by providing written notice of withdrawal to all the other Parties. Additionally,
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`each Party hereto may withdraw from this Agreement
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`at any time by providing written notice
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`of withdrawal to all the other Parties. Notwithstanding a Party's withdrawal, this Agreement
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`shall remain in full force and effect with respect to all of the other Parties and with respect to
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`all Joint Defense Materials furnished prior to the date of withdrawal. Any Party that withdraws
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`from this Agreement shall continue to comply with all of its terms with regard to any Joint
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`Defense Materials shared or provided prior to the effective date of its withdrawal. In the event
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`a Party resolves the IPR Proceeding, whether
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`by settlement, dismissal or otherwise, such Party
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`shall be deemed to have withdrawn from this Agreement and shall comply with its terms as to
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`all Joint Defense Materials shared prior to the date of such dismissal or settlement. Each Party
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`agrees that it will not enter into any settlement or other agreement with any third party that will
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`or may require the disclosure, without the prior written consent of all the other Parties, of any
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`Joint Defense Materials.
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`The Parties shall promptly return or destroy all copies
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`10.Return of Confidential Information.
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`of the Joint Defense Materials within thirty (30) days following
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`the final resolution of the IPR
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`Proceeding and any other challenge to the validity of the' 179 and '061 Patents, including the
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`exhaustion of any appeals or appeals period with respect to the IPR Proceeding. Any party
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`withdrawing from this Agreement shall also return or destroy all Joint Defense Materials in its
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`possession within ten (I 0) days following the effective date of such withdrawal. Each Party
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`shall provide a certification by an authorized representative to Counsel for all the other Parties
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`that all such Joint Defense Materials have been returned or destroyed. If and to the extent a
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`Party has any notes, analyses, compilations, studies, interpretations, memoranda, photographs,
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`magnetic or electronic media or videotapes, or any other documents prepared by or on behalf
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`of i Party that contain, reflect or are based upon, in whole or in part, any Joint Defense
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`Materials received pursuant to this Agreement, then that Party shall redact, erase, delete or
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`destroy such documents so that the Joint Defense Materials are no longer accessible.
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`Notwithstanding the foregoing, outside Counsel for each Party may retain one copy of the Joint
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`4
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`SKI Exhibit 2005
`Page 4 of 7
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`Defense Materials, which information shaii be retained in compiiance with the terms of this
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`Agreement.
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`No Party shall have any obligation to
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`ll.No Other Obligations; No Liability; Inadmissibility.
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`any of the other Parties pursuant to this Agreement except as expressly provided for herein.
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`No Party shall incur any liability based upon its withdrawal from this Agreement, so long as
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`such Pa1ty abides by the terms of this Agreement. This Agreement shall not constitute or be
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`used as evidence of any admission of law or fact against any of the Parties, or as evidence of
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`liability by any of the Parties with respect to any of the allegations asserted in the IPR
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`Proceeding, the SDNY Action, or otherwise.
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`Each Counsel signing this Agreement represents that he or she has
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`12.Execution of Agreement.
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`authority to execute this Agreement on behalf of their client. This Agreement shall become
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`of its execution by Counsel for such Party without regard to any other Party that may elect to
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`become Parties hereto. Execution of this Agreement by Counsel for a Party shall bind that
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`Party and all existing and future in-house and outside Counsel that are or may provide any
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`with the IPR Proceeding.legal services of any kind and at any time in connection
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`13.Governing Law.
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`(a)This Agreement, and ail disputes arising hereunder or reiating hereto shaii be construed in
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`accordance with and governed in all respects by the laws of the State of New York without
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`regard to any conflicts of law principles that would result in application of laws of any other
`jurisdiction.
`(b)The Parties shall make all reasonable efforts to resolve any dispute concerning this Agreement,
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`its construction, or its actual or alleged breach, by face-to-face negotiations between senior
`hy either party sending
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`executives. Should such negotiation fail to resolve the matter, as defined
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`written notice to the other party of an impasse after at least one face-to-face negotiation meeting
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`among senior executives of the parties, the matter shall be finally decided by David Ichel of X­
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`Dispute, LLC or, if Mr. Ichel is not available, three (3) neutral arbitrators (the "Tribunal") seated
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`in New York, New York under the AAA Arbitration Rules (the "Rules").
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`The Parties' obiigations under this Agreement shail be perpetuai and shall survive
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`i4. Survivai.
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`any withdrawal of any Party from this Agreement or the resolution or dismissal of any Party
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`with respect to the IPR Proceeding or any other challenge to the validity of the '179 and '061
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`Patents, and such obligations shall further survive the termination of this Agreement.
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`The Parties acknowledge and agree that in the event of a breach or threatened
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`15.Equitable Relief.
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`breach of anv provision of this Agreement, the nonbreaching Parties will suffer irreparable
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`harm for whfch they will not have in adequate remedy at law.
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`5
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`SKI Exhibit 2005
`Page 5 of 7
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`i6. Construction. The headingsicaptions appearing in this Agreement have been inserted for the
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`purposes of convenience and ready reference, and do not purport to and shall not be deemed
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`to define, limit or extend the scope or intent of the provisions to which they pertain. This
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`Agreement shall not be construed more strongly for or against any of the Parties hereto,
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`regardless of which Patty was more responsible for the preparation of this Agreement or any
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`ponion thereof.
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`i7. Counterparts. This Agreement may be executed in one or more counterparts, each of which
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`will be deemed to be an original, but all of which together will constitute one and the same
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`instrument, without necessity of production of the others. An executed signature page delivere
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`via facsimile transmission or electronic signature shall be deemed as effective as an original
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`executed signature page.
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`In the event any one or more of the provisions of this Agreement is held to be
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`18 .. Severability.
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`unenforceable or invalid under applicable law: (i) such unenforceability or invalidity shall not
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`affect any other provision of this Agreement; (ii) this Agreement shall be construed as if said
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`unenforceable or invalid provision had not been contained herein; and (iii) the Parties shall
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`negotiate in good faith to replace the unenforceable or invalid provision by such as has the
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`effect nearest to that of the provision being replaced.
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`signed by an authorized representative of the waiving Party. The failure of any Party to enforce
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`any provision of this Agreement shall not be construed as a waiver or modification of such
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`provision, or impairment of its right to enforce such provision thereafter.
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`This Agreement may be modified only by a written
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`20.Entire Agreement; Modifications.
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`amendment signed by authorized representatives of all the Parties.
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`[Signatures on Foiiowing Page]
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`6
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`SKI Exhibit 2005
`Page 6 of 7
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`

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`In witness whereof, the Parties hereto have executed this Agreement on the date set forth beiow.
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`FOX ROTHSCHILD LLP,
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`Counsel for San Rocco Therapeutics, LLC
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`By:
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`Wanda french-Drown, Partner
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`12/01/2022
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`Dated
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`HORTON LEGAL STRATEGIES PLLC,
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`Counsel for San Rocco Therapeutics, LLC
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`By: :;p� Lenore
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`Horton, Managing Member
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`Dated
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`WILMER CUTLER PICKERING HALE & DORR LLP,
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`Counsel.for Memor;af Sloan Cancer Center,
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`and Sloan Ketterin� Institute for Cancer Research
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`;W-
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`By:
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`. .
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`j"LJ -i.-/ �l-
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`1
`Dated
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`i
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`SKI Exhibit 2005
`Page 7 of 7
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