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Paper 26
`Trials@uspto.gov
`571-272-7822 Date: June 22, 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 Petitioner’s Motions for
`Pro Hac Vice Admission of Krystina L. Ho and Max. H. Yusem
`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)
`
`
`Bluebird Bio, Inc. (“Petitioner”) filed Motions for pro hac vice
`admission of Krystina L. Ho and Max. H. Yusem in each of the
`above-captioned proceedings. Papers 19, 20 (“Motions”).2 In each of the
`Motions, Petitioner states that, “[p]rior to filing this motion, Petitioner
`conferred with Patent Owner, and Patent Owner indicated that it does not
`intend to oppose this motion.” Paper 19, 1; Paper 20, 1. 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 Paper 3, 2 (citing
`Unified Patents, Inc. v. Parallel Iron, LLC, Case IPR2013-00639 (PTAB
`Oct. 15, 2013) (Paper 7) (representative “Order – Authorizing Motion for
`Pro Hac Vice Admission”)) (“Notice”).
`In the Motions, Petitioner states that there is good cause for the Board
`to recognize Krystina L. Ho and Max. H. Yusem pro hac vice during these
`proceedings because each “is an experienced litigating attorney with more
`than five years of experience and has served as counsel in several patent
`infringement lawsuits before the district courts,” “has an established
`familiarity with the subject matter at issue in this proceeding,” “has
`reviewed . . . the patent-at-issue, and other papers associated with this
`
`
`2 We cite to Papers and Exhibits filed in IPR2023-00070. Similar items
`were filed in IPR2023-00074.
`
`2
`
`
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`matter,” and each “is a member in good standing of the Bar of the State of
`New York.” Paper 19, 1–2; Paper 20, 1–2; see also Paper 19, 3; Paper 20, 3.
`The Motions are supported by a Declaration (Ex. 1048) of Ms. Ho,
`and by a Declaration (Ex. 1049) of Mr. Yusem, which attest to the
`statements above and comply with the requirements set forth in the Notice.
`See Ex. 1048 ¶¶ 1–10; Ex. 1049 ¶ 1–10.
`Upon consideration, Petitioner has demonstrated that Ms. Ho and
`Mr. Yusem each has sufficient qualifications and familiarity with the subject
`matter at issue. See, e.g., Paper 19, 1–3; Paper 20, 1–3; Ex. 1048 ¶¶ 1, 2, 8,
`9; Ex. 1049 ¶¶ 1, 2, 8, 9. Petitioner therefore has established good cause for
`admitting that Ms. Ho and Mr. Yusem pro hac vice in the above-captioned
`proceedings.
`Accordingly, it is
`ORDERED that Petitioner’s Motions for pro hac vice admission of
`Krystina L. Ho and Max. H. Yusem in the above captioned proceedings are
`granted; Ms. Ho and Mr. Yusem are authorized to act as back-up counsel in
`these proceedings only;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel for these proceedings;
`FURTHER ORDERED that that Ms. Ho and Mr. Yusem shall comply
`with the Consolidated Trial Practice Guide, 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;3 and
`
`3 Each Declaration states that “I have read and will comply with the Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials set
`
`
`3
`
`
`
`

`

`IPR2023-00070 (Patent 7,541,179 B2)
`IPR2023-00074 (Patent 8,058,061 B2)
`
`
`FURTHER ORDERED that that Ms. Ho and Mr. Yusem are 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.
`
`
`forth in part 42 of the C.F.R.” Ex. 2001 ¶ 5; Ex. 2003 ¶ 5. The Office
`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials,
`however, are set forth in Part 42 of Title 37, Code of Federal Regulations.
`We deem this to be harmless error.
`
`
`4
`
`
`
`

`

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

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