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.
`____________
`Case No. IPR2023-00074
`Patent No. 8,058,061
`____________
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICE
`
`
`
`
`
`
`
`____________
`
`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
`____________
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICE
`
`
`
`
`
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`
`The named patent owner in the above-referenced proceeding, Sloan
`Kettering Institute for Cancer Research (“SKI” or the “Patent Owner”), by and
`through its exclusive licensee, provides this updated notice without waiving any of
`Patent Owner’s rights.
`SKI granted San Rocco Therapeutics, LLC (“SRT”), formerly known as
`Errant Gene Therapeutics, LLC, an exclusive license, with all substantial rights, to
`U.S. Patent Nos. 7,541,179 (“the ’179 Patent”) and 8,058,061 (“the ’061 Patent”).
`On October 19, 2022, the Patent Owner informed SRT that, as the exclusive
`licensee of the ’179 Patent, it expects SRT to defend the challenged claims at SRT’s
`expense. In response, on October 20, 2022, SRT affirmed its responsibility to
`defend the validity of the ’179 Patent at its own expense because SRT is the
`exclusive licensee and holder of all substantial rights pursuant to an exclusive
`license agreement with the Patent Owner.
`As the exclusive licensee, with all substantial rights to the ’179 Patent, SRT
`provides this notice without waiving any of the Patent Owner’s or SRT’s rights.
`Real Party in Interest (§ 42.8(b)(1)).
`1.
`The real parties in interest are SRT, located at 308 East Emily Street, Tampa,
`Florida 33603; SKI, located at 1275 York Avenue, New York, New York 10065; and
`Memorial Sloan-Kettering Cancer Center (“MSKCC”), located at 1275 York
`Avenue, New York, New York 10065.
`
`1
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`
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`Case IPR2023-00074
`Patent 8,058,061
`
`
`2.
`
`Related Matters (§ 42.8(b)(2)).
`A. Matters Involving Petitioner.
`On November 2, 2020, the Patent Owner granted SRT an exclusive license
`with all substantial rights to the ’179 Patent, including the right to assert the ’179
`Patent against infringers and to defend the validity of the ’179 Patent before the
`Patent Trial and Appeal Board. On October 21, 2021, SRT filed a complaint against
`bluebird bio, Inc. (“bluebird”) in the District of Delaware alleging infringement of
`the ’179 and ’061 Patents. See Errant Gene Therapeutics, LLC v. Bluebird Bio, Inc.,
`1-21-cv-01478, (D. Del. October 21, 2021) (“Delaware Action”), D.I. 1. On
`November 17, 2021, SRT amended its complaint to include Third Rock Ventures,
`LLC (“TRV”) as a defendant because TRV, knowingly and willfully, induced and
`continues to induce infringement of the ’179 Patent. See id., at D.I. 9. Subsequently,
`bluebird and TRV filed a motion to dismiss or, in the alternative, stay proceedings
`and compel arbitration. See id., at D.I. 15.
`In the Delaware Action, on July 26, 2022, Judge Richard G. Andrews granted,
`in part, bluebird and TRV’s motion to compel arbitration and denied their motion to
`dismiss SRT’s second amended complaint. Id., at D.I. 76. Specifically, Judge
`Andrews: (i) held that the court must determine whether SRT has constitutional and
`statutory standing following arbitration of threshold issues; and (ii) noted that his
`decision does not compel arbitration of SRT’s patent infringement claims. Id. SRT
`subsequently filed a Demand for Arbitration and Statement of Claim with the
`American Arbitration Association, and the arbitration has been assigned Case No.
`
`2
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`01-22-0003-6927. On October 18, 2022, Petitioner filed IPR2023-00070 against the
`’179 Patent and IPR2023-00074 (the instant action) against the ’061 Patent.
`B. Additional Matters Involving the ’061 Patent
`On October 5, 2021, SRT filed a complaint for declaratory judgment seeking
`a declaration that (i) recombinant vectors SNS23.B87.A1 and SNS23.2.B87.A1
`(collectively, the “SNS23 Vectors”) are covered by a claim of the ’179 and/or ’061
`Patent; and (ii) transduced cells containing SNS23 Vectors are covered by a valid
`claim of the ’179 and/or ’061 Patent. See Errant Gene Therapeutics, LLC v.
