UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TENNANT COMPANY,
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00602
`
`Patent RE45415
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. BACKGROUND ............................................................................................. 4
`A.
`State of the Art ...................................................................................... 4
`B.
`The ’415 Patent ..................................................................................... 5
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`IV. CLAIM CONSTRUCTION ............................................................................ 8
`V. THE PRIMARY ASSERTED REFERENCES ............................................... 8
`A.
`Tremblay (U.S. Patent Pub. No. 2003/0042134) .................................. 8
`B.
`Satoh (U.S. Patent No. 6,251,259) ...................................................... 12
`VI. THE BOARD SHOULD DECLINE TO INSTITUTE REVIEW ................ 15
`A. ALL GROUNDS: Institution Should Be Denied Pursuant to 35 U.S.C.
`§ 314(a) ................................................................................................ 15
`1.
`Factor 1: Petitioner Sought An Extension to Obtain More
`Discovery Instead of a Stay of the Case to Conserve Resources
` ................................................................................................... 17
`Factor 2: The District Court Case Will be Ready For Trial Five
`Months Prior to the Board’s Projected Statutory Deadline for a
`Final Written Decision .............................................................. 20
`Factor 3: The Court and the Parties Have Invested Substantial
`Time and Resources Into the District Court Litigation ............ 22
`Factor 4: Significant Overlap Exists Between Issues Raised in
`the Petition and in the District Court Litigation ....................... 26
`Factor 5: The Parties are Identical in Both Proceedings ........... 28
`Factor 6: The Merits of the Petition and History of the Patent at
`Issue Weigh Strongly Against Institution ................................. 28
`7. Conclusion: The Fintiv Factors Unanimously Support the
`Exercise of the Board’s Discretionary Denial Authority Under §
`314(a) ........................................................................................ 31
`B. ALL GROUNDS: Petitioner Has Not Justified the Need for this
`Parallel Petition ................................................................................... 31
`
`2.
`
`3.
`
`4.
`
`5.
`6.
`
`
`
`i
`
`

`

`C.
`
`Petitioner’s Anticipation Arguments Are Flawed ............................... 34
`1. GROUND 1: Tremblay Does Not Anticipate ........................... 36
`a.
`Tremblay Does Not Concern Oxygenation or the
`Formation of Micro- or Nanobubbles ............................. 37
`The Applicant Did Not “Admit” Inherency ................... 37
`b.
`Petitioner’s Embodiment is Not Taught by Tremblay ... 38
`c.
`d. Different Values Within the Ranges Disclosed by
`Tremblay Yield Different Outcomes, and the Observed
`Results Are Not Inherent to Tremblay ........................... 42
`2. GROUND 2: Satoh Does Not Anticipate ................................. 43
`a.
`The Applicant Did Not “Admit” Inherency ................... 43
`b.
`Satoh Does Not Teach an Anticipatory Embodiment .... 44
`i.
`Petitioner Ignores the Fundamental Feature of
`Satoh: A Semiporous Membrane Disposed
`Between the Electrodes ........................................ 44
`Satoh’s Generic Disclosure of Numerous Options
`for Numerous Design Parameters that Impact the
`Electrolytic Process Cannot Anticipate ................ 45
`D. Petitioner’s Obviousness Grounds Do Not Raise a Substantial
`Question of Patentability Because Petitioner Has Failed to Identify
`Any Motivation to Modify the Prior Art ............................................. 47
`1. GROUND 3: Petitioner Fails to Identify any Motivation to
`Modify Tremblay Based on Satoh ............................................ 49
`2. GROUND 4: Petitioner Fails to Identify any Motivation to
`Modify Tremblay Based on Wendt, Han, Glembotsky,
`or Burns ..................................................................................... 50
`3. GROUND 5: Petitioner Fails to Identify any Motivation to
`Modify Tremblay Based on Hough .......................................... 50
`4. GROUNDS 6 and 7: Petitioner Fails to Identify any Motivation
`to Modify Tremblay Based on the Cited References ................ 51
`5. GROUND 8: Petitioner Fails to Identify any Motivation to
`Modify Satoh Based on Wendt, Han, Glembotsky, or Burns ... 52
`
`ii.
`
`
`
`ii
`
`

