UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APEAL BOARD
`
`TENNANT COMPANY,
`Petitioner,
`
`Vv.
`
`OXYGENATOR WATER TECHNOLOGIES,INC.,
`Patent Owner
`
`Case IPR2021-00602
`
`Patent No. RE45,415
`
`Reissued: March 17, 2015
`
`Filed September28, 2011
`
`DECLARATION OF DR. RALPH E. WHITE
`
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`
`
`BEFORE THE PATENT TRIAL AND APEAL BOARD
`
`TENNANT COMPANY,
`Petitioner,
`
`Vv.
`
`OXYGENATOR WATER TECHNOLOGIES,INC.,
`Patent Owner
`
`Case IPR2021-00602
`
`Patent No. RE45,415
`
`Reissued: March 17, 2015
`
`Filed September28, 2011
`
`DECLARATION OF DR. RALPH E. WHITE
`
`OWTEx. 2010
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`TABLE OF CONTENTS
`
`Il.
`
`TI.
`
`IV.
`
`VI.
`
`TmtrOduction .........cesssssccessssssssssssssssssesessscsessssscsesesssscavssasecsescavacatscacsavesevevseevess 1
`
`Qualifications, Experience, Publications............ccccccscssssssessesessessecseecececeecceees 1
`
`COMPENSATION... eee ecesessesessssstssscscseecsescececssssscsusesesssssecssasavatscsesaceserecsvecees 4
`
`Prior TestimOny..........c.cscsssssscssscsesessssssesessssssssessssscsssescasssessscscacsescseecesasaveceneves 4
`
`Materials Considered .0.........c.csscesssssssssesessssssssescscscscsvarsescscsseatscasstanscecavsecevevee 5
`Relevant Legal Principles ..0........ccccccscscssssscsssesessssesssseccsesessesesessseessessvassesees 6
`
`A.
`
`B.
`
`Person of Ordinary Skill in the Art.......c.cccccscessscessesessscscesessscecsceseees 6
`
`Claim Construction 0... ccccccscscsssssssssscessssssscstssscesecessvasacatssececesessvensusens 7
`
`C. Anticipation Law o0.....ccccccssssccsssssssscssssssssseessecessscssscacscacscavsscseseseseveces 8
`Background of the Technology.........cccccsssssssssssssssssssesssseestsessssescecscesssscateseees 8
`The £415 Patent 0.0... eescscssessscsssesssesssesescssscscsessavevscsuevssecesssacacavscssecsesesevensees 9
`
`VIL.
`
`VII.
`
`IX.
`
`AMMiCIPAtiON eee eceeesssssssssesesesssscsssscscsscetsevassesesstscssacssessassesesesececcaseeseeses 12
`
`A,
`
`Tremblay oo. cscesssssesessseesscsesesssssscssssscsessecncasesssaescsesassvesassaseseavevee 12
`
`1.
`
`OVELVICW oo... eeeeseeceseesesceseecesecstsecsesassssscssseresscatsassceesecaessenssess 12
`
`Biased Reproduction does not Prove Inherency..........c1cse00+ 13
`2.
`BL Sate ccc ccsscnesessstesssseceeseescsesescessssssssessscasseseseseseseceasarssesnsases 17
`
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`DECLARATION OF DR. RALPH E. WHITE
`
`I.
`
`Introduction
`
`1.
`
`I, Ralph E. White, providethe following declaration identifying my
`
`opinions andbases therefore concerning certain issues in the Petition for Inter
`
`Partes Review ofU.S. Patent No. RE45,415 (“the ‘415 patent,” Ex. 1001). Tam
`
`over the age of twenty one (21) and am competent to providethis report. Tama
`
`citizen of the United States. I reside in the State of South Carolina and maintain an
`
`office located at the University of South Carolina, Columbia, South Carolina,
`
`29208.
`
`2.
`
`I am a Professor of Chemical Engineering in the Departmentof
`
`Chemical Engineeringat the University of South Carolina.
