IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MINNESOTA
`
`
`
`
`
`OXYGENATOR WATER
`TECHNOLOGIES, INC.
`
`
`Plaintiff,
`
`
`v.
`
`TENNANT COMPANY
`
`
`
`
`
`Civil Action No. 0:20-cv-00358-ECT-HB
`
`
`
`Defendant.
`
`
`
`
`TENNANT’S FEBRUARY 11, 2021 SUPPLEMENT TO ITS INVALIDITY
`CONTENTIONS AND PRIOR ART CHARTS
`
`
`
`
`
`Pursuant to the Court’s Scheduling Order of August 11, 2020, Defendant Tennant
`
`Company (“Tennant”), by and through its counsel, Fredrikson & Byron, P.A., hereby
`
`provides this Supplement to its Invalidity Contentions and Prior Art Charts with respect to
`
`Plaintiff Oxygenator Water Technologies, Inc.’s (“OWT”) patents, specifically U.S. Patent
`
`No. RE 45,415 (“the ‘415 patent”), U.S. Patent No. RE 47,092 (“the ‘092 patent”), and
`
`U.S. Patent No. RE 47,665 (“the ‘665 patent”). This Supplementation relates to U.S. Patent
`
`Publication No. 20030042134 to Tremblay, produced by OWT several weeks after the
`
`deadline for Tennant’s invalidity contentions.
`
`The invalidity contentions contained in this submission are based upon information
`
`reasonably and currently available to Tennant. The parties have not exchanged positions
`
`regarding claim construction and have not submitted Markman claim construction briefs.
`
`Tennant reserves the right to supplement or amend these Prior Art Charts as information is
`
`
`
`

`

`
`
`discovered or confirmed during fact discovery; information is discovered, confirmed, or
`
`provided by a party’s consultant or expert after contentions have been served; amendments
`
`are made to the pleadings; information is learned from or positions are taken by a party
`
`during the exchange of contentions ; information is learned from, or positions are taken by
`
`another party during the claim construction process; rulings are made by the Court, such
`
`as the Court’s Claim Construction Order consistent with a Markman hearing; and as
`
`otherwise permitted or required under the Federal Rules of Civil Procedure or other
`
`applicable Local Rules.
`
`The parties have not provided their proposed claim constructions, and the Court has
`
`not made any claim construction ruling in this action. As a result, Tennant makes these
`
`Initial Invalidity Contentions in alternatives, and they are not intended to be consistent with
`
`each other and/or Tennant’s other contentions in this action and should not be otherwise
`
`construed. As stated above, Tennant’s Initial Invalidity Contentions are not admissions or
`
`adoptions as to any particular claim scope or construction. Indeed, Tennant expressly
`
`reserves the right to propose alternative constructions to those advocated by OWT, and to
`
`contest OWT’s proffered claim interpretations. The accompanying Prior Art Charts
`
`include application of erroneous constructions that OWT appears to be asserting based
`
`upon its Infringement Contentions. Tennant does not assent to those or any other
`
`constructions at this time. The prior art Tennant cites and the accompanying Prior Art
`
`Charts are being disclosed as Initial Invalidity Contentions, and should be construed as
`
`nothing more than that. These documents are not intended to include or otherwise reflect
`
`
`
`2
`
`

`

`
`
`Tennant’s claim construction contentions, which will be disclosed in accordance with the
`
`Court’s schedule.
`
`IDENTIFICATION OF PRIOR ART
`
`Below is a list of currently known prior art that is contended to anticipate or render
`
`obvious claims asserted in the ‘415 patent, the ‘092 patent, and/or the ‘665 patent:
`
`Patent Number or
`Reference Name
`
`2002/0027070
`2002/0074237
`2004/262169
`3,891,535
`3,914,164
`3,926,753
`3,926,754
`3,930,980
`3,975,247
`3,975,269
`3,984,303
`4,012,319
`4,039,439
`4,071,447
`4,085,028
`4,179,347
`4,225,401
`4,256,551
`4,405,573
`4,545,886
`4,587,001
`4,623,436
`4,636,291
`4,773,982
`4,783,246
`4,917,782
`4,956,061
`5,182,014
`5,324,398
`5,378,339
`5,380,417
`
`
`
`Inventor / Author /
`Manufacturer/ Reference
`Shortcut Designation
`Oyokota
`Takesako
`Hying
`Wikey
`Clark
`Lee
`Lee
`De Nora
`Stralser
`Ramirez
`Peters
`Ramirez
`Clark
`Ramirez
`McCallum
`Krause
`Divisek
`Cliff
`Deininger
`De Nora
`Cairns
`Umehara
`Divisek
`Divisek
`Langeland
`Davies
`Dempsey
`Goodman
`Erickson
`Aoki
`Essop
`
`3
`
`Date of Issue / Publication /
`Public Use / Sale
`
`3/7/2002
`6/20/2002
`12/30/2004
`6/24/1975
`10/21/1975
`12/16/1975
`12/16/1975
`1/6/1976
`8/17/1976
`8/17/1976
`10/5/1976
`3/15/1977
`8/2/1977
`1/31/1978
`4/18/1978
`12/18/1979
`9/30/1980
`3/17/1981
`9/20/1983
`10/8/1985
`5/6/1986
`11/18/1986
`1/13/1987
`9/27/1988
`11/8/1988
`4/17/1990
`9/11/1990
`1/26/1993
`6/28/1994
`1/3/1995
`1/10/1995
`
`