`

`6. GROUND 9: Petitioner Fails to Identify any Motivation to
`Modify Satoh Based on Aoki .................................................... 53
`7. GROUND 10: Petitioner Fails to Identify any Motivation to
`Modify Satoh Based on Aoki .................................................... 54
`VII. CONCLUSION .............................................................................................. 55
`
`
`
`
`
`
`
`
`
`
`iii
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`10X Genomics, Inc. v. United Kingdom Research and Innovation et al.,
`IPR2020-01467, Paper 21, (PTAB Feb. 22, 2021) .............................................. 21
`
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11, 5-6
`(PTAB March 20, 2020) ................................................... 2, 16, 17, 20, 21, 22, 23,
`25, 26, 28, 30, 31
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) .............................................................................. 48
`
`
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) ....................................................................... 35, 41
`
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ................................................... 48, 49, 50, 52, 53
`
`
`Bentley Motors Limited et al v. Jaguar Land Rover Limited,
`IPR2019-01539, Paper 9 at 13 (Mar. 10, 2020) ............................................ 25, 26
`
`
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 at 7-8 (PTAB May 15, 2020) ..................................... 22
`
`
`Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
`IPR2019-00279, Paper 10 at 6-7 (PTAB July 1, 2019) ....................................... 33
`
`
`Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
`IPR2019-01354, Paper 10 at 6 (PTAB Jan. 27, 2020) ......................................... 33
`
`
`Cont'l Can Co. v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ..................................................................... 36, 44
`
`
`Dane Technologies, Inc. v. Gatekeeper Systems, Inc.,
`No. 12-2730 ADM/AJB, 2013 U.S. Dist. LEXIS 117718, at *7-8
`(D. Minn. Aug. 20, 2013) ..................................................................................... 19
`
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ................................................ 22
`
`
`
`iv
`
`

`

`
`Grunenthal GmbH v. Alkem Labs. Ltd.,
`919 F.3d 1333 (Fed. Cir. 2019) ............................................................................ 48
`
`
`In re Arkeley,
`455 F.2d 586, (C.C.P.A. 1972) ................................................................ 34, 35, 41
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 48
`
`
`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) .............................................................................. 36
`
`
`In re Ruschig,
`343 F.2d 965 (C.C.P.A. 1965) ....................................................................... 35, 41
`
`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00141, Paper 16 at 9-11 (PTAB June 4, 2020) ..................................... 22
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................. 47
`
`
`MEHL/Biophile Int'l Corp. v. Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ............................................................................ 36
`
`
`Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V.,
`989 F.3d 1375 (Fed. Cir. 2021) ............................................................................ 16
`
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 34
`
`
`Next Caller, Inc. v. TRUSTID, Inc.,
`IPR2019-00961, Paper 10 at 16 (PTAB Oct. 16, 2019) ....................................... 27
`
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8, 19-20 (PTAB Sept. 12, 2018) ........................ 16, 21, 22
`
`
`Osram Sylvania, Inc. v. Am. Induction Techs., Inc.,
`701 F.3d 698 (Fed. Cir. 2012) ........................................................... 35, 39, 43, 47
`
`
`Oxygenator Water Techs. v. Tennant Co.,
`Civil Action No. 20-cv-358 (D. Minn.) ................................................................ 15
`
`
`
`v
`
`

`

`
`Samsung Electronics Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 at 17 (Jan. 5, 2021) ....................................... 23, 25, 26
`
`
`Skky, Inc. v. Manwin USA, Inc.,
`No. 13-2086 (PJS/JJG), 2014 U.S. Dist. LEXIS 183449 at *8
`(D. Minn. Oct. 29, 2014) ...................................................................................... 18
`
`
`Snyders Heart Valve LLC v. St. Jude Med. S.C. Inc.,
`No. 18-2030 (JRT/DTS), 2021 U.S. Dist. LEXIS 52580, at *13
`(D. Minn. Mar. 19, 2021) ..................................................................................... 18
`
`
`Square, Inc. v. 4361423 Canada Inc.,
`IPR2019-01626, Paper 14 at 9-10 (Mar. 30, 2020) .............................................. 33
`
`
`TA Instruments-Waters LLC v. Malvern Panalytical Inc.,
`IPR2021-00210, Paper 9 at 10-11 ................................................................. 22, 25
`
`
`Toshiba Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc.,
`193 F. Supp. 3d 345 (D. Del. 2016) ..................................................................... 19
`
`
`Transclean Corp. v. Bridgewood Servs.,
`290 F.3d 1364 (Fed. Cir. 2002) ....................................................................... 3, 36
`
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) ............................................. 47, 48, 49, 50, 52, 53
`
`
`Verizon Business Network Services LLC v. Huawei Technologies Co., Ltd.,
`IPR2020-01278, Paper 12 at 14 (Jan. 26, 2021) .................................................. 28
`
`
`Wasica Fin. GmbH v. Cont'l Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) ................................................... 48, 49, 50, 52, 53
`
`
`ZTE (USA) Inc. v. Fractus, S.A.,
`IPR2018-01451, Paper 12 at 20 (PTAB Feb. 19, 2019) ...................................... 27
`
`
`Statutes
`
`35 U.S.C. § 314(a) ............................................................................................. 2, 32
`
`35 U.S.C. §103 ......................................................................................................... 47
`
`
`
`vi
`
`

