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