`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUEBIRD BIO, INC.,
`Petitioner,
`
`v.
`
`SLOAN KETTERING INSTITUTE FOR CANCER RESEARCH,
`Patent Owner.
`____________
`Case No. IPR2023-00074
`Patent No. 8,058,061
`____________
`
`DECLARATION OF MICHEL SADELAIN
`IN SUPPORT OF PATENT OWNER’S PRELIMINARY RESPONSE
`
`SKI Exhibit 2006
`Page 1 of 84
`
`
`
`I, Michel Sadelain, declare as follows:
`1.
`I am over the age of twenty-one years and am fully competent to make
`
`this Declaration. I make the following statements based on personal knowledge and,
`
`if called to testify to them, could and would do so.
`
`Education
`
`2.
`
`I am the founding director for the Center for Cell Engineering and head
`
`of the Gene Transfer and Gene Expression Laboratory at Memorial Sloan-Kettering
`
`Cancer Center (“MSKCC”), where I hold the Stephen and Barbara Friedman Chair.
`
`I am also a member of the departments of medicine at Memorial Hospital for Cancer
`
`and Allied Diseases (“Memorial Hospital”) and the immunology program of the
`
`Sloan-Kettering Institute for Cancer Research (“Sloan-Kettering Institute”).
`
`3.
`
`The Center for Cell Engineering at MSKCC was established to foster
`
`research on cellular therapies. The Center brings together researchers who
`
`investigate adoptive T-cell therapies, bone marrow and cord blood transplantation,
`
`human stem cell biology, and transfer regulation and repair of genes in human cells.
`
`This unique physician-scientist partnership comprises over twenty faculty members
`
`from both Memorial Hospital and Sloan-Kettering Institute, all of whom have
`
`scientific or clinical interests in cancer or monogenic blood disorders and strive to
`
`devise and implement breakthrough therapies for those diseases. As the director of
`
`the Center, I provide scientific advice and organize meetings, annual retreats, and
`
`139471957.5
`
`1
`
`SKI Exhibit 2006
`Page 2 of 84
`
`
`
`
`
`peer reviews of scientific data. The Center has led to the establishment of two other
`
`MSKCC facilities that are critical for the clinical implementation of cell therapies:
`
`(1) the Michael G. Harris Cell Therapy and Cell Engineering Facility led by Dr.
`
`Isabelle Rivière; and (2) the Cellular Therapeutics Center led until recently by Dr.
`
`Renier Brentjens.
`
`4. My laboratory, the Gene Transfer and Gene Expression Laboratory
`
`investigates, under my leadership, ways to insert genes into hematopoietic stem cells
`
`using viral vectors and to control how those genes are expressed, as well as ways to
`
`improve immune responses against tumor cells. My laboratory currently comprises
`
`about twenty-five members who conduct research on T cells and stem cell
`
`engineering. I am responsible for the scientific direction, experimental planning,
`
`review and analysis of data from, publication, and funding of those research
`
`activities.
`
`5.
`
`I earned Doctor of Medicine (M.D.) degree and Master of Science
`
`(M.S.) degree in physiology from the University of Paris, France, in 1984, and a
`
`Doctor of Philosophy (Ph.D.) degree in immunology from the University of Alberta,
`
`Canada, in 1989. Following a clinical residency at the Centre Hospitalier
`
`Universitaire Saint-Antoine in Paris, I completed a postdoctoral fellowship at the
`
`Whitehead Institute for Biomedical Research, Massachusetts Institute of
`
`139471957.5
`
`2
`
`SKI Exhibit 2006
`Page 3 of 84
`
`
`
`
`
`Technology (“MIT”), Cambridge, Massachusetts, before joining MSKCC in 1994
`
`as an Assistant Member in the Sloan-Kettering Immunology Program.
`
`6.
