`____________
`
`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 JAMES H. MCCONNELL IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`SKI Exhibit 2046
`Page 1 of 4
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`I, James H. McConnell, declare as follows:
`
`1.
`
`I am counsel in the Intellectual Property group at Fox Rothschild LLP
`
`and have a particular focus on patent litigation. I have been practicing law in the
`
`field of patent litigation for over 10 years.
`
`2.
`
`3.
`
`I have been counsel on several patent litigation cases.
`
`I am a member in good standing of the Bar of the State of New York. I
`
`am admitted to practice in New York State and the U.S. District Court for the
`
`Southern District of New York.
`
`4.
`
`I have never been suspended or disbarred from practice before any court
`
`or administrative body.
`
`5.
`
`I have never had an application for admission to practice before any
`
`court or administrative body denied.
`
`6.
`
`I have never had any sanctions or contempt citations imposed against
`
`me by any court or administrative body.
`
`7.
`
`I have read and will comply with the Office Patent Trial Practice Guide
`
`and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37 of
`
`the C.F.R.
`
`8.
`
`I agree to be subject to the USPTO Code of Professional Responsibility
`
`as set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
`
`C.F.R. § 11.19(a).
`
`1
`
`SKI Exhibit 2046
`Page 2 of 4
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`9.
`
`I am a senior member of the team representing San Rocco Therapeutics,
`
`LLC (“SRT”), the exclusive licensee of U.S. Patent Nos. 7,541,179 (“the ’179
`
`Patent”) and 8,058,061 (“the ’061 Patent”). Sloan Kettering Institute for Cancer
`
`Research (“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. See Paper 5 at 1, Ex. 2001 at 1-3. SKI and SRT have entered into a joint
`
`defense agreement in connection with the following IPR proceedings: IPR2023-
`
`00070 (’179 Patent) and IPR2023-00074 (’061 Patent). See Paper 5 at 1, Ex. 2005
`
`at 1. I am also a senior member of the team representing SRT in the following related
`
`district court cases: San Rocco Therapeutics, LLC v. bluebird bio, Inc., et al., No. 1-
`
`21-cv-01478 (D. Del.); San Rocco Therapeutics, LLC v. Memorial Sloan-Kettering
`
`Cancer Center and Sloan Kettering Institute of Cancer Research, No. 1-21-cv-
`
`08206 (S.D.N.Y.) (pending appearance); and San Rocco Therapeutics, LLC v.
`
`Leschly, et al., No. 1:23-cv-10919 (D. Mass) (pending pro hac vice).
`
`10.
`
`I am substantially familiar with the subject matter in this proceeding.
`
`2
`
`SKI Exhibit 2046
`Page 3 of 4
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`Dated: May 23, 2023
`
`
`
`
`
`
`
`/s/ James H. McConnell
`James H. McConnell
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`jmcconnell@foxrothschild.com
`
`
`3
`
`SKI Exhibit 2046
`Page 4 of 4
`
`
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