`

`
`35 U.S.C. § 315(b) ............................................................................................ 15, 26
`
`35 U.S.C. 282(b) ........................................................................................................ 8
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`Regulations
`
`77 Fed. Reg. 48,680, 48,734 (Aug. 14, 2012) ......................................................... 19
`
`Other Authorities
`
`Consolidated Trial Practice Guide (“TPG”) (2019) at 59 ................................ 32, 33
`
`
`
`
`
`
`
`
`vii
`
`

`

`
`
`
`
`Exhibit #
`
`Table of Exhibits
`
`Description
`
`2001
`
`Supplemental Joint Patent Case Status Report and Claim
`Construction Statement, dated June 9, 2021
`
`2002
`
`Briefing Order regarding Claim Construction, dated April 26, 2021
`
`2003
`
`Amended Pretrial Order, dated May 12, 2021
`
`2004
`
`Pretrial Case Management Order, dated August 8, 2020
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Order on Joint Stipulation to Extend Deadlines for Defendant's
`Prior Art Chart and Invalidity Statement, Plaintiff's Prior Art Chart
`and Invalidity /Responsive Statement, and Narrowing of Claim
`Terms, dated November 17, 2020
`
`Opinion and Order on Defendant’s Motion to Dismiss, dated
`August 7, 2020
`
`Letter to Magistrate Judge Bowbeer from Lora M. Friedemann
`regarding IDR Request, dated May 3, 2021
`
`Tennant’s Supplement to Its Invalidity Contentions and Prior Art
`Charts, dated February 11, 2021
`
`Plaintiff’s Supplemental Responses to Defendant’s Interrogatories
`(Nos. 14 And 15), dated June 10, 2021
`
`2010
`
`Declaration of Dr. Ralph E. White
`
`2011
`
`Fundamentals of Electrochemistry, by V.S. Bagotsky, 2nd ed.,
`Wiley-Interscience, 2005, pp. 60–64, 252-257, 261-280
`
`viii
`
`

`

`I.
`
`INTRODUCTION
`
`On January 27, 2020, Patent Owner filed suit against Petitioner for
`
`infringement of U.S. Patent No. RE45,415 (“the ’415 Patent”) and two other
`
`related patents. The three patents in suit relate to apparatuses and processes for
`
`creating micro- and nanobubbles in order to oxygenate water. The patented
`
`technology has a variety of applications. For example, the accused products sold
`
`by Petitioner are floor scrubbers that use water oxygenated with micro- and
`
`nanobubbles as an eco-friendly alternative to detergents.
`
`The Board should deny institution of the present petition against the ’415
`
`Patent. Petitioner waited until the 35 U.S.C. §315(b) deadline to file its petition,
`
`and as a result, the very same validity challenges to the ’415 patent are scheduled
`
`to be tried in the concurrent district court litigation five months before the Board’s
`
`deadline for a final written decision in this proceeding. The litigation continues to
`
`rapidly proceed toward resolution: detailed infringement and invalidity contentions
`
`and claim construction briefs have been exchanged, four depositions have been
`
`taken and at least nine more will be taken within the next month, fact discovery is
`
`almost complete, and by the deadline for an institution decision expert discovery
`
`will be nearing completion. This significant expenditure of time and resources will
`
`have occurred in the context of the same prior art references and invalidity
`
`arguments, rendering any effort expended in this proceeding entirely duplicative.
`
`
`
`1
`
`