`
`I am a member of the American Society of Hematology, the American
`
`Association for Cancer Research, and the American Society of Cell and Gene
`
`Therapy, where I served on the board of directors from 2004 to 2007, and as
`
`president from 2015 to 2016. I am an elected member of the American Society for
`
`Clinical Investigation. I have authored more than 200 scientific papers and book
`
`chapters. Among other awards, I received the 2012 William B. Coley Award for
`
`Distinguished Research in Tumor Immunology, the 2013 Sultan Bin Khalifa
`
`International Thalassemia Award, the 2017 Passano Laureate and Physician
`
`Scientist Award, the 2018 Pasteur-Weizmann/Servier International Prize, the 2019
`
`Jacob and Louise Gabbay Award in Biotechnology and Medicine, the 2019
`
`INSERM International Prize, and the 2020 Leopold Griffuel Award.
`
`7.
`
`I have been working for approximately three decades on a gene therapy-
`
`based treatment for hemoglobinopathies, which are blood disorders caused by
`
`mutations in or near globin genes. My focus has been on using stem cells for the
`
`blood disease beta-thalassemia. Beta-thalassemia is a genetic disorder caused by
`
`mutations in or near the beta-globin gene, which provides instructions for making
`
`the beta-chain of hemoglobin (also referred to as beta-globin), that is produced in
`
`red blood cells and carries oxygen to cells throughout the body. In people with beta-
`
`139471957.5
`
`3
`
`SKI Exhibit 2006
`Page 4 of 84
`
`
`
`
`
`thalassemia, low levels of hemoglobin lead to a lack of oxygen in parts of the body.
`
`Patients with two deficient beta-globin genes have a more severe form of the disease
`
`called beta-thalassemia major. Persons with beta-thalassemia major require regular
`
`blood transfusions. For most patients, the disease is incurable because they lack
`
`matched donors for bone marrow or stem cell transplants to restore the production
`
`of red blood cells with a normal hemoglobin content. In addition to the logistical
`
`difficulties associated with lifelong blood transfusions, a side-effect of blood
`
`transfusions is a build-up of iron in the body of the transfusion recipient. Patients
`
`with beta-thalassemia major experience this condition, known as iron-overload, as a
`
`result of requiring regular blood transfusions. This side effect can lead to other health
`
`problems requiring additional therapies.
`
`8. Whereas beta-thalassemia major affects only a few thousand people in
`
`the United States, beta-thalassemia (in all of its forms) is one of the two most
`
`common monogenic blood disorders worldwide, with the other being sickle cell
`
`anemia. Beta-thalassemia is commonly found in people of Mediterranean origin.
`
`Worldwide, approximately 68,000 people are born with beta-thalassemia each year.
`
`9.
`
`A copy of my current curriculum vitae is attached as Appendix A.
`
`The TNS9 Vector’s Conception and Reduction to Practice
`
`10.
`
`In the late 1990s and into the 2000s, which was the time I was doing
`
`the work described below, gene therapy was regarded as a nascent, cutting-edge, but
`
`139471957.5
`
`4
`
`SKI Exhibit 2006
`Page 5 of 84
`
`
`
`
`
`potentially dangerous technique. Indeed, some well-publicized gene therapy failures
`
`during that time caused some scientists and others to be very wary of this field in
`
`general. For example, in 1999, Jesse Gelsinger, a patient in a gene-therapy clinical
`
`trial for a liver disorder run by the University of Pennsylvania died from an adverse
`
`event. His death received widespread media coverage. In addition, in 2000, gene
`
`therapy trials were conducted in France to treat children with Severe Combined
`
`Immune Deficiency. The treatment in those trials, similar in concept to the treatment
`
`we had invented for thalassemia, used retroviral vectors for inserting genes into
`
`HSCs. While the results of this trial were initially promising, in the years following
`
`the application of the gene therapy, several patients developed a leukemia-like
`
`cancer that was traced to the retroviral vectors. That prompted researchers,
`
`institutions, and regulators to proceed very cautiously in the gene-therapy area.
`
`Indeed, in 2003, in direct response to the trial in France, the FDA temporarily halted
`
`all trials that used retroviral vectors for inserting genes into bone marrow stem cells.