`

`
`
`
`
`8/8/1995
`12/31/1996
`1/6/1998
`6/2/1998
`5/11/1999
`9/28/1999
`2/13/2001
`6/26/2001
`12/11/2001
`1/29/2002
`2/10/2004
`7/8/2008
`3/2/2010
`3/6/2003
`9/19/1979
`7/31/1996
`10/11/2000
`6/27/2001
`1/23/1970
`8/23/1978
`10/26/1977
`1/18/1978
`5/7/1948
`11/29/2001
`12/19/1996
`
`Schoeberl
`Moran
`Harrison
`Essop
`Pang
`Fennell
`Gernon
`Satoh
`Akiyama
`Sale
`Senkiw
`Senkiw
`Senkiw
`Tremblay
`LaBarre
`Sano
`Goosey
`Koganezawa
`F.B. Bayer Akt.
`Swift & Co.
`PPG Industries, Inc.
`Westinghouse Electric Corp.
`Dubilier Condenser Co.
`Vagnes
`Herbst
`
`5,439,576
`5,589,053
`5,705,049
`5,759,390
`5,902,465
`5,958,242
`6,187,169
`6,251,259
`6,328,898
`6,342,150
`6,689,262
`7,396,441
`7,670,495
`20030042134
`EP0004191A2
`EP0723936B1
`EP1043408A2
`EP1111095A1
`FR2008606A1
`GB1522188 A
`GB1490220A
`GB1498355A
`GB601579A
`WO01/89997
`WO96/40591
`
`GLEMBOTSKII, V.A., MAMAKOV, A.A., SOROKINA, V.N. (1973),
`(1)
`Size of gas bubbles forming during electroflotation. Elektronnaya Obrabotka
`Materialov 5, 66–68. 1973 (“Electrolytic technique is one of the methods for
`producing fine dispersed gas bubbles. Electrolytic water decomposition process
`produces very fine bubbles of hydrogen and oxygen,” first two sentences of
`second paragraph. (all graphs and data show substantial amounts of oxygen
`bubbles with sizes less than 50 microns);
`
`BURNS, S.E., YIACOUMI, S. and TSOURIS, C. (1997), Application of
`(2)
`Digital Image Analysis for Size Distribution Measurement of Microbubbles,
`Imaging Technologies: Techniques and Civil Engineering Applications
`Engineering Foundation, Davos, Switzerland, May 25-30, 1997; Microbubble
`Generation for Environmental and Industrial Separations, Separation and
`Purification Technology 11, 221–232. (“…the majority of the bubbles produced
`have diameters smaller than 50 μm…,” paragraph bridging pages 5 and 6);
`(“Average oxygen and hydrogen bubble diameters measured in the experiments
`range from 17.1 to 37.9 μm, which is consistent with the size of bubbles produced
`on stainless steel and platinum electrodes,” last sentence of results paragraph);
`
`
`4
`
`