`
`3.
`
`I have been retained by Carlson Caspers on behalf of Oxygenator
`
`Water Technologies, Inc (OWT)in the above-captioned matter as an independent
`
`technical expert.
`
`4.
`
`I have been asked by counsel for OWT to review U.S. Patent Nos.
`
`RE45,415 ( “the ’415 patent”).
`
`II.
`
`Qualifications, Experience, Publications
`
`5.
`
`[have almost fifty years of experience in the field of chemical
`
`engineering with research interests targeted to electrochemical systems,
`
`mathematical modeling,electrolysis, batteries, corrosion, and electrodeposition.
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`6.
`
`In 1971, I graduated with a B.S. in Engineering from the University of
`
`South Carolina. In 1973, I obtained my M.S. in Chemical Engineering from the
`
`University of California at Berkeley. In 1977, I obtained my Ph.D. in Chemical
`
`Engineering from the University of California at Berkeley.
`
`7.
`
`IT worked as a Chemical Engineer for Ethyl Corporation in the summer
`
`of 1970, as a Nuclear Engineer for Mare Island Naval Shipyard in the summer of
`
`1971, and as a Research Engineer for Chevron in the summer of 1972. Since
`
`obtaining my Ph.D., I have worked as a consultant for over 15 companies
`
`including Dow Chemical, Boeing, Celgard, and Energizer.
`
`8.
`
`I worked at Texas A&M University from 1977 through 1993, during
`
`whichIheldthe positions of Assistant Professor, Associate Professor, and
`
`Professor, before serving as the Associate Head of the Department of Chemical
`
`Engineering.
`
`I then movedto the University of South Carolina, where I have been
`
`since 1993. J have heldthe roles of Chair of the Department of Chemical
`
`Engineering, Director of the Center for Electrochemical Engineering, and Dean of
`
`the College of Engineering and Computing.
`
`I am currently a Professor and
`
`Distinguished Scientist at the University of South Carolina.
`
`9.
`
`I have received numerous honors and awards throughout mycareer,
`
`including the Battery Division Research Award from The Electrochemical Society,
`
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`Inc. in 1991, the Best Paperof the Conference at the Fifth Annual Battery
`
`Conference on Applications and Advancesin 1990, the E. H. Brockett Professor of
`
`Chemical Engineering honor in 1990, the Scientific Achievement Award by the
`
`American Electroplaters and Surface Finishers Society in 1999, and several major
`
`awards from The Electrochemical Society (Olin Palladium, Vittorio de Nora, and
`
`Linford).
`
`10.
`
`1amamemberofseveral societies, such as the AmericanInstitute of
`
`Chemical Engineers, the National Society of Professional Engineers, The
`
`Electrochemical Society, and the National Association for the Advancement of
`
`Science.
`
`11.
`
`IT worked for Dow Chemicalas a consultant from 1979 to 1993 on the
`
`electrolysis of brine to produce chlorine gas, hydrogen gas, and aqueous sodium
`
`hydroxide. This work resulted in several publications on this subject. I also served
`
`as a consultant to other companiesforthe electrolysis of water to produce
`
`hydrogen and oxygen gases.
`
`12.
`
`A detailed description of my professional qualifications, including
`
`publications andalisting of my specialties/expertise and professional activities, is
`
`contained in my curriculum vitae whichis attachedto the end ofthis declaration as
`
`Exhibit A.
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`fl. Compensation
`
`13.
`
`Iam being compensated on an hourlybasisat the rate of $400/hour
`
`for my work performed in connection with this proceeding. I have received no
`
`additional compensation for my workin this case, and my compensation does not
`
`depend in any way upon the contents ofthis report, any testimony I may provide,
`
`or the ultimate outcomeofthis proceeding.