`
`11. My research in gene therapy began in 1989. During my postdoctoral
`
`fellowship at MIT, the head of the laboratory in which I was working suggested that
`
`I explore thalassemia (in addition to the research I was conducting on T-cells). My
`
`research on both T-cells and thalassemia continued after I joined MSKCC in
`
`September 1994. From 1989 to 1994, I conducted the research myself while at MIT;
`
`then, from 1994 to 2000, I pursued this research in my laboratory with graduate
`
`139471957.5
`
`5
`
`SKI Exhibit 2006
`Page 6 of 84
`
`
`
`
`
`students and postdoctoral fellows, devoting approximately 50% of my time to
`
`thalassemia research and the other 50% to CAR-T cell research. I worked on
`
`thalassemia research with a number of individuals, including postdoctoral fellows
`
`Chad May and Stefano Rivella and Joseph Bertino, who was Chair of the Molecular
`
`Pharmacology and Therapeutics Program at MSKCC. It is my understanding that
`
`Dr. Bertino passed away in October 2021.
`
`12. As background, the body produces red blood cells through a
`
`complicated series of events that begins with cells called hematopoietic (i.e., “blood
`
`producing”) stem cells, or HSCs. HSCs are normally found in the bone marrow. Our
`
`potentially curative treatment involves (1) extracting a patient’s hematopoietic stems
`
`cells (HSCs), (2) utilizing a genetically-modified virus, known as a lentiviral vector,
`
`to stably insert a functional beta-globin gene into the extracted HSCs—this process
`
`is called transduction, and then (3) infusing the patient with the “genetically
`
`restored” HSCs that should now be capable of producing beta-globin in the
`
`derivative red blood cells. To achieve this, we designed what we have termed the
`
`“TNS9 vector.”
`
`13. The first step in our research that led to the TNS9 vector—and the most
`
`innovative—was designing the genetic material that would be inserted into the
`
`patient’s cells. The genetic material needed to include a functional beta-globin gene,
`
`but the beta-globin gene alone was not enough to cause the patient’s cells to produce
`
`139471957.5
`
`6
`
`SKI Exhibit 2006
`Page 7 of 84
`
`
`
`
`
`enough beta-globin. Genes are typically accompanied by other DNA sequences that
`
`allow the cell to control when the gene is turned on or off. These DNA sequences,
`
`called regulatory elements, are necessary for the cell to make beta-globin from the
`
`beta-globin gene. By the late 1990s, scientists were just beginning to understand the
`
`role that these regulatory elements played in gene expression, both in general and in
`
`the specific case of hemoglobin. At the time, and as discussed below, the
`
`understanding was to try and use as small of regulatory elements as possible. In fact,
`
`for several years, scientists had been working to reduce the LCR regulatory elements
`
`to very small pieces in the hopes of trimming them down to manageable sizes for
`
`vectors that would still provide expression. However, no one had yet succeeded in
`
`this endeavor.
`
`14.
`
`I designed a sequence of genetic material that included both the beta-
`
`globin gene and the regulatory elements that were necessary for cells to express it
`
`(i.e., to make beta-globin from the beta-globin gene). We produced and tested
`
`several iterations of a line of such vectors we referred to as RNS, QNS, and TNS
`
`vectors. For example, we produced vectors designated TNS1, TNS2, TNS3, etc.
`
`These TNS vectors included varying lengths of the fragments surrounding the HS
`
`core elements. I remember one vector included one long fragment and two short
`
`fragments, another vector included two longer fragments and one short fragment,
`
`139471957.5
`
`7
`
`SKI Exhibit 2006
`Page 8 of 84
`
`
`
`
`
`and others that included fragments of approximately the same length. Each vector
`
`contained different LCR regulatory elements.
`
`15. When designing this genetic material, we still wanted the LCR
`
`regulatory elements to be as short as possible. We knew the longer it gets, the better
`
`expression. In addition to the HS core elements, we were aware of other putative
`
`sites where transcription factors might bind. As these sites were still poorly
`
`understood, our goal was to try and preserve these sites in the fragments we were
`
`using in systematic studies. However, we also understood that the longer the
`
`fragment, the less likely the transfer would be successful. The longer the fragment
`
`was also more expensive to manufacture. It really was a reconciliation process
`
`between competing concerns.
`
`16. Another unique aspect of our design was to place the HS2 core element
`
`at one end of the fragment encompassing that core element. The common approach
`
`at the time was to place the core elements in roughly the center of any fragment.