`

`
`
`
`
`(3) WENDT, H. and KREYSA, G. (1999), Electrochemical Engineering:
`Science and Technology in Chemical and Other Industries, Springer-Verlag
`Berlin Heidelberg, ISBN 3-540-64386-9 (hardcover), (“…radii of
`electrochemically evolved gas bubbles are usually relatively small (5-50 μm…”),
`page 103, Section 5.4.7;
`
`HAN, M.Y., PARK, Y.H., and YU, T.J. (2002), Development of a New
`(4)
`Method of Measuring Bubble Size, Water Science and Technology: Water Supply
`Vol 2 No 2 pp 77–83 (“In EF, hydrogen and oxygen bubbles are generated when
`current is applied to the solution through metal electrodes. The average size range
`is reported to be around 20–40 μm…”), second to last full paragraph of page 77,
`last sentence.
`
`(5) WENDT, H and HOFFMAN, H. (1985), Cermet Diaphargms and
`Integrated Electrode-Diaphragm Units for Advanced Alkaline Water Electrolysis,
`Inst. F. Chem Technologie TH.
`
`(6) WEDERSHOVEN, H.M.S., DE JONGE, R.M., SILLEN, C.W.M.P, AND
`VAN STRALEN, S.J.D (1981), Behaviour of Oxygen Bubbles During Alkaline
`Water Electrolysis, Int. J. Heat Mass Transfer, Vol. 25, No. 8, pp. 1239-1243.
`
`VERHAART, H.F.A., DE JONGE, R.M., VAN STRALEN, S.J.D.
`(7)
`(1979), Growth Rate of Gas Bubble During Electrolysis in Supersaturated Liquid,
`Int. J. Heat Mass Transfer, Vol. 23, pp. 293-299.
`
`SPEARS, J.R., WANG, B., WU, X., PRCEVSKI, P, JIANG, A.J.,
`(8)
`SPANTA, A.D., CRILLY, R.J., BRERETON, G.J. (1997), A Highly O2-
`Supersaturated Infusate for Regional Correction of Hypoxemia and production of
`Hyperoxemia, American Heart Association, 96:4385-4391.
`
`HARGROVE, M., HARGROVE, M. (1999), Aquariums for Dummies,
`(9)
`IDG Books Worldwide, Inc. 10-11, 24, 54. (referred to herein as “AFD”)
`
`(10) BURNS, S.E., YIACOUMI, S., TSOURIS, C. (1997), Microbubble
`Generation for Environmental and Insdustrial Separations, Separation and
`Purification Technology 11(1997) 221-232.
`
`(11) EDSALL, D.A., SMITH, C.E. (1990), Performance of Rainbow Trout and
`Sanke River Cutthroat Trout Reared in Oxygen-Supersaturated Water,
`Aquaculture, 90:3-4 pp. 251-259.
`
`(12) KHOSLA, N.K., VENKATACHALAM, S. (1991), Pulsed
`Electrogeneration of Bubbles for Electroflotation, Journal of Applied
`Electrochemistry, 21 (1991) 986-990.
`
`
`5
`
`

`

`
`
`(13) Advanced Water Systems, Inc. website (2000), 222.advanced-
`water.com/residential.htm.
`
`Tennant also relies on the prior public use, sale, and disclosure of the commercial
`
`embodiments (including any documentation related to the same) of the above patented
`
`products. For example, upon information and belief, Advanced Water Systems, Inc. sold,
`
`installed, and its customers used its NT-4 system, which is believed to be covered by U.S.
`
`Patent No. 4,917,782 and is described on Advanced Water Systems’ website in 2000 as
`
`“The NT-4 is intended to increase dissolved oxygen and precipitate solids. It was originally
`
`designed as a stand-alone system, consisting of a single flow-through electrolytic cell fitted
`
`with a power supply of 10-60 amp capacity. Developed in 1989, it has been the mainstay
`
`of commercial treatment systems. Variants include a manifold incorporating up to 20 NT-
`
`4 cells with a capacity of 1000 GPM. Typical stand-alone units are marketed for non-
`
`chemical treatment of impound water and water displays.” Tennant incorporates this
`
`system in the Prior Art Charts wherever U.S. Patent No. 4,917,782 to Davies is referenced.
`
`Similarly, if other products are covered by any of the prior art referenced above, any
`
`commercial embodiment and its corresponding public use, sale, or disclosure is
`
`incorporated herein by referencing the prior art patent. Tennant is continuing to investigate
`
`third party prior use, sale, or disclosure and reserves the right to supplement the invalidity
`
`positions herein upon discovery of additional documents, testimony, information or things.
`
`OWT has yet to complete its production of prior art documents or things in this
`
`matter and has yet to provide any details regarding its own manufacture, promotion,
`
`advertisement, or other use of products covered by its patents—despite Tennant requesting
`
`
`
`6
`
`

`

`
`
`this information via interrogatories in July. Therefore Tennant reserves the right to update
`
`its invalidity charts and positions, especially as they relate to information and things
`
`generally exclusively within OWT’s possession and control, such as whether any products
`
`were publicly used, disclosed, offered for sale, or sold in the United States more than one
`
`year prior to any priority dates OWT may claim.
`
`
`
`INVALIDITY POSITIONS
`
`Tennant’s invalidity positions with respect to specific claims in the ‘415 patent, the
`
`‘092 patent and the ‘665 patent are outlined in the chart provided herewith. Tennant further
`
`reserves the right to supplement the invalidity contentions regarding OWT’s activities
`
`(including, for example, the public sale and/or use of any OWT product) and other prior
`
`art references that may be discovered as litigation discovery continues, particularly in light
`
`of OWT’s complete lack of response to Tennant’s discovery requests aimed at uncovering
`
`this information.
`
`INVALIDITY IN VIEW OF 35 U.S.C. § 102
`
`The inventions at issue are invalid for anticipation under 35 U.S.C. § 102 as shown
`
`in at least the following art:
`
`I.
`
`RE45,415 § 102 Invalidity Positions
`
`Tennant identifies at least the following art as anticipating the asserted claims of the
`
`‘415 Patent:
`
`A.
`
`U.S. Patent No. 3,975,247 to Stralser anticipates claim 13.
`
`
`
`7
`
`