`

`Moreover, Petitioner did not file IPR petitions against the other two patents in suit,
`
`thus guaranteeing that the present IPR will not resolve all of the validity issues in
`
`the case. Therefore, regardless of whether Petitioner seeks a stay of the litigation
`
`(which it has not yet done), and even in the unlikely event a stay is granted,
`
`instituting the present IPR will only multiply the proceedings, thus benefiting
`
`Petitioner by depleting Patent Owner’s limited resources. Therefore, the
`
`“efficiency and integrity of the system” would be best served by denying
`
`institution pursuant to 35 U.S.C. § 314(a). Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 11, 5-6 (PTAB March 20, 2020) (precedential).
`
`Institution should also be denied because the Petitioner’s invalidity attacks
`
`are factually and legally flawed. None of the prior art references relied on in the
`
`Petition are directed to oxygenating water with micro- and nanobubbles. Instead,
`
`Petitioner primarily relies on inherent anticipation arguments based on (1)
`
`supposed admissions by Applicant that the distance between electrodes is the only
`
`variable required to form micro- and nanobubbles, and (2) a purported
`
`reproduction of an embodiment described in the prior art. Regarding the alleged
`
`admissions of inherency by Applicant, Petitioner incorrectly interprets the
`
`statements they rely upon. POSAs would have known that the outcome of
`
`electrolysis is impacted by a number of variables beyond just the distance between
`
`the anode and cathode. The distance between the electrodes is certainly an
`
`
`
`2
`
`

`

`important variable, but it does not stand in a vacuum. POSAs would know that
`
`other variables such as the electrode composition, surface area/dimensions, water
`
`flow rate, voltage, and current, all impact the results of electrolysis. These
`
`variables impact the size of bubbles formed by the process, and a POSA would not
`
`interpret the statements cited by Petitioner to indicate otherwise.
`
`Regarding Petitioner’s attempt to show inherency by “reproducing” one of
`
`its two primary prior art references, Tremblay, the apparatus and methods
`
`Petitioner used were not “reproductions” at all. Instead, Petitioner created an
`
`embodiment by picking and choosing different options for a series of parameters to
`
`create an apparatus and processes that are nowhere disclosed by Tremblay. Even
`
`worse, Petitioner never accounts for the impact its choices had on the allegedly
`
`inherent results, and the choices it made directly impact the allegedly inherent
`
`result: oxygenation and bubble size. For at least these reasons, Petitioner has failed
`
`to meet its burden to demonstrate that the prior art methods necessarily and
`
`inevitably oxygenated water and produced micro- and/or nanobubbles. See
`
`Transclean Corp. v. Bridgewood Servs., 290 F.3d 1364, 1373 (Fed. Cir. 2002).
`
`As a backstop, Petitioner cobbles together a number of references to argue
`
`that the claimed invention would have been obvious. But Petitioner does not
`
`identify a single reference directed at the aim of the claimed invention: the
`
`oxygenation of water coupled with the creation of micro- and nanobubbles. Nor
`
`
`
`3
`
`

`

`does Petitioner bother to mention a motivation that would have set a person of
`
`ordinary skill (POSA) in motion, to combine any references in a way that would
`
`have arrived at the claimed invention. Without a motivation, the only basis left to
`
`support Petitioner’s arguments in hindsight. That is inadequate. Accordingly, not
`
`only does Petitioner’s petition come too late, it fails to raise a substantial question
`
`of patentability.
`
`For all of these reasons, Patent Owner respectfully requests that the Board
`
`deny institution.
`
`II. BACKGROUND
`
`A.
`
`State of the Art
`
`Oxygenated water has a variety of applications, from improving water
`
`quality for plant and animal life to encouraging the decomposition of pollutants.
`
`Ex. 1001 at 1:23-56. As disclosed by the ’415 Patent, that “[t]he production of
`
`oxygen and hydrogen by the electrolysis of water” is one way to “raise[] the
`
`oxygen content of aqueous media.” Id. at 1:34-35, 2:5-6. Electrolysis involves the
`
`application of a current to an aqueous medium utilizing two electrodes: an anode
`
`and a cathode, which produce oxygen and hydrogen gas, respectively. Id. at 2:3-
`
`11. As it escapes, these gases form bubbles that “rise to the surface of the fluid”
`
`and are either released or collected. Id. at 2:19-20.
`
`
`
`4
`
`