`
`17. When designing the LCR fragments, we initially used restriction
`
`enzymes to cut the DNA. There were several different companies that sold
`
`restriction enzymes at the time and each had their own catalog of the different
`
`enzymes that they sold (with several being sold by each company). At the time, we
`
`bought restriction enzymes from multiple companies for different projects.
`
`139471957.5
`
`8
`
`SKI Exhibit 2006
`Page 9 of 84
`
`
`
`
`
`18. However, other approaches could be used to create the LCR fragments.
`
`For example, the LCR fragments could have also been constructed using polymerase
`
`chain reactions (or PCR), which many laboratories used at the time.
`
`19. After we created the LCR fragments, we used junctions to connect the
`
`fragments, which simplified assembly for testing purposes. This included one
`
`junction between the promoter and the HS2 fragment, another junction between HS2
`
`and HS3 fragments, and another between the HS3 and HS4 fragments. These
`
`junctions varied in length but would have been as small as possible for the same
`
`reasons stated above, to keep the amount of material being transferred to a minimum.
`
`These fragments would have increased the length of the fragment. However, once a
`
`desired fragment was selected, one would have wanted to preserve each base pair of
`
`that fragment. It was known that transcription factors can be comprised of a small
`
`number of base pairs and removal of transcription factors could affect expression of
`
`the globin gene. Therefore, we would have worked to prevent the shortening of the
`
`fragments, beyond what we had originally selected, to preserve as many
`
`transcription factor binding sites as possible.
`
`20. Designing this genetic material, however, was only the first step toward
`
`getting defective cells to make hemoglobin. The next challenge was getting this
`
`genetic material into the DNA, or genome, of defective cells. Genetic material that
`
`139471957.5
`
`9
`
`SKI Exhibit 2006
`Page 10 of 84
`
`
`
`
`
`is directly injected into a cell typically is not incorporated into the cell’s genome, so
`
`this step required further experimentation.
`
`21. Certain viruses are known to infect cells by inserting their own genes
`
`(i.e., the viral genes) into the cell’s genome. They do this through a complicated
`
`series of biochemical processes. Beginning in the mid-1980s, scientists discovered
`
`that they could modify these viruses to insert genetically engineered DNA into the
`
`genome of living cells. These modified viruses are called vectors.
`
`22. Early vectors could only hold short DNA sequences. For example, we
`
`initially attempted to incorporate larger LCR designs into retroviral vectors based on
`
`the Moloney Murine Leukemia Virus (MMLV) but were unable to stably transfer
`
`the retroviral genomes due to RNA splicing that resulted from the addition of the
`
`larger LCR sequences. This is one of the reasons that the understanding at the time
`
`was to use as small regulatory fragments. In fact, I remember one of my
`
`contemporaries was using a vector capable of holding a maximum of about 4.5 kb,
`
`leaving little space for the incorporation of LCR elements.
`
`23.
`
`In or around 1996, we became aware of other viruses that could afford
`
`gene transfer into human cells. These are called lentiviruses, from which lentiviral
`
`vectors are derived. Lentiviruses are a type of retrovirus. The genetic material that I
`
`assembled to express the beta-globin gene was too large for early vectors, but we
`
`hypothesized that they potentially could be stably transferred using a suitable
`
`139471957.5
`
`10
`
`SKI Exhibit 2006
`Page 11 of 84
`
`
`
`
`
`lentiviral vector. To make such a lentiviral vector, we combined the human genetic
`
`material that we had assembled to control the beta-globin gene with the viral genetic
`
`material known to be necessary to produce lentiviral vectors from so-called
`
`“packaging cells” (called a 293T cell). When these components were combined, the
`
`293T cell produced lentiviral vector particles containing the therapeutic genetic
`
`material that we had designed. From 1996 on, we designed multiple globin vectors
`
`(and actually tested at least three in vivo no later than 1999, possibly starting in
`
`1998). One of these, which I called the TNS9 vector, was a success.
