`____________
`
`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
`____________
`
`SAN ROCCO THERAPEUTICS LLC’S
`MOTION FOR ADMISSION PRO HAC VICE
`OF MARY JEAN KIM
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`Sloan Kettering Institute for Cancer Research (“SKI”) is the owner by
`
`assignment of U.S. Patent No. 8,058,061 (“the ’061 Patent”). SKI has granted San
`
`Rocco Therapeutics LLC (“SRT”) an exclusive but assignable license to—and for
`
`the entire term of—the ’061 Patent, entitling SRT to all substantial rights and “sole
`
`responsibility” to defend any challenge to the validity of the ’061 Patent. See Paper
`
`5 at 1, Ex. 2001 at 1-3. SKI and SRT have entered into a joint defense agreement in
`
`connection with the present IPR proceeding. See Paper 5 at 1, Ex. 2005 at 1.
`
`Therefore, SRT is responding on behalf of Patent Owner SKI in this proceeding. See
`
`Paper 5 at 1, Paper 8 at 2.
`
`Pursuant to 37 C.F.R. § 42.10 and the Board’s authorization to file motions
`
`for pro hac vice admission in Inter Partes Review Case No. IPR2023-00074, (see
`
`Paper 3 at 2), SRT requests that the Board admit Mary Jean Kim pro hac vice in this
`
`proceeding.
`
`The Board may recognize counsel pro hac vice during a proceeding on a
`
`showing of good cause. “[W]here lead counsel is a registered practitioner, a motion
`
`to appear pro hac vice may be granted upon a showing that counsel is an experienced
`
`litigation attorney and has an established familiarity with the subject matter at issue
`
`in the proceeding.” 37 C.F.R. § 42.10(c).
`
`Here, lead counsel Michael W. Glynn is a registered practitioner (Reg. No.
`
`76,729), and first backup Joe Chen is also a registered practitioner (Reg. No.
`
`1
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`70,066). Both Mr. Glynn and Mr. Chen practice in the same firm as Ms. Kim. Ms.
`
`Kim has years of patent litigation experience, and she is substantially familiar with
`
`the subject matter at issue in this proceeding. Accompanying this motion is the
`
`Declaration of Mary Jean Kim, where Ms. Kim attests to her experience and
`
`familiarity. See generally Kim Decl. (Ex. 2085). Specifically, Ms. Kim attests that:
`
`•
`
`•
`
`•
`
`She has been practicing intellectual property litigation, including patent
`
`litigation, for over 6 years.
`
`She has been counsel on several patent litigation cases.
`
`She is a member of the team representing SRT, the exclusive licensee
`
`of the ’061 Patent and U.S. Patent No. 7,541,179 (“the ’179 Patent”).
`
`SKI granted SRT an exclusive but assignable license to — and for the
`
`entire term of — the ’179 and ’061 Patents, entitling SRT to all
`
`substantial rights and the “sole responsibility” to defend any challenge
`
`to the validity of the ’179 and ’061 Patents. SKI and SRT have entered
`
`into a joint defense agreement in connection with the following IPR
`
`proceedings: IPR2023-00070 (’179 Patent) and IPR2023-00074 (’061
`
`Patent).
`
`•
`
`She is also a member of the team representing SRT in the following
`
`related district court cases: San Rocco Therapeutics, LLC v. bluebird
`
`bio, Inc., et al., No. 1-21-cv-01478 (D. Del.); San Rocco Therapeutics,
`
`2
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`LLC v. Memorial Sloan-Kettering Cancer Center and Sloan Kettering
`
`Institute of Cancer Research, No. 1-21-cv-08206 (S.D.N.Y.); and San
`
`Rocco Therapeutics, LLC v. Leschly, et al., No. 1:23-cv-10919 (D.
`
`Mass) (pending pro hac vice).
`
`Good cause exists because (1) the Parties anticipate numerous calls with the
`
`Board in which Ms. Kim may have insight to provide or argument to assert, (2) the
`
`Parties have multiple depositions to take across the country, some of which may
`
`need two days to take, and (3) SRT anticipates additional discovery or motion
`
`practice that would necessitate Ms. Kim’s involvement. Ms. Kim’s involvement in
`
`these proceedings ensures the full team representing SRT can appear before the
`
`Board. Additionally, this motion and Ms. Kim’s declaration meet the other
`
`requirements for pro hac vice admission in this matter. Moreover, Petitioner has
`
`indicated that it will not oppose this motion. Accordingly, these facts establish good
`
`cause to recognize Ms. Kim in this proceeding. Thus, SRT requests that the Board
`
`admit Ms. Kim pro hac vice in this proceeding.
`
`Dated: October 24, 2023
`
`By: /s/ Michael W. Glynn
`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
`
`3
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`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
`
`Attorneys for San Rocco Therapeutics,
`LLC, Responding on Behalf of Patent
`Owner Sloan Kettering Institute for
`Cancer Research
`
`4
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on
`
`October 24, 2023, the foregoing San Rocco Therapeutics LLC’s Motion for
`
`Admission Pro Hac Vice of Mary Jean Kim, 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: October 24, 2023
`
`/s/ Michael W. Glynn
`Michael W. Glynn (Reg. No. 76,729)
`Counsel for San Rocco Therapeutics, LLC,
`Responding on Behalf of Patent Owner
`
`5
`
`