`571-272-7822
`
`Paper 10
`Date: August 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00602
`Patent RE45,415 E
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
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`IPR2021-00602
`Patent RE45,415 E
`
`INTRODUCTION
`I.
`Tennant Company (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 13, 14, and 17–27 of U.S. Patent
`No. RE45,415 E (Ex. 1001, “the ’415 patent”). Oxygenator Water
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 9, “Prelim. Resp.”).
`To institute inter partes review, we must determine that the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has
`discretion to deny a petition even when a petitioner meets that threshold.
`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
`§ II.B.4.i) (recognizing the same); see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55–63, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
`considerations that may warrant exercise of this discretion).
`For the reasons discussed below, after considering the parties’
`submissions and the evidence of record, we determine it is appropriate to
`exercise our discretion and decline to institute inter partes review.
`A. Related Proceedings
`The parties identify Oxygenator Water Technologies, Inc. v. Tennant
`Company, No. 0:20-cv-00358-ECT-HB (D. Minn.) as a related matter.
`Pet. 69; Paper 5, 1. Patent Owner also identifies IPR2021-00625 as another
`proceeding filed by Petitioner against the ’415 patent. Paper 5, 1.
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`2
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`IPR2021-00602
`Patent RE45,415 E
`B. Real Parties-In-Interest
`The parties identify themselves as real parties-in-interest. Pet. 69;
`Paper 5, 1.
`C. The ’415 Patent
`The ’415 patent is a reissue of U.S. Patent No. 7,670,495 and is titled
`“Flow-Through Oxygenator.” Ex. 1001, codes (54), (64). The ’415 patent
`“relates to the electrolytic generation of microbubbles of oxygen for
`increasing the oxygen content of flowing water,” and “also relates to the use
`of superoxygenated water to enhance the growth and yield of plants;” its
`flow-through model “is useful for oxygenating water for hydroponic plant
`culture, drip irrigation and waste water treatment.” Id. at 1:24–30.
`The ’415 patent explains that the “production of oxygen and hydrogen
`by the electrolysis of water is well known,” in which hydrogen gas and basic
`water are produced at the cathode during electrolysis, and oxygen gas and
`acidic water are produced at the anode. Id. at 2:5–6, 2:9–11, 2:21–23.
`The ’415 patent explains that pumps to supply oxygen have high power
`requirements and produce acidic and basic water, which can be detrimental
`to live animals. Id. at 2:47–50. In view of this, the ’415 patent expresses a
`need for “quiet, portable, low voltage means to oxygenate water” and for
`oxygenator models suitable for in-line water distribution and for hydroponic
`culture. Id. at 2:52–54, 2:60–62.
`The ’415 patent describes “an oxygen emitter which is an electrolytic
`cell which generates very small microbubbles and nanobubbles of oxygen in
`an aqueous medium, which bubbles are too small to break the surface
`tension of the medium, resulting in a medium supersaturated with oxygen.”
`Id. at 2:66–3:3. Figure 1B of the ’415 patent is reproduced below.
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`3
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`IPR2021-00602
`Patent RE45,415 E
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`Figure 1B depicts oxygen emitter 6 that includes anode 1, cathode 2, and
`non-conducting spacer 3 having gap 4 for the passage of gas and the mixing
`of anodic and cathodic water. Id. at 3:46, 4:60–67, 5:2.
`The ’415 patent states that “[i]n order to form microbubbles and
`nanobubbles, the anode and cathode are separated by a critical distance.” Id.
`at 3:13–14. The’415 patent defines “critical distance” as “the distance
`separating the anode and cathode at which evolved oxygen forms
`microbubbles and nanobubbles.” Id. at 4:1–3. The ’415 patent describes the
`critical distance as ranging “from 0.005 inches to 0.140 inches” and that the
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`IPR2021-00602
`Patent RE45,415 E
`“preferred critical distance is from 0.045 to 0.060 inches.” Id. at 3:14–16.
`With regard to Figure 1B’s embodiment, the ’415 patent states:
`The spacer thickness is critical as it sets the critical distance. It
`must be of sufficient thickness to prevent arcing of the current,
`but thin enough to separate the electrodes by no more than 0.140
`inches. Above that thickness, the power needs are higher and the
`oxygen bubbles formed at higher voltage will coalesce and
`escape the fluid. Preferably, the spacer is from 0.005 to 0.075
`inches thick. At the lower limits, the emitter tends to foul more
`quickly. Most preferably, the spacer is about 0.050 inches thick.
`Id. at 5:4–13.
`D. Illustrative Claim
`Claim 13 is the sole independent claim of the challenged claims.
