`
`____________
`
`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 REQUEST FOR ORAL ARGUMENT
`
`
`
`Case No. IPR2023-00074
`Patent No. 8,058,061
`
`Pursuant to the April 24, 2023, Scheduling Order (Paper 9) and 37 C.F.R. §
`
`42.70(a), Patent Owner respectfully requests that the Patent Trial and Appeal
`
`Board hear oral argument on the issues set forth below.
`
`There are currently two pending IPR proceedings between the parties, both
`
`of which are scheduled for oral argument on January 24, 2024 (see Paper 9 at 11).
`
`The two proceedings are:
`
`IPR2023-00070 (U.S. Patent No. 7,541,179 (“the ’179 patent”)); and
`
`IPR2023-00074 (U.S. Patent No. 8,058,061 (“the ’061 patent”)).
`
`The two patents are within the same patent family. Due to related issues in
`
`these cases, Patent Owner respectfully requests that the Board allow for a single
`
`oral argument for the two above-cited cases. If the Board permits such
`
`consolidation for the purpose of oral argument, Patent Owner respectfully
`
`requests 90 minutes of argument time. Patent Owner further requests the oral
`
`argument to be conducted in-person at the USPTO Headquarters in Alexandria,
`
`Virginia.
`
`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner specifies the following
`
`issues to be argued in regard to the two cases, without intent to waive
`
`consideration of any issue not requested:
`
`1
`
`
`
`Case No. IPR2023-00074
`Patent No. 8,058,061
`
`
`
`(1) Grounds for which inter partes review was instituted for the ’061
`
`patent and any issue raised in the Board’s Institution Decision dated April 24,
`
`2023 (Paper 8);
`
`(2) Any issue addressed in any motion or paper filed by Patent Owner,
`
`including, but not limited to, Patent Owner’s Preliminary Response, Patent
`
`Owner’s Sur-Reply to Petitioner’s Reply to Preliminary Response, Patent
`
`Owner’s Response, and Patent Owner’s Sur-Reply to Petitioner’s Reply Brief;
`
`(3) Any other issues raised by Petitioner during oral argument, in a
`
`request for oral argument, in a motion to exclude (if any), or in any other motion
`
`or paper filed by Petitioner before oral argument, including the Petition and
`
`Petitioner’s Reply Brief; and
`
`(4) Any other issues that the Board deems necessary for issuing a final
`
`written decision.
`
`Patent Owner requests the ability to use audio-visual equipment to display
`
`demonstrative exhibits, including the use of a projector and screen for PowerPoint
`
`display.
`
`In accordance with 37 C.F.R. § 42.70(a), Patent Owner will serve any
`
`demonstrative exhibits at least seven (7) business days before the oral argument
`
`and will file them no later than the time of the oral argument.
`
`
`
`2
`
`
`
`Case No. IPR2023-00074
`Patent No. 8,058,061
`
`
`
`
`Dated: December 12, 2023
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Michael W. Glynn
`
`Michael W. Glynn, Ph.D. (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
`
`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
`
`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
`
`
`3
`
`
`
`Case No. IPR2023-00074
`Patent No. 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
`
`
`4
`
`
`
`Case No. IPR2023-00074
`Patent No. 8,058,061
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned hereby certifies that on
`
`December 12, 2023, the foregoing Patent Owner’s Request for Oral Argument, 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: December 12, 2023
`
`
`
`
`
`
`
`
`/s/ Joe Chen
`Joe Chen, Ph.D. (Reg. No. 70,066)
`Counsel for San Rocco Therapeutics, LLC,
`Responding on Behalf of Patent Owner
`
`
`
`5
`
`
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