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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 HOWARD S. SUH
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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 Howard S. Suh pro hac vice in this
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`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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`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 Mr. Suh. Mr. Suh
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`has years of patent litigation experience, and he is substantially familiar with the
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`subject matter at issue in this proceeding. Accompanying this motion is the
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`Declaration of Howard S. Suh, where Mr. Suh attests to his experience and
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`familiarity. See generally Suh Decl. (Ex. 2047). Specifically, Mr. Suh attests that:
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`•
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`•
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`•
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`He has been practicing intellectual property litigation for over 25 years,
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`and specifically patent litigation for more than 20 years.
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`He has been counsel on over 30 patent litigation cases.
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`He 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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`He 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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`bluebird bio, Inc., et al., No. 1-21-cv-01478 (D. Del.); San Rocco
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`Case IPR2023-00074
`Patent 8,058,061
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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 Mr. Suh may have insight to provide or argument to assert, (2) the
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`Parties have multiple depositions to take across the country, some of which may
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`need two days to take, and (3) SRT anticipates additional discovery or motion
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`practice that would necessitate Mr. Suh’s involvement. Mr. Suh’s involvement in
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`these proceedings ensures the full team representing SRT can appear before the
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`Board. Additionally, this motion and Mr. Suh’s declaration meet the other
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`requirements for pro hac vice admission in this matter. Moreover, Petitioner has
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`indicated that it will not oppose this motion. Accordingly, these facts establish good
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`cause to recognize Mr. Suh in this proceeding. Thus, SRT requests that the Board
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`admit Mr. Suh pro hac vice in this proceeding.
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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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`Case IPR2023-00074
`Patent 8,058,061
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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 Howard S. Suh, was served via e-mail, as authorized by the Petitioner,
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`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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