`
`24. For the TNS9 vector to have a therapeutic effect, it would need to cause
`
`a large number of red blood cells in the patient or animal’s body to contain adequate
`
`amounts of normal hemoglobin. Prior to the TNS9 vector, I was not aware of anyone
`
`designing a vector that was capable of achieving more than 1% of the normal level
`
`of expression. To be therapeutically effective, the gene therapy would need to result
`
`in 10-20% of the normal level of expression, and preferably over 15%. It is not
`
`possible to achieve this effect by modifying red blood cells directly. Instead, it is
`
`necessary to modify HSCs—i.e., the cells in the body that produce red blood cells.
`
`25. My laboratory performed the first experiments with the TNS9 vector in
`
`mice. The first step for these studies was to concentrate the TNS9 vector from the
`
`293 T cells. As of the late 1990s, there were methods for producing vectors on a
`
`139471957.5
`
`11
`
`SKI Exhibit 2006
`Page 12 of 84
`
`
`
`
`
`small scale and to an acceptable level of purity for animal studies; however, it was
`
`difficult to purify vectors on the scale or to the extent necessary for human studies.
`
`26. To treat the thalassemic mice in our study, we extracted their bone
`
`marrow, isolated the HSCs, treated the HSCs with the TNS9 vector, and reinjected
`
`the treated HSCs into the mice. We found that these treated mice expressed
`
`functional hemoglobin as the result of the TNS9 vector treatment. In other words,
`
`we discovered that our technology could eventually work for treating human patients
`
`with beta-thalassemia.
`
`27.
`
`In May 2000, my laboratory published an Abstract in Molecular
`
`Therapy. At the time, many labs were working on the same problem, i.e., working
`
`to create a vector design capable of successful transduction or incorporation of a
`
`globin gene into a thalassemic cell that would express the globin gene at therapeutic
`
`levels. We wanted to release a sort of teaser to let the world know we had designed
`
`what appeared to be an effective vector. However, we also were very intentional
`
`about what we disclosed and what we did not disclose. We purposefully did not
`
`disclose much information about our vector design because we did not want our
`
`competitors to be able to copy what we had done, i.e., throw a decade of research
`
`out the window and let others capitalize on it. Based on the disclosures in this
`
`Abstract, our competitors would not have understood how to recreate the TNS9
`
`vector. For example, a vector that included just the HS2, HS3, and HS4 core
`
`139471957.5
`
`12
`
`SKI Exhibit 2006
`Page 13 of 84
`
`
`
`
`
`elements alone, you could assemble the LCR fragment in over a dozen different
`
`ways. There would be hundreds to thousands of possible options (if not more) if
`
`longer fragments (more than just the core elements) were used.
`
`28.
`
`In July 2000, my laboratory published a landmark paper in Nature
`
`describing the technology we had developed to introduce globin genes into
`
`hematopoietic stem cells (the “Nature Article”). While we used the human beta-
`
`globin gene, our TNS9 vector design could be used
`
`to
`
`treat various
`
`hemoglobinopathies and/or could incorporate a different globin gene. Indeed, when
`
`my coworkers and I reported the results of our work in Nature, we noted that our
`
`work was an “advancement
`
`towards
`
`the genetic
`
`treatment of severe
`
`haemogloinopathies.” (Ex. 1005 (the Nature Article) at 6.)
`
`29. At a high level, the research in the Nature Article was a proof of concept
`
`for using gene-therapy techniques to modify a patient’s cells to produce therapeutic
`
`levels of hemoglobin. The work was the result of a complex series of experiments.
`
`30. The Nature Article solved a conundrum of globin gene therapy that had
`
`previously been unsolved by other researchers in the field. A major challenge in
`
`designing an effective gene therapy was to design a vector that could efficiently
`
`insert a functional globin gene in patient cells. This required two things. First, it
`
`required high-efficiency transduction — i.e., gene transfer via vector into the
`
`defective cell. Second, in order to be therapeutic, the vector would need to express
`
`139471957.5
`
`13
`
`SKI Exhibit 2006
`Page 14 of 84
`
`
`
`
`
`high levels of the encoded globin gene — or in lay terms, it would need to produce
`
`a very substantial amount of, in the case of the TNS9 vector, beta-globin. Once you
`
`solved two big issues: (1) levels of expression that are high enough to be therapeutic
`
`and (2) stable transfer of genetic material and good efficiency, it would be apparent
`
`that you can use this design as a recipe for other vectors. Instead of the beta-globin
`
`gene, you could use an animal globin gene, a fetal globin gene, etc. and reasonably
`
`expect expression of that gene.
