`
`
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TENNANT COMPANY,
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00625
`
`Patent RE45415
`
`____________
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. ARGUMENT ................................................................................................... 1
`
`A. Grounds 1 and 7: Petitioner Failed to Prove That Wikey or Davies
`Inherently Creates Nanobubbles ........................................................... 1
`
`B. Grounds 1 and 7: Petitioner’s Excuses Fail .......................................... 3
`
`C. Ground 1: Additional Reasons Wikey Fails to Anticipate Claim 13 .... 8
`
`1.
`
`The District Court Correctly Construed “Flowing Water...
`Through an Electrolysis Emitter," and Wikey Undisputedly
`Does Not Anticipate Under That Construction .......................... 8
`
`2.
`
`Petitioner’s Alleged Reproduction Does Not Show Wikey
`Made Microbubbles, Much Less Nanobubbles ........................ 10
`
`3. Claim 18: Wikey Does Not Teach a Method That “Uses
`Water Temperature as a Factor in Forming the Suspension” ... 13
`
`4. Claim 21: Wikey Does Not Teach that the Bubbles
`Supersaturate the Water ............................................................ 14
`
`D. Ground 7: Additional Reasons Davies Does Not Anticipate
`Claim 13 .............................................................................................. 15
`
`1. Davies Does Not Teach Electrodes Separated by 0.005
`inches to 0.140 inches ............................................................... 15
`
`2. Davies Does Not Teach Amperage “No Greater than About
`13 Amps” .................................................................................. 17
`
`3. Davies Does Not Create Microbubbles, Much Less
`Nanobubbles .............................................................................. 18
`
`4. Davies Does Not Disclose a Flow Rate for its Straight-
`Through Embodiment ............................................................... 20
`
`
`
`i
`
`

`

`
`
`5. Davies Straight Through Embodiment Does Not Factor Water
`Temperature into the Process And Therefore Does Not
`Anticipate Claim 18 .................................................................. 21
`
`6. Davies Does Not Supersaturate the Water ................................ 21
`
`E. The Obviousness Grounds in the Petition Fail .................................... 22
`
`1. Ground 2: Wikey and AFD ....................................................... 25
`
`2. Ground 3: Wikey, AFD, and the Treatises ............................... 26
`
`3. Ground 4: Wikey and Clark ...................................................... 26
`
`4. Ground 8: Davies and Hough ................................................... 27
`
`5. Grounds 9-12: Davies and Erickson, et al. ............................... 27
`
`6. Ground 13: Davies and Schoeberl ............................................ 27
`
`7. Ground 19: Davies and Peters................................................... 28
`
`III. CONCLUSION .............................................................................................. 28
`
`CERTIFICATE OF WORD COUNT COMPLIANCE ........................................... 30
`
`CERTIFICATION OF SERVICE............................................................................ 31
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) ....................................................................... 16, 17
`
`Colas Sols., Inc. v. Blacklidge Emulsions, Inc.,
`759 Fed. Appx. 986 (Fed. Cir. 2019) .............................................................. 6, 22
`
`Colas Solutions Inc. v. Blacklidge Emulsions, Inc.,
`No. 2016-01031, Paper 38 (P.T.A.B. Nov. 2, 2017) ............................................ 18
`
`Crown Operations Int’l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .............................................................................. 8
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .............................................................................. 4
`
`Fan Duel, Inc. v. Interactive Games LLC,
`966 F.3d 1334 (Fed. Cir. 2020) ..........................................................................3, 4
`
`Galderma Labs., L.P. v. Teva Pharms. USA, Inc.,
`799 Fed. Appx. 838 (Fed. Cir. 2020) ................................................................... 19
`
`Henny Penny Corp. v. Frymaster LLC,
`938 F.3d 1324 (Fed. Cir. 2019) ..................................................................... 22, 25
`
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`640 Fed. Appx. 951 (Fed. Cir. 2016) ..................................................................... 4
`
`In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .............................................................................. 4
`
`In re: Ikeda Food Res. Col., Ltd.,
`758 Fed.Appx. 952 (Fed. Cir. 2019) .................................................................... 13
`
`Realtime Data, LLC v. Iancu,
`912 F.3d 1368 (2019) ........................................................................................... 23
`
`Renishaw PLC v. Marpass Societa’ Per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998) .............................................................................. 9
`
`
`
`iii
`
`