`

`
`
`
`
`II.
`
`B.
`
`U.S. Patent No. 6,251,259 to Satoh anticipates claims 13, 14, 17, 18, 19, 20,
`
`21, 22, 23, 24, and 25.
`
`C.
`
`U.S. Patent No. 4,917,782 to Davies anticipates claims 14, 17, 18, 19, 20, 21,
`
`22, 23, and 25.
`
`D.
`
`U.S. Patent No. 3,891,535 to Wilkey anticipates claims 17, 18, 19, 20, 21,
`
`22, 23, and 25.
`
`E.
`
`U.S. Patent Publication No. 20030042134 to Tremblay anticipates claims 13,
`
`18, 19, 20, 21, 22, 23, and 25.
`
`RE47,092 § 102 Invalidity Positions
`
`Tennant identifies the following art as anticipating the asserted claims of the ‘092
`
`Patent:
`
`A.
`
`U.S. Patent No. 3,975,247 to Stralser anticipates at least claims 27, 29, 30,
`
`31, 33, 34, 35, 37, 39, 40, 41, 42, 44, 45, 46, 47, 60, 61, 62, 63, 64, 66, 77, 78, 79,
`
`80, 81, 82, 83, and 84.
`
`B.
`
`U.S. Patent Application Publication No. 2002/0027070 to Oyokota
`
`anticipates at least claims 48, 49, 52, 56, 58, and 59.
`
`C.
`
`U.S. Patent No. 5,439,576 to Schoeberl anticipates at least claims 48, 49, 50,
`
`52, 53, 54, 55, 56, 59, 60, 61, 63, 64, 65, 77, 78, 80, 81, and 82.
`
`III. RE47,665 § 102 Invalidity Positions
`
`Tennant identifies the following art as anticipating the asserted claims of the ‘092
`
`Patent:
`
`
`
`8
`
`

`

`
`
`
`
`A.
`
`B.
`
`Oyokota anticipates at least claims 45, 49, and 54.
`
`Schoeberl anticipates at least claims 45, 46, 47, 49, 50, 51, 52, 55, 56, 58, 59,
`
`and 60.
`
`C.
`
`Stralser anticipates at least claims 55, 56, 57, 58, 59, and 61.
`
`INVALIDITY IN VIEW OF 35 U.S.C. § 103
`
`OWT’s asserted claims are invalid for anticipation and/or public disclosure under
`
`35 U.S.C. § 102, and in addition to these grounds of invalidity all the asserted claims are
`
`further invalid in view of 35 U.S.C. § 103 based on the following prior art and/or
`
`combinations thereof. Much of the art identified in the attached Prior Art Charts reflects
`
`common knowledge and the state of the art prior to the filing or asserted priority dates of
`
`asserted patents. In many instances, where a particular contention calls for combining
`
`references, any one of a number of references can be combined. Tennant notes it points out
`
`where each element is found in the art and reserves the right to substitute the teachings of
`
`any reference for another in any combinations.
`
`The inclusion of certain exemplary combinations herein does not exclude other
`
`combinations and Tennant reserves the right to make other combinations or for Tennant’s
`
`expert to prefer other combinations, as appropriate.
`
`I.
`
`RE45,415 § 103 Invalidity Positions
`
`A.
`
`Combinations based on the Satoh prior art
`
`Tennant identifies at least the following combination of Satoh prior art discussed
`
`above with one or more of the following:
`
`
`
`9
`
`

