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 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 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 notice without waiving any of Patent
`Owner’s rights.
`SKI granted San Rocco Therapeutics, LLC (“SRT” or “Exclusive
`Licensee”), formerly known as Errant Gene Therapeutics, LLC, an exclusive
`license 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 ’061 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 ’061 Patent at its own expense because
`SRT is the exclusive licensee pursuant to an exclusive license agreement with the
`Patent Owner.
`As the exclusive licensee to the ’061 Patent, SRT provides this notice
`without waiving any of the Patent Owner’s or SRT’s rights.
`1.
`Real Party in Interest (§ 42.8(b)(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
`
`
`
`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 to
`the ’061 Patent. As a result of that exclusive license, SRT has the right to assert the
`’061 Patent against infringers and to defend the validity of the ’061 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 alleging that TRV, knowingly and willfully, induced
`and continues to induce infringement of the ’061 Patent. See id., at D.I. 9.
`Subsequently, bluebird and TRV filed a motion to dismiss or, in the alterative, 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
`Patents; and (ii) transduced cells containing SNS23 Vectors are covered by a valid
`claim of the ’179 and/or ’061 Patents. 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.
`C. 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
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`3.
`
`Designation of Lead and Backup Counsel (§ 42.8(b)(3)).
`
`Lead Counsel
`Luke Toft (Reg. No. 75,311)
`ltoft@foxrothschild.com
`Fox Rothschild LLP
`33 South Sixth Street, Suite 3600
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`
`
`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
`
`Additional counsel for SRT may seek pro hac vice admission for the IPR
`Proceeding referenced herein.
`4.
`Service Information.
`Service on the Patent Owner and Exclusive Licensee may be made by
`electronic mail to counsel at the email addresses above. Alternatively, service may
`be made by mail or hand delivery to: Fox Rothschild LLP, 33 South Sixth Street,
`Suite 3600, Minneapolis, MN 55402. The fax number for lead counsel is reflected
`above.
`
`4
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`
`Dated: November 8, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By: /s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`FOX ROTHSCHILD LLP
`33 South Sixth Street, Suite 3600
`Minneapolis, MN 55402
`Telephone: (612) 607-7000
`Facsimile: (612) 607-7100
`ltoft@foxrothschild.com
`
`Joe Chen (Reg. No. 70,066)
`FOX ROTHSCHILD LLP
`997 Lenox Drive
`Lawrenceville, NJ 08648
`Telephone: (609) 844-3024
`Facsimile: (609) 896-1469
`joechen@foxrothschild.com
`
`Counsel for San Rocco Therapeutics, LLC
`
`5
`
`
`
`Case IPR2023-00074
`Patent 8,058,061
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on
`
`November 8, 2022, the foregoing Patent Owner’s Mandatory Notice was served via
`
`e-mail, as authorized by the Petitioner, at the following email correspondence
`
`address of record:
`
`Naveen Modi
`Eric W. Dittmann
`Daniel Zeilberger
`Max H. Yusem
`Krystina L. Ho
`bluebird-IPR-PH@paulhastings.com
`
`PAUL HASTINGS LLP
`2050 M Street NW
`Washington, D.C. 20036
`
`Dated: November 8, 2022
`
`
`
`
`
`/s/ Luke Toft
`Luke Toft (Reg. No. 75,311)
`Counsel for San Rocco Therapeutics, LLC
`
`
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