`
`31.
`
`In the Nature Article, we provided more insight into our vector and the
`
`results, and provided information on the size of the fragments surrounding the HS
`
`fragments. However, we did not describe the start and end positions of these HS
`
`fragments, such as the flanking restriction sites of each HS fragment. It should be
`
`noted that size alone would be insufficient to identify those fragments. We also did
`
`not disclose whether we constructed those fragments using PCR, by cutting the DNA
`
`using restriction enzymes, or otherwise much less where each cut should be made.
`
`In addition, even if a competitor tried to recreate our vector, the only way to test
`
`whether it met the challenges identified above would be to conduct a therapeutic
`
`model testing the vector, which would require in vivo testing and trial and error to
`
`make such a determination. It would take a very long time — several years — to
`
`create, test, and verify all the possible combinations.
`
`139471957.5
`
`14
`
`SKI Exhibit 2006
`Page 15 of 84
`
`
`
`
`
`32. For years, neither we nor any of the number of other research groups in
`
`the United States or in Europe conducting this research had succeeded in designing
`
`a vector that could both be transduced at high efficiency and express therapeutic
`
`levels of the beta-globin protein. Throughout the 1990s, it was a mad race to find a
`
`vector capable of stable transfer and that would cause expression of the transferred
`
`gene. My understanding was that most who were conducting this research had
`
`concluded that retroviral vectors could not serve this purpose. I was aware of
`
`research teams, other than us, who had turned their efforts to alternative vector
`
`systems (adeno-associated virus, alpha-virus, etc.). We, in contrast, perceived that
`
`some unique biological attributes of lentiviral vectors (a type of retroviral vector)
`
`may allow us to assemble inside such a vector a set of elements that we had carefully
`
`studied and reduced to a size compatible with genetic stability and efficient
`
`transduction. It took me eleven years — from 1989 to 2000 — to succeed in
`
`designing a vector meeting those two fundamental criteria, and I continued to test
`
`and develop that design thereafter. That design — as published in the Nature Article
`
`— became the foundation for all present gene therapies for thalassemia and sickle
`
`cell disease.
`
`33.
`
`I (and three co-inventors from MSKCC) filed for patent protection on
`
`the discoveries reported in the Nature Article and ultimately were granted U.S.
`
`Patent No. 7,541,179 (“the ‘179 Patent”) and No. 8,058,061 (“the ‘061 Patent”), both
`
`139471957.5
`
`15
`
`SKI Exhibit 2006
`Page 16 of 84
`
`
`
`
`
`entitled “Vector Encoding Human Globin Gene and Use Thereof in Treatment of
`
`Hemoglobinopathies.”
`
`34.
`
`I have also located excerpts of our inventor notebooks from the 1990s
`
`(particularly 1997-1998) that demonstrate we had conceived of and were actively
`
`working on the vector design that is claimed in the ‘179 and ‘061 Patents. I
`
`understand these are being filed as Exhibit 2033.
`
`Inventorship
`35.
`I am an inventor of the subject matter disclosed and claimed in the ‘179
`
`and ‘061 Patents. I am familiar with the specification and the claims of the ‘179 and
`
`‘061 Patents.
`
`36.
`
`I understand that bluebird bio, Inc. (hereafter, “Petitioner”) has
`
`challenged the validity of certain claims of the ‘179 and ‘061 Patents.
`
`37.
`
`I understand Petitioner has asserted May, et al., “Lentiviral-Mediated
`
`Transfer of the Human β-Globin Gene and Large Locus Control Region Elements
`
`Permit Sustained Production of Therapeutic Levels of β-Globin in Long-Term Bone
`
`Marrow Chimeras,” Mol. Therapy, 1(5):S248-49 (2000) (the “May Abstract”)
`
`against the ‘179 and ‘061 Patents. The May Abstract represents the work of the
`
`inventors of the ‘179 and ‘061 Patents. In addition to the inventors of the ‘179 and
`
`‘061 Patents, the May Abstract lists John Callegari and Karen Gaensler as authors.