`

`However, existing methods of effective electrolysis were limited to
`
`stationary applications involving contained water. Id. at 2:43-53. Further, they
`
`required high voltages for operation or produced byproducts with deleterious
`
`effects on plants and animals, rendering them unsuitable for agricultural use. Id.
`
`Thus, prior to the invention claimed and described in the ’415 Patent, there was a
`
`need for a method of oxygenating flowing water without requiring high voltage
`
`input or other undesirable side effects. See id. at 1:60-2:63. Importantly, the art
`
`also lacked an effective and reliable method of electrolyzing water wherein the
`
`resulting gases remain in solution as micro- and nanobubbles. Id. at 1:57-61.
`
`B.
`
`The ’415 Patent
`
`The inventions claimed in the ’415 Patent and its predecessors relate to
`
`producing micro- and nanobubbles of oxygen in flowing water via electrolysis. In
`
`conceiving his invention, inventor Jim Senkiw significantly advanced the art by
`
`creating apparatuses and methods that reliably produce these extremely small
`
`bubbles—micro- and nanobubbles—in flowing water. Their small size allows the
`
`bubbles to “remain in suspension,” forming a supersaturated solution. Id. at
`
`Abstract. Oxygenated water containing these extremely small bubbles offer
`
`numerous advantages in a variety of real-world settings, including for agriculture
`
`and cleaning applications. See, e.g., id. at 6:26-34, 9:9-22, 10:15-18.
`
`
`
`5
`
`

`

`The ’415 Patent describes the novel process of creating these micro- and
`
`nanobubbles in flowing water by utilizing electrodes spaced at a critical distance in
`
`combination with appropriate power supply and water flow rates, among other
`
`variables. The independent claim targeted by the Petition, Claim 13, is directed to
`
`“a method for producing an oxygenated aqueous composition” which involves
`
`“flowing water… through an electrolysis emitter” in order to produce a
`
`“composition comprising a suspension comprising oxygen microbubbles and
`
`nanobubbles in the water.” Id. at 11:20-45. Key elements of the invention include
`
`that the electrodes are spaced such that “the anode electrode is separated at a
`
`critical distance from the cathode such that the critical distance is from 0.005
`
`inches to 0.140 inches,” in combination with a power source providing a suitable
`
`current to produce “microbubbles and nanobubbles having a bubble diameter of
`
`less than 50 microns.” Id. at 11:31-35. Bubbles of this size can remain in solution
`
`for “several hours,” during which time the water is “supersaturated with
`
`oxygen”—giving it an “opalescent or milky appearance”—which is responsible for
`
`many of the benefits claimed and described in the ’415 Patent. Id. at 4:35-38; 4:15.
`
`During prosecution, U.S. Appl. No. 12/023,431—which ultimately issued as
`
`the ’415 Patent—was subject to three rejections. See generally Ex. 1002. As the
`
`Petition points out, throughout the prosecution and to overcome the cited prior art,
`
`Senkiw reiterated the importance and inventive nature of the claimed micro- and
`
`
`
`6
`
`

`

`nanobubbles. See, e.g., id. at 149-152; 196-199. The claims that ultimately issued
`
`incorporated important limitations necessary to achieve the claimed bubble sizes
`
`that were not taught in the prior art, such as a critical distance between the
`
`electrodes, voltage, amperage, and flow rate. See id. at 25. And it is this claimed
`
`combination of limitations, not just a critical distance, that culminated in allowable
`
`claims. As explained by the examiner:
`
`The prior art does not disclose nor fairly suggest the
`method for producing oxygenated aqueous composition
`comprising the combination of the 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 that it results in the formation of a suspension
`comprising oxygen microbubbles and nanobubbles in the
`water, the nanobubbles having a bubble diameter of less
`than 50 microns.
`
`Ex. 1002 at 25 (emphasis added).
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`For the purposes of this Preliminary Response, Patent Owner does not
`
`dispute the definition of a POSA proffered by Petitioner. See Pet. at 16; Ex. 1103
`
`at ¶ 14. If a trial is instituted, Patent Owner reserves the right to submit a different
`
`definition of a POSA than has been proposed by the Petitioner.
`
`
`
`7
`
`

