Petition for Inter Partes Review of U.S. Patent No. RE45,415
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TENNANT COMPANY,
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`Petitioner,
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`OXYGENATOR WATER TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2021-00602
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`Patent No. RE45,415
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`Reissue Date: March 17, 2015
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`Title: FLOW-THROUGH OXYGENATOR
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`MOTION FOR PRO HAC VICE ADMISSION
`37 C.F.R. § 42.10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TENNANT COMPANY,
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`Petitioner,
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`OXYGENATOR WATER TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2021-00602
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`Patent No. RE45,415
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`Reissue Date: March 17, 2015
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`Title: FLOW-THROUGH OXYGENATOR
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`MOTION FOR PRO HAC VICE ADMISSION
`37 C.F.R. § 42.10
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`This Motion for Pro Hac Vice Admission is being filed by Tennant
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`Company (“Tennant”) in the IPR proceeding captioned in the title page of this
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`submission. Petitioner requests the admission of Adam R. Steinert pro hac vice in
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`the IPR proceeding captioned above. Petitioner submits herewith a Declaration of
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`Adam R. Steinert in Support of this Motion for Pro Hac Vice Admission.
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`Mr. Steinert is well-versed in the technical and legal issues raised in the IPR
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`Petition and is especially qualified to serve as backup counsel for Tennant in this
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`matter. As explained in the attached declaration, Mr. Steinert has an undergraduate
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`degree in physics from Harvard University, and has specialized in patent litigation
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`for the past 17 years. (See Steinert Decl. ¶¶ 9-12.) Mr. Steinert has experience
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`with a wide range of electrical and chemical technologies relevant to this IPR
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`proceeding. (See id. ¶¶ 11-12.)
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`Mr. Steinert is also particularly well versed in the subject matter and
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`procedural history of the challenged patent, U.S. Patent No. RE45,415 (“the ʼ415
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`patent”). (See id. ¶ 13.) Mr. Steinert was intimately involved in the drafting of the
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`Petitions for IPR in this proceeding and the companion proceeding challenging the
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`’415 patent (case no. IPR2021-00602) (See id.)
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`In the course of his representation of Tennant, Mr. Steinert has reviewed and
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`analyzed the ʼ415 patent and its prosecution history in detail. (See id.) He has also
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`reviewed and analyzed the referenced prior art, all of the exhibits to the IPR
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`Petition, and, of course, the Petition itself. (See id.) Mr. Steinert has a particularly
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`high level of knowledge regarding Tennant’s prior art contentions raised in this
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`Petition and the companion IPR2021-00625 proceeding because Mr. Steinert
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`assisted in drafting Tennant’s submissions. (See id.)
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`Pursuant to 37 C.F.R. § 42.10(c) and the Board’s Order in IPR2013-00639,
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`Paper No. 7, Tennant further notes that Mr. Steinert is a member in good standing
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`of the state bars of Minnesota and New York and is admitted to practice before
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`multiple federal courts. (See Steinert Decl. ¶ 2.) No court or administrative body
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`has ever (a) suspended or disbarred him from practice; (b) denied his application to
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`practice; or (c) sanctioned him or cited him for contempt. (See id. ¶¶ 3-5.) Mr.
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`Steinert has read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials. (See id. ¶ 6.) He has also acknowledged
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`that he will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`(See id. ¶ 7.) Mr. Steinert has previously applied to appear pro hac vice before the
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`Board in nine cases, including in four cases within the last three years, IPR2015-
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`00482, IPR2015-00491, IPR2016-01460, IPR2016-01463, IPR2017-00202,
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`IPR2018-01389, IPR2018-01391, IPR2018-01392, and IPR2018-01394. (See id. ¶
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`8.) The Board granted all of those applications, and Mr. Steinert argued on behalf
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`of the petitioner at the oral hearing in all five cases that proceeded to oral
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`argument. (See id.)
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`For the foregoing reasons, Petitioner Tennant respectfully requests that this
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`Motion for Pro Hac Vice Admission be granted, and that Adam R. Steinert be
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`admitted to appear pro hac vice in the IPR proceeding captioned above.
