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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
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`Case IPR2021-00625
`Patent RE45415
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`PATENT OWNER’S UNOPPOSED MOTION FOR
`PRO HAC VICE ADMISSION OF TODD S. WERNER
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`Patent Owner OWT hereby respectfully moves for the pro hac vice
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`admission of Todd S. Werner due to his experience representing the Patent Owner
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`in a related litigation involving the same patent at issue this proceeding and his
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`familiarity with the technical and substantive issues involved in this proceeding.
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`The parties have conferred, and the Petitioner does not oppose this Motion.
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`In support of this motion, Patent Owner states as follows:
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`The Board may recognize counsel pro hac vice upon a showing of good
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`cause, subject to the condition that lead counsel be a registered practitioner and to
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`any other conditions the Board may impose. 37 C.F.R. § 42.10(c). A motion for
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`pro hac vice admission may be granted where a party shows that “counsel is an
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`experienced litigating attorney and has an established familiarity with the subject
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`matter at issue in the proceeding.” Id.
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`Good cause exists under 37 C.F.R. § 42.10(c) for the pro hac vice admission
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`of Todd S. Werner as backup co-counsel in this matter. Mr. Werner is representing
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`OWT in a related patent infringement action in the District of Minnesota (Civil
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`Action. No. 0:20-cv-00358 (ECT/HB), filed July 2, 2019) involving the same
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`parties and the same patent at issue in this proceeding.
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`As a result of this experience, Mr. Werner has developed an intimate
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`familiarity with the patents at issue and the Petitioner’s validity challenges, and the
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`Patent Owner wishes to have Mr. Werner continue representing it in this matter
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`before the Board.
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`The Patent Owner has invested significant financial resources in the related
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`proceedings described above, in which Mr. Werner has served as counsel. If this
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`motion was denied, the Patent Owner would be prejudiced because it would have
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`to undertake the burdensome and costly task of educating another attorney
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`regarding the patent at issue in this proceeding, and the related evidence. The
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`Patent Owner respectfully requests that the Board avoid this prejudice and grant
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`this Motion.
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`Pursuant to the requirements of 37 C.F.R. § 42.10(c), Derek Vandenburgh, a
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`registered practitioner, will remain as lead counsel in this matter. Mr. Vandenburgh
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`is a partner at Carlson Caspers, the same law firm that is representing the Patent
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`Owner in the related federal court action involving the patent at issue here. Mr.
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`Werner has worked with Mr. Vandenburgh on other similar matters.
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`Pursuant to the requirements of the “Order -- Authorizing Motion for Pro
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`Hac Vice Admission” Case IPR2013-00639, Paper 7, this Motion is also supported
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`by the Declaration of Todd S. Werner (Exhibit 2112), filed herewith.
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`In the Declaration of Todd S. Werner (Ex. 2112), Mr. Werner attests that he
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`has read and will comply with the Patent Office Trial Practice Guide and the
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`Board’s Rules of Practice set forth in 35 C.F.R. § 42. Mr. Werner further attests
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`that he agrees to be subject to the USPTO’s Rules of Professional Conduct as 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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`For the foregoing reasons, and in view of the Declaration submitted
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`herewith, Patent Owner submits that good cause exists for the pro hac vice
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`admission of Todd S. Werner and respectfully requests that the Board grant this
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`motion.
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`Dated: September 22, 2021. Respectfully submitted,
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`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh
` & Lindquist, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`Email: DVandenburgh@carlsoncaspers.com
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`Lead Counsel for Patent Owner
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on September 22, 2021, a true and correct copy of the
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`foregoing Patent Owner’s Unopposed Motion for Pro Hac Vice Admission of Todd
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`S. Werner, along with the accompanying Exhibit 2112, was served via electronic
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`mail upon the following:
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`R. Scott Johnson (Reg. No. 45,792)
`Fredrikson & Byron, P.A.
`505 E. Grand Ave., Suite 200
`Des Moines, IA 50309
`Phone: (515) 242-8930
`Fax: (515) 242-8950
`Email: RSJohnson@fredlaw.com
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`Adam R. Steinert
`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
`Tel: (612) 492-7000
`Fax: (612) 492-7797
`Email: asteinert@fredlaw.com
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`/ J. Derek Vandenburgh /
`J. Derek Vandenburgh (Lead Counsel)
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