From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Nate D Louwagie
`Friedemann, Lora; Johnson, R. Scott; _Tennant Company/Oxygenator Water Technologies
`OWT
`RE: OWT v. Tennant
`Wednesday, August 25, 2021 1:35:41 PM
`~WRD3536.jpg
`
`[EXTERNAL E-MAIL]
`
`Lora:
`
`The fact that Tennant lost on claim construction does not prove good cause exists. OWT does not
`see how the Court’s claim constructions gave rise to new written description defenses that Tennant
`could not have asserted from the beginning of the case. Moreover, it was entirely foreseeable that
`the Court might adopt OWT’s contentions, and it was incumbent on Tennant to provide contentions
`in a timely fashion that addressed that possibility. Accordingly, during the meet and confer please
`be prepared to explain the good cause for Tennant to add written description arguments for these
`claim terms. In addition, it appears Tennant may have additional contentions it hopes to add that it
`has not yet identified. OWT cannot be expected to agree to any new contentions without knowing
`what they are. Thus, if there are other amendments Tennant is considering then Tennant must
`share those for OWT’s consideration as part of the meet and confer process.
`
`With respect to OWT’s infringement contentions, OWT does not believe any amendments to its
`contentions are required. With respect to the “tubular housing” claims of the ‘415 patent, OWT
`suggests that Tennant review OWT’s existing contentions where OWT sets forth its contentions for
`infringement by the Tennant e-cells under the doctrine of equivalents. With respect to claim 18,
`OWT has already alleged that “the water temperature is a factor for formation of the suspension” as
`construed by the Court in the Tennant process since Tennant instructs its user to use “clear cool
`water.” With respect to claim 20, OWT is still in the process of analyzing the impact of the Court’s
`claim construction. To the extent OWT decides an amendment is necessary and it has good cause to
`make such an amendment, it will raise that with Tennant. We are also considering whether we will
`be dropping this claim from the case with a reservation of rights to appeal the Court’s construction
`of the relevant claim term.
`
`We will be sending a separate email about Tennant’s requested stay, but are available to meet and
`confer on both issues at 2 pm tomorrow.
`
`Nate
`
`
`
`
`Nate D Louwagie​
`Carlson Caspers
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Direct: 612.436.9656
`Cell: 612.716.3924
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`

`

`NLouwagie@carlsoncaspers.com
`carlsoncaspers.com
`BIO | vCard | Disclaimers
`From: Friedemann, Lora <lfriedemann@fredlaw.com>
`Sent: Wednesday, August 25, 2021 9:58 AM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Johnson, R. Scott
`<RSJohnson@fredlaw.com>; _Tennant Company/Oxygenator Water Technologies
`<OWT@fredlaw.com>
`Cc: OWT <OWT@carlsoncaspers.com>
`Subject: RE: OWT v. Tennant
`
`Nate,
`
`We agree that the Scheduling Order contemplates supplementing contentions where the
`Court did not adopt the party’s proposed construction. Tennant intends to supplement its
`contentions on claim terms Judge Tostrud construed differently than Tennant proposed,
`including “water,” “conductivity…supports plant or animal life,” “power source,” and “first
`anode electrode portion that is non-parallel to a second anode electrode portion.” Among
`other things, we will argue that those terms as construed lack written description.
`
`In our view, OWT also needs to supplement its contentions. The contentions as they exist
`provide no basis for continuing to pursue infringement claims against Tennant’s e-cells in light
`of the construction of “tubular housing.” Similarly, there is no basis for continuing to allege
`infringement of claims 18 and 20 of the ’415 patent in light of Judge Tostrud’s constructions of
`the “temperature is a factor” and “two and ½ gallon aquarium reservoir container” terms. If
`OWT contends that it has a good faith basis for continuing to pursue those claims, we are
`entitled to contentions that provide the basis for OWT’s position.
`
`We disagree that the parties need to disclose their proposed contentions to have a meet and
`confer to discuss whether contentions will be supplemented and the timing for doing so. We
`propose a meet and confer Thursday at 11:00 a.m. to discuss supplementing contentions and
`Tennant’s motion to stay pending IPR. If that time does not work for you, please provide an
`alternative before the end of business on Thursday.
`
`We agree that it makes sense to extend the deadline for expert reports and will circulate a
`stipulation and proposed order later today.
`
`Lora
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`

`

`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Tuesday, August 24, 2021 4:24 PM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; _Tennant Company/Oxygenator Water
`Technologies <OWT@fredlaw.com>; Friedemann, Lora <lfriedemann@fredlaw.com>
`Cc: OWT <OWT@carlsoncaspers.com>
`Subject: RE: OWT v. Tennant
`
`[EXTERNAL E-MAIL]
`
`Scott,
`
`The Court’s Scheduling Order is quite specific about amending contentions. First, the Order makes
`clear that amendments to infringement contentions always require good cause. Second, the
`Scheduling Order clearly does not provide for carte blanch supplementations. Instead, it identifies
`circumstances under which a claim construction order might provide good cause to supplement
`contentions. Such circumstances are limited to contentions “related to [a] particular term/phrase”
`for which the Court did not adopt the Defendants’ construction. The Scheduling Order also makes
`clear that any such motion must be preceded by a meet and confer. See paragraph (2)(c)(iv) of
`Discovery Relating to Claim Construction. In order for Tennant to comply with this obligation, it
`must inform OWT of the specific contention(s) it seeks to supplement, including the implicated claim
`term and the reason good cause supports that supplementation. Please provide this information if
`Tennant intends to seek leave to amend its contentions.
`
`On a different note, OWT is willing to agree to a four week extension of expert discovery and
`dispositive motion deadlines if Tennant believes such an extension is warranted.
`
`Nate
`
`
`
`Image removed by sender.
`
`Nate D Louwagie​
`Carlson Caspers
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Direct: 612.436.9656
`Cell: 612.716.3924
`NLouwagie@carlsoncaspers.com
`carlsoncaspers.com
`BIO | vCard | Disclaimers
`From: Johnson, R. Scott <RSJohnson@fredlaw.com>
`Sent: Friday, August 20, 2021 2:02 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; _Tennant Company/Oxygenator Water
`Technologies <OWT@fredlaw.com>; Friedemann, Lora <lfriedemann@fredlaw.com>
`Cc: OWT <OWT@carlsoncaspers.com>
`Subject: RE: OWT v. Tennant
`
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`