`

`
`
`Tietex Int’l, Ltd. v. Precision Fabrcs Group, Inc.,
`IPR2014-01248, Paper 39 (P.T.A.B. January 27, 2016) ........................................ 3
`
`Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling United States,
`Inc.,
`699 F.3d 1340 (Fed. Cir. 2012) ............................................................................ 25
`
`Statutes
`
`35 U.S.C. § 112 .......................................................................................................... 6
`
`35 U.S.C. § 311(b) ..................................................................................................... 6
`
`37 C.F.R. § 42.107 ..................................................................................................... 5
`
`37 C.F.R. § 42.23(b) ................................................................................................ 22
`
`37 C.F.R. § 42.65(a) ................................................................................................. 24
`
`Other Authorities
`
`PTAB Consolidated Trial Practice Guide (November 2019) ....................... 5, 22, 25
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`
`
`
`
`Exhibit #
`
`TABLE OF EXHIBITS
`
`
`Description
`
`2101
`
`2102
`
`2103
`2104
`
`2105
`
`Supplemental Joint Patent Case Status Report and Claim
`Construction Statement, dated June 9, 2021
`Briefing Order Regarding Claim Construction, dated April 26,
`2021
`Amended Pretrial Order, dated May 12, 2021
`Pretrial Case Management Order, dated August 8, 2020
`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
`Declaration of Dr. Ralph E. White
`Fundamentals of Electrochemistry, by V.S. Bagotsky, 2nd ed.,
`Wiley-Interscience, 2005, pp. 60–64, 252-257, 261-280
`Opinion and Order on Claim Construction, dated August 18, 2021
`Declaration of Todd S. Werner in Support of Patent Owner’s
`Unopposed Motion for Pro Hac Vice Admission
`Clean Protective Order to Motion for Entry of Protective Order
`2113
`2114 Marked Protective Order to Motion for Entry of Protective Order
`2115
`Email from Adam Steinert to OWT Counsel, dated October 4, 2021
`2116
`Declaration of Dr. Ralph E. White - SEALED
`2117
`Declaration of Dr. Ralph E. White - REDACTED
`2118
`Joint Claim Construction Appendix Part 1
`2119
`Joint Claim Construction Appendix Part 2
`2120
`Joint Patent Case Status Report and Claim Construction Statement,
`dated April 9, 2021
`Exhibit B to the Joint Patent Case Status Report and Claim
`Construction Statement, dated April 13, 2021
`Exhibit A to the Joint Patent Case Status Report and Claim
`Construction Statement, dated April 13, 2021
`
`2106
`
`2107
`
`2108
`
`2109
`
`2110
`
`2111
`
`2112
`
`2121
`
`2122
`
`v
`
`