`

`IV. CLAIM CONSTRUCTION
`
`Under 37 C.F.R. § 42.100(b), a claim in an IPR is construed using the same
`
`standard that would be used to construe the claim in a civil action under 35 U.S.C.
`
`282(b). In the parallel district court litigation, the parties have proposed
`
`constructions for several terms of the ’415 patent. See Ex. 2001. The parties also
`
`exchanged opening claim construction briefs on June 10, 2021, and will exchange
`
`reply briefs on July 22, 2021. See Ex. 2002. For purposes of determining whether
`
`to institute the current petitions, however, Patent Owner agrees with Petitioner that
`
`no terms need to be construed. Therefore, Patent Owner does not set forth any
`
`terms for construction by the Board at this time, but reserves the right to seek
`
`additional construction if the Board grants institution.
`
`V. THE PRIMARY ASSERTED REFERENCES
`
`A.
`
`Tremblay (U.S. Patent Pub. No. 2003/0042134)
`
`Tremblay (Ex. 1012) describes “[a] method for killing microorganisms in
`
`water” involving the use of a “non-membrane electrolysis cell” to convert “halide
`
`salt to anti-microbial mixed oxidants.” Ex. 1012 at Abstract. Tremblay explains
`
`that “[a]s contaminated water passes between the electrodes, the microorganisms
`
`are killed and the water is sterilized.” Id. at ¶0001. This is because the electrolysis
`
`is performed to “generate biocidal agents such as free chlorine (CL2), hypochlorous
`
`acid ions (OCL)-, and other biocidal ions and free radicals.” Id.; see also ¶0005
`
`
`
`8
`
`

`

`(“The present invention relates to a method for making antimicrobial oxidants from
`
`an aqueous solution comprising of [sic] naturally containing NaCl), or added salts
`
`(e.g. water to which NaCl was added)….”).
`
`Tremblay provides a number of different design concepts for use in his
`
`method. In one arrangement, the water passes between one or more pairs of
`
`electrodes (an anode and a cathode) in an open cell concept. Id. at ¶ 0079. This
`
`design is illustrated, for example, Figure 9:
`
`Another design involves the use of a porous anode, such that water flows through
`
`the anode 21. Id. at ¶ 0061. This is shown in, for example, Figure 4:
`
`
`
`
`
`
`
`9
`
`

`

`Yet another design involves the use of a porous, nonconductive flow barrier
`
`40 between the electrodes to promote flow of the water through a porous anode 21.
`
`Id. at ¶0063. This concept is illustrated in, for example, Figure 6:
`
`Tremblay provides some design parameters for the electrolytic cell. Some
`
`of these variables are summarized as follows:
`
`
`
` Anode composition: “Preferred” materials include “stainless teel,
`
`platinum, palladium, iridium, ruthenium, as well as iron, nickel,
`
`chromium, and alloys and metal oxides thereof;” while “[m]ore
`
`preferred” materials are “titanium, tantalum, aluminum, zirconium,
`
`tungsten, or alloys thereof, which are coated or layered with a Group VIII
`
`metal that is preferably selected from platinum, iridium, and ruthenium,
`
`and oxides and alloys thereof” (Ex. 1012 at ¶0057)
`
` Cathode composition: “[C]an be the same [as the anode material], but can
`
`advantageously be different” (id.)
`
`
`
`10
`
`

`

` Anode size: Surface areas of “from about 0.1 cm2 to about 60 cm2,” with
`
`a preferred range of “about 1 cm2 to about 20 cm2,” and most preferred
`
`range of “about 3 cm2 to about 10 cm2” (id. at ¶0079)
`
` Electrode gap: “[P]referably 0.5 mm or less, more preferably 0.2 mm or
`
`less” (id. at ¶0044)
`
` Water flow rate: Flow rates of 100-300, 500, or 1,000 cc/min (id. at
`
`¶0079, ¶0088 (Table A), ¶0089, ¶0090)
`
` Power sources:
`o A battery or a set of batteries, preferably selected from an alkaline,
`
`lithium, silver oxide manganese oxide, or carbon zinc battery, and
`
`having a nominal voltage of 1.5 V, 3 V, 4.5 V, 6 V, or any other
`
`voltage that meets the power requirements of the electrolysis
`
`device (id. at ¶0069)
`o A solar cell, a manual crank generator system, or a water
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`pressure/flow turbine system (id. at ¶0070)
`
`Tremblay never describes the formation of bubbles, much less the formation
`
`of micro- or nanobubbles. This is because Tremblay is focused on the formation of
`
`biocidal oxidants such as free chlorine (CL2), hypochlorous acid ions (OCL)-, and
`
`is not concerned with oxygenating water or forming micro- or nanobubbles.
`
`
`
`11
`
`

