`571-272-7822
`
`Paper 7
`Date: May 12, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TENNANT COMPANY,
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00602
`IPR2021-00625
`Patent RE 45,415 E1
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Granting Petitioner’s Motions for Pro Hac Vice Admission of
`Adam R. Steinert
`37 C.F.R. § 42.10
`
`
`1 We exercise our discretion to issue one Order to be entered in each
`proceeding. The parties are not authorized to use a multiple-case caption.
`
`
`
`IPR2021-00602
`IPR2021-00625
`Patent RE 45,415 E1
`
`I. INTRODUCTION
`On March 17, 2021, Petitioner, Tennant Company (“Petitioner”), filed
`a motion for pro hac vice admission of Adam R. Steinert in each of the
`above-captioned proceedings. Paper 4 (collectively “Motions”).2 Patent
`Owner, Oxygenator Water Technologies, Inc., did not file an opposition.
`For the reasons provided below, Petitioner’s Motions are granted.
`II. DISCUSSION
`In accordance with 37 C.F.R. § 42.10(c), we 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. The
`representative Order authorizing motions for pro hac vice admission requires
`a statement of facts showing there is good cause for us to recognize counsel
`pro hac vice, and an affidavit or declaration of the individual seeking to
`appear. See Paper 3, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
`IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (representative “Order –
`Authorizing Motion for Pro Hac Vice Admission”)).
`In this proceeding, lead counsel for Petitioner, R. Scott Johnson, is a
`registered practitioner. Motions, 4. Petitioner asserts that there is good
`cause for us to recognize Mr. Steinert pro hac vice in this proceeding.
`Motions 2–4. Petitioner’s assertions in this regard are supported by a
`Declaration of Mr. Steinert. Paper 4, 5–9.3
`
`
`2 Paper numbers refer to IPR2021-00602. Corresponding Motions and
`Declarations were filed in IPR2021-00625.
`3 Petitioner filed the Declarations as an addendum to the Motions (Paper 4)
`in the Patent Trial and Appeal Board End to End (PTAB E2E) system. The
`
`2
`
`
`
`IPR2021-00602
`IPR2021-00625
`Patent RE 45,415 E1
`Mr. Steinert declares that he is a member in good standing of the State
`Bars of Minnesota and New York and that he is admitted to practice before
`several district and appellate courts. Paper 4 ¶ 2. Mr. Steinert also declares
`that he is familiar with the subject matter at issue in this proceeding,
`including U.S. Patent No. RE 45,415 E and the prior art references that are
`asserted by Petitioner. Id. ¶ 13. Moreover, the facts alleged in
`Mr. Steinert’s Declaration comply with all the requirements set forth in our
`representative Order authorizing motions for pro hac vice admission. See id.
`¶¶ 1–8.
`On this record, we determine that Mr. Steinert has sufficient legal and
`technical qualifications to represent Petitioner in this proceeding.
`Accordingly, Petitioner has established that there is good cause for the pro
`hac vice admission of Mr. Steinert in this proceeding.
`III. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Motions for Admission Pro Hac Vice of
`Adam R. Steinert are granted;
`FURTHER ORDERED that Mr. Steinert is authorized to represent
`Petitioner only as back-up counsel in these proceedings;
`FURTHER ORDERED that Petitioner is to continue to have a
`registered practitioner represent it as lead counsel in this proceeding;
`
`
`parties are reminded that affidavits and declarations must be filed as
`exhibits, so they may be referenced individually by exhibit number. See
`37 C.F.R. § 42.63.
`
`3
`
`
`
`IPR2021-00602
`IPR2021-00625
`Patent RE 45,415 E1
`FURTHER ORDERED that Mr. Steinert shall comply with the
`Consolidated Trial Practice Guide4 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of
`Title 37, Code of Federal Regulations; and
`
`FURTHER ORDERED that Mr. Steinert shall be subject to the
`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), as well as the
`Office’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101
`et seq.
`
`
`
`4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2021-00602
`IPR2021-00625
`Patent RE 45,415 E1
`
`FOR PETITIONER:
`
`R. Scott Johnson
`Adam R. Steinert
`Fredrikson & Byron, P.A.
`rsjohnson@fredlaw.com
`asteinert@fredlaw.com
`
`
`FOR PATENT OWNER:
`
`J. Derek Vandenburgh
`Aaron W. Pederson
`Nathan D. Louwagie
`Carlson, Caspers, Vandenburgh, & Lindquist, P.A
`dvandenburgh@carlsoncaspers.com
`apederson@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`
`
`
`
`
`
`5
`
`
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