`

`
`
`
`
`2123
`
`2124
`
`2125
`
`2126
`2127
`2128
`2129
`
`2130
`
`2131
`2132
`
`2133
`
`2134
`2135
`2136
`2137
`
`2138
`
`2139
`
`2140
`2141
`2142
`
`2143
`2144
`
`2145
`
`2146
`2147
`2148
`
`Supplemental Joint Patent Case Status Report and Claim
`Construction Statement, dated June 9, 2021
`Amended Exhibit A to the Joint Patent Case Status Report and
`Claim Construction Statement, dated June 9, 2021
`Exhibit B to the Joint Patent Case Status Report and Claim
`Construction Statement, dated June 9, 2021
`Tennant’s Opening Claim Construction Brief, dated June 10, 2021
`Declaration of Cara S. Donels, dated June 10, 2021
`Exhibit A to Declaration of Cara S. Donels, dated June 10, 2021
`Oxygenator Water Technologies, Inc.’s Opening Claim
`Construction Brief, dated June 10, 2021 - SEALED
`Oxygenator Water Technologies, Inc.’s Opening Claim
`Construction Brief, dated June 10, 2021 - Redacted
`Declaration of Nathan D. Louwagie, dated June 10, 2021
`Tennant Company’s Petition for Inter Partes Review, IPR2021-
`00602 (Ex. 1)
`Tennant Company’s Petition for Inter Partes Review, IPR2021-
`00625 (Ex. 2)
`Declaration of Dr. Mario Tremblay, IPR2021-00602 (Ex. 3)
`Declaration of Dr. Mario Tremblay, IPR2021-00625 (Ex. 4)
`About Water Overview (Ex. 5)
`Analysis of Water Quality for Livestock by Clell V. Bagedly,
`DVM et al. (Ex. 6)
`Investigation of Electrical Conductivity of Different Water Liquids
`and Electrolyte Solutions by H. Golnabi et al. (Ex. 7)
`Tennant’s Amended Proposed Claim Terms for Construction and
`Extrinsic Evidence dated March 30, 2021 (Ex. 10)
`U.S. Patent No. 6,251,259 (Satoh et al.) (Ex. 11)
`US Patent No. 3,891,535 (Wikey) (Ex. 12)
`Tennant’s Invalidity Chart for Reissued Patent US RE45,415 (Ex.
`13)
`A3 Parts Manual (Ex. 14)
`Excerpt from The New IEEE Standard Dictionary of Electrical and
`Electronics Terms, dated 1993 (Ex. 15)
`Excerpt from Sixth Edition of McGraw-Hill Electronics Dictionary,
`dated 1997. (Ex. 16)
`U.S. 2009/0120460 A1 (Hekman et al.) (Ex. 17)
`U.S. Patent No. 8,025,787 (Field et al.) (Ex. 18)
`U.S. Patent No. 8,025,787 (Field et al.) (Ex. 21)
`
`vi
`
`

`

`2149
`
`2150
`2151
`
`2152
`
`2153
`
`2154
`
`2155
`2156
`2157
`
`2158
`2159
`
`2160
`
`2161
`
`2162
`
`2163
`2164
`
`2165
`2166
`2167
`2168
`2169
`2170
`
`2171
`
`2172
`2173
`
`
`
`
`
`An Experimental Study on the Effect of Electrolytic Concentration
`on the Rate of Hydrogen Production by D. Buddhi et al. (Ex. 22)
`Electrical Conductivity Protocol (Ex. 23)
`OWT’s First Supplemental Exhibit 3 to its RE45,415 Infringement
`Claim Chart, dated October 9, 2020 (Ex. 8) - SEALED
`Tennant’s Supplemental Exhibit 1 to its Non-Infringement
`Contentions, dated December 21, 2020 (Ex. 9) - SEALED
`Deposition transcript of Dr. Russell Pylkki, dated May 27, 2021
`(Ex. 19) – SEALED
`Aspen Research Sparging, The Technology of Metastable Fluids
`(Ex. 20) – SEALED
`RESERVED
`Tennant document TC00033231 (Ex. 25) - SEALED
`Claim Construction Declaration of Ralph E. White, dated June 10,
`2021
`Curriculum Vitae of Ralph E. White (Exhibit A)
`Responsive Expert Declaration of Ralph E. White, dated June 17,
`2021
`Tennant’s Responsive Claim Construction Brief, dated July 27,
`2021
`Supplemental Declaration of Cara S. Donels in Support of
`Tennant’s Claim Construction Brief, dated July 27, 2021
`Deposition transcript of Ralph E. White, dated July 1, 2021(Exhibit
`B)
`Excerpt from Webster’s Dictionary, p 153 (Exhibit C)
`OWT’s Responsive Claim Construction Memorandum, dated July
`27, 2021
`Declaration of Nathan D. Louwagie, dated July 27, 2021
`Deposition transcript of Ralph E. White, dated July 1, 2021
`Resistivity/Conductivity Chart
`Claim Construction Hearing Transcript, dated August 5, 2021
`Court Minutes, dated August 5, 2021
`Letter to Judge Tostrud from Derek Vandenburgh, dated August
`26, 2021
`Text Order in Response to [247] Letter to District Judge, dated
`August 27, 2021
`Deposition transcript of Dr. Mario Tremblay, dated March 17, 2015
`Tennant’s Objections to Order on Motion for Leave to Supplement
`Invalidity Contentions, dated November 8, 2021
`
`vii
`
`

