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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 IPR2019-00688
`U.S. Patent 9,468,747
`__________________
`
`PATENT OWNERS’ REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Case IPR2019-00688
`U.S. Patent 9,468,747
`
`
`
`Pursuant to 37 C.F.R. § 42.70 and DUE DATE 4 of the Board’s Scheduling
`
`Order (Paper 12), Patent Owners Adapt Pharma Operations Limited and Opiant
`
`Pharmaceuticals, Inc. respectfully request oral argument, currently scheduled for
`
`May 19, 2020. Patent Owners specify, without intent to waive consideration of
`
`any issue not listed below, the following issues for argument:
`
`1.
`
`Patentability of the challenged claims, including but not limited to all
`
`issues raised the Petition, Patent Owners’ Preliminary Response, Patent Owners’
`
`Response, Petitioner’s Reply to Patent Owners’ Response, and Patent Owners Sur-
`
`reply (to be filed); the declarations of Dr. Maureen Donovan, Dr. Günther
`
`Hochhaus, Dr. Kenneth Williams, Dr. Stuart Jones, Dr. Robert Vigil, Thomas
`
`Begres, Declan Brides, and Eric Karas; as well as all other exhibits filed in this
`
`proceeding; and
`
`2.
`
`Any motions or observations filed in this proceeding.
`
`REQUESTED ARGUMENT DURATION
`
`Patent Owners have met and conferred with Petitioner Nalox-1
`
`Pharmaceuticals, LLC, and the parties agree that the oral arguments in IPR2019-
`
`00685, IPR2019-00688, and IPR2019-00694 should be consolidated. The parties
`
`further agree that each side should be given forty-five (45) minutes to present their
`
`respective arguments in the foregoing cases, for a total of ninety (90) minutes.
`
`2
`
`

`

`Case IPR2019-00688
`U.S. Patent 9,468,747
`
`
`
`EQUIPMENT REQUEST & VENUE
`
`Patent Owners request audio/visual equipment to display demonstrative
`
`exhibits, including equipment necessary to allow the exhibits to be viewed by any
`
`Judge participating remotely. Patent Owners further acknowledge that according
`
`to the Board’s scheduling order, oral argument will be held at the U.S. Patent and
`
`Trademark Office headquarters in Alexandria, Virginia. Patent Owners do not
`
`request a different venue. While Patent Owners would prefer an in-person
`
`argument, in light of the ongoing COVID-19 pandemic, should the parties be
`
`unable to present oral argument in person, Patent Owners request that oral
`
`argument be conducted by videoconference.
`
`
`Dated: April 6, 2020
`
`
`
`Respectfully submitted,
`
`/Jessamyn S. Berniker/
`
`Jessamyn S. Berniker (Reg. No. 72,328)
`Ana C. Reyes (Admitted Pro Hac Vice)
`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
`jberniker@wc.com
`areyes@wc.com
`dkrinsky@wc.com
`asheh@wc.com
`EmergentNarcan@wc.com
`
`Counsel for Patent Owner
`Adapt Pharma Operations Ltd.
`
`3
`
`

`

`
`
`Case IPR2019-00688
`U.S. Patent 9,468,747
`
`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
`Chicago, IL 60611
`jmackay@greengriffith.com
`akotze@greengriffith.com
`
`Counsel for Patent Owner
`Opiant Pharmaceuticals, Inc.
`
`
`4
`
`

`

`Case IPR2019-00688
`U.S. Patent 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 April 6, 2020 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 20006
`Yelee.Kim@arentfox.com
`Janine.Carlan@arentfox.com
`Richard.Berman@arentfox.com
`Bradford.Frese@arentfox.com
`Christopher.Yaen@arentfox.com
`
`/Jessamyn S. Berniker/
`Jessamyn S. Berniker
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

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