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`Respectfully submitted,
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`/R. Scott Johnson/
`R. Scott Johnson
`RSJohnson@fredlaw.com
`Attorney for the Petitioner
`Registration No. 45,792
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`Fredrikson & Byron, P.A.
`505 E. Grand Ave., Suite 200
`Des Moines, IA 50309
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`Dated: March 12, 2021
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`4
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`Petition for Inter Partes Review of U.S. Patent No. RE45,415
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`Declaration of Adam R. Steinert in Support of
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`Motion for Pro Hac Vice Admission
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`I, Adam R. Steinert, declare as follows:
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`1.
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`I am a shareholder with Fredrikson & Byron, P.A., and am one of the
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`lawyers representing Petitioner Tennant Company (“Tennant”) in connection with
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`the IPR Proceeding captioned on the title page of this submission and the related
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`IPR proceeding, IPR2021-00625.
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`2.
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`I am a member in good standing of the following Bars: State of
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`Minnesota, State of New York, U.S. Court of Appeals for the Federal Circuit, U.S.
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`Court of Appeals for the Eighth Circuit, U.S. District Court for the District of
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`Minnesota, U.S. District Court for the Northern District of Illinois, and U.S.
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`District Courts for the Southern and Eastern Districts of New York.
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`3.
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`I have never received a suspension or disbarment from practice before
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`any court or administrative body.
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`4.
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`I have never been denied any application or admission to practice
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`before any court or administrative body.
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`5.
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`I have never been sanctioned by or received contempt citations from
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`any court or administrative body.
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`6.
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`I have read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules of Practice for Trials set forth in part 42 of 37 C.F.R.
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`7.
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`I will be subject to the USPTO Rules of Professional Conduct set
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`forth in 37 C.F.R. § 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R.
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`§ 11.19(a).
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`8.
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`I have previously applied to appear pro hac vice before the Board in
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`nine cases, including in four cases within the last three years, IPR2015-00482,
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`IPR2015-00491, IPR2016-01460, IPR2016-01463, IPR2017-00202, IPR2018-
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`01389, IPR2018-01391, IPR2018-01392, and IPR2018-01394. The Board granted
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`all of those applications, and I argued on behalf of the petitioner at the oral hearing
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`in all five cases that proceeded to oral argument.
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`9.
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`Although I am not registered to practice with the USPTO, I earned the
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`degree of A.B., cum laude in Physics, from Harvard University in 2001.
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`10. Since my graduation from New York University School of Law in
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`2004, I have specialized in intellectual property litigation, and the vast majority of
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`my practice is patent and technology trade secret litigation and counselling. I have
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`appeared in patent litigation cases across the country, including appearances before
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`the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the
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`Southern and Eastern Districts of New York, the District of Minnesota, the
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`Northern and Eastern Districts of Texas, the District of Delaware, the Northern and
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`Southern Districts of California, the Northern District of Illinois, the Western
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`District of Washington, the Eastern District of Virginia, the Western District of
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`Oklahoma, the District of New Jersey, and before the U.S. International Trade
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`Commission.
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`11. Through my undergraduate education and intellectual property
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`litigation practice, I have experience with a wide range of electrical, mechanical,
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`chemical, and software technologies. Particularly relevant to this IPR, in addition
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`to undergraduate coursework in electricity and electronics, I have laboratory
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`experience designing electronic circuits and litigation experience involving
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`electronic devices including defibrillators, infusion pumps, wireless intercoms,
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`lighting circuitry, and computer peripherals. I also have litigation experience with
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`chemical technologies ranging from polymer coatings to semiconductor
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`fabrication.
