`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`__________________
`
`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
`__________________
`
`
`
`UNOPPOSED MOTION FOR PRO HAC VICE ADMISSION OF
`ANA C. REYES PURSUANT TO 37 C.F.R. § 42.10(c)
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`
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`I.
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`RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s Notice of Filing Date
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`Accorded to Petition and Time for Filing Patent Owner Preliminary Response,
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`which authorizes the parties to file motions for pro hac vice admission, Paper 5 at
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`2, Patent Owner Adapt Pharma Operations Limited submits the following motion
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`for admission pro hac vice of Ana C. Reyes of Williams & Connolly LLP, 725
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`Twelfth Street, N.W., Washington, DC 20005 in the above-captioned matter.
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`II. GOVERNING LAW, RULES, AND PRECEDENT
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`The Board is authorized to recognize counsel pro hac vice pursuant to 37
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`C.F.R. § 42.10(c), which provides that:
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`The Board may recognize counsel pro hac vice during a
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`proceeding upon a showing of good cause, subject to the
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`condition that lead counsel be a registered practitioner and
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`to any other conditions as the Board may impose. For
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`example, where
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`the
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`lead counsel
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`is a registered
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`practitioner, a motion to appear pro hac vice by counsel
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`who is not a registered practitioner may be granted upon
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`showing that counsel is an experienced litigating attorney
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`and has an established familiarity with the subject matter
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`at issue in the proceeding.
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`
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`The Unified Patents Order requires that a pro hac vice motion “[c]ontain a
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`statement of facts showing there is good cause for the Board to recognize counsel
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`2
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`pro hac vice during the proceeding.” Order – Authorizing Motion for Pro Hac
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`Vice Admission – 37 C.F.R. § 42.10, IPR2013-00639, Paper 7 at 3. A motion for
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`pro hac vice admission should also be accompanied by an affidavit or declaration
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`of the individual seeking to appear attesting to the following:
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`i. Membership in good standing of the Bar of at least one State or the
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`District of Columbia;
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`ii.
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`No suspensions or disbarments from practice before any court or
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`administrative body;
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`iii. No application for admission to practice before any court or
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`administrative body ever denied;
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`iv. No sanctions or contempt citations imposed by any court or
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`administrative body;
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`v.
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`The individual seeking to appear has read and will comply with the
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`Office Patent Trial Practice Guide and the Board’s Rules of Practice
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`for Trials set forth in part 42 of 37 C.F.R.;
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`vi.
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`The individual will be subject to the USPTO Rules of Professional
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`Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary
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`jurisdiction under 37 C.F.R. § 11.19(a);
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`vii. All other proceedings before the Office for which the individual has
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`applied to appear pro hac vice in the last three (3) years; and
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`viii. Familiarity with the subject matter at issue in the proceeding.
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`Id.
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`3
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`III. STATEMENT OF FACTS
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`Based on the following facts, and supported by the Declaration of Ms. Reyes
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`(Ex. 2038) submitted herewith, Patent Owner Adapt Pharma Operations Limited
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`requests the pro hac vice admission of Ana C. Reyes in this proceeding:
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`1.
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`Patent Owner’s lead counsel, Jessamyn S. Berniker (Reg. No.
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`72,328), is a registered practitioner before the Board.
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`2. Ms. Reyes is a partner at Williams & Connolly LLP and an
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`experienced litigation attorney. Ms. Reyes has more than eighteen (18) years of
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`litigation experience. Ex. 2038 ¶ 2
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`3. Ms. Reyes has established familiarity with the subject matter at issue
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`in this proceeding. As detailed below, Ms. Reyes has reviewed in detail the
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`pleadings, patent, and exhibits relied upon by Petitioner, as well as engaged in
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`extensive strategic and substantive discussions regarding this proceeding with
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`Jessamyn S. Berniker, the lead counsel for Patent Owner Adapt Pharma Operations
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`Limited. Ex. 2038 ¶ 10. Ms. Reyes has engaged in the representation of Patent
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`Owner Adapt Pharma Limited in related matters in federal district court, including
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`the assertion of U.S. Patent Nos. 9,211,253; 9,468,747; and 9,629,965 in Adapt
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`Pharma Operations Ltd., et al. v. Teva Pharmaceuticals USA, Inc., et al., Case
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`2:16-cv-07721-BRM-JAD (D.N.J.) (consolidated) and Adapt Pharma Operations
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`4
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`
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`Ltd., et al. v. Perrigo UK FINCO Limited Partnership, Case 2:18-cv-15287-BRM-
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`JAD (D.N.J.). Ex. 20XX ¶ 10.