`

`
`
`i. Satoh alone or combined with Aoki as rendering obvious at least claims
`13, 14, 17, 18, 19, 20, 21, 22. 23, 24, 25, 26, and 27.
`
`Combinations based on the Davies prior art
`
`B.
`
`Tennant identifies at least the following combination of Davies prior art discussed
`
`above with one or more of the following:
`
`i. Davies alone or combined with Satoh, Aoki, Erickson, or Peters as
`rendering obvious at least claims 13, 14, 17, 18, 19, 20, 21, 23, 25, 26,
`and 27.
`
`Combinations based on the Wikey prior art
`
`C.
`
`Tennant identifies at least the following combination of Wikey prior art discussed
`
`above with one or more of the following:
`
`i. Wikey alone or combined with Davies, Satoh, Aoki, Erickson, Peters,
`AFD, or Clark as rendering obvious at least claims 13, 14, 15, 16, 17, 18,
`19, 20, 21, 23, 25, 26, and 27.
`
`Combinations based on the Tremblay prior art
`
`D.
`
`Tennant identifies at least the following combinations of Tremblay prior art
`
`(located in OWT’s production) discussed above with one or more of the following:
`
`i.
`
`Tremblay alone or combined with Peters, Schoeberl, or Satoh as
`
`rendering obvious at least claims 13, 14, 17, 18, 19, 20, 21, 22, 23, 24, 25,
`
`26, and 27.
`
`E.
`
`Any of the above combinations with the teachings of relevant literature,
`
`including:
`
`(1) GLEMBOTSKII, V.A., MAMAKOV, A.A., SOROKINA, V.N.
`(1973), Size of gas bubbles forming during electroflotation. Elektronnaya
`Obrabotka Materialov 5, 66–68. 1973 (“Electrolytic technique is one of the
`methods for producing fine dispersed gas bubbles. Electrolytic water
`
`
`
`10
`
`

`

`
`
`
`
`decomposition process produces very fine bubbles of hydrogen and
`oxygen,” first two sentences of second paragraph. (all graphs and data show
`substantial amounts of oxygen bubbles with sizes less than 50 microns);
`
`BURNS, S.E., YIACOUMI, S. and TSOURIS, C. (1997),
`(2)
`Application of Digital Image Analysis for Size Distribution Measurement of
`Microbubbles, Imaging Technologies: Techniques and Civil Engineering
`Applications Engineering Foundation, Davos, Switzerland, May 25-30,
`1997; Microbubble Generation for Environmental and Industrial
`Separations, Separation and Purification Technology 11, 221–232. (“…the
`majority of the bubbles produced have diameters smaller than 50 μm…,”
`paragraph bridging pages 5 and 6); (“Average oxygen and hydrogen bubble
`diameters measured in the experiments range from 17.1 to 37.9 μm, which
`is consistent with the size of bubbles produced on stainless steel and
`platinum electrodes,” last sentence of results paragraph);
`
`(3) WENDT, H. and KREYSA, G. (1999), Electrochemical
`Engineering: Science and Technology in Chemical and Other Industries,
`Springer-Verlag Berlin Heidelberg, ISBN 3-540-64386-9 (hardcover),
`(“…radii of electrochemically evolved gas bubbles are usually relatively
`small (5-50 μm…”), page 103, Section 5.4.7;
`
`(4) HAN, M.Y., PARK, Y.H., and YU, T.J. (2002), Development of a
`New Method of Measuring Bubble Size, Water Science and Technology:
`Water Supply Vol 2 No 2 pp 77–83 (“In EF, hydrogen and oxygen bubbles
`are generated when current is applied to the solution through metal
`electrodes. The average size range is reported to be around 20–40 μm…”),
`second to last full paragraph of page 77, last sentence.
`
`II.
`
`RE47,092 § 103 Invalidity Positions
`
`A. Combinations based on the Satoh prior art
`
`Tennant identifies at least the following combination of Satoh prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Satoh and Aoki as rendering obvious at least
`claims 13, 14, 15, 17, 18, 19, 20, 21, 23, 25, 26, 27, 28, 29, 30, 31, 34, 35,
`36, 37, 38, 39, 40, 41, 42, 44, 46, 47, 48, 49, 50, 51, 52, 53, 54, 56, 58, 59,
`60, 61, 62, 63, 64, 66, 67, 68, 69, 70, 71, 73, 74, 75, 76, 77, 78, 79, 80, 81,
`83, and 84.
`
`
`
`11
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`ii.
`The combination of Satoh and Aoki and Sale as rendering obvious at
`least claim 16.
`
`iii.
`The combination of Satoh and Aoki and any of Schoeberl or Peters or
`Davies as rendering obvious at least claims 22, 32, 43, 55, 65, 72, and 82.
`
`iv.
`The combination of Satoh and Aoki and Stralser as rendering obvious
`at least claims 24, 33, and 45.
`
`v.
`The combination of Satoh and Stralser as rendering obvious at least
`claim 57.
`
`B. Combinations based on the GB601,579 prior art
`
`Tennant identifies at least the following combination of GB601,579 prior art
`
`discussed above with one or more of the following:
`
`i.
`The combination of GB601,579 and Erickson or Stralser or Satoh or
`Pang as rendering obvious at least claims 13, 14, 15, 16, 22, 23, 25, 26, 27,
`28, 32, 34, 35, 36, 37, 38, 39, 43, 44, 46, 47, 67, 68, 72, 73, 75, and 76.
`
`ii.
`The combination of GB601,579 and Erickson or Stralser or Satoh or
`Pang and Sale as rendering obvious at least claim 16.
`
`iii.
`The combination of GB601,579 and Stralser and any of Erickson or
`Satoh or Pang as rendering obvious at least claims 24, 33, 45, and 74.
`
`
`
`C. Combinations based on the Schoeberl prior art
`
`Tennant identifies at least the following combination of Schoeberl prior art
`
`discussed above with one or more of the following:
`
`i.
`The combination of Schoeberl and Erickson or Stralser or Satoh or
`Pang as rendering obvious at least claims 13, 14, 15, 17, 18, 19, 20, 21, 22,
`23, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 40, 41, 42, 43, 44, 47, 48, 49,
`50, 52, 53, 54, 55, 56, 59, 60, 61, 63, 64, 65, 67, 68, 69, 70, 71, 72, 73, 77,
`78, 80, 81, and 82.
`
`
`
`12
`
`

