`571-272-7822
`
`Paper 19
`Date: October 1, 2021
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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,
`
`v.
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`OXYGENATOR WATER TECHNOLOGIES, INC.,
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`Patent Owner.
`
`IPR2021-00625
`Patent RE 45,415 E
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`DECISION
`Conditionally Granting Patent Owner’s Motion
`for Pro Hac Vice Admission of
`Todd S. Werner
`37 C.F.R. § 42.10
`
`
`
`IPR2021-00625
`Patent RE 45,415 E
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`I. INTRODUCTION
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`On September 22, 2021, Patent Owner, Oxygenator Water
`
`Technologies, Inc. (“Patent Owner”), filed a motion for pro hac vice
`
`admission of Todd S. Werner the above-captioned proceeding. Paper 15
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`(“Motion”). Petitioner, Tennant Company, has not filed an opposition. The
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`parties have conferred, and the Petitioner does not oppose this Motion.
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`Motion 2.
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`For the reasons provided below, Patent Owner’s Motion is
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`conditionally granted. The grant is conditioned upon Patent Owner filing a
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`Power of Attorney and Mandatory Notices that identify Mr. Werner as
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`back-up counsel. Petitioner’s current Power of Attorney (Paper 6) and
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`Mandatory Notices (Paper 5) do not identify Mr. Werner.
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`II. DISCUSSION
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`In accordance with 37 C.F.R. § 42.10(c), we may recognize counsel
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`pro hac vice during a proceeding upon a showing of good cause, subject to
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`the condition that lead counsel be a registered practitioner. The
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`representative Order authorizing motions for pro hac vice admission requires
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`a statement of facts showing there is good cause for us to recognize counsel
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`pro hac vice, and an affidavit or declaration of the individual seeking to
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`appear. See Paper 3, 2 (citing Unified Patents, Inc. v. Parallel Iron, LLC,
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`IPR2013-00639, Paper 7 (PTAB Oct. 15, 2013) (representative “Order –
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`Authorizing Motion for Pro Hac Vice Admission”)).
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`In this proceeding, lead counsel for Patent Owner, J. Derek
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`Vandenburgh, is a registered practitioner. Motion 5. Patent Owner asserts
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`that there is good cause for us to recognize Mr. Werner pro hac vice in this
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`2
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`IPR2021-00625
`Patent RE 45,415 E
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`proceeding. Motion 2–4. Patent Owner’s assertions in this regard are
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`supported by a Declaration of Mr. Werner. Ex. 2112 (“Declaration”).
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`Mr. Werner declares that he is a member in good standing of the State
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`Bar of Minnesota. Declaration ¶ 2. Mr. Werner also declares that he is
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`familiar with the subject matter at issue in this proceeding, including U.S.
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`Patent No. RE 45,415 E and the prior art references that are asserted by
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`Patent Owner. Id. ¶¶ 10–11. Moreover, the facts alleged in Mr. Werner’s
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`Declaration comply with all the requirements set forth in our representative
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`Order authorizing motions for pro hac vice admission. See id. ¶¶ 1–12.
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`On this record, we determine that Mr. Werner has sufficient legal and
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`technical qualifications to represent Patent Owner in this proceeding.
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`Accordingly, Patent Owner has established that there is good cause for the
`
`pro hac vice admission of Mr. Werner in this proceeding.
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`III. ORDER
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`Accordingly, it is
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`ORDERED that Patent Owner’s Motion for Admission Pro Hac Vice
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`of Todd S. Werner is conditionally granted;
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`FURTHER ORDERED that Mr. Werner is authorized to represent
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`Patent Owner only as back-up counsel in these proceedings;
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`FURTHER ORDERED that Patent Owner is to continue to have a
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`registered practitioner represent it as lead counsel in this proceeding;
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`3
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`IPR2021-00625
`Patent RE 45,415 E
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`FURTHER ORDERED that Mr. Werner shall comply with the
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`Consolidated Trial Practice Guide1 (84 Fed. Reg. 64,280 (Nov. 21, 2019)),
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`and the Board’s Rules of Practice for Trials, as set forth in Part 42 of
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`Title 37, Code of Federal Regulations;
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`FURTHER ORDERED that Mr. Werner shall be subject to the
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`Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), as well as the
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`Office’s Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101
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`et seq.;
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`FURTHER ORDERED that Patent Owner must file, within ten (10)
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`business days of the date of this order, updated Mandatory Notices
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`identifying Mr. Werner as back-up counsel in accordance with 37 C.F.R.
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`§ 42.8(b)(3); and
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`FURTHER ORDERED that Patent Owner shall submit, within
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`ten (10) business days of the date of this order, a Power of Attorney for
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`Mr. Werner in accordance with 37 C.F.R. § 42.10(b).
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`
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`
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`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`4
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`IPR2021-00625
`Patent RE 45,415 E
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`FOR PATENT OWNER:
`
`Robert Johnson
`FREDRIKSON & BYRON, P.A.
`rsjohnson@fredlaw.com
`
`
`FOR PATENT OWNER:
`
`Derek Vandenburgh
`Aaron Pederson
`Nathan Louwagie
`CARLSON, CASPERS, VANDENBURGH, & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`apederson@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
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`
`5
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