`
`IV. Prior Testimony
`
`14. During September and December 2020, I provided expert testimony in
`
`the matter of: CERTAIN LITHIUM-ION BATTERY CELLS, BATTERY
`
`MODULES, BATTERY PACKS, COMPONENTS THEREOF, AND
`
`PRODUCTS CONTAINING THE SAME,Investigation No. 337-TA-1181,
`
`!
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION.
`
`15.
`
`also served as an expert witness in connection with the following
`
`two interpartes review petitions filed on July 6, 2020, with the United States
`
`Patent and Trademark Office: SKI Innovation Co., Ltd. v. LG Chem, Ltd., Case
`
`Nos. IPR2020-01239 and IPR2020-01240.
`
`16.
`
`From May 2018 to March 2019,I served as an expert witness in Multi
`
`Service Technology Solutions Inc. v. Lifeshield LLC, U.S. District Court for the
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`Western District of Missouri, Case No. 17-cv-0696-HFS, which involved a dispute
`
`involving lithium-ion battery defects in a tablet computer.
`
`Vv. Materials Considered
`
`17. My technical review, analysis, insights, and opinions are based on my
`
`experience andotherqualifications discussed above, as well as my study of
`
`relevant materials.
`
`18.
`
`I have reviewed and am familiar with the '415 patent specification,
`
`claims, and prosecutionhistory.
`
`19.
`
`[have reviewed and am familiar with the Petition for Inter Partes
`
`Review ("Petition") in the above referenced Case IPR2021-00602,as well as the
`
`Exhibits filed therewith.
`
`20.
`
`Ihave reviewed and am familiar with pages 60-64, 252-257, 261-280
`
`from the bookentitled Fundamentals of Electrochemistry Second Edition by V.S.
`
`Bagotsky (2006) (“Fundamentals of Electrochemistry”), which I understandwill
`
`be filed as an Exhibit in these IPR proceedings.
`
`21.
`
`I provided a declaration related to my understanding of a few claim
`
`termsin the district court proceedings related to the ’415 patent. I identified the
`
`materials I considered when coming to my understandingof those claim termsin
`
`that declaration that wasfiled in the district court proceeding.
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`VI. Relevant Legal Principles
`
`A.
`
`22.
`
`Person of Ordinary Skill in the Art
`
`I have been informedthat a person of ordinary skill in the art
`
`(“POSA”) is a person whois presumed to have complete knowledgeofthe relevant
`
`prior art and who would think along the lines of conventional wisdom in thatart.
`
`The personofordinary skill in the art has ordinary skill and creativity, but does not
`
`have extraordinary skill, e.g., is not an expert. I have been informed that factors to
`
`consider in determiningthe level of ordinary skill in the art include the educational
`
`level of workersin the field, the types of problems addressedin theart, prior-art
`
`solutions to such problems, how quickly innovations are made, and the complexity
`
`of the technology.
`
`23.
`
`The ‘415 patentrelates to technology for oxygenating water by
`
`creating microbubbles and/or nanobubblesusingelectrolysis. Specifically, the ‘415
`
`patent is directed to electrolytic processes and structures thatare efficient and
`
`effective at creating microbubbles and nanobubbles of oxygen in the water.
`
`Petitioner has suggested that a POSA would have hada degree in chemistry,
`
`chemical engineering,or a similar discipline and at least two years of experience
`
`with electrolysis systems. I have beeninstructed to apply this level of ordinary
`
`skill for purposes of my analysis in this declaration.
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`24,
`
`Throughout my declaration, even if I discuss my analysis in the
`
`present tense, I am always making my determinations based on what a POSA
`
`would have knownatthe timeofthe invention.
`
`B.
`
`Claim Construction
`
`25.
`
`I have beeninformedthat the claim terms shouldbe construed as they
`
`would have been understood by oneskilled in the art at the time of the invention
`
`whois deemedto haveread the intrinsic record. For the purpose ofthis
`
`declaration, I will assumethat the applicable date of the invention for the Patents is
`
`sometime between February 2002 and December 2003. Mytestimony aboutthe
`
`below claim terms would not changeif the date of invention wasat the beginning
`
`or end of this two year time period. Tobe clear, I offer no opinion about what date
`
`the Patents are entitled to for their date of invention.