`

`
`
`ii.
`The combination of Schoeberl and Erickson or Stralser or Satoh or
`Pang and Sale as rendering obvious at least claims 16, 48, 49, 50, 52, 53, 54,
`55, 56, 59, 60, 61, 63, 64, 65, 77, 78, 80, 81, and 82.
`
`iii.
`The combination of Schoeberl and Stralser and any of Erickson or
`Satoh or Pang as rendering obvious at least claims 24, 33, 45, 48, 49, 50,
`52, 53, 54, 55, 56, 57, 59, 60, 61, 63, 64, 65, 74, 77, 78, 80, 81, and 82.
`
`iv.
`The combination of Schoeberl and Stralser as rendering obvious at
`least claims 48, 49, 50, 52, 53, 54, 55, 56, 57, 59, 60, 61, 63, 64, 65, 77, 78,
`80, 81, and 82.
`
`D. Combinations based on the Davies prior art
`
`Tennant identifies at least the following combination of Davies prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Davies and Peters and any of Erickson or Stralser
`or Satoh or Pang as rendering obvious at least claims 13, 14, 15, 17, 18, 19,
`20, 21, 22, 23, 25, 26, 27, 28, 29, 30, 31, 32, 35, 36, 37, 38, 40, 41, 42, 43,
`44, 46, 47, 67, 68, 69, 70, 71, 72, and 73.
`
`ii.
`The combination of Davies and Peters and any of Erickson or Stralser
`or Satoh or Pang and either of Sale or Schoeberl as rendering obvious at least
`claim 16.
`
`iii.
`The combination of Davies and Peters and Stralser and any of
`Erickson or Satoh or Pang as rendering obvious at least claims 24, 33, 45, 57
`and 74.
`
`iv.
`The combination of Davies and Peters as rendering obvious at least
`claims 48, 49, 50, 52, 53, 54, 55, 56, 59, 60, 61, 63, 64, 65, 77, 78, 80, 81
`and 82.
`
`v.
`The combination of and Peters and Stralser as rendering obvious at
`least claim 57.
`
`
`E. Combinations based on the Peters prior art
`
`Tennant identifies at least the following combination of Peters prior art discussed
`
`above with one or more of the following:
`
`
`
`13
`
`

`

`
`
`
`
`i.
`The combination of Peters and any of Stralser or Satoh or Schoeberl
`or Oyokota or Aoki and any of Erickson or Stralser or Satoh or Pang as
`rendering obvious at least claims 13,14, 15, 17, 18, 19, 20, 21, 22, 23, 24,
`25, 26, 27, 28, 29, 30, 31, 32, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 46,
`47, 67, 68, 69, 70, 71, 72, 73, 75, and 76.
`
`ii.
`The combination of Peters and Stralser or Satoh or Schoeberl or
`Oyokota or Aoki and any of Erickson or Stralser or Satoh or Pang and any
`of Sale or Schoeberl as rendering obvious at least claims 16
`
`iii.
`The combination of Peters and Stralser as rendering obvious at least
`claim 33.
`
`
`
`iv.
`The combination of Peters and Stralser or Satoh or Schoeberl or
`Oyokota or Aoki as rendering obvious at least claims 48, 49, 50, 51, 52, 53,
`54, 55, 56, 57, 58, 59, 60, 61, 62, 63, 64, 65, 66, 74, 77, 78, 79, 80, 81, 82,
`83, and 84.
`
`F. Combinations based on the Oyokota prior art
`
`Tennant identifies at least the following combination of Oyokota prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Oyokota and Erickson or Stralser or Satoh or
`Pang as rendering obvious at least claims 27, 28, 29, 30, 34, 48, 49, 52, 56,
`58, 59, 67, 68, 69, 70, 73, 75, and 76.
`
`ii.
`The combination of Oyokota and Erickson or Stralser or Satoh or
`Pang and any of Schoeberl or Peters or Davies as rendering obvious at least
`claims 32, 48, 49, 52, 56, 58, 59, and 72.
`
`iii.
`The combination of Oyokota and Stralser and any of Erickson or
`Stralser or Satoh or Pang as rendering obvious at least claims 33, 48, 49, 52,
`56, 58, 59, and 74.
`
`iv.
`The combination of Oyokota and Schoeberl or Peters or Davies as
`rendering obvious at least claims 48, 49, 52, 55, 56, 58, and 59.
`
`v.
`The combination of Oyokota and Stralser as rendering obvious at least
`claims 48, 49, 52, 56, 57, 58, and 59.
`G. Combinations based on the Stralser prior art
`
`
`
`
`14
`
`

