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 Owners.
`__________________
`
`Case No. IPR2019-00688
`U.S. Patent No. 9,468,747
`__________________
`
`
`
`PATENT OWNERS’ UNOPPOSED MOTION TO WITHDRAW AND
`SUBSTITUTE COUNSEL
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`NALOX-1 PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`ADAPT PHARMA OPERATIONS LIMITED, and
`OPIANT PHARMACEUTICALS, INC.,
`Patent Owners.
`__________________
`
`Case No. IPR2019-00688
`U.S. Patent No. 9,468,747
`__________________
`
`
`
`PATENT OWNERS’ UNOPPOSED MOTION TO WITHDRAW AND
`SUBSTITUTE COUNSEL
`
`
`
`
`
`
`Case No. 2019-00688
`U.S. Patent No. 9,468,747
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 37 C.F.R. § 42.10(e) and the Board’s November 19, 2019,
`
`email authorizing this motion, Patent Owners Adapt Pharma Operations Limited
`
`(“Adapt”) and Opiant Pharmaceuticals, Inc. (“Opiant”) respectfully request that
`
`the Patent Trial and Appeal Board (“the Board”) authorize the withdrawal of
`
`attorney Robert F. Green as Lead Counsel. Patent Owners also respectfully
`
`request that the Board authorize the substitution of current Backup Counsel for
`
`Adapt, Jessamyn S. Berniker, as new Lead Counsel.
`
`II.
`
`STATEMENT SHOWING GOOD CAUSE FOR THE BOARD TO
`AUTHORIZE WITHDRAWAL AND SUBSTITUTION OF COUNSEL
`
`Adapt has recently become an assignee of U.S. Patent Nos. 9,211,253,
`
`9,468,747, and 9,629,965, which are the subject of Case Nos. IPR2019-00685,
`
`-00688, and -00694. Adapt and Opiant have filed joint amended mandatory
`
`notices in these cases, which have identified both Adapt and Opiant as Patent
`
`Owners, and permitted Williams & Connolly LLP, including Jessamyn S.
`
`Berniker, to enter appearances as Adapt’s counsel. Jessamyn S. Berniker is lead
`
`counsel for Adapt in the district court proceedings involving these patents.
`
`Patent Owners therefore request that Robert F. Green be permitted to withdraw
`
`from the current proceeding. Opiant will remain represented in the current
`
`proceeding by Jessica Tyrus Mackay, who will remain as Opiant’s First Backup
`
`Counsel, and Ann K. Kotze, who was named as Opiant’s Backup Counsel in the
`
`2
`
`
`
`Patent Owners’ joint amended mandatory notices and is familiar with the current
`
`Case No. 2019-00688
`U.S. Patent No. 9,468,747
`
`proceeding.
`
`No change to the schedule would be required based on the proposed
`
`change in counsel. Patent Owners will file updated mandatory notices under 37
`
`C.F.R. § 42.8(a)(3) should this motion be granted. Opiant represents that it
`
`would not be prejudiced by this proposed withdrawal and substitution of counsel.
`
`In identifying and designating new counsel who are ready and able to take over
`
`the representation, “reasonable steps have been taken to avoid foreseeable
`
`prejudice to the rights of the client.” See 37 C.F.R. § 10.40(a).
`
`III. REASONS FOR RELIEF REQUESTED
`
`“Counsel may not withdraw from a proceeding before the Board unless
`
`the Board authorizes such withdrawal.” 37 C.F.R. § 42.10(e). Given that Adapt’s
`
`counsel has been identified as Lead Counsel, and that Opiant remains
`
`represented by First Backup Counsel and Backup Counsel who are ready and
`
`able to maintain Opiant’s representation, it is appropriate to allow Robert F.
`
`Green to withdraw from the proceeding. Counsel for Petitioner has been
`
`consulted and has indicated that Petitioner does not oppose the motion for
`
`substitution and withdrawal. Thus, Patent Owners believe that granting this
`
`motion will not hinder the economy, the integrity of the patent system, the
`
`3
`
`
`
`efficient administration of the Office, or the ability of the Office to timely
`
`Case No. 2019-00688
`U.S. Patent No. 9,468,747
`
`complete this proceeding. See 35 U.S.C. § 316(b).
`
`IV. CONCLUSION
`
`Patent Owners respectfully request that the Board grant their motion to
`
`withdraw Robert F. Green as Lead Counsel, and to substitute Adapt’s counsel,
`
`Jessamyn S. Berniker, as new Lead Counsel in this proceeding.
`
`
`
`Date: November 26, 2019
`
`
`
`
`
`Respectfully submitted,
`
`/Jessamyn S. Berniker/
`
`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
`
`/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
`
`
`
`4
`
`
`
`Case No. 2019-00688
`U.S. Patent No. 9,468,747
`
`Chicago, IL 60611
`(313) 883-8000
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`Counsel for Patent Owner
`Opiant Pharmaceuticals, Inc.
`
`
`
`
`
`
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`Case No. 2019-00688
`U.S. Patent No. 9,468,747
`
`
`
`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 26, 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 3900
`Chicago, IL 60611
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`/Jessica Tyrus Mackay/
`
`Jessica Tyrus Mackay
`Reg. No. 64,742
`
`
`
`
`
`
`6
`
`
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