`
`Memorial Sloan-Kettering Cancer Center and Sloan Kettering Institute of Cancer
`Research, 1-21-cv-08206 (S.D.N.Y) (“SDNY Action”), D.I. 1. The SDNY Action
`is currently pending before Judge Vernon S. Broderick.
`B. Continuity and Priority.
`The ’179 and ’061 Patents claim priority to U.S. Provisional Application No.
`60/301,861 filed on June 29, 2001, U.S. Provisional Application No. 60/302,852
`filed on July 2, 2001, and U.S. Non-Provisional Application No. 10/188,221 (“the
`’221 Application”) filed on July 1, 2002. The ’061 Patent also claims priority to U.S.
`Non-Provisional Application No. 12/433,412, which is a divisional of the ’221
`Application and which was filed on April 30, 2009.
`
`3
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`
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`Case IPR2023-00074
`Patent 8,058,061
`
`
`3.
`
`Designation of Lead and Backup Counsel (§ 42.8(b)(3)).
`
`Backup Counsel
`Joe Chen (Reg. No. 70,066)
`joechen@foxrothschild.com
`Fox Rothschild LLP
`997 Lenox Drive
`Lawrenceville, NJ 08648
`Telephone: (609) 844-3024
`Facsimile: (609) 896-1469
`
`Backup Counsel
`Howard S. Suh (pro hac vice)
`hsuh@foxrothschild.com
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`
`
`
`
`
`Lead Counsel
`Michael W. Glynn (Reg. No. 76,729)
`mglynn@foxrothschild.com
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`
`
`Backup Counsel
`Wanda French-Brown (pro hac vice)
`wfrench-brown@foxrothschild.com
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`
`
`Backup Counsel
`James H. McConnell (pro hac vice)
`jmcconnell@foxrothschild.com
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`
`
`Additional counsel for Patent Owner may seek pro hac vice admission for the
`IPR Proceeding referenced herein.
`Service Information.
`4.
`Service on Patent Owner may be made by electronic mail to Patent Owner’s
`counsel at the email addresses above. Alternatively, service may be made by mail
`
`4
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`Case IPR2023-00074
`Patent 8,058,061
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`or hand delivery to: Fox Rothschild LLP, 101 Park Avenue, 17th Floor, New York,
`NY 10178. The fax number for lead counsel is reflected above.
`
`Dated: June 12, 2023
`
`By: /s/ Joe Chen
`
`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
`
`Michael W. Glynn (Reg. No. 76,729)
`FOX ROTHSCHILD LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`mglynn@foxrothschild.com
`
`Wanda French-Brown (pro hac vice)
`FOX ROTHSCHILD LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`wfrench-brown@foxrothschild.com
`
`Howard S. Suh (pro hac vice)
`FOX ROTHSCHILD LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`hsuh@foxrothschild.com
`
`5
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`
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`Case IPR2023-00074
`Patent 8,058,061
`
`
`
`
`
`
`
`
`
`
`
`
`James H. McConnell (pro hac vice)
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`jmcconnell@foxrothschild.com
`
`Attorneys for San Rocco Therapeutics,
`LLC, on behalf of Sloan Kettering Institute
`for Cancer Research
`
`
`
`6
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on June
`
`12, 2023, the foregoing Patent Owner’s Updated Mandatory Notice was served via
`
`e-mail, as authorized by the Petitioner, at the following email correspondence
`
`address of record:
`
`
`
`
`
`Naveen Modi
`Daniel Zeilberger
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`bluebird-IPR-PH@paulhastings.com
`
`Eric W. Dittmann
`Max H. Yusem
`Krystina L. Ho
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`bluebird-IPR-PH@paulhastings.com
`
`Dated: June 12, 1023
`
`
`
`
`
`/s/ Joe Chen
`Joe Chen, Ph.D. (Reg. No. 70,066)
`Counsel for San Rocco Therapeutics, LLC, on
`behalf of Sloan Kettering Institute for Cancer
`Research
`
`
`7
`
`
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