`571-272-7822
`
`Paper 19
`Date: October 1, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TENNANT COMPANY,
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`IPR2021-00625
`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
`
`I. INTRODUCTION
`
`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
`
`(“Motion”). Petitioner, Tennant Company, has not filed an opposition. The
`
`parties have conferred, and the Petitioner does not oppose this Motion.
`
`Motion 2.
`
`For the reasons provided below, Patent Owner’s Motion is
`
`conditionally granted. The grant is conditioned upon Patent Owner filing a
`
`Power of Attorney and Mandatory Notices that identify Mr. Werner as
`
`back-up counsel. Petitioner’s current Power of Attorney (Paper 6) and
`
`Mandatory Notices (Paper 5) do not identify Mr. Werner.
`
`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 Patent Owner, J. Derek
`
`Vandenburgh, is a registered practitioner. Motion 5. Patent Owner asserts
`
`that there is good cause for us to recognize Mr. Werner pro hac vice in this
`
`2
`
`
`
`IPR2021-00625
`Patent RE 45,415 E
`
`proceeding. Motion 2–4. Patent Owner’s assertions in this regard are
`
`supported by a Declaration of Mr. Werner. Ex. 2112 (“Declaration”).
`
`Mr. Werner declares that he is a member in good standing of the State
`
`Bar of Minnesota. Declaration ¶ 2. Mr. Werner 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
`
`Patent Owner. Id. ¶¶ 10–11. Moreover, the facts alleged in Mr. Werner’s
`
`Declaration comply with all the requirements set forth in our representative
`
`Order authorizing motions for pro hac vice admission. See id. ¶¶ 1–12.
`
`On this record, we determine that Mr. Werner has sufficient legal and
`
`technical qualifications to represent Patent Owner in this proceeding.
`
`Accordingly, Patent Owner has established that there is good cause for the
`
`pro hac vice admission of Mr. Werner in this proceeding.
`
`III. ORDER
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s Motion for Admission Pro Hac Vice
`
`of Todd S. Werner is conditionally granted;
`
`FURTHER ORDERED that Mr. Werner is authorized to represent
`
`Patent Owner only as back-up counsel in these proceedings;
`
`FURTHER ORDERED that Patent Owner is to continue to have a
`
`registered practitioner represent it as lead counsel in this proceeding;
`
`3
`
`
`
`IPR2021-00625
`Patent RE 45,415 E
`
`FURTHER ORDERED that Mr. Werner shall comply with the
`
`Consolidated Trial Practice Guide1 (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;
`
`FURTHER ORDERED that Mr. Werner 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.;
`
`FURTHER ORDERED that Patent Owner must file, within ten (10)
`
`business days of the date of this order, updated Mandatory Notices
`
`identifying Mr. Werner as back-up counsel in accordance with 37 C.F.R.
`
`§ 42.8(b)(3); and
`
`FURTHER ORDERED that Patent Owner shall submit, within
`
`ten (10) business days of the date of this order, a Power of Attorney for
`
`Mr. Werner in accordance with 37 C.F.R. § 42.10(b).
`
`
`
`
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2021-00625
`Patent RE 45,415 E
`
`
`
`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
`
`
`5
`
`
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