`
`Mr. Callegari was a laboratory technician, and Dr. Gaensler provided a mouse for
`
`139471957.5
`
`16
`
`SKI Exhibit 2006
`Page 17 of 84
`
`
`
`
`
`control purposes that we used in the study. These individuals are named as co-
`
`authors because of these non-inventive contributions to the publication.
`
`38.
`
`I understand Petitioner has asserted May et al., “Therapeutic
`
`Haemoglobin Synthesis in β-Thalassaemic Mice Expressing Lentivirus-Encoded
`
`Human β-globin,” Nature, 406:82-86 (2000) (i.e., the Nature Article) against the
`
`‘179 and ‘061 Patents. The Nature Article represents the work of the inventors of
`
`the ‘179 and ‘061 Patents. In addition to the inventors of the ‘179 and ‘061 Patents,
`
`the Nature Article lists John Callegari, Glenn Heller, Karen Gaensler, and Lucio
`
`Luzzatto as authors. Mr. Callegari and Dr. Gaensler had the same non-inventive
`
`contributions identified above. Similarly, Dr. Heller was a statistician, and Dr.
`
`Luzzatto was my chairman; both provided support and consultation. They were
`
`named as co-authors for these non-inventive contributions to the publication.
`
`39. None of these individuals (Dr. Heller, Mr. Callegari, Dr. Gaensler, and
`
`Dr. Luzzatto) are inventors of the invention claimed in the ‘179 or ‘061 Patents.
`
`40.
`
`I understand that Petitioner has asserted “Therapeutic Hemoglobin
`
`Synthesis in Beta-Thalassemic Mice Expressing Lentivirus-Encoded Human Beta-
`
`Globin,” (the “May Thesis”), which I understand became publicly available on
`
`November 26, 2001. (See Pet. at 17.). The May Thesis reflects some of Dr. May’s
`
`contributions to the research underlying the ‘179 and ‘061 Patents.
`
`139471957.5
`
`17
`
`SKI Exhibit 2006
`Page 18 of 84
`
`
`
`
`
`41. Even though we did not provide these details in the May Abstract or the
`
`Nature Article, regarding the three restriction enzyme fragments of the LCR (a BstXI
`
`and SnaBI HS2-spanning nucleotide fragment, a BamHI and HindIII HS3-spanning
`
`nucleotide fragment, and a BamHI and BanII HS4-spanning nucleotide fragment)
`
`which are claimed in the ’179 patent, it is clear of course that we, as in the inventors,
`
`had knowledge and possession of these fragments since we had created the TNS9
`
`vector and were testing it in vivo no later than 1999.
`
`42. As discussed above, the Nature Article published in 2000. By the time
`
`of this publication, we (the inventors) had unquestionably conceived of the TNS9
`
`vector design, which I understand is an embodiment of the vector claimed in the
`
`’179 and ‘061 Patents, as well as reduced it to practice. Both the Nature Article and
`
`the May Abstract disclose our TNS9 vector and provides preliminary results from
`
`our testing. While neither the May Abstract nor the Nature Article identifies the
`
`claimed restriction enzyme fragments of the LCR, the very fact that these references
`
`show we possessed this vector demonstrates that I, along with my co-inventors,
`
`clearly recognized and knew of these claimed fragments.
`
`
`
`
`
`139471957.5
`
`18
`
`SKI Exhibit 2006
`Page 19 of 84
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on January 23, 2023.