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`4. Ms. Reyes has also reviewed in detail relevant case law and legal
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`authority related to the allegations made in the Petition. Ex. 2038 ¶ 11.
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`5. Ms. Reyes is a member in good standing of the bars of New York, the
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`District of Columbia, and Kentucky. Ex. 2038 ¶ 3.
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`6. Ms. Reyes has never been suspended or disbarred from practice
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`before any court or administrative body. Ex. 2038 ¶ 4.
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`7.
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`No court or administrative body has ever denied Ms. Reyes’s
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`application for admission to practice before it. Ex. 2038 ¶ 5.
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`8.
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`No court or administrative body has ever imposed sanctions or
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`contempt citations on Ms. Reyes. Ex. 2038 ¶ 6.
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`9. Ms. Reyes has read and will comply with the Office Patent Trial
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`Practice Guide and the Board’s Rules of Practice for Trials set forth in part 42 of
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`37 C.F.R. Ex. 2038 ¶ 7.
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`10. Ms. Reyes understands that she will be subject to the USPTO Code of
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`Professional Responsibility set forth in 37 C.F.R. §§ 11.101 et seq. and will be
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`subject to disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Ex. 2038 ¶ 8.
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`11. Ms. Reyes is concurrently seeking pro hac vice admission to appear in
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`the Petitioner’s inter partes challenge to U.S. Patent Nos. 9,211,253; 9,468,747;
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`5
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`and 9,629,965. These proceedings have been designated Case Nos. IPR2019-
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`00685, IPR2019-00688 and IPR2019-00694 respectively. Ms. Reyes has not
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`applied to appear pro hac vice in other proceedings before the Office in the last
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`three (3) years. Ex. 2038 ¶ 9.
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`IV. GOOD CAUSE EXISTS FOR THE PRO HAC VICE
`ADMISSION OF MS. REYES IN THIS PROCEEDING
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`The Board may recognize counsel pro hac vice during a proceeding upon a
`
`showing of good cause, subject to the condition that lead counsel be a registered
`
`practitioner and to any other conditions as the Board may impose. 37 C.F.R.
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`§ 42.10(c). Patent Owner’s lead counsel, Jessamyn S. Berniker, is a registered
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`practitioner before the Board. Based on the facts contained herein, as supported by
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`Ms. Reyes’s declaration, good cause exists to admit Ms. Reyes pro hac vice in this
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`proceeding.
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`As set forth in her declaration, Ms. Reyes is a partner at Williams &
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`Connolly LLP and an experienced litigator with more than eighteen (18) years of
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`litigation experience. Ex. 2038 ¶ 2
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`Ms. Reyes has established familiarity with the subject matter at issue in the
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`proceeding. Ex. 2038 ¶ 10. Ms. Reyes has reviewed in detail the pleadings
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`submitted by Petitioner in this proceeding. Ex. 2038 ¶ 10. Ms. Reyes has
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`reviewed in detail the challenged patent. Ex. 2038 ¶ 10. Ms. Reyes has also
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`6
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`reviewed in detail exhibits relied upon by Petitioner, such as such as Exhibit 1002
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`(Declaration of Maureen Donovan, Ph.D.), Exhibit 1003 (Declaration of Günther
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`Hochhaus, Ph.D.), etc. Ex. 2038 ¶ 11.
