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Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper: 18
` Entered: June 6, 2023
`
`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.
`____________
`
`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)1
`___________
`
`
`
`Before SHERIDAN K. SNEDDEN, JAMES A. WORTH, and
`CYNTHIA M. HARDMAN, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner’s Unopposed Motion for
`Pro Hac Vice Admission of Wanda French-Brown, James H. McConnell,
`and Howard S. Suh
`37 C.F.R. § 42.10
`
`
`
`
`
`
`1 This Order addresses overlapping issues in each of the above-captioned
`proceedings. Therefore, we issue one Order to be filed in each proceeding.
`The parties are not authorized to use this caption unless authorized by the
`Board.
`
`
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`On May 23, 2023, Patent Owner filed motions requesting pro hac vice
`admission of Wanda French-Brown, James H. McConnell, and Howard S.
`Suh. Papers 13, 14, and 15 (collectively “Motions”). 2 Patent Owner
`submitted declarations from Ms. French-Brown (Ex. 2045), Mr. McConnell
`(Ex. 2046), and Mr. Suh (Ex. 2047) in support of the Motions (collectively
`“Declarations”). Patent Owner attests that Petitioner does not oppose the
`Motions. Paper 13, 3; Paper 14, 3; Paper 15, 3. The Motions are granted.
`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
`pro hac vice during a proceeding upon a showing of good cause. In
`authorizing a motion for pro hac vice admission, the Board requires the
`moving party to provide a statement of facts showing there is good cause for
`the Board to recognize counsel pro hac vice and an affidavit or declaration
`of the individual seeking to appear in the proceeding. See Unified Patents,
`Inc. v. Parallel Iron, LLC, IPR2013-00639 (PTAB Oct. 15, 2013) (Paper 7)
`(representative “Order – Authorizing Motion for Pro Hac Vice Admission”).
`Based on the facts set forth in the Motions and the accompanying
`Declarations, we conclude that Ms. French-Brown, Mr. McConnell, and Mr.
`Suh have sufficient legal qualifications to represent Patent Owner in the
`above-captioned proceedings; that Ms. French-Brown, Mr. McConnell, and
`Mr. Suh have demonstrated sufficient litigation experience and familiarity
`with the subject matter of the above-captioned proceedings; and that Ms.
`French-Brown, Mr. McConnell, and Mr. Suh meet all other requirements for
`admission pro hac vice. See Ex. 2045 ¶¶ 1–10; Ex. 2046 ¶¶ 1–10; Ex. 2047
`
`
`2 For purposes of expediency, we cite to the Motions and Declarations filed
`in IPR2023-00070, unless otherwise indicated. Patent Owner filed similar
`Motions and Declarations in IPR2023-00074.
`
`2
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`¶¶ 1–10. Accordingly, Patent Owner has established good cause for pro hac
`vice admissions of Ms. French-Brown, Mr. McConnell, and Mr. Suh.
`Patent Owner not filed a Power of Attorney or updated Mandatory
`Notices for Ms. French-Brown, Mr. McConnell, and Mr. Suh. Therefore,
`Patent Owner must submit a Power of Attorney for Ms. French-Brown, Mr.
`McConnell, and Mr. Suh in accordance with 37 C.F.R. § 42.10(b), and must
`update its Mandatory Notices as required by 37 C.F.R. § 42.8(b)(3), to
`identify Ms. French-Brown, Mr. McConnell, and Mr. Suh as back-up
`counsel.
`
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner’s Motions for pro hac vice admission
`of Wanda French-Brown, James H. McConnell, and Howard S. Suh are
`granted;
`FURTHER ORDERED that Patent Owner shall submit, within ten
`(10) business days of the date of this Order, a Power of Attorney for Ms.
`French-Brown, Mr. McConnell, and Mr. Suh in each of the above-captioned
`proceedings in accordance with 37 C.F.R. § 42.10(b);
`FURTHER ORDERED that Patent Owner must file an updated
`mandatory notice identifying Ms. French-Brown, Mr. McConnell, and Mr.
`Suh as back-up counsel in each of the above-captioned proceedings in
`accordance with 37 C.F.R. § 42.8(b)(3);
`FURTHER ORDERED that Patent Owner continue to have a
`registered practitioner represent it as lead counsel for the above-captioned
`proceedings;
`
`3
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`FURTHER ORDERED that Ms. French-Brown, Mr. McConnell, and
`Mr. Suh are authorized to act as back-up counsel only in the above-
`captioned proceedings;
`FURTHER ORDERED that Ms. French-Brown, Mr. McConnell, and
`Mr. Suh are to comply with the Patent Trial and Appeal Board’s
`Consolidated Trial Practice Guide3 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of Title
`37, Code of Federal Regulations; and
`FURTHER ORDERED that Ms. French-Brown, Mr. McConnell, and
`Mr. Suh shall be subject to the Office’s disciplinary jurisdiction under
`37 C.F.R. § 11.19(a), and the USPTO Rules of Professional Conduct set
`forth in 37 C.F.R. §§ 11.101 et seq.
`
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`
`PETITIONER:
`Naveen Modi
`Eric Dittmann
`Daniel Zeilberger
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`ericdittmann@paulhastings.com
`danielzeilberger@paulhastings.com
`
`PATENT OWNER:
`Luke Toft
`Joe Chen
`FOX ROTHSCHILD LLP
`ltoft@foxrothschild.com
`joechen@foxrothschild.com
`
`5
`
`

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