`

`
`
`
`
`2174
`
`2175
`2176
`
`2177
`
`2178
`2179
`2180
`2181
`2182
`
`2183
`
`2184
`2185
`2186
`
`2187
`2188
`2189
`
`2190
`2191
`2192
`
`2193
`2194
`
`2195
`
`2196
`
`Tennant’s Memorandum in Support of Its Motion for Leave to
`Amend and Supplement Invalidity Contentions, dated September 1,
`2021
`Transcript to Motions Hearing, dated October 6, 2021
`Deposition transcript of Bruce Field, dated June 25, 2021 –
`SEALED
`Deposition transcript of Russ Pylkki, dated May 27, 2021–
`SEALED
`U.S. Patent Application US 2009/0314654 A1 (Field)
`Tennant Bubble Size Measurements presentation– SEALED
`U.S. Utility Patent Application 10/372017
`U.S. Utility Patent Application 10/732326
`Deposition transcript of Pete Swenson, dated May 26, 2021–
`SEALED
`Aspen Research presentation titled Sparging: The Technology of
`Metastable Fluids– SEALED
`Schematic for Electrode Cylindrical Part No. 1062006 – SEALED
`Tennant Presentation Overview – SEALED
`Dallman et al., “Impacts of Suspended Clay Particle Deposition on
`Sand-Bed Morphodynamics,” Water Resources Research (2019)
`Dissolved Oxygen Monitoring Instruments document
`EasyViewer 100, Particle Characterization document
`Particle Track G400 Hardware Manual
`Excerpts from Fundamentals of Electrochemistry, 2nd Ed., by V. S.
`Bagotsky
`PoolPlaza.com Wesbite screenshot of Pool Pump Sizing
`Giovanski, Matt, “The Complete Guide to Hot Tub Pumps” (2020)
`Ciprioano, Ramon, et al., “Bubble and Aerosol Spectra Produced
`by a Laboratory ‘Breaking Wave’,” Jl of Geophysical Research,
`Vol. 86, No. C9
`Screenshot of U.S. EPA website on Sediments
`Zhu, Jie, et al., “Cleaning with Bulk Nanobubbles,” Langmuir
`(April 22, 2016)
`Screenshot of webpage entitled “How to Remove Sediment from
`Well & Spring Water”
`
`viii
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`Petitioner’s anticipation arguments fail for multiple reasons. The argument’s
`
`most glaring inadequacy is that Petitioner did not do any testing to see whether its
`
`alleged reproductions of the prior art created nanobubbles. Petitioner knew how to
`
`test for nanobubbles, but inexplicably chose not to. The problems with the
`
`Petition—as identified in the Patent Owner’s (“PO”) Response —do not end there.
`
`For example, Wikey does not disclose “flowing water . . . through an electrolysis
`
`emitter” and Davies’ does not anticipate the claimed electrode gap.
`
`Recognizing the multiple flaws in its anticipation case, Petitioner tries to
`
`shift the burden onto PO to prove the lack of inherent anticipation. But the Federal
`
`Circuit has rejected this argument and, regardless, Petitioner’s flawed testing did
`
`not establish a prima facie case of inherency. Petitioner also attempts to bulk up its
`
`obviousness arguments after the institution decision recognized they were
`
`deficient. Paper 9 (“ID”) at 27-28, 39. Petitioner’s arguments should be rejected as
`
`improper new arguments for reply. They also remain conclusory and unsupported.
`
`Further, Petitioner’s reply did not respond to PO’s strong evidence of copying.
`
`II. ARGUMENT
`
`A. Grounds 1 and 7: Petitioner Failed to Prove That Wikey or
`Davies Inherently Creates Nanobubbles
`
`The method recited in claim 13 requires the step of creating both
`
`microbubbles and nanobubbles. Ex-1101, Claim 13. Microbubbles are defined as
`
`
`
`1
`
`