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`
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`Ms. Reyes has engaged in extensive strategic and substantive discussions
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`regarding this proceeding with Jessamyn S. Berniker, who is the lead counsel for
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`the Patent Owner in this case. Ex. 2038 ¶ 10. Ms. Reyes has engaged in the
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`representation of Patent Owner Adapt Pharma Operations Limited in related
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`matters in federal district court, including the assertion of U.S. Patent Nos.
`
`9,211,253; 9,468,747; and 9,629,965 in Adapt Pharma Operations Ltd., et al. v.
`
`Teva Pharmaceuticals USA, Inc., et al., Case 2:16-cv-07721-BRM-JAD (D.N.J.)
`
`(consolidated) and Adapt Pharma Operations Ltd., et al. v. Perrigo UK FINCO
`
`Limited Partnership, Case 2:18-cv-15287-BRM-JAD (D.N.J.). Ex. 2038 ¶ 10.
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`Ms. Reyes has reviewed in detail relevant case law and other legal authority related
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`to the allegations made in the Petition. Ex. 2038 ¶ 11.
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`In view of Ms. Reyes’s knowledge of the subject matter at issue in this
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`proceeding, Patent Owner Adapt Pharma Limited has a substantial need for Ms.
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`Reyes’s pro hac vice admission and her involvement in the continued prosecution
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`of this proceeding.
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`Petitioner does not oppose this motion.
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`7
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner Adapt Pharma Operations Limited
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`respectfully requests that Ms. Reyes be admitted pro hac vice in this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this filing to Deposit Account No. 506403.
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`Date: November 19, 2019
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`Respectfully submitted,
`
`/Jessamyn S. Berniker/
`
`Jessamyn S. Berniker (Reg. No. 72,328)
`Ana C. Reyes (Pro Hac Vice motion to
`be submitted)
`David M. Krinsky (Reg. No. 72,339)
`Anthony H. Sheh (Reg. No. 70,576)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5000
`F: (202) 434-5029
`jberniker@wc.com
`areyes@wc.com
`dkrinsky@wc.com
`asheh@wc.com
`
`Counsel for Patent Owner
`Adapt Pharma Operations Limited
`
`/Jessica Tyrus Mackay/
`Robert F. Green (Reg. No. 27,555)
`Jessica Tyrus Mackay (Reg. No. 64,742)
`Ann K. Kotze (Reg. No. 76,570)
`GREEN, GRIFFITH & BORG-BREEN, LLP
`676 North Michigan Avenue
`Suite 3900
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`8
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`Chicago, IL 60611
`(313) 883-8000
`jmackay@greengriffith.com
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`Counsel for Patent Owner
`Opiant Pharmaceuticals, Inc.
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`9
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`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
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`and correct copy of the foregoing was served on November 19, 2019, by delivering
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`a copy via electronic mail on the following attorneys of record:
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`Yelee Y. Kim
`Janine A. Carlan
`Richard Berman
`Bradford Frese
`Christopher Yaen
`ARENT FOX LLP
`1717 K Street NW
`Washington, DC 20036
`Yelee.Kim@arentfox.com
`Janine.Carlan@arentfox.com
`Richard.Berman@arentfox.com
`Bradford.Frese@arentfox.com
`Christopher.Yaen@arentfox.com
`
`
`
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`
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`Jessamyn S. Berniker
`Ana C. Reyes
`David M. Krinsky
`Anthony H. Sheh
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`jberniker@wc.com
`areyes@wc.com
`dkrinsky@wc.com
`asheh@wc.com
`EmergentNarcan@wc.com
`
`Robert F. Green
`Jessica Tyrus Mackay
`Ann K. Kotze
`GREEN, GRIFFITH & BORG-BREEN, LLP
`676 North Michigan Avenue
`Suite 3900s
`Chicago, IL 60611
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`/Jessica Tyrus Mackay/
`Jessica Tyrus Mackay
`Reg. No. 64,742
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