`
`___________________________
`Michel Sadelain
`
`139471957.5
`
`19
`
`SKI Exhibit 2006
`Page 20 of 84
`
`
`
`CURRICULUM VITAE
`
`Name:
`Michel William Jeffrey Sadelain
`Place of Birth: Neuilly sur Seine, Paris, France
`Nationality:
`Canadian and French citizenships
`U.S. Permanent Resident (citizenship pending)
`Office Address: Center for Cell Engineering, S-1021A
`Memorial Sloan Kettering Cancer Center
`1275 York Avenue, Box 182
`New York, NY 10065
`Tel: (212) 639-6190
`E-mail: m-sadelain@ski.mskcc.org
`Fax: (917) 432-2340
`Home Address: 15 West 84 Street, Apt 2C
`New York, NY 10024
`Tel: (212) 423-0403
`Baccalaureat (Mathematiques), 1976
`Lycee Jehan Ango, Dieppe, France
`M.D., 1984
`University of Paris–Pierre et Marie Curie, Paris, France
`(Thesis Advisor: Gabriel Richet)
`M.S. (Physiology), 1984
`University of Paris–Rene Descartes, Paris, France
`Ph.D. (Immunology), 1989
`University of Alberta, Edmonton, Canada
`(Thesis Advisor: Thomas Wegmann)
`Postdoctoral Fellow 1989-94
`Whitehead Institute for Biomedical Research,
`Massachusetts Institute of Technology,
`Cambridge, MA (Laboratory of Richard Mulligan)
`Medical Training and Licensure:
`1983
`Examen clinique medical, chirurgical et obstetrique
`(European Medical Licensure)
`Resident
`Pulmonary Division/Internal Medicine and Clinical Immunology
`Centre Hospitalier Universitaire Saint-Antoine, Paris, France
`FMGEMS (ECFMG examination)
`FLEX certification.
`
`1984
`1993
`
`Education:
`
`1983-84
`
`SKI Exhibit 2006
`Page 21 of 84
`
`APPENDIX A
`
`
`
`Positions and Appointments:
`Research Appointments
`1994
`Assistant Member, Immunology Program, Sloan-Kettering Institute
`2000
`Associate Member, Immunology Program, Sloan-Kettering Institute
`2004
`Member, Immunology Program, Sloan-Kettering Institute
`2007
`Member, Molecular Pharmacology & Chemistry Program, Sloan-Kettering
`Institute
`Academic and Hospital Appointments
`1994
`Assistant-Attending Geneticist, Department of Human Genetics and
`Hematology/Oncology and Bone Marrow Transplant Services, Departments of
`Medicine and Pediatrics, Memorial Hospital
`Assistant Professor, Graduate School of Medical Sciences, Cornell University
`Medical College
`Director, Gene Transfer and Somatic Cell Engineering Facility, Memorial Sloan
`Kettering Cancer Center
`Assistant Professor, Department of Medicine, Weill College of Medicine at
`Cornell University
`Associate-Attending Geneticist, Department of Human Genetics and
`Hematology/Oncology and Bone Marrow Transplant Services, Departments of
`Medicine and Pediatrics, Memorial Hospital
`Associate Professor, Graduate School of Medical Sciences, Cornell University
`Attending Geneticist, Department of Medicine, Hematology/Oncology and
`Bone Marrow Transplant Services, Departments of Medicine and Pediatrics,
`Memorial Hospital
`Professor, Immunology Program and Microbial Pathogenesis, Weill Cornell
`Medical College and Graduate School of Medical Sciences, Cornell University
`Director, Center for Cell Engineering, Memorial Sloan Kettering Cancer Center
`
`1995
`
`1997
`
`1998
`
`2000
`
`2001
`2004
`
`2004
`
`2007
`
`Scientific and Medical Societies:
`American Association for Cancer Research (AACR)
`American Society for Clinical Investigation (ASCI)
`American Society of Clinical Oncology (ASCO)
`American Society of Gene and Cell Therapy (ASGCT)
`American Society of Hematology (ASH)
`International Society for Stem Cell Research (ISSCR)
`
`
`
`2
`
`SKI Exhibit 2006
`Page 22 of 84
`
`
`
`1984
`1989
`1995
`2003
`2004
`2005
`2007
`2012
`
`2013
`
`2013
`2013
`
`2013
`2014
`2014
`
`Honors and Awards:
`1976
`Baccalaureat Mathematiques, “Mention Tres Bien” (Top 1%, national).
`1984
`These d'Etat de Docteur en Medecine, awarded with thesis medal and mention
`“honorable”. Thesis President: Pr. Gabriel Richet.
`Co