`
`26.
`
`Ihave been informedthat the proper context for construing the
`
`meaningof claim termsis the languageof claims, the disclosure in the patent, and
`
`pertinent statements in the relevant prosecution history.
`
`I understandthat in
`
`construing claim terms, the most important evidenceis intrinsic, which includes
`
`the claims themselves, the written description of the patent, and the prosecution
`
`history.
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`C.
`
`Anticipation Law
`
`27.
`
`In this declaration I have been instructed by counsel on the law
`
`regarding anticipation and inherency.
`
`28.
`
`l understandthat a patent claim is invalid for anticipation if, and only
`
`if, a single reference discloses each and every limitation of a claim. I understand
`
`that the disclosure in the reference canbeeither explicit or inherent. I understand
`
`that an aspect of a claim that is not explicitly disclosed in a reference can be found
`
`inherent only if that aspect is considered necessarily and inevitably presentin the
`
`teachingsof the reference. I understand that probabilities or likelihoods of an
`
`aspect being presentare notsufficientto establish inherency. I also understand that
`
`it is the Petitioner’s burden to show by a preponderanceofthe evidencethat an
`
`aspect not explicitly disclosed is otherwise necessarily and invariably present.
`
`VIL. Backgroundof the Technology
`
`29.
`
`Electrolysis is the process of chemical decomposition produced by
`
`passing an electric current through a liquid or solution containingions.
`
`30.|Manyvariables are considered in designof electrolysis processes and
`
`systems. The numberofelectrodes and their size, material, coatings, shape, and
`
`relative positions within the electrolytic cell have significant affects on the
`
`electrolytic process. Other relevant variables that can significantly affect the
`
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`electrolytic process include the flowrate, current density, temperature, and
`
`electrolyte composition.
`
`31.
`
`The electrolysis of water to create oxygen bubblesis affected by each
`
`of these variables. Specifically, the size of oxygen bubbles is affected by, at least,
`
`the following physical and/or chemical phenomenon:(1) the rate of electrolysis,
`
`(2) the specific chemistry caused bytheelectrolysis, (3) the force required to
`
`detach the bubbles from the electrodes, and (4) the force applied to the bubble as
`
`the water flows by the electrodes.
`
`32.
`
`Each ofthe variables listed in paragraph 30 aboveaffect one or more
`
`of the physical and/or chemical phenomenonlisted in paragraph 31. The way these
`
`variables each affect the physical and/or chemical phenomenonis described in
`
`more detail below. The Fundamentals of Electrochemistry textbook discusses
`
`someofthe factors that can affect the outcomeofelectrolysis reactions.
`
`VII. The ‘415 Patent
`
`33.
`
`The *415 patent is directed to the use ofthe electrolysis of water to
`
`increase the oxygenation of water through the creation of microbubbles and
`
`nanobubbles of oxygen. Oxygenation of waterrefers to a process in which the
`
`amount of oxygen dissolved in wateris artificially increased. Increasing the
`
`amount of oxygen dissolved in water can be desirable to, for example, provide
`
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`additional oxygen for plants or animals or as a means to break down organic
`
`pollutants in the water. The commonwayof oxygenating waterat the time ofthe
`
`invention was by blowing compressedair or oxygen gasinto the water.
`
`34.
`
`Independent claim 13 of the ‘415 patent is directed to a “method for
`
`producing an oxygenated aqueous composition”. Claim 13 recites several steps
`
`includedin the process. At a high level, the steps include “flowing water...
`
`through an electrolysis emitter”, causing electricity to flow ... to the electrodes”,
`
`and “producing ... a suspension comprising oxygen microbubbles and nanobubbles
`
`in the water”.
`
`35.