`

`
`
`Tennant identifies at least the following combination of Stralser prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Stralser and Schoeberl or Peters or Davies as
`rendering obvious at least claims 27, 29, 30, 31, 32, 33, 34, 35, 37, 39, 40,
`41, 43, 42, 44, 45, 46, 47, 60, 61, 62, 63, 64, 65, 66, 77, 78, 79, 80, 81, 82,
`83, and 84.
`H. Combinations based on the Wikey prior art
`
`Tennant identifies at least the following combination of Wikey prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Wikey and Clark and any of the relevant literature
`(Glembotskii et al., Burns et al., Wendt and Kreysa, or Han et al.) as
`rendering obvious at least claims 13, 14, 15, 17, 19, 21, 22, 23, 24, 25, 26,
`27, 28, 29, 32, 33, 34, 48, 52, 53, 54, 55, 56, 57, 58, 59, 67, 68, 69, 72, 73,
`74, 75, and 76.
`I. Combinations based on the Tremblay prior art
`
`Tennant identifies at least the following combinations of Tremblay prior art
`
`(located in OWT’s production) discussed above with one or more of the following:
`
`i.
`
`Tremblay alone or combined with Peters and/or prior art literature
`
`including Glembotskii et al., Burns et al., Wendt & Kreysa, or Han et al., as
`
`rendering obvious at least claims 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23,
`
`24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 45, 46, 47, 48, 49, 50, 51, 52, 53, 54,
`
`55, 56, 57, 59, 58, 59, 60, and 61.
`
`
`
`III. RE47,665 § 103 Invalidity Positions
`
`A. Combinations based on the Satoh prior art
`
`
`
`
`15
`
`

`

`
`
`Tennant identifies the combination of Satoh prior art discussed above with one or
`
`more of the following:
`
`i.
`The combination of Satoh and Aoki as rendering obvious at least
`claims 13, 14, 15, 17, 18, 19, 20, 21, 24, 25, 26, 27, 28, 29, 31, 33, 45, 46,
`47, 48, 49, 50, 51, 54, 55, 56, 57, 58, 59, and 61.
`
`ii.
`The combination of Satoh and Aoki and Sale as rendering obvious at
`least claim 16.
`
`iii.
`The combination of Satoh and Aoki and any of Schoeberl or Peters or
`Davies as rendering obvious at least claims 22, 30, 52, and 60.
`
`iv.
`The combination of Satoh and Aoki Stralser as rendering obvious at
`least claims 23, 32, and 53.
`B. Combinations based on the GB601,579 prior art
`
`Tennant identifies at least the following combination of GB601,579 prior art
`
`discussed above with one or more of the following:
`
`i.
`The combination of GB601,579 and Erickson or Stralser or Satoh or
`Pang as rendering obvious at least claims 13, 14, 15, 22, 24, 25, 26, 30, 31,
`and 33.
`
`ii.
`The combination of GB601,579 and Erickson or Stralser or Satoh or
`Pang and Sale as rendering obvious at least claim 16.
`
`iii.
`The combination of GB601,579 and Stralser and any of Erickson or
`Satoh or Pang as rendering obvious at least claims 23 and 32.
`C. Combinations based on the Schoeberl prior art
`
`Tennant identifies at least the following combination of Schoeberl prior art
`
`discussed above with one or more of the following:
`
`i.
`The combination of Schoeberl and Erickson or Stralser or Satoh or
`Pang as rendering obvious at least claims 13, 14, 15, 17, 18, 19, 20, 21, 22,
`25, 26, 27, 28, 29, 30, 31, 45, 46, 47, 49, 50, 51, 52, 55, 56, 58, 59, and 60.
`
`
`
`16
`
`