`

`Nate,
`
`I’ll only address your third issue here. Tennant believes both parties should supplement their
`contentions prior to expert reports to account for the Court’s claim constructions. The Court’s
`recent order is good cause. Tennant is willing to meet and confer on these issues, but it makes no
`sense to meet and confer only after Tennant has gone to the work of supplementing its contentions
`only to have OWT then reject the notion of supplementation. Let us know if you are available to
`discuss a reasonable schedule for supplementation on Monday at 3:00.
`
`We look forward to hearing from you.
`
`-Scott
`
`R. Scott Johnson 111 E. Grand Avenue, Suite 301 | Des Moines, IA 50309
`Main: 515.242.8900 | Direct: 515.242.8930 |Cell 515.745.2245|
`rsjohnson@fredlaw.com
`
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`assisstance.
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Friday, August 20, 2021 11:51 AM
`To: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; Friedemann, Lora
`<lfriedemann@fredlaw.com>
`Cc: OWT <OWT@carlsoncaspers.com>
`Subject: OWT v. Tennant
`
`[EXTERNAL E-MAIL]
`
`Counsel,
`
`There are a variety of emails going on between the parties that involve somewhat related issues.
`Rather than responding to all of them, I thought I would write a larger email to concentrate the
`issues.
`
`First, Tennant has continued to refuse to produce its financial witness in a timely fashion despite
`OWT’s request for this deposition in April. Since that time Tennant has continually said it would
`provide its witness, and on multiple occasions it even provided specific dates it would make the
`witness available, only to then tell OWT at the last minute that Tennant’s witness was not prepared
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`

`

`for the deposition. Tennant is now offering its witness only 3 days before the expert report
`deadline. This is outrageous. As a result, OWT will need a two week extension to its deadline to
`serve its opening expert reports related to damages (and not any other expert reports as they are
`not implicated by this issue). Please promptly let us know if you oppose this extension, and if so, on
`what basis. If Tennant agrees to this extension, we will prepare a stipulation for your review.
`
`Second, with respect to Tennant’s attempts to curtail OWT’s Rule 30(b)(6) deposition, the rules are
`clear. A 30(b)(6) deposition counts as a single deposition even if a corporation chooses numerous
`designees to represent it, and each designee may be deposed up to 7 hours. OWT’s willingness to
`propose compromises does not somehow change those rules. Despite repeated requests, Tennant
`has not identified any authority for its improper interpretation of the rules. The three cases Tennant
`continues to cite do not address the issue, as we have already noted. Nevertheless, OWT believes it
`will be able to complete the Hemphill and Carlson depositions in about 2.5 hours and will endeavor
`to do so. But if additional time is required, we will be using it as the rules provide for us to do. OWT
`continues to believe this issue is not ripe as a result of Tennant’s failure to provide its financial
`witness identified above. OWT also believes that if Tennant acts reasonably the parties will be able
`to complete the depositions without undue burden or Court involvement. But if Tennant intends to
`change the rules and stop the deposition at the exact end of 2.5 hours, it might be wise for Tennant
`to seek a Protective Order on that issue. In that regard, Tennant has never suggested that OWT has
`improperly used Rule 30(b)(6) deposition time to date, or that OWT does not have a legitimate basis
`to use its allotted time with future witnesses. Instead, it seems Tennant is trying to prevent OWT
`from obtaining discovery it needs and is entitled to receive (especially in view of Tennant’s
`continued delays in providing a financial designee for months on end).
`
`Third, Tennant has requested an alteration to the Scheduling Order to allow for the parties to
`supplement contentions. The Scheduling Order does not allow for a carte blanche supplementation
`of contentions after claim construction. If Tennant believes the claim construction order provides
`good cause to amend particular contentions, OWT is of course willing to meet and confer. To
`further that meet and confer, please specify Tennant’s proposed amendment, the implicated claim
`construction, and the reason that good cause supports that amendment.
`
`Fourth, Tennant has requested OWT remove claims from the case. The Scheduling Order identifies a
`date for OWT to remove additional claims from the case. OWT disagrees with Tennant’s contention
`that it does not have a good faith basis to continue asserting claims 13 or 18 against all of Tennant’s
`accused products.
`
`Fifth, Tennant has requested that OWT supplement its response to Interrogatory No. 15. OWT will
`do so before Monday.
`
` I
`
` look forward to Tennant’s response on these issues.
`
`
`Thank you.
`
`Nate
`
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`

`

`Image removed by sender.
`
`
`
`Nate D Louwagie​
`Carlson Caspers
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Direct: 612.436.9656
`Cell: 612.716.3924
`NLouwagie@carlsoncaspers.com
`carlsoncaspers.com
`BIO | vCard | Disclaimers
`
`TENNANT COMPANY
`EXHIBIT 1148
`
`