`____________
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`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
`____________
`
`
`
`
`DECLARATION OF MARY JEAN KIM IN SUPPORT OF
`MOTION FOR ADMISSION PRO HAC VICE
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`I, Mary Jean Kim, declare as follows:
`
`1.
`
`I am Counsel in the Intellectual Property group at Fox Rothschild LLP
`
`and have a particular focus on intellectual property litigation. I have been practicing
`
`law in the field of intellectual property litigation, including patent litigation, for over
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`6 years.
`
`2.
`
`3.
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`I have been counsel on several patent litigation cases.
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`I am a member in good standing of the State Bars of New Jersey and
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`New York. I am admitted to practice before the New Jersey Supreme Court; New
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`York Supreme Court; the U.S. District Court for the Southern District of New York;
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`and the U.S. District Court for the Eastern District of New York.
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`4.
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`I have never been suspended or disbarred from practice before any court
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`or administrative body.
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`5.
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`I have never had an application for admission to practice before any
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`court or administrative body denied.
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`6.
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`I have never had any sanctions or contempt citations imposed against
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`me by any court or administrative body.
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`7.
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`I have read and will comply with the Office Patent Trial Practice Guide
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`and the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37 of
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`the C.F.R.
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`8.
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`I agree to be subject to the USPTO Code of Professional Responsibility
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`1
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`Case IPR2023-00074
`Patent 8,058,061
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`as set forth in 37 C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37
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`C.F.R. § 11.19(a).
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`9.
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`I am a member of the team representing San Rocco Therapeutics, LLC
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`(“SRT”), the exclusive licensee of U.S. Patent Nos. 7,541,179 (“the ’179 Patent”)
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`and 8,058,061 (“the ’061 Patent”). Sloan Kettering Institute for Cancer Research
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`(“SKI”) granted SRT an exclusive but assignable license to—and for the entire term
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`of—the ’179 and ’061 Patents, entitling SRT to all substantial rights and the “sole
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`responsibility” to defend any challenge to the validity of the ’179 and ’061 Patents.
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`See Paper 5 at 1, Ex. 2001 at 1-3. SKI and SRT have entered into a joint defense
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`agreement in connection with the following IPR proceedings: IPR2023-00070 (’179
`
`Patent) and IPR2023-00074 (’061 Patent). See Paper 5 at 1, Ex. 2005 at 1. I am also
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`the lead counsel representing SRT in the following related district court cases: San
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`Rocco Therapeutics, LLC v. bluebird bio, Inc., et al., No. 1-21-cv-01478 (D. Del.);
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`San Rocco Therapeutics, LLC v. Memorial Sloan-Kettering Cancer Center and
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`Sloan Kettering Institute of Cancer Research, No. 1-21-cv-08206 (S.D.N.Y.); and
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`San Rocco Therapeutics, LLC v. Leschly, et al., No. 1:23-cv-10919 (D. Mass)
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`(pending pro hac vice).
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`10.
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`I am substantially familiar with the subject matter in this proceeding.
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`2
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`Case IPR2023-00074
`Patent 8,058,061
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`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`Dated: October 23, 2023
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`
`
`
`
`
`
`/s/ Mary Jean Kim
`Mary Jean Kim
`Fox Rothschild LLP
`101 Park Avenue, 17th Floor
`New York, NY 10178
`Telephone: (212) 878-7900
`Facsimile: (212) 692-0940
`MKim@foxrothschild.com
`
`
`3
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`
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