`

`
`
`ii.
`The combination of Schoeberl and Erickson or Stralser or Satoh or
`Pang and Sale as rendering obvious at least claims 16, 45, 46, 47, 49, 50, 51,
`52, 55, 56, 58, 59, and 60.
`
`iii.
`The combination of Schoeberl and Stralser and any of Erickson or
`Satoh or Pang as rendering obvious at least claims 23, 32, 45, 46, 47, 49, 50,
`51, 52, 55, 56, 58, 59, and 60.
`
`iv.
`The combination of Schoeberl and Stralser as rendering obvious at
`least claim 45, 46, 47, 49, 50, 51, 52, 53, 55, 56, 58, 59, and 60.
`D. Combinations based on the Davies prior art
`
`Tennant identifies at least the following combination of Davies prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Davies and Peters and any of Erickson or Stralser
`or Satoh or Pang as rendering obvious at least claims 13, 14, 15, 17, 18, 19,
`20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, and 33.
`
`ii.
`The combination of Davies and Peters and any of Erickson or Stralser
`or Satoh or Pang and either of Sale or Schoeberl as rendering obvious at least
`claim 16.
`
`iii.
`The combination of Davies and Stralser and Peters and any of
`Erickson or Satoh or Pang as rendering obvious at least claims 23 and 32.
`
`iv.
`The combination of Davies and Peters as rendering obvious at least
`claims 45, 46, 47, 49, 50, 51, 52, 54, 55, 56, 58, 59, 60, and 61.
`
`v.
`The combination of Davies and Peters and Stralser as rendering
`obvious at least claim 53.
`E. Combinations based on the Peters prior art
`
`Tennant identifies at least the following combination of Peters prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Peters and any of Stralser or Satoh or Schoeberl
`or Oyokota or Aoki and any of Erickson or Stralser or Satoh or Pang as
`rendering obvious at least claims 13,14, 15, 17, 18, 19, 20, 21, 22, 24, 25,
`26, 27, 28, 29, 30, 31, and 33.
`
`
`
`17
`
`

`

`
`
`ii.
`The combination of Peters and Stralser or Satoh or Schoeberl or
`Oyokota or Aoki and any of Erickson or Stralser or Satoh or Pang and Sale
`or Schoeberl as rendering obvious at least claim 16.
`
`iii.
`The combination of Peters and Stralser or Satoh or Schoeberl or
`Oyokota or Aoki as rendering obvious at least claims 23, 32, 45, 46, 47, 48,
`49, 50, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60, and 61.
`F. Combinations based on the Oyokota prior art
`
`Tennant identifies at least the following combination of Oyokota prior art discussed
`
`above with one or more of the following:
`
`i.
`The combination of Oyokota and Schoeberl or Peters or Davies as
`rendering obvious at least claim 45, 49, 52, and 54.
`
`ii.
`The combination of Oyokota and Stralser as rendering obvious at least
`claim 45, 49, 53, and 54.
`G. Combinations based on the Stralser prior art
`
`Tennant identifies at least the following combination of Stralser prior art discussed
`
`above with one or more of the following:
`
`iii.
`The combination of Stralser and any of Schoeberl or Peters or Davies
`as rendering obvious at least claims 55, 56, 57, 58, 59, 60, and 61.
`H. Combinations based on the Tremblay prior art
`Tennant identifies at least the following combinations of Tremblay prior art
`
`(located in OWT’s production) discussed above with one or more of the following:
`
`iv.
`
`Tremblay alone or combined with Peters and/or prior art literature
`
`including Glembotskii et al., Burns et al., Wendt & Kreysa, or Han et al., as
`
`rendering obvious at least claims 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23,
`
`24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44,
`
`
`
`18
`
`

`

`
`
`
`
`45, 46, 47, 48, 49, 50, 51, 52, 53, 54, 55, 56, 57, 59, 60, 61, 62, 63, 64, 65,
`
`67, 68, 69, 70, 71, 72, 73, 74, 77, 78, 79, 80, 81, and 82.
`
`A person of ordinary skill in the art of electrolysis or electrolysis system design
`
`would have readily understood the motivation to combine the above references as
`
`discussed above or in other ways as taught by the references themselves or according to
`
`the knowledge and experience typically present with a person of ordinary skill in the art,
`
`which Tennant contends to be one skilled through education or experience in the design,
`
`development, implementation, or testing of electrolysis units or systems.
`
`Modification of any of the above references as taught in the combination of one or
`
`more of these references is merely a substitution of one known element for another to
`
`obtain predictable results and using a known technique to improve similar devices in the
`
`same way. By way of example only, and not to be limiting, the teachings of any of the
`
`references with regard to the asserted claims can be applied individually or combined with
`
`the teachings of another reference with regard to the asserted claims such as by applying
`
`the teachings of Clark alone or in combination with the teachings of one or more other
`
`references such as Erickson, shown in the charts to render the asserted claims obvious or
`
`anticipated.
`
`INVALIDITY IN VIEW OF 35 U.S.C. § 112
`
`The parties have not yet exchanged proposed claim construction, and Tennant does
`
`not presently know the full cla