`

`
`
`bubbles having a diameter of less than 50 microns. Id. at 4:10-11. Nanobubbles are
`
`much smaller. They are defined as bubbles that are too small to break the surface
`
`tension of water. Id. at 4:12-13; see also Paper 1 (“Pet.”) at 18. Petitioner’s expert
`
`testified that these bubbles have a diameter on the order of 0.1 microns. Ex-2172,
`
`69:11-25.
`
`
`
`Petitioner knows how to test for bubbles of this size. In the ordinary course
`
`of its business, it has used equipment capable of detecting bubbles under 0.1
`
`microns (100 nanometers) to promote its use of nanobubbles to its customers:
`
`
`
`
`
`2
`
`

`

`
`
`Ex-2195; Ex-2177, 128:19-129:10. Tennant’s reply does not dispute that it knew
`
`how to test for nanobubbles, yet for this proceeding Petitioner chose instead to use
`
`equipment with resolution down to only 5 microns. Ex-2172 at 69:7-10, 70:1-4,
`
`114:13-117:17, 129:18-25. Petitioner’s expert admitted that none of the testing he
`
`conducted identified nanobubbles.
`
`Q. So do you agree that none of the testing you
`performed determined whether or not there were
`nanobubbles in the water?
`
`A. Yes.
`
`Id. at 70:1-4. Petitioner’s anticipation grounds should be rejected on this basis
`
`alone. Paper 34 (“Response”) at 23-27, 39, 47.
`
`B. Grounds 1 and 7: Petitioner’s Excuses Fail
`
`Petitioner asks the board to excuse its failure to test for nanobubbles for four
`
`
`
`reasons. Each of these excuses fail.
`
`First, Petitioner argues that the Board’s decision to institute shifted the
`
`burden to PO to prove Wikey and Davies did not inherently create nanobubbles.
`
`Paper 42 (“Reply”) at 1, 6, 8. However, the Federal Circuit has held that this
`
`burden-shifting framework does not apply in IPRs. E.g. Fan Duel, Inc. v.
`
`Interactive Games LLC, 966 F.3d 1334, 1341-42 (Fed. Cir. 2020); see also Tietex
`
`Int’l, Ltd. v. Precision Fabrcs Group, Inc., IPR2014-01248, Paper 39 at 10-12
`
`(P.T.A.B. January 27, 2016). The petitioner’s burden of persuasion to prove
`
`
`
`3
`
`

`

`
`
`unpatentability “never shifts to the patentee.” Dynamic Drinkware, LLC v.
`
`National Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015).
`
`The Howmedica case cited by Petitioner is not to the contrary. Howmedica
`
`involved inter partes reexamination and was based on case law governing patent
`
`prosecution. Howmedica Osteonics Corp. v. Zimmer, Inc., 640 Fed. Appx. 951,
`
`952, 957 (Fed. Cir. 2016). The Court in Howmedica recognized that in the
`
`reexamination context the “burden-shifting framework is fair because of the PTO’s
`
`inability to manufacture products or to obtain and compare prior art products.” Id.
`
`at 957. Because these limitations do not apply in IPRs, the Federal Circuit has held
`
`that the burden-shifting framework is not applicable. In re Magnum Oil Tools Int'l,
`
`Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016).
`
`Even if burden-shifting could occur in IPRs, the Board’s decision to institute
`
`does not establish a prima facie case of anticipation. To hold otherwise would be
`
`inconsistent with the IPR framework. The decision to institute and the final written
`
`decision are “two very different analyses, and each applies a qualitatively different
`
`standard.” Id. at 1376 (internal citations and quotation marks omitted). The
`
`institution decision is merely a preliminary decision made without the benefit of
`
`the full record, and therefore the Federal Circuit has “encouraged the Board to
`
`change its view of the merits after further development of the record, . . . if
`
`convinced its initial inclinations were wrong.” Fan Duel, 966 F.3d at 1340-41
`
`
`
`4
`
`

