CASE 0:20-cv-00358-ECT-HB Doc. 69 Filed 05/03/21 Page 1 of 4
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`May 3, 2021
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`Via ECF
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`The Honorable Hildy Bowbeer
`Magistrate Judge, District of Minnesota
`United States District Court
`632 Federal Building
`316 N. Robert Street
`St. Paul, MN 55101
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`Re:
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`Oxygenator Water Technologies v. Tennant, Case No. 20-cv-00358 (ECT/HB)
`IDR Request - Hearing sought on or after May 7, 2021
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`Dear Magistrate Judge Bowbeer:
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`This informal dispute resolution request is submitted on behalf of Defendant Tennant Company.
`Plaintiff Oxygenator Water Technologies, Inc. (“OWT”) has agreed to use the Court’s IDR
`process.
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`The dispute concerns the Pretrial Case Management Order, ECF No. 43. Tennant seeks a modest
`extension of the deadlines for expert and fact discovery, with the remaining deadlines in the
`schedule adjusted accordingly. Good cause exists to modify the schedule for the reasons set
`forth below.
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`Sequence of Expert Discovery and Claim Construction
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`First, Tennant requests that the Court modify the pretrial schedule so that expert discovery
`commences after the Court construes seventeen disputed claim terms. Judge Tostrud recently
`scheduled the claim construction hearing and issued a briefing schedule. Opening claim
`construction briefs are due in June. The claim construction hearing is on August 5.
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`Under the present schedule, initial expert reports are due July 16. Tennant requests that the
`Court modify the schedule so that initial expert reports are due 30 days after the Court issues its
`claim construction order.
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`As the Court knows, expert witnesses analyze infringement and validity using the Court’s
`construction of disputed claim terms. If experts must offer opinions before the Court issues its
`claim construction order, their opinions may need to be changed after the claim construction
`order is issued, resulting in unnecessary work and expense. It is more efficient for all involved
`to exchange expert reports after the Court construes the disputed claim terms. Tennant therefore
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`requests that the Court modify the schedule to require that the parties exchange initial expert
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`CASE 0:20-cv-00358-ECT-HB Doc. 69 Filed 05/03/21 Page 2 of 4
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`May 3, 2021
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`reports 30 days after the Court issues its claim construction order and adjust the remaining dates
`in the schedule accordingly.
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`The requested extension is likely to be modest. When he set the August 5th hearing date, Judge
`Tostrud indicated that he expects to issue his claim construction order before his law clerks turn
`over in September. Thus, the initial exchange of expert reports would likely occur in October,
`approximately three months from the current deadline.
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`Fact Discovery Deadline
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`A short extension of the fact discovery deadline would also advance the efficient disposition of
`the case.
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`Presently, the deadline for completing fact discovery is June 18, approximately seven weeks
`from today. No depositions have been taken, and Tennant is not yet in a position to begin taking
`depositions because several requests for documents and information from OWT are outstanding.
`The outstanding discovery requests include the following:
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`1. OWT has not yet produced communications with third parties relating to licensing,
`enforcement or monetization of the relevant patents. The Court addressed this issue
`during a pre-motion conference on February 19. The Court offered some comments
`and directed the parties to meet and confer. After several meet and confers, the
`parties reached a compromise that will avoid motion practice. OWT has agreed to
`produce the documents subject to the parties’ agreement but has not yet done so.
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`2. OWT withheld emails that relate to its efforts to license, enforce or monetize the
`relevant patents. Yesterday, after many weeks of discussion, OWT agreed to produce
`the emails. OWT has not indicated when they will be produced.
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`3. OWT initially objected to Tennant’s Requests for Production 32, 33, 38, 39 and 40
`served in December 2020. These requests seek, among other things, financial
`statements, revenue from licensing, and updates to shareholders that reference the
`relevant patents. The parties exchanged letters regarding these requests and held a
`meet and confer on April 14. Following the meet and confer, OWT agreed to
`produce responsive documents subject to agreed-upon date restrictions. OWT has not
`indicated when the production will be made.