`
`The patent specification explains this process and describesthat the
`
`distance between the anode and cathode usedforelectrolysis affects whetherthe
`
`oxygen formedat the anodeis in microbubble and nanobubble form. The
`
`specification calls this distance the “critical distance” and defines the term “critical
`
`distance” to mean “the distance separating the anode and cathode at which evolved
`
`oxygen forms microbubbles and nanobubbles”. The specification explains that the
`
`critical distance ranges from 0.005 to 0.140 inchesandthe preferred critical
`
`distance is from 0.045 to 0.060 inches. Thespecification goes on to describe
`
`several example processes for creating micro and nanobubbles by using an oxygen
`
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`emitter having specific electrode configurations and spacings, and by applying
`
`specific voltages, active electrode areas, currents, and flow rates of waterthereto.
`
`36.
`
`Myreview ofthe prosecution history indicates that the method of
`
`claim 13 was determinedto be patentable because the priorart did not disclose or
`
`suggest a method ofproducing an oxygenated aqueous composition involving all
`
`the claimed steps and process parameters. The Examiner’s conclusion wasnot
`
`basedsolely on the claimedcritical distance between the electrodes, but the
`
`claimed combination of process parameters. The Examinerstated:
`
`[t]he prior art does not disclose norfairly suggest the method for
`producing oxygenated aqueous composition comprising the
`combinationofthe critical distance between the cathode and anode of
`
`-0005-0.140, the voltage maximum of about 28.3 volts, and 13 or less
`
`amperages with a maximum of 12 gallons per minute such thatit
`results in the formation of a suspension comprising oxygen
`microbubbles and nanobubblesin the water, the nanobubbles having a
`bubble diameter of less than 50 microns. (Ex. 1002 at 25.)
`37. During prosecution, the Examiner provided additional indicationsthat
`
`the specific parameters ofthe process, andnot just the electrode spacing, was
`
`important in finding the claim patentable. For example, the Examinerstated:
`
`[t]he formation of bubbles is a function of flow rates, temperatures,
`liquid viscosity, voltage, or current output ofthe electrodes etc., and
`notjust of electrode spacing. (/d. at 169.)
`-ll-
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`38. A POSA would not read either the patent specification or the
`
`prosecution history to suggest that every electrolysis system that includes
`
`electrodes separated bythe “critical distance” would create microbubbles and
`
`nanobubbles. Instead, the patentstates that the distance between the anode and a
`
`cathodeis onecritical parameter for producing micro and nanobubbles,butit is not
`
`the only parameter that impacts the outcomeofthe electrolytic process. This
`
`would bestraightforward to a POSA whoreviewedthespecification and
`
`prosecution history, as they would know that while certain parameters are
`
`extremely importantto achieve a particular outcome,electrolytic processes are not
`
`governedbyasingle variable. As stated above and expanded upon below,each of
`
`the variables identified in paragraph 30 would affect the size of bubbles created by
`
`electrolysis of water.
`
`IX. Anticipation
`
`A.
`
`Tremblay
`
`1.
`
`Overview
`
`39.
`
`The Tremblay reference (US 2003/0042134) is a patent application
`
`directed to a methodof killing organisms in water by generating mixed oxidants
`
`(i.e., hypochlorite, chlorine, and chlorine dioxide, ozone, hydrogen peroxide, and
`
`other chlor-oxygenated species) in the water. Ex. 1012 at 4 Abstract, 1-2, 24, and
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`27. An oxidant is a substancethat has the ability to accept an electron from
`
`another substance. The Tremblay application teachesthat its processes generate
`
`mixed oxidants whichare primarily chlorine-based.It states that these include
`
`hypochlorite and chlorine. The process and structures of the Tremblay application
`
`are configured to form hypochlorite (OCI) ions and chlorine (Cl) in water.
`
`Tremblay is not concerned with electrolysis of water to produce oxygen and does
`
`not discuss or contemplate oxygenating water or producing micro and nanobubbles
`
`of oxygen.
