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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BLUEBIRD BIO, INC.,
`Petitioner,
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`v.
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`SLOAN KETTERING INSTITUTE FOR CANCER RESEARCH,
`Patent Owner.
`____________
`Case No. IPR2023-00074
`Patent No. 8,058,061
`____________
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`SAN ROCCO THERAPEUTICS LLC’S
`MOTION FOR ADMISSION PRO HAC VICE
`OF WANDA FRENCH-BROWN
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`Case IPR2023-00074
`Patent 8,058,061
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`Sloan Kettering Institute for Cancer Research (“SKI”) is the owner by
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`assignment of U.S. Patent No. 8,058,061 (“the ’061 Patent”). SKI has granted San
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`Rocco Therapeutics LLC (“SRT”) an exclusive but assignable license to—and for
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`the entire term of—the ’061 Patent, entitling SRT to all substantial rights and “sole
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`responsibility” to defend any challenge to the validity of the ’061 Patent. See Paper
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`5 at 1, Ex. 2001 at 1-3. SKI and SRT have entered into a joint defense agreement in
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`connection with the present IPR proceeding. See Paper 5 at 1, Ex. 2005 at 1.
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`Therefore, SRT is responding on behalf of Patent Owner SKI in this proceeding. See
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`Paper 5 at 1, Paper 8 at 2.
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`Pursuant to 37 C.F.R. § 42.10 and the Board’s authorization to file motions
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`for pro hac vice admission in Inter Partes Review Case No. IPR2023-00074, (see
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`Paper 3 at 2), SRT requests that the Board admit Wanda French-Brown pro hac vice
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`in this proceeding.
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`The Board may recognize counsel pro hac vice during a proceeding on a
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`showing of good cause. “[W]here lead counsel is a registered practitioner, a motion
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`to appear pro hac vice may be granted upon a showing that counsel is an experienced
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`litigation attorney and has an established familiarity with the subject matter at issue
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`in the proceeding.” 37 C.F.R. § 42.10(c).
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`Here, lead counsel Lukas D. Toft is a registered practitioner (Reg. No.
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`75,311), and first backup Joe Chen is also a registered practitioner (Reg. No.
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`1
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`Case IPR2023-00074
`Patent 8,058,061
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`70,066). Both Mr. Toft and Mr. Chen practice in the same firm as Ms. French-
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`Brown. Ms. French-Brown has years of patent litigation experience, and she is
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`substantially familiar with the subject matter at issue in this proceeding.
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`Accompanying this motion is the Declaration of Wanda French-Brown, where
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`Ms. French-Brown attests to her experience and familiarity. See generally French-
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`Brown Decl. (Ex. 2045). Specifically, Ms. French-Brown attests that:
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`•
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`•
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`She has been practicing intellectual property litigation, including patent
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`litigation, for over 15 years.
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`She has been counsel on several patent litigation cases.
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`She is a senior member of the team representing SRT, the exclusive
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`licensee of the ’061 Patent and U.S. Patent No. 7,541,179 (“the ’179
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`Patent”). SKI granted SRT an exclusive but assignable license to —
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`and for the entire term of — the ’179 and ’061 Patents, entitling SRT
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`to all substantial rights and the “sole responsibility” to defend any
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`challenge to the validity of the ’179 and ’061 Patents. SKI and SRT
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`have entered into a joint defense agreement in connection with the
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`following IPR proceedings: IPR2023-00070 (’179 Patent) and
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`IPR2023-00074 (’061 Patent).
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`•
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`She is also a senior member of the team representing SRT in the
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`following related district court cases: San Rocco Therapeutics, LLC v.
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`2
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`Case IPR2023-00074
`Patent 8,058,061
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`bluebird bio, Inc., et al., No. 1-21-cv-01478 (D. Del.); San Rocco
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`Therapeutics, LLC v. Memorial Sloan-Kettering Cancer Center and
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`Sloan Kettering Institute of Cancer Research, No. 1-21-cv-08206
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`(S.D.N.Y.); and San Rocco Therapeutics, LLC v. Leschly, et al., No.
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`1:23-cv-10919 (D. Mass) (pending pro hac vice).
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`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
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`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
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`admission in this matter. Moreover, Petitioner has indicated that it will not oppose
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`this motion. Accordingly, these facts establish good cause to recognize Ms. French-
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`Brown in this proceeding. Thus, SRT requests that the Board admit Ms. French-
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`Brown pro hac vice in this proceeding.
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`3
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`Case IPR2023-00074
`Patent 8,058,061
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`Dated: May 23, 2023
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`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
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`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
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`Attorneys for San Rocco Therapeutics,
`LLC, Responding on Behalf of Patent
`Owner Sloan Kettering Institute for
`Cancer Research
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`Case IPR2023-00074
`Patent 8,058,061
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`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on May
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`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
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`Petitioner, at the following email correspondence address of record:
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`Naveen Modi
`Daniel Zeilberger
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`bluebird-IPR-PH@paulhastings.com
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`Eric W. Dittmann
`Max H. Yusem
`Krystina L. Ho
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`bluebird-IPR-PH@paulhastings.com
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`Dated: May 23, 2023
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`/s/ Lukas D. Toft
`Lukas D. Toft (Reg. No. 75,311)
`Counsel for San Rocco Therapeutics, LLC,
`Responding on Behalf of Patent Owner
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`5
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