`

`B.
`
`Satoh (U.S. Patent No. 6,251,259)
`
`Like Tremblay, Satoh (Ex. 1046), does not address or suggest the
`
`oxygenation of water or creation of micro- or nanobubbles. Satoh is instead
`
`focused upon the use of a membrane in an electrolytic cell as a means to control
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`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 damage of living tissues. Id. at 1:28-37
`
`(“[D]isease is mainly caused by the damage of biomolecules within an organism
`
`resulting from oxidation of the biomolecules with active oxygen formed therein,
`
`and such active oxygen can be reduced with 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)….”).
`
`Satoh indicates that conventional electrolysis caused water to become acidic,
`
`while it was desired for water to have a neutral pH. Id. at 1:38-51. Specifically,
`
`Satoh explains that pH and ORP were oppositely correlated such that modulation
`
`of one to a preferred range resulted in the other falling out of the preferred range.
`
`Id.
`
`Satoh purports to have solved this problem by introducing a membrane into
`
`the electrolytic cell. Id. at 2:7-12 (“In the electrolytic cell of the present invention,
`
`
`
`12
`
`

`

`a pair of electrode plates sandwiching a membrane therebetween are respectively
`
`provided inside and outside the electrolytic chamber, and one of the electrode
`
`plates is provided outside the membrane being in contact with the membrane or
`
`leaving a slight space therebetween.”). An embodiment is illustrated in Figure 1:
`
`
`
`Membranes 115 are disposed between each pair of electrodes 116 and 117. Id. at
`
`6:23-29. The composition and associated permeability of the membranes, as well
`
`as the location thereof, are described by Satoh to control pH and ORP as desired.
`
`Id. at 6:23-7:55. Satoh explains how the membranes have a meaningful impact on
`
`the electrolytic reaction. Id. at 2:22-63. Satoh explains that when the anode is
`
`located outside the membrane, yet being almost in contact with the membrane,
`
`oxygen gas is emitted into the air, such that it does not stay in the water and “the
`
`dissolved oxygen content . . . becomes remarkably small.” Id. at 3:7-19.
`
`
`
`13
`
`

`

`Satoh provides some design parameters for the electrolytic cell. Some of
`
`these variables are summarized as follows:
`
` Membrane composition: A core of unwoven polyester or polyethylene
`
`screen, and a film material of chlorinated ethylene or poly-fluorinate
`
`bynilyden and titanium oxide or poly-vinyl chloride having a thickness of
`
`0.1 to 0.3 mm and an average pore diameter of 0.05 to 1.0 µm and a
`
`water permeability of no more than 1 cc/cm2/min (id. at 6:64-7:4)
`
` Anode composition: Unspecified, no guidance
`
` Cathode composition: Unspecified, no guidance
`
` Electrode size: Satoh does not provide any guidance on selecting an
`
`appropriate electrode size, but when describing two examples references
`
`an area of 24 cm2 (id. at 9:36-42; 10:52-59)
`
` Electrode gap: The gap is “0 mm to 5.0 mm, more preferably 1.5 mm”
`
`(id. at 7:5-19)
`
` Water flow rate: Satoh does not provide any guidance on suitable flow
`
`rates, but describes a few examples with a flow rate of 4 L/minute (e.g.,
`
`id. at 9:36-42, Fig. 1) and another example with a flow rate of 4 L/minute
`
`in one chamber of the electrolytic cell and a second flow rate of 1
`
`L/minute in another chamber of the electrolytic cell (id. at 10:52-59, Fig.
`
`4)
`
`
`
`14
`
`

`

` Power sources:
`o Current: Satoh describes modulation of the current to achieve
`
`desired pH and ORP levels, and describes the use of currents of 3,
`
`5, 7, 10, and 14 A (id. at 11:7-25, Table 2; 9:37-42; 10:53-59;
`
`12:60-64; 13:18-29)
`o Voltage: Satoh does not identify voltages for most of the examples,
`
`but Satoh does mention the use of both 30 V (id. at 12:60-65) and
`
`12 V (id. at 13:18-29)
`
`Satoh does not provide any guidance on how to achieve micro- or nanobubbles
`
`as the formation of such bubbles is not a goal or outcome to which Satoh is
`
`directed.
`
`VI. THE BOARD SHOULD DECLINE TO INSTITUTE REVIEW
`
`A. ALL GROU