`
`2.
`
`Biased Reproduction does not Prove Inherency
`
`40.
`
`Because Tremblay doesnot explicitly disclose creation of
`
`microbubbles and nanobubbles of oxygen,Petitioner attempted to reproduce
`
`Tremblay, to show that the reproduction produces microbubbles and nanobubbles
`
`of oxygen, and to use that to argue that Tremblay inherently produces such
`
`bubbles.
`
`41. As mentioned above, however, I have been informed that inherencyis
`
`only shown if a reference necessarily and inevitably includes a missing element.I
`
`have also been informed this meansthat reference must include the element every
`
`time, and that probabilities and likelihoods are not sufficient. Petitioner’s
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`reproduction and analysis fall short of proving that microbubbles and nanobubbles
`
`of oxygen are produced every time.
`
`42.
`
`Petitioner’s alleged reproduction of the Tremblay reference does not
`
`reproduce any embodimentdisclosed by Tremblay. Instead, Tremblay discloses a
`
`range of values and options that can be selected for a numberofrelevant
`
`parameters. Petitioner selected specific values from these ranges and options to
`
`create an embodimentthat is not taught by Tremblay.
`
`
`
`43. Petitioner chose the material to use to make the anode fromalist
`
`described by Tremblay that includes: “Preferred” materials such as “stainless steel,
`
`platinum, palladium,iridium,ruthenium, as well as iron, nickel, chromium, and
`
`alloys and metal oxides thereof;” and “[m]ore preferred” materials such as
`
`“titanium, tantalum, aluminum,zirconium, tungsten, or alloys thereof, which are
`
`coated or layered with a Group VIII metal that is preferably selected from
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`platinum,iridium, and ruthenium,and oxides and alloys thereof.” Ex. 1012 at
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`40057. From this list, Petitioner chose titanium substrate coated with platinum. Ex.
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`1003 at
`
`44.
`
`44.
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`Petitioner’s choice of the anode material would affect the rate of
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`electrolysis and the chemistry caused by the electrolysis. For example, ruthenium
`
`oxide preferentially creates chlorine instead of oxygen . It also affects the force
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`required to detach the bubbles from the electrodes. Rougher materials will cause
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`the bubbles to cling longer to the anode, which could lead to larger bubbles.
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`45.
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`Petitioner also chose the material to use to make the cathode from the
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`same list described above for anodes. From thatlist, Petitioner chose a titanium
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`substrate coated with platinum. Similar to the anode, Petitioner’s cathode choice
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`wouldaffect the rate of electrolysis and the chemistry caused by theelectrolysis.
`
`46.
`
`Petitioner also selected anode dimensions. Tremblay describes
`
`surface areas of “from about 0.1 cm? to about 60 cm?,” with a preferred range of
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`“about 1 cm? to about 20 cm?,” and most preferred range of “about 3 cm? to about
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`10 cm”. Id. at 10079. Petitioner selected specific dimensions. Jd. The electrode
`
`dimensionsaffect the rate of the electrolysis by changing the current density
`
`between the plates as well as the amountof time water is in contact with the
`
`electrode plates. They also affect the force applied to the oxygen bubbles by the
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`water flow:
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`the same flow rate through the electrolysis system would haveless
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`force at a given pointif the flow area created by the electrodes waslarger.
`
`47.
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`Petitioner selected an electrode gap. Tremblay explainsthat the gap is
`
`“preferably 0.5 mm or less, more preferably 0.2 mm orless.” Ex. 1012 at 90044.
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`Petitioner chose a gap of 0.381 mm. Theelectrode gap affects the rate of the
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`electrolysis by changing the current felt at a particular location on each electrode.
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`It also affects the force applied to the oxygen bubbles by the water flow for the
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`same reason aselectrode area.
`
`48.
