Trials@uspto.gov
`571-272-7822
`
`Paper 48
`Date: April 11, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BLUEBIRD BIO, INC.,
`Petitioner,
`v.
`SLOAN KETTERING INSTITUTE FOR CANCER RESEARCH,
`Patent Owner.
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
` IPR2023-00074 (Patent 8,058,061 B2)1
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. WORTH and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.1, 42.5, 42.123(b)
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in both cases.
`The parties are not authorized to use this style heading for subsequent papers
`without prior Board approval.
`
`
`571-272-7822
`
`Paper 48
`Date: April 11, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BLUEBIRD BIO, INC.,
`Petitioner,
`v.
`SLOAN KETTERING INSTITUTE FOR CANCER RESEARCH,
`Patent Owner.
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
` IPR2023-00074 (Patent 8,058,061 B2)1
`
`
`
`
`
`
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. WORTH and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`SNEDDEN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.1, 42.5, 42.123(b)
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in both cases.
`The parties are not authorized to use this style heading for subsequent papers
`without prior Board approval.
`
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`
`On March 29, 2024 via email, Petitioner requested authorization to
`submit papers related to a Markman hearing held in the parallel district court
`proceeding. The relevant portion of the email reads as follows:
`
`On March 20, 2024, a Markman hearing was held in the
`co-pending district court proceeding. Shortly before and
`during the hearing, Patent Owner SRT took positions that,
`in Petitioner bluebird’s view, are inconsistent with and
`contradict positions SRT has taken before the Board. As
`such, Petitioner requests authorization to file recent papers
`relating to the Markman hearing (specifically, the
`transcript and slides from the Markman hearing, and a
`letter sent shortly before the hearing (D.I. 152)), together
`with a 5-page paper to explain Petitioner’s positions.
`Petitioner would not oppose a 5-page responsive paper
`from SRT. In addition, Petitioner would propose that
`Petitioner’s paper be due within 2 business days of the
`Board’s authorization, and SRT’s response be due 2
`business days later.
`We treat Petitioner’s request as a request for authorization to file a
`Motion to Submit Supplemental Information pursuant to 37 C.F.R.
`§ 42.123(b). According to that rule,
`
`A party seeking to submit supplemental information more
`than one month after the date the trial is instituted, must
`request authorization to file a motion to submit the
`information. The motion
`to submit supplemental
`information must show why the supplemental information
`reasonably could not have been obtained earlier, and that
`consideration of the supplemental information would be in
`the interests-of-justice.
`Id. “The moving party has the burden of proof to establish that it is entitled
`to the requested relief.” Id. § 42.20(c). Patent Owner opposed the request.
`On April 9, 2024, a conference call for this proceeding was held
`between respective counsel for the parties and Judges Snedden, Worth, and
`
`2
`
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`Hardman. During the call, Petitioner indicated that recent developments in
`the parallel district court case prompted the need for entry of supplemental
`information. Specifically, Petitioner asserted that Patent Owner submitted a
`Markman hearing letter and demonstratives in the parallel district court case
`providing additional information regarding its positions on claim
`construction (i.e., Patent Owner’s positions regarding what material could be
`included in the 3.2-kb nucleotide fragment recited in the challenged claims),
`which Petitioner contends contain concessions and admissions regarding the
`relevance of the prior art that are inconsistent with positions Patent Owner
`has taken in these proceedings. Petitioner alleged that Patent Owner
`narrows the scope of the claims in this proceeding while broadening the
`scope of the claims in the parallel district court case, thereby impacting the
`issue of whether fragments disclosed in the prior art asserted in the Petition
`are encompassed by the challenged claims.
`Patent Owner asserted that Petitioner is misconstruing statements
`made during the Markman hearing. Patent Owner also contends that the
`information could have been raised earlier, and notes that in the Petitions of
`these proceedings, Petitioner took the position that no claim terms require
`construction to resolve the Petitioner’s challenges. Citing IPR2023-00070,
`Paper 1, 22. Patent Owner asserted that, rather than take any affirmative
`position on claim construction in the Petitions, Petitioner took the position
`that it “reserves the right to advance appropriate claim construction positions
`as may be appropriate in the District of Delaware litigation between SRT
`and Petitioner.” Citing id. at 22 n.9. Patent Owner asserted that Petitioner’s
`attempt to assert in these proceedings its new position on claim construction
`advanced in the parallel district court case would require new briefing, new
`
`3
`
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`expert declarations, and new depositions. Patent Owner further asserted that
`the nature of the evidence that Petitioner seeks to submit into these
`proceedings is merely attorney argument and would not classify as either
`intrinsic or extrinsic evidence.
`We deny Petitioner’s request for two independent reasons. First, the
`late stage of the proceedings weighs heavily against allowing any new
`information to be submitted. Petitioner makes its request after discovery and
`briefing are complete, after oral hearing, and less than 4 weeks before the
`statutory date for issuing final written decisions. Should the information be
`received into evidence at this late stage, however, we agree with Patent
`Owner that it would likely be necessary for us to receive and consider
`additional briefing and evidence for proper context and in order for us to
`weigh appropriately the new information against the information currently
`on record. Consideration of such information at the final hour of these
`proceedings would not satisfy our mandate to provide a just, speedy, and
`inexpensive resolution. See Redline Detection, LLC v. Star Enivrotech, Inc.,
`811 F.3d 435, 443 (Fed. Cir. 2015) (acknowledging that the overarching
`context of the regulations governing IPR proceedings includes a mandate to
`interpret the Rules “to secure the just, speedy, and inexpensive resolution” to
`this proceeding); 37 CF.R. § 42.1(b). Further to that point, we also decline
`to seek an extension of the statutory deadline in order to accommodate
`Petitioner’s submission of these materials, as suggested by Petitioner.
`Second, we do not discern that the allegedly inconsistent positions by
`Patent Owner would bear significantly on our consideration of the issues
`before us. That is, we are not persuaded that consideration of the proposed
`new information and briefing is warranted in light of our understanding of
`
`4
`
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`the issues as presented in the parties’ briefs and during oral hearing. Further,
`the information Petitioner seeks to submit appears to be, at least to some
`extent, similar to information we have considered. The new information
`pertains to claim construction issues disputed between the parties in the
`related district court proceedings and certain alleged inconsistent positions
`taken by Patent Owner and is related to arguments and evidence of record
`pertaining to whether certain LCR fragments disclosed by the cited prior art,
`(e.g., the May Article) are encompassed by the claims. Accordingly, we
`determine that consideration of the proposed materials would not be in the
`interests of justice.
`For the reasons given, it is
`ORDERED that Petitioner’s request for authorization to submit
`supplemental information is denied.
`
`5
`
`
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`For PETITIONER:
`Naveen Modi
`Eric Dittmann
`Daniel Zeilberger
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`ericdittmann@paulhastings.com
`danielzeilberger@paulhastings.com
`
`For PATENT OWNER:
`Michael Glynn
`Joe Chen
`Howard Suh
`James McConnell
`Wanda French-Brown
`FOX ROTHSCHILD LLP
`mglynn@foxrothschild.com
`joechen@foxrothschild.com
`hsuh@foxrothschild.com
`jmcconnell@foxrothschild.com
`wfrench-brown@foxrothschild.com
`
`6
`
`
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