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`4. OWT responded to Tennant’s Fourth Set of Requests for Production of Documents on
`April 26. OWT objected to several requests, including requests seeking documents
`OWT may rely upon to support its claims (RFP 49) and documents OWT may use at
`trial (RFP 50). OWT objected to Request Nos. 49 and 50 as “premature,” among
`other objections. Tennant promptly notified OWT that its responses were deficient
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`CASE 0:20-cv-00358-ECT-HB Doc. 69 Filed 05/03/21 Page 3 of 4
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`and requested that OWT remedy the deficiencies no later than May 7. OWT has not
`yet responded.
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`5. Following an exchange of letters and a meet and confer, OWT agreed to supplement
`its answer to Interrogatory No. 14 concerning the identity of email custodians with
`potentially relevant email and the time periods for which email is available. OWT
`initially indicated that the supplemental answer would be provided by April 30.
`OWT later indicated that the answer would be provided early next week.
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`6. Tennant sent a deficiency letter to OWT on April 9, 2021 regarding several other
`outstanding discovery requests and requested a meet and confer. OWT has not yet
`responded.
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`7. Tennant has proposed a compromise to resolve a dispute concerning Requests for
`Production 30 and 34. OWT is considering the proposal.
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`Tennant has acted diligently. OWT zealously fought many of Tennant’s discovery requests,
`requiring nearly daily correspondence and numerous meet and confers. Although the parties
`have resolved most disputes without the need for motion practice, Tennant has not yet obtained
`relevant documents and information from OWT. Once the few remaining disputes are resolved
`and Tennant obtains the documents it has requested, Tennant intends to take the ten depositions
`allotted in the scheduling order.
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`Although Tennant’s production is largely complete, Tennant only recently learned that a
`computer used by a former employee was retained and had not been wiped and put back into
`circulation, as is Tennant’s typical practice. Tennant collected documents from the computer
`and will produce responsive documents as soon as it is able. Tennant has also objected to several
`search terms in OWT’s second set of email production requests. The parties have not resolved
`those objections. OWT served a third set of email production requests this past weekend.
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`Given the current state of discovery, Tennant requests that the Court extend the deadline for fact
`discovery by two months, to August 18, 2021. The modified schedule Tennant proposes is
`below.
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`Event
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`Current Deadline
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`Proposed Deadline
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`Claim construction hearing
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`August 5, 2021
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`Close of fact discovery
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`June 18, 2021
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`Non-dispositive motions
`(except expert discovery)
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`July 6, 2021
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`August 5, 2021
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`August 18, 2021
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`September 1, 2021
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`CASE 0:20-cv-00358-ECT-HB Doc. 69 Filed 05/03/21 Page 4 of 4
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`Event
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`Current Deadline
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`Proposed Deadline
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`Identification/reports of
`experts on issues as to which
`party has burden of proof
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`Identification/reports of
`experts on issues as to which
`the party does not have the
`burden of proof
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`July 16, 2021
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`August 16, 2021
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`Rebuttal expert reports
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`September 10, 2021
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`Close of expert discovery
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`October 8, 2021
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`Second reduction of asserted
`claims by Plaintiff
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`October 15, 2021 or one
`week after last expert
`deposition, whichever is
`earlier
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`Non-dispositive motions
`concerning expert discovery
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`October 22, 2021
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`Dispositive motions
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`November 19, 2021
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`Ready for trial
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`March 21, 2022
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`30 days after claim
`construction order
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`60 days after claim
`construction order
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`85 days after claim
`construction order
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`113 days after claim
`construction order
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`120 days after claim
`construction order or one
`week after last expert
`deposition, whichever is
`earlier
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`127 days after claim
`construction order
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`155 days after claim
`construction order
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`275 days after claim
`construction order
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`Respectfully submitted,
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`/s/Lora M. Friedemann
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`Lora M. Friedemann
`Direct Dial: 612.492.7185
`Email: lfriedemann@fredlaw.com
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`72785074
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