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`Petitioner selected a water flow rate. Tremblay describes water flow
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`rates of 100-300, 500, or 1,000 cc/min. Ex. 1012 at (0079, {0088 (Table A),
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`0089, 40090. Petitioner flowed water into the Tremblay cell at a rate of 300
`
`cc/min. Ex. 1003 at 48. The flow rate affects the force applied to the oxygen
`
`bubbles by the flowing water. It also affects the amount of time wateris in contact
`
`with the electrodeplates.
`
`49.
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`Petitioner selected a power source. Tremblay describes a number of
`
`different voltages to supply to the cell, including 1.5V, 3V, 4.5V, 6V, or any other
`
`voltage that meets the power requirements ofthe electrolysis device. Ex. 1012 at
`
`0069. Tremblay chose a power supply of 4.5V. Ex. 1003 at 954. This power
`
`source affects the rate of electrolysis. More powerleads to higher current density
`
`and faster electrolysis.
`
`50.
`
`Petitioner and Dr. Tremblay selected specific values for the variables
`
`identified above. He tested only those specific values. Each of these variables
`
`impacts the rate and extent of electrolysis and the chemistry that occurs, which in
`
`turn impacts the rate of oxygenation (if any) and bubble size. Yet Petitioner and
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`Dr. Tremblay do not offer any data or opinions concerning the impactthe selection
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`of other variables would have had on theresults he observed. As these variables
`
`are unspecified and can have a direct impact on the electrolysis process, Petitioner
`
`has failed to demonstrate that Tremblay “necessarily” leads to the oxygenation of
`
`water with microbubbles and/or nanobubbles of oxygen as required by the claims
`
`of the °415 patent.
`
`51.
`
`For this reason, I do not believe Petitioner or Dr. Tremblay have
`
`demonstrated that the unspecified processes described by the Tremblay reference
`
`necessarily and inevitably lead to the oxygenation of water with microbubbles and
`
`nanobubbles of oxygen having a bubble diameterof less than 50 microns as
`
`required by the claims of the ’415 patent.
`
`B.
`
`Satoh
`
`52.
`
`The Satoh reference (US 6,251,259) does not address or suggest the
`
`oxygenation of water or creation of micro- or nanobubbles of oxygen. Satohis
`
`instead focused upon the use of a membranein an electrolytic cell as a means to
`
`control pH and oxidation-reduction potential (ORP) of water. Ex. 1046 at Abstract.
`
`Satoh is entirely focused on simultaneously modulating these two parameters of
`
`water, pH and ORP,to combat oxidative damageofliving tissues.
`
`[D]isease is mainly caused by the damageof biomolecules within an
`
`organism resulting from oxidation of the biomolecules with active
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`oxygen formedtherein, and such active oxygen can be reduced with
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`hydrogen to form non-toxic water. By promoting the reaction, higher
`
`medical effects can be obtained, and the applicants of the present
`
`application found through their study that it is preferable to use
`
`electrolyzed water of a minus oxidation-reduction potential (ORP) . ..
`
`Id. at 1:28-37.
`
`53.
`
` Petitioner’s argument that Satoh inherently creates microbubbles and
`
`nanobubbles of oxygen having a bubble diameterofless than 50 micronsis only
`
`supported by its argumentthat the patent admits that all electrolysis systems that
`
`have electrodes separated by the critical distance create microbubbles and
`
`nanobubbles. Asstated above, a POSA would notinterpret the patent specification
`
`to makethis alleged admission. Instead, a POSA would know sucha statement
`
`would bescientifically incorrect.
`
`54.
`
`Satoh also includes an important distinction from the disclosure of
`
`the °415 patent. Satoh is aimed at describing how the use of a semiporous
`
`membrane changesthe outcomeofthe analytical process to permit the independent
`
`control of pH and OPR.Ex. 1046 at 2:22-63; 6:23-7:55. Petitioner and Dr.