`Claim 13 is representative and is reproduced below:
`13. A method for producing an oxygenated aqueous
`composition comprising:
`flowing water at a flow rate no greater than 12 gallons per
`minute through an electrolysis emitter comprising an electrical
`power source electrically connected to an anode electrode and a
`cathode electrode contained in a tubular housing,
`causing electricity to flow from the power source to the
`electrodes, and,
`producing the composition comprising a suspension
`comprising oxygen microbubbles and nanobubbles in the water,
`the microbubbles and nanobubbles having a bubble diameter of
`less than 50 microns, wherein:
`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;
`the power source produces a voltage no greater than
`about 28.3 volts and an amperage no greater than about 13
`amps,
`the tubular housing has an inlet and an outlet and a
`tubular flow axis from the inlet to the outlet;
`the water flows in the inlet, out the outlet, is in fluid
`connection with the electrodes, and the water flowing into
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`IPR2021-00602
`Patent RE45,415 E
`the inlet has a conductivity produced by the presence of
`dissolved solids such that the water supports plant or animal
`life.
`Ex. 1001, 11:20–45.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 13, 14, and 17–27 of the ’415 patent
`are unpatentable on the following grounds. Pet. 3–4.
`Basis1
`Reference(s)
`Claim(s) Challenged
`§ 102
`13, 18–23, 25
`
`Tremblay2
`
`Satoh3
`
`Tremblay, Satoh
`
`Tremblay, the general knowledge,
`experience, and common sense of a
`POSITA, as reflected in Wendt4
`Han,5 Glembotsky,6 and Burns7
`
`§ 102
`
`§ 103
`
`13, 14, 18–25
`
`24
`
`§ 103
`
`13, 18–23, 25
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the ’415 patent
`has an effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of §§ 102, 103.
`2 US 2003/0042134 A1, published Mar. 6, 2003 (Ex. 1012).
`3 US 6,251,259 B1, issued June 26, 2001 (Ex. 1046).
`4 H. Wendt & G. Kreysa, Electrochemical Engineering: Science and
`Technology in Chemical and Other Industries, Springer-Verlag Berlin
`Heidelberg, 81–127 (1999) (Ex. 1017).
`5 M. Han et al., Development of a New Method of Measuring Bubble Size,
`vol. 2 no. 2 Water Sci. & and Tech.: Water Supply 77–83 (2002) (Ex. 1037).
`6 V. Glembotsky et al., Size of gas bubbles forming during electroflotation,
`5 Elektronnaia Obrabotka Materialov 66–68 (1973) (Ex. 1023). Petitioner
`provides a certified English translation of Glembotsky (Ex. 1024).
`7 S. Burns et al., Application of Digital Image Analysis for Size Distribution
`Measurement of Microbubbles, Imaging Technologies: Techniques and
`Civil Engineering Applications Engineering Foundation (1997) (Ex. 1031).
`
`6
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`IPR2021-00602
`Patent RE45,415 E
`Reference(s)
`Tremblay, Hough8
`
`Tremblay, Hough, the general
`knowledge, experience, and common
`sense of a POSITA, as reflected in
`Wendt, Han, Glembotsky, and Burns
`
`Tremblay, Satoh, the general
`knowledge, experience, and common
`sense of a POSITA, as reflected in
`Wendt, Han, Glembotsky, and Burns
`
`Satoh, the general knowledge,
`experience, and common sense of a
`POSITA, as reflected in Wendt, Han,
`Glembotsky, and Burns
`
`Basis1
`§ 103
`
`Claim(s) Challenged
`13, 18–23, 25
`
`§ 103
`
`13, 18–23, 25
`
`§ 103
`
`24
`
`§ 103
`
`13, 14, 18–25
`
`Satoh, Aoki9
`
`§ 103
`
`26, 27
`
`Satoh, Aoki, the general knowledge,
`experience, and common sense of a
`POSITA, as reflected in Wendt, Han,
`Glembotsky, and Burns
`
`§ 103
`
`26, 27
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Mario Tremblay. Ex. 1003. Patent Owner relies on the
`declaration of Dr. Ralph E. White. Ex. 2010.
`II. ANALYSIS
`Under 35 U.S.C. § 314(a), we have discretion to deny institution of an
`inter partes review. Cuozzo, 136 S. Ct. at 2140; SAS Inst. Inc. v. Iancu, 138
`S. Ct. 1348, 1356 (2018). In deciding whether to institute an inter partes
`
`
`8 US 6,171,469 B1, issued Jan. 9, 2001 (Ex. 1041).
`9 US 5,378,339, issued Jan. 3, 1995 (Ex. 1047).
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`IPR2021-00602
`Patent RE45,415 E
`review, we consider the guidance in the Consolidated Trial Practice Guide,
`which states:
`Based on the Board’s experience, one petition should be
`sufficient to challenge the claims of a patent in most situations.
`Two or more petitions filed against the same patent at or about
`the same time . . . may place a substantial and unnecessary burden
`on the Board and the patent owner and could raise fairness,
`timing, and efficiency concerns.
