`571-272-7822
`
`
`
`
`
`
`
`
`
`Paper No. 36
`Entered: January 21, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ADAPT PHARMA OPERATIONS LIMITED, and
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B21
`
`____________
`
`Before: ERICA A. FRANKLIN, ZHENYU YANG, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`Additional Discovery
`37 C.F.R. §§ 42.5, 42.51(b)(2)
`
`1 This Order addresses an issue common to each referenced case. We,
`therefore, issue a single order to be entered in each case. For convenience,
`paper numbers refer to those filed in IPR2019-00685.
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`
`On January 21, 2020, the panel held a conference with the parties to
`discuss Patent Owner’s request for authorization to seek a subpoena directed
`to a third-party, i.e., Indivior Inc., for testimony addressing an evidentiary
`objection regarding Exhibit 2188 raised by Petitioner.
`Patent Owner submitted Exhibit 2188 with the Patent Owner’s
`Response on December 23, 2019. Paper 34. On January 8, 2020, Petitioner
`filed its objections to certain evidence submitted by Patent Owner, including
`Exhibit 2188. Paper 35, 12. Specifically, Petitioner objected to Exhibit 2188,
`among others, “under Fed. R. Evid. 901 as insufficiently authenticated.” Id.
`Patent Owner seeks to depose a corporate witness of Indivior, and to submit
`the deposition transcript as supplemental evidence, to address Petitioner’s
`objection. Patent Owner acknowledges that it cannot meet the January 22,
`2020 deadline for submitting supplemental evidence, and seeks an extension
`of that deadline.
`Petitioner opposes Patent Owner’s request for a subpoena, but
`indicates that should the Board allow the deposition, Petitioner would accept
`the supplemental evidence outside of the timeframe the parties previously
`agreed.
`During the call, the panel inquired whether Indivior would voluntarily
`submit to a deposition without a subpoena. Patent Owner responded in the
`negative, but stated that it would discuss the issue with Indivior again. The
`panel also suggested that the parties work together to resolve the issue to
`avoid expending additional resources. If the parties cannot resolve the issue
`on their own, we authorize Patent Owner to file a motion to seek a subpoena,
`and Petitioner to file an opposition to the motion.
`2
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`
`Patent Owner’s request is subject to the additional-discovery
`provisions of 37 C.F.R. § 42.51(b)(2), and the motion should address the
`factors set forth in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26, 6–7 (PTAB Mar. 5, 2013) (precedential).
`
`It is
`ORDERED that Patent Owner contact the Board by close of business
`on January 24, 2020, to inform the panel regarding the status of the parties’
`efforts to resolve the issues raised during the call;
`FURTHER ORDERED that if the parties are unable to resolve the
`issue, Patent Owner is authorized to file, within five business days of this
`Order, a motion to seek a subpoena to depose a representative of Indivior
`Inc.;
`
`FURTHER ORDERED that Petitioner is authorized to file, within five
`business days of Patent Owner’s motion, any opposition to the motion; and
`FURTHER ORDERED that each filing is limited to five pages.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2019-00685, Patent 9,211,253 B2
`IPR2019-00688, Patent 9,468,747 B2
`IPR2019-00694, Patent 9,629,965 B2
`
`PETITIONER:
`Yelee Kim
`Janine Carlan
`Richard Berman
`Bradford Frese
`Christopher Yaen
`ARENT FOX LLP
`yelee.kim@arentfox.com
`janine.carlan@arentfox.com
`richard.berman@arentfox.com
`bradford.frese@arentfox.com
`christopher.yaen@arentfox.com
`
`PATENT OWNER ADAPT PHARMA OPERATIONS LIMITED:
`
`Jessamyn S. Berniker
`David M. Krinsky
`Anthony Sheh
`Ana C. Reyes
`WILLIAMS & CONNOLLY LLP
`jberniker@wc.com
`dkrinsky@wc.com
`asheh@wc.com
`areyes@wc.com
`
`
`PATENT OWNER OPIANT PHARMACEUTICALS, INC.:
`
`Jessica Tyrus Mackay
`Ann K. Kotze
`GREEN, GRIFFITH & BORG-BREEN, LLP
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`
`4
`
`
`
`
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