`
`Tremblay simply ignore this membrane and the impact it would have on the
`
`electrolytic process, even thoughits effect on the electrolytic process is the entire
`
`point of Satoh. Petitioner offers no evidence, neither data nor expert opinion,
`
`conceming the impact of this membrane; consequently, Petitioner’s bold
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`conclusion that Satoh inherently yields oxygen bubbles of the claimed size can be
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`dismissed for this reason alone.
`
`55. Additionally, like Tremblay, Petitioner does not identify a particular
`
`embodiment from Satoh that includes detail about the various parametersthat
`
`affect the size of the bubbles that would be created. Satoh does not provide
`
`guidance about anode composition, cathode composition, or electrode dimensions.'
`
`(See paragraphs 44-47 above, describing the relevance of these features.) It
`
`describes the use of currents of 3, 5, 7, 10, and 14 A. (Ex. 1046 at 11:7-25, Table
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`2; 9:37-42; 10:53-59; 12:60-64; 13:18-29; see paragraphs 47, 50, describing the
`
`relevance of current and current density.)
`
`56.
`
`I declare that all statements made herein of my own knowledgeare
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledgethat willful false
`
`statements and the like so made are punishable by fine or imprisonment,or both,
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`under Section 1001 of Title 18 of the United States Code, and that such willful
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`false statements may jeopardize the validity of the ‘415 Patent.
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`1 Satoh references electrodes with a surface area of 24 cm?but doesnot identify the
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`dimensions leading to that surface area.
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`Executed on
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`6 /i 6/24
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`fea bl 5. LIfito
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`Dr. Ralph E. White
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`22
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`EXHIBIT A
`EXHIBIT A
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`
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`Dr. Ralph E. White
`
`January 2021
`
`Professor, Chemical Engineering
`Birth date: November 6, 1942
`Citizenship: U.S.
`Birthplace: Clovis, New Mexico
`Security Clearance: None
`Number of Children: 4
`
`
`Address:
`Department of Chemical Engineering
`Swearingen Engineering Center, Room 3C11
`University of South Carolina
`Columbia, South Carolina 29208
`Phone: 803 777 3270
`Cell: 803 240 7132
`E-mail white@cec.sc.edu
`
`Research Interests: Electrochemical Systems, Mathematical Modeling, Batteries, Corrosion,
`& Electrodeposition
`EDUCATION
`B.S., Engineering, University of South Carolina, 1971
`M.S., Chemical Engineering, University of California at Berkeley, 1973 (Advisor – Robert P.
`Merrill)
`Ph.D., Chemical Engineering, University of California at Berkeley, 1977 (Advisor – John S.
`Newman)
`
`
`
`EXPERIENCE
`
`1
`
`
`
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`
`Educational
`
`Assistant Professor, Chemical Engineering, Texas A&M University, 1977–1981
`Associate Professor, Chemical Engineering, Texas A&M University, 1981–1985
`Professor, Chemical Engineering, Texas A&M University, 1985–1993
`Associate Head of the Department of Chemical Engineering, Texas A&M University,
`1990–1993
`Professor, Chemical Engineering, University of South Carolina, 1993–present
`Chairman of the Department of Chemical Engineering, University of South Carolina,
`1993–2000
`Distinguished Scientist, University of South Carolina, 1993-present
`Director, Center for Electrochemical Engineering, University of South Carolina, 1995-
`2000
`Dean, College of Engineering and Computing, Univ. of South Carolina 2000-2005
`
`Industrial
`
`Chemical Engineer, Ethyl Corporation, Summer 1970
`Nuclear Engineer, Mare Island Naval Shipyard, Summer 1971
`Research Engineer, Chevron, Summer 1972
`Consultant, Dow Chemical U.S.A., January 1979–March 1993
`Consultant, Exxon Corp., March 1981–March 1982
`Consultant, General Motors Corp., June 1984–June 1987
`Consultant, Allied Corporation, November 1985–April 1986
`Consultant, Boeing Corp., November 1999–December 2000, June 2006–March 2007
`Consultant (Expert Witness),
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