`there may be
`that
`Nonetheless,
`the Board
`recognizes
`circumstances in which more than one petition may be necessary,
`including, for example, when the patent owner has asserted a
`large number of claims in litigation or when there is a dispute
`about priority date requiring arguments under multiple prior art
`references. In such cases two petitions by a petitioner may be
`needed, although this should be rare.
`CTPG 59.
`Here, Petitioner filed two petitions on the same day, both challenging
`claims 13, 14, and 17–27 of the ’415 patent. In this proceeding, Petitioner
`presents two anticipation grounds and eight obviousness grounds. Pet. 3–4.
`In IPR2021-00625, Petitioner presents two anticipation grounds over
`different references and twenty-two obviousness grounds based on those and
`other references. IPR2021-00625, Paper 1.
`Petitioner ranks this Petition second between the two petitions.
`Pet. 69.10 Petitioner contends that the “TPG expressly contemplates that
`multiple petitions may be justified where, like here, ‘there is a dispute about
`priority date requiring arguments under multiple prior art references.’” Id.
`(quoting CTPG 59). Petitioner further contends that instituting inter partes
`
`
`10 Petitioner did not file a separate paper ranking the two petitions, but
`ranked the two petitions and made its ranking arguments in the Petition
`itself.
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`IPR2021-00602
`Patent RE45,415 E
`review “on two or more petitions will not result in any inefficiencies because
`Petitioner requests that the Board consolidate the petitions on a single
`schedule and a single trial date.” Id.
`Patent Owner argues that Petitioner has not justified the need for this
`parallel petition. Prelim. Resp. 31–32. With regard to the priority dispute
`that Petitioner references, Patent Owner states that “no such dispute exists.”
`Id. at 32. Specifically, Patent Owner avers that “[w]ith respect to the
`Tremblay reference, Patent Owner does not contest priority date.” Id. at 32–
`33.
`
`We are not persuaded that Petitioner’s arguments justify a second
`petition challenging claims 13, 14, and 17–27 of the ’415 patent. We agree
`with Patent Owner that Petitioner appears to refer to Tremblay11 when
`arguing the existence of a possible dispute about priority dates. We note that
`Petitioner does not refer to Tremblay in discussing the priority date dispute
`in the Petition. See Pet. 69. In IPR2021-00625, however, Petitioner argues
`that there is a priority date dispute because of “the Petition [in IPR2021-
`00602] being filed based on the Tremblay reference.” IPR2021-00625,
`Paper 1, 86.
`As noted above, Patent Owner does not dispute whether Tremblay is
`prior art for the ’415 patent. Prelim. Resp. 32. Thus, there is no dispute
`about priority date that would require arguments under multiple prior art
`references that would justify two petitions.
`Petitioner’s contentions regarding the efficiency of instituting two
`petitions are also unpersuasive because institution of inter partes review for
`
`11 Satoh’s issue date and filing date are prior to any of the ’415 patent’s
`filing dates. Compare Ex. 1046, codes (45), (86), with Ex. 1001, codes (60),
`(64).
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`IPR2021-00602
`Patent RE45,415 E
`this petition would result in the review of ten additional challenges that are
`based on references not asserted in IPR2021-00625. That would require
`resources for analysis in addition to those needed to analyze the challenges
`presented in IPR2021-00625. Petitioner’s request for consolidation also
`does not support its rationale for institution of parallel petitions. Whether
`the two proceedings are later consolidated or not, the ten additional
`challenges set forth in this Petition still would require additional resources;
`Petitioner fails to address why the existence of those ten additional
`challenges is not an inefficiency weighing against institution on both
`petitions. In this case, we find insufficient reasoning to institute inter partes
`review on both petitions, and thus, the argument regarding consolidation is
`effectively moot.
`In view of the above, Petitioner has not adequately explained why the
`Petition in this proceeding contains sufficient material differences in its
`analysis to support instituting an additional inter partes review of the
`challenged claims. Accordingly, because we institute inter partes review of
`claims 13, 14, and 17–27 of the ’415 patent on the grounds presented in the
`IPR2021-00625 petition, we exercise our discretion under § 314(a) to deny
`institution in this proceeding.
`III. CONCLUSION
`For the reasons set forth above, we determine that the circumstances
`weigh in favor of discretionary denial of this Petition. Accordingly, we
`exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no trial is instituted.
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`IPR2021-00602
`Patent RE45,415 E
`FOR PETITIONER:
`
`R. Scott Johnson
`Adam R. Steinert
`Fredrikson & Byron, P.A.
`RSJohnson@fredlaw.com
`asteinert@fredlaw.com
`
`
`
`FOR PATENT OWNER:
`
`J. Derek Vandenburgh
`Aaron W. Pederson
`Nathan D. Louwagie
`Carlson, Caspers, Vandenburgh, & Lindquist, P.A.
`dvandenburgh@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`
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`11
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