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`
`
`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.
`____________
`Case No. IPR2023-00070
`Patent No. 7,541,179
`____________
`
`
`
`
`SAN ROCCO THERAPEUTICS LLC’S
`MOTION FOR ADMISSION PRO HAC VICE
`OF WANDA FRENCH-BROWN
`
`
`
`
`
`
`
`
`
`Case IPR2023-00070
`Patent 7,541,179
`
`
`Sloan Kettering Institute for Cancer Research (“SKI”) is the owner by
`
`assignment of U.S. Patent No. 7,541,179 (“the ’179 Patent”). SKI has granted San
`
`Rocco Therapeutics LLC (“SRT”) an exclusive but assignable license to—and for
`
`the entire term of—the ’179 Patent, entitling SRT to all substantial rights and “sole
`
`responsibility” to defend any challenge to the validity of the ’179 Patent. See Paper
`
`5 at 1, Ex. 2001 at 1-3. SKI and SRT have entered into a joint defense agreement in
`
`connection with the present IPR proceeding. See Paper 5 at 1, Ex. 2005 at 1.
`
`Therefore, SRT is responding on behalf of Patent Owner SKI in this proceeding. See
`
`Paper 5 at 1, Paper 8 at 2.
`
`Pursuant to 37 C.F.R. § 42.10 and the Board’s authorization to file motions
`
`for pro hac vice admission in Inter Partes Review Case No. IPR2023-00070, (see
`
`Paper 3 at 2), SRT requests that the Board admit Wanda French-Brown pro hac vice
`
`in this proceeding.
`
`The Board may recognize counsel pro hac vice during a proceeding on a
`
`showing of good cause. “[W]here lead counsel is a registered practitioner, a motion
`
`to appear pro hac vice may be granted upon a showing that counsel is an experienced
`
`litigation attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.” 37 C.F.R. § 42.10(c).
`
`Here, lead counsel Lukas D. Toft is a registered practitioner (Reg. No.
`
`75,311), and first backup Joe Chen is also a registered practitioner (Reg. No.
`
`1
`
`
`
`Case IPR2023-00070
`Patent 7,541,179
`
`70,066). Both Mr. Toft and Mr. Chen practice in the same firm as Ms. French-
`
`Brown. Ms. French-Brown has years of patent litigation experience, and she is
`
`substantially familiar with the subject matter at issue in this proceeding.
`
`Accompanying this motion is the Declaration of Wanda French-Brown, where
`
`Ms. French-Brown attests to her experience and familiarity. See generally French-
`
`Brown Decl. (Ex. 2045). Specifically, Ms. French-Brown attests that:
`
`•
`
`•
`
`•
`
`She has been practicing intellectual property litigation, including patent
`
`litigation, for over 15 years.
`
`She has been counsel on several patent litigation cases.
`
`She is a senior member of the team representing SRT, the exclusive
`
`licensee of the ’179 Patent and U.S. Patent No. 8,058,061 (“the ’061
`
`Patent”). SKI granted SRT an exclusive but assignable license to —
`
`and for the entire term of — the ’179 and ’061 Patents, entitling SRT
`
`to all substantial rights and the “sole responsibility” to defend any
`
`challenge to the validity of the ’179 and ’061 Patents. SKI and SRT
`
`have entered into a joint defense agreement in connection with the
`
`following IPR proceedings: IPR2023-00070 (’179 Patent) and
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`IPR2023-00074 (’061 Patent).
`
`•
`
`She is also a senior member of the team representing SRT in the
`
`following related district court cases: San Rocco Therapeutics, LLC v.
`
`2
`
`
`
`Case IPR2023-00070
`Patent 7,541,179
`
`
`bluebird bio, Inc., et al., No. 1-21-cv-01478 (D. Del.); San Rocco
`
`Therapeutics, LLC v. Memorial Sloan-Kettering Cancer Center and
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`Sloan Kettering Institute of Cancer Research, No. 1-21-cv-08206
`
`(S.D.N.Y.); and San Rocco Therapeutics, LLC v. Leschly, et al., No.
`
`1:23-cv-10919 (D. Mass) (pending pro hac vice).
`
`Good cause exists because (1) the Parties anticipate numerous calls with the
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`Board in which Ms. French-Brown may have insight to provide or argument to
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`assert, (2) the Parties have multiple depositions to take across the country, some of
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`which may need two days to take, and (3) SRT anticipates additional discovery or
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`motion practice
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`that would necessitate Ms. French-Brown’s
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`involvement.
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`Ms. French-Brown’s involvement in these proceedings ensures the full team
`
`representing SRT can appear before the Board. Additionally, this motion and
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`Ms. French-Brown’s declaration meet the other requirements for pro hac vice
`
`admission in this matter. Moreover, Petitioner has indicated that it will not oppose
`
`this motion. Accordingly, these facts establish good cause to recognize Ms. French-
`
`Brown in this proceeding. Thus, SRT requests that the Board admit Ms. French-
`
`Brown pro hac vice in this proceeding.
`
`
`
`3
`
`
`
`Case IPR2023-00070
`Patent 7,541,179
`
`Dated: May 23, 2023
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Lukas D. Toft
`Lukas D. Toft (Reg. No. 75,311)
`FOX ROTHSCHILD LLP
`33 South Sixth Street, Suite 3600
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`ltoft@foxrothschild.com
`
`Joe Chen, Ph.D. (Reg. No. 70,066)
`FOX ROTHSCHILD LLP
`997 Lenox Drive
`Lawrenceville, NJ 08648
`Telephone: (609) 844-3024
`Facsimile: (609) 896-1469
`joechen@foxrothschild.com
`
`Attorneys for San Rocco Therapeutics,
`LLC, Responding on Behalf of Patent
`Owner Sloan Kettering Institute for
`Cancer Research
`
`
`
`4
`
`
`
`Case IPR2023-00070
`Patent 7,541,179
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on May
`
`23, 2023, the foregoing San Rocco Therapeutics LLC’s Motion for Admission Pro
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`Hac Vice of Wanda French-Brown, was served via e-mail, as authorized by the
`
`Petitioner, at the following email correspondence address of record:
`
`Naveen Modi
`Daniel Zeilberger
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`bluebird-IPR-PH@paulhastings.com
`
`Eric W. Dittmann
`Max H. Yusem
`Krystina L. Ho
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`bluebird-IPR-PH@paulhastings.com
`
`
`
`
`Dated: May 23, 2023
`
`
`
`
`
`
`/s/ Lukas D. Toft
`Lukas D. Toft (Reg. No. 75,311)
`Counsel for San Rocco Therapeutics, LLC,
`Responding on Behalf of Patent Owner
`
`
`
`
`5
`
`
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