`

`
`
`(ellipsis in original, internal citations and quotation marks omitted). Indeed, there
`
`is no requirement that a patent owner file a preliminary response. PTAB
`
`Consolidated Trial Practice Guide (November 2019) at 52 (no adverse inference
`
`from decision to waive preliminary response); 37 C.F.R. § 42.107 (“patent owner
`
`may file a preliminary response”). In this case PO advanced a number of
`
`additional arguments in its response that were never considered by the Board when
`
`it instituted review, and these arguments show that Petitioner did not make a prima
`
`facie showing that the prior art references create nanobubbles. See e.g. Response at
`
`19-30, 38-46, 47-49.
`
`Second, Petitioner argues that its testing was sufficient because it was the
`
`same testing that was conducted in Example 2 of the ’415 patent specification.
`
`Reply at 8. But the measurements provided in Example 2 are not the support for
`
`nanobubbles provided by the specification. In fact, Example 2 specifically states it
`
`did not measure nanobubbles. Ex-1101, 5:62-6:2 (“smaller bubbles in the
`
`nanometer range could not be resolved”). Instead, Senkiw proved he made
`
`nanobubbles by observing that the water became milky or opalescent and this
`
`milkiness remained in the water for a substantial amount of time. Ex-1101, 4:12-
`
`15, 4:30-37. Dr. Tremblay made no such observation about Wikey or Davies, and
`
`his testing indicated that “no bubbles [were] visible after 3 hours” and that the
`
`
`
`5
`
`

`

`
`
`“[v]ast majority of bubbles disappear[ed] within 1 minute.” Response at 25; Ex-
`
`2179 at 9, 17, 23.
`
`Petitioner’s second excuse is also legally flawed. Anticipation is analyzed by
`
`comparing the prior art to the claims, not the specification. Petitioner’s expert
`
`admitted he did not test for nanobubbles. See Response at 23-27. To the extent
`
`Petitioner argues the specification also did not show nanobubbles, that is an
`
`argument under 35 U.S.C. § 112 and is outside the scope of an IPR. 35 U.S.C. §
`
`311(b).
`
`Third, Petitioner relies on two “proxy” tests that it contends confirm the
`
`creation of nanobubbles. Reply at 8-12. However, the Petition never argued that
`
`either of these proxy variables proved the formation of nanobubbles. On this basis
`
`alone, the Board should reject Petitioner’s new argument in reply. Colas Sols., Inc.
`
`v. Blacklidge Emulsions, Inc., 759 Fed. Appx. 986, 989-90 (Fed. Cir. 2019)
`
`(affirming holding that new theory regarding how claim element is disclosed by
`
`prior art was waived).
`
`Moreover, even if considered, these proxy proofs fail. Petitioner’s first
`
`surrogate proof is based on its suggestion that dissolved oxygen (“DO”) content
`
`above 100% proves the creation of nanobubbles. Reply at 8-10. But Petitioner
`
`again relies on an alleged admission in the patent specification that does not exist.
`
`Like with Example 2, the ’415 patent never suggests that Table III proves the
`
`
`
`6
`
`

`

`
`
`existence of nanobubbles. While the specification says milkiness is indicative of
`
`supersaturation, it never suggests the opposite—that DO content over 100% proves
`
`the water is milky or contains nanobubbles. Petitioner’s own expert expressly
`
`rejected this argument:
`
`Q. Does dissolved oxygen tell us anything about whether
`there are bubbles in the water?
`
`A. No.
`
`Q. Does it tell us anything about the size of the bubbles
`that are in the water?
`
`A. No.
`
`Ex-2172, 76:9-14; see also 77:23-78:21.
`
`
`
`Petitioner’s second proxy proof—which applies only to Wikey—is that
`
`bubbles remained in the water until they reached the outlet of Wikey’s tube. Reply
`
`at 12. The fact that these bubbles survived the short period of time required to
`
`make it through Wikey’s tube does not suggest they are substantially incapable of
`
`breaking the surface tension of water. The bubbles in Petitioner’s testing
`
`disappeared very shortly after they were created. Ex-2179 at 9, 17, 23. Petitioner’s
`
`argument on this point is contradicted by its expert’s acknowledgement that he did
`
`not do any testing that would determine whether nanobubbles were formed. Ex-
`
`2172, 70:1-4.
`
`
`
`Finally, Petitioner argues that the specification admits nanobubbles are
`
`inherent. Reply at 7. Petitioner originally argued that the patent admitted the only
`
`
`
`7
`
`

