`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
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`v.
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`ADAPT PHARMA OPERATIONS LIMITED, and
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owners.
`__________________
`
`Case No. IPR2019-00694
`U.S. Patent No. 9,629,965
`__________________
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`
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`PATENT OWNERS’ UNOPPOSED MOTION TO WITHDRAW AND
`SUBSTITUTE COUNSEL
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`
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`Case No. 2019-00694
`U.S. Patent No. 9,629,965
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.10(e) and the Board’s November 19, 2019,
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`email authorizing this motion, Patent Owners Adapt Pharma Operations Limited
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`(“Adapt”) and Opiant Pharmaceuticals, Inc. (“Opiant”) respectfully request that
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`the Patent Trial and Appeal Board (“the Board”) authorize the withdrawal of
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`attorney Robert F. Green as Lead Counsel. Patent Owners also respectfully
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`request that the Board authorize the substitution of current Backup Counsel for
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`Adapt, Jessamyn S. Berniker, as new Lead Counsel.
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`II.
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`STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF COUNSEL
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`Adapt has recently become an assignee of U.S. Patent Nos. 9,211,253,
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`9,468,747, and 9,629,965, which are the subject of Case Nos. IPR2019-00685,
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`-00688, and -00694. Adapt and Opiant have filed joint amended mandatory
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`notices in these cases, which have identified both Adapt and Opiant as Patent
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`Owners, and permitted Williams & Connolly LLP, including Jessamyn S.
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`Berniker, to enter appearances as Adapt’s counsel. Jessamyn S. Berniker is lead
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`counsel for Adapt in the district court proceedings involving these patents.
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`Patent Owners therefore request that Robert F. Green be permitted to withdraw
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`from the current proceeding. Opiant will remain represented in the current
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`proceeding by Jessica Tyrus Mackay, who will remain as Opiant’s First Backup
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`Counsel, and Ann K. Kotze, who was named as Opiant’s Backup Counsel in the
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`Patent Owners’ joint amended mandatory notices and is familiar with the current
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`Case No. 2019-00694
`U.S. Patent No. 9,629,965
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`proceeding.
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`No change to the schedule would be required based on the proposed
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`change in counsel. Patent Owners will file updated mandatory notices under 37
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`C.F.R. § 42.8(a)(3) should this motion be granted. Opiant represents that it
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`would not be prejudiced by this proposed withdrawal and substitution of counsel.
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`In identifying and designating new counsel who are ready and able to take over
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`the representation, “reasonable steps have been taken to avoid foreseeable
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`prejudice to the rights of the client.” See 37 C.F.R. § 10.40(a).
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`III. REASONS FOR RELIEF REQUESTED
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`“Counsel may not withdraw from a proceeding before the Board unless
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`the Board authorizes such withdrawal.” 37 C.F.R. § 42.10(e). Given that Adapt’s
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`counsel has been identified as Lead Counsel, and that Opiant remains
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`represented by First Backup Counsel and Backup Counsel who are ready and
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`able to maintain Opiant’s representation, it is appropriate to allow Robert F.
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`Green to withdraw from the proceeding. Counsel for Petitioner has been
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`consulted and has indicated that Petitioner does not oppose the motion for
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`substitution and withdrawal. Thus, Patent Owners believe that granting this
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`motion will not hinder the economy, the integrity of the patent system, the
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`efficient administration of the Office, or the ability of the Office to timely
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`Case No. 2019-00694
`U.S. Patent No. 9,629,965
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`complete this proceeding. See 35 U.S.C. § 316(b).
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`IV. CONCLUSION
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`Patent Owners respectfully request that the Board grant their motion to
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`withdraw Robert F. Green as Lead Counsel, and to substitute Adapt’s counsel,
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`Jessamyn S. Berniker, as new Lead Counsel in this proceeding.
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`
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`Date: November 26, 2019
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`Respectfully submitted,
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`/Jessamyn S. Berniker/
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`Jessamyn S. Berniker (Reg. No. 72,328)
`Ana C. Reyes (Pro Hac Vice motion 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
`dkrinsky@wc.com
`asheh@wc.com
`
`Counsel for Patent Owner
`Adapt Pharma Operations Limited
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`/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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`Case No. 2019-00694
`U.S. Patent No. 9,629,965
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`Chicago, IL 60611
`(313) 883-8000
`jmackay@greengriffith.com
`akotze@greengriffith.com
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`Counsel for Patent Owner
`Opiant Pharmaceuticals, Inc.
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`CERTIFICATE OF SERVICE
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`Case No. 2019-00694
`U.S. Patent No. 9,629,965
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`
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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 26, 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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`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
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`Robert F. Green
`Jessica Tyrus Mackay
`Ann K. Kotze
`GREEN, GRIFFITH & BORG-BREEN, LLP
`676 North Michigan Avenue
`Suite 3900
`Chicago, IL 60611
`jmackay@greengriffith.com
`akotze@greengriffith.com
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`/Jessica Tyrus Mackay/
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`Jessica Tyrus Mackay
`Reg. No. 64,742
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