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`12. The following is an exemplary – but not exclusive – list of patent
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`cases in which I have made appearances:
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`Baxter Healthcare Corp. and Baxter Corp. Englewood, v. Becton, Dickinson
`and Co., S.D. Ca. Case No. 3:17-cv-02186 JLS-RBB
`Baxter Int’l, Inc., v. Becton, Dickinson and Co., N.D. Ill. Case No. 1:17-cv-
`07576
`Baxter Int’l, Inc., v. CareFusion Corp., N.D. Ill. Case No. 1:15-cv-09986
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`E-Numerate Sols., Inc. and E-Numerate, LLC v. Mattress Firm Holding
`Corp., Merrill Commc’ns LLC and Merrill Corp., D. Del. Case No. 17-933-
`RGA
`3M Co. v. XPEL Technologies Corp., D. Minn. Case No. 15-cv-04576
`(WMW/SER)
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`3
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`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 14-cv-1000 (SRN/JSM)
`3M Co. v. HM Electronics, Inc., D. Minn. Case No. 12-cv-553 (SRN/JSM)
`MasterMine Software, Inc. v. Microsoft Corp., D. Minn. Case No. 13-cv-971
`(PJS/TNL)
`IOENGINE, LLC v. Imation Corp., et al., D. Del. Case No. 1:14-cv-1572
`(GMS)
`Richmond v. Import Specialties, Inc., et al., D.N.J. Case Nos. 3:14-cv-4827,
`3:14-cv-4874, 3:14-cv-4876, 3:14-cv-4885 (MLC/DEA)
`Humanscale Corp. v. Mass Engineered Design, Inc., E.D. Va. Case No.
`1:13-cv-535 (CMH/IDD)
`Ferrellgas Real Estate, Inc. v. Unique Value Marketing LLC, E.D.N.Y. Case
`No. 2:13-cv-3496 (JG/SIL)
`3M Innovative Properties Co. v. NPV Group LLC, D. Minn. Case No. 12-cv-
`1470 (JRT/JJK)
`Silver Screen Tele-Reality, Inc. v. Dealer Impact Systems, L.L.C., N.D. Tex.
`Case No. 3:11-cv-2351-K
`Schwendimann v. Arkwright Advanced Coating, Inc., D. Minn. Case No. 11-
`cv-820 (ADM/JSM)
`Illinois Tool Works Inc. v. Inpro/Seal Co., N.D. Ill. Case No. 1:10-cv-3978
`Mass Engineered Design, Inc. v. 9X Media, Inc., E.D. Tex. Case No. 2:09-
`cv-358 (JRG)
`Cardiac Science Corp. v. Koninklijke Philips Electronics N.V., D. Minn.
`Case No. 03-cv-1064 (DWF/RLE)
`Voda v. Cordis Corp., W.D. Okla. Case No. 5:03-cv-01512-L
`13.
`I am very familiar with the subject matter at issue in this IPR
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`proceeding. I was intimately involved in drafting the Petitions for IPR filed in this
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`proceeding and the companion proceeding challenging U.S. Patent No. RE45,415,
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`(case no. IPR2021-00625). In conjunction with my work drafting the Petition for
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`the present IPR, I closely reviewed the subject ʼ415 patent, its prosecution file
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`history, the referenced prior art, all of the exhibits to the IPR Petition, and, of
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`course, the Petition I assisted in drafting.
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`I declare under penalty of perjury of the laws of the United States that the
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`foregoing is true and correct to the best of my present knowledge and recollection.
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`Dated: March 12, 2021
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`/Adam R. Steinert/
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` Adam R. Steinert
`FREDRIKSON & BYRON, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
`Telephone: 612.492.7000
`Facsimile: 612.492.7077
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`Petition for Inter Partes Review of U.S. Patent No. RE45,415
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Motion for
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`Pro Hac Vice Admission was filed via PTAB E2E and served pursuant to 37
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`C.F.R. § 42.6(e) via electronic mail on March 12, 2021on the following:
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`Larina Alton (gonsalves@gonsalveslawfirm.com)
`3300 Wells Fargo Center
`90 South Seventh Street
`Minneapolis, MN 55402-4140
`Telephone: 612.672.8200
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`Nathan Louwagie
`(nlouwagie@carlsoncaspers.com; owt@carlsoncaspers.com)
`Capella Tower, Suite 4200
`225 South Sixth Street
`Minneapolis, MN 55402
`Telephone: 612.436.9600
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`/R. Scott Johnson/
`R. Scott Johnson
`RSJohnson@fredlaw.com
`Counsel for Petitioners
`Reg. No. 45,792
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`Dated: March 12, 2021
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`72377588 v2
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