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`variable that mattered was the electrode gap. Pet. at 9-12. PO’s response explained
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`why that argument misread the specification. Response at 20-22. In reply,
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`Petitioner adapts that argument to suggest the specification admits that as long as
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`the other parameters of claim 13 and 18 are met nanobubble creation is inherent.
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`Reply at 7. That argument is also incorrect. Neither of those claims existed when
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`the specification was filed, so the specification did not suggest those parameters
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`inherently created microbubbles and nanobubbles. Indeed, there is no suggestion
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`anywhere in the intrinsic record that this is true. To the contrary, the prosecution
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`history confirms that microbubbles and nanobubbles are affirmatively recited,
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`independent, claim limitations. Ex-1102 at 149-50. Petitioner’s attempt to read
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`these limitations out of the claims should be rejected. Crown Operations Int’l, Ltd.
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`v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002) (reversing district court’s
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`inherency finding that was based on an argument that the prior art disclosed the
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`structure claimed in the patent).
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`C. Ground 1: Additional Reasons Wikey Fails to Anticipate Claim 13
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`1.
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`The District Court Correctly Construed “Flowing Water
`. . . Through an Electrolysis Emitter,” and Wikey
`Undisputedly Does Not Anticipate Under That Construction
`
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`Petitioner does not dispute: (1) that the District Court’s construction of
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`“flowing water . . . through an electrolysis emitter” was based on the same record
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`8
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`as that presented here, or (2) that under the Court’s construction, Wikey does not
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`anticipate any of the claims. Reply at 3-6.
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`In arguing that the Court’s construction was wrong, Petitioner improperly
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`considers the words “flowing water” in isolation from the rest of the claim and
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`wrongly argues that “flowing” is an adjective, not a verb. See Reply at 3-4. Claim
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`13 requires the affirmative step of flowing water through an electrolysis emitter
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`comprising electrodes in a tubular housing. See Response at 7. As the Court
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`correctly found, this claim language identifies a separate step from the step of
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`“causing electricity to flow” through the electrodes. Ex-2111, 31.
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`Regarding the specification, Petitioner points out that the specification does
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`not “include any special definition of ‘flowing water’ in its list of defined terms.”
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`Reply at 3. But the use of a term in the specification is relevant even if it is not
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`definitional. See e.g. Renishaw PLC v. Marpass Societa’ Per Azioni, 158 F.3d
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`1243, 1251-53 (Fed. Cir. 1998) (construing “when” by reference to the term’s use
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`in the examples). Here, the ’415 patent consistently uses “flowing” to describe
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`water that is flowing before electrolysis begins and distinguishes “flow through”
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`embodiments (which are placed in flowing water) from “button” embodiments
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`(which are used in stationary water and would create incidental flow like Wikey).
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`See Response at 7-8; Ex-2111, 33-34. Petitioner does not even attempt to address
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`this teaching from the specification.
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`9
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`Petitioner also ignores the prosecution history, which explicitly distinguishes
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`between claims directed to water “in a static state such as in an aquarium” and
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`claims directed to water “recited as flowing through a tubular housing.” See
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`Response at 9.
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`Finally, Petitioner’s assertion that OWT’s construction is improperly based
`
`on Wikey (Reply at 3) is unsupported and wrong. The construction of this term is
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`relevant to Petitioner’s arguments relative to Wikey, but the construction is based
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`on the intrinsic record. Indeed, the District Court’s claim construction order
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`adopting this construction does not even mention Wikey. Ex. 2111 at 30-35. The
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`District Court’s construction was correct and is fatal to Ground 1.
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`2.
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`Petitioner’s Alleged Reproduction Does Not Show Wikey
`Made Microbubbles, Much Less Nanobubbles
`
`
`Petitioner’s alleged reproduction deviated from the teaching of Wikey such
`
`that Petitioner’s tests do not even show that Wikely inherently makes
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`microbubbles, much less nanobubbles. See Response at 27-30.
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`First, Petitioner changed the orientation of the electrodes. Response at 27-28.
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`Wikey discloses horizontally-oriented electrodes but Petitioner oriented them
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`vertically. Ex. 2172, 148:8-20.
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`
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`10
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`Ex-1112, Fig. 3 (annotation added); see also Fig. 2.
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`11
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`Petitioner’s
`Electrodes
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`
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`Ex-1103, ¶45 (annotation added).
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`
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`Petitioner argues it is “mere speculation” that the orientation of the
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`electrodes would affect bubble size. Reply at 10. Petitioner ignores its Clark
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`reference, which teaches that the electrode arrangement affects bubble size by
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`changing how bubbles collide with each other. Response at 27-28. Indeed,
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`Petitioner relies on this teaching in its obviousness argument. See Pet. at 45; Reply
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`at 15. Petitioner also ignores Dr. Tremblay’s admission that the orientation of the
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`electrodes can affect bubble size. Ex-2172 at 29:14-22. Moreover, as discussed
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`
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`12
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`above, it is Petitioner’s burden to establish that Wikey inherently creates
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`microbubbles and nanobubbles. See pp. 3-5 supra.1 Petitioner’s speculation that the
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`orientation of the electrodes doesn’t matter is insufficient to carry that burden.
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`
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`Petitioner further argues that Wikey’s figures are “schematic” and
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`therefore do not identify the correct orientation. Reply at 10. But Petitioner’s
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`expert admitted that Figure 3 shows horizontally-oriented electrodes that
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`were changed in his alleged reproduction. Ex. 2172 at 148:8-20. More
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`fundamentally, Wikey never teaches an embodiment with vertically-oriented
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`electrodes like Petitioner’s “reproduction”.
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`
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`Second, Petitioner used the wrong size electrodes which resulted in its
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`alleged reproduction using ten times higher current than Wikey. Response at
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`28-30.
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`Petitioner’s alleged reproduction is not disclosed by Wikey and
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`cannot support inherent anticipation.
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`3.
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`Claim 18: Wikey Does Not Teach a Method That “Uses
`Water Temperature as a Factor in Forming the
`Suspension”
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`
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`In the district court, Petitioner secured a construction of this claim requiring
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`water temperature to be actively used as a part of the method. Response at 11-12,
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`
`1 The case Petitioner cites is an appeal of an examiner’s rejection, not an IPR
`decision. In re: Ikeda Food Res. Col., Ltd., 758 Fed.Appx. 952, 957-99 (Fed. Cir.
`2019). It is not applicable here. See pp. 3-5 supra.
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`
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`13
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`30-31. Petitioner observes that the construction does not require that water
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`temperature be “measured”. Reply at 11. But it does require that the temperature be
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`used. See Response at 11-12.
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`Wikey is silent regarding use of water temperature. Response at 30-31.
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`Petitioner argues that Wikey’s silence is sufficient because Wikey uses water “the
`
`same way the ’415 patent does.” Reply at 11. Again, anticipation is assessed by
`
`comparing prior art to the patent claims—not the specification. Regardless, the
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`’415 patent discloses a “temperature sensor” which can control the electrolysis
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`process. Ex-1101, 5:26-35; Ex-2126, 32. Wikey does not.
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`4.
`
`Claim 21: Wikey Does Not Teach that the Bubbles
`Supersaturate the Water
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`PO’s response observed that (1) the creation of microbubbles and
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`nanobubbles does not inherently yield supersaturated water and (2) Petitioner’s
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`alleged reproduction did not prove that Wikey would supersaturate the larger
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`volumes of water in Wikey’s aquariums. Response at 31-32.
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`Petitioner’s reply does not address either observation. Instead, Petitioner
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`mischaracterizes PO’s argument as suggesting that “dissolved oxygen above 100%
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`is not evidence of ‘supersaturation’.” Reply at 11-12. PO did not make that
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`argument. Instead, the issue is that supersaturating the small volume of water used
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`in Petitioner’s alleged reproduction is not sufficient to prove Wikey inherently
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`supersaturates large aquariums. Response at 31-32.
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`14
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`Petitioner then makes the new argument that because nanobubbles remain in
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`suspension for a long time, “it is inherent that continuing to run the Wikey
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`apparatus will result in a sufficient accumulation of bubbles to ‘supersaturate’ the
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`water.” Compare Reply at 12, with Pet. at 36 (silent regarding accumulation or
`
`running the device for a long time). Because this is a new argument, it should be
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`ignored. Moreover, whether Wikey would eventually supersaturate the water
`
`depends on whether it creates oxygen at a sufficiently higher rate than oxygen
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`leaves the solution (and how long Wikey’s apparatus is used). The