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 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. Wikey (U.S. Patent No. 3,891,535) ...................................................... 8
`B. Davies (U.S. Patent No. 4,917,782 to Davies) .................................... 10
`VI. THE BOARD SHOULD DECLINE TO INSTITUTE REVIEW ................ 13
`A. ALL GROUNDS: Institution Should Be Denied Pursuant to
`35 U.S.C. § 314(a) ............................................................................... 13
`1.
`Factor 1: Petitioner Sought an Extension to Obtain More
`Discovery Instead of a Stay of the Case to Conserve
`Resources .................................................................................. 15
`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 .............................................................. 18
`Factor 3: The Court and the Parties Have Invested Substantial
`Time and Resources Into the District Court Litigation ............ 20
`Factor 4: Significant Overlap Exists Between Issues Raised in
`the Petition and in the District Court Litigation ....................... 23
`Factor 5: The Parties are Identical in Both Proceedings ........... 25
`Factor 6: The Merits of the Petition and History of the Patent at
`Issue Weigh Strongly Against Institution ................................. 26
`7. Conclusion: The Fintiv Factors Unanimously Support the
`Exercise of the Board’s Discretionary Denial Authority Under §
`314(a) ........................................................................................ 29
`Petitioner’s Anticipation Arguments are Flawed ................................ 29
`1. GROUND 1: Wikey Does Not Anticipate ................................ 31
`i
`
`5.
`6.
`
`B.
`
`
`
`2.
`
`3.
`
`4.
`
`

`

`a. Wikey Does Not Describe the Formation of Micro- or
`Nanobubbles ................................................................... 32
`The Applicant Did Not “Admit” Inherency ................... 32
`b.
`Petitioner’s Embodiment is Not Taught by Wikey ........ 33
`c.
`d. Different Electrode Dimensions Will Yield Different
`Results, and the Observed Results Are Not Inherent to
`Wikey .............................................................................. 36
`2. GROUND 7: Davies Does Not Anticipate ............................... 37
`a. Davies Does Not Describe the Formation of Micro- or
`Nanobubbles ................................................................... 38
`The Applicant Did Not “Admit” Inherency ................... 38
`b.
`Petitioner’s Embodiments Are Not Taught by Davies ... 38
`c.
`d. Different Values Within the Ranges Disclosed by Davies
`Yield Different Outcomes, and the Observed Results Are
`Not Inherent to Davies .................................................... 41
`Petitioner’s Obviousness Grounds All Fail Because Petitioner Never
`Identifies Any Motivations to Modify the Prior Art ........................... 43
`1. GROUND 2: Petitioner Fails to Identify any Motivation to
`Modify Wikey Based on AFD .................................................. 44
`2. GROUND 3: Petitioner Fails to Identify any Motivation to
`Modify Wikey Based on AFD, Wendt, Han, Glembotsky, and
`Burns ......................................................................................... 46
`3. GROUND 4: Petitioner Fails to Identify any Motivation to
`Modify Wikey Based on Clark ................................................. 47
`4. GROUND 5: Petitioner Fails to Identify any Motivation to
`Modify Wikey Based on Clark and AFD ................................. 48
`5. GROUND 6: Petitioner Fails to Identify any Motivation to
`Modify Wikey Based on Clark, AFD, Wendt, Han,
`Glembotsky, and Burns ............................................................. 48
`6. GROUND 8: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Hough ............................................ 49
`
`C.
`
`
`
`ii
`
`

`

`7. GROUND 9: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Erickson ......................................... 49
`8. GROUND 10: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Erickson and Hough ...................... 50
`9. GROUND 11: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Erickson, Wendt, Han, Glembotsky,
`and Burns .................................................................................. 50
`10. GROUND 12: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Erickson, Hough, Wendt, Han,
`Glembotsky, and Burns ............................................................. 51
`11. GROUND 13: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Schoerbl ......................................... 51
`12. GROUND 14: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Schoeberl and Hough Render
`Obvious ..................................................................................... 52
`13. GROUND 15: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Erickson and Schoeberl .................. 53
` GROUND 16: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Erickson, Schoeberl, and Hough .... 53
`15. GROUND 17: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Erickson, Schoeberl, Wendt, Han,
`Glembotsky, and Burns ............................................................. 53
`16. GROUND 18: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Erickson, Schoeberl, Hough, Wendt,
`Han, Glembotsky, and Burns .................................................... 53
` GROUND 19: Petitioner Fails to Identify any Motivation to
`Modify Davies in View of Peters ............................................. 54
`18. GROUND 20: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Peters and Hough ............................ 55
`19. GROUND 21: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Peters and Erickson ........................ 55
`20. GROUND 22: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Peters, Erickson, and Hough .......... 55
`
`17.
`
`14.
`
`
`
`iii
`
`

`

`21. GROUND 23: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Peter, Erickson, Wendt, Han,
`Glembotsky, and Burns ............................................................. 55
`22. GROUND 24: Petitioner Fails to Identify any Motivation to
`Modify Davies in view of Peter, Erickson, Hough, Wendt, Han,
`Glembotsky, and Burns ............................................................. 56
`VII. CONCLUSION .............................................................................................. 56
`
`
`
`
`
`
`
`
`
`
`iv
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11, 5-6
`(PTAB March 20, 2020) ................ 2, 13, 15, 17, 18, 19, 20, 22, 23, 24, 25, 28, 29
`
`
`ATD Corp. v. Lydall, Inc.,
`159 F.3d 534 (Fed. Cir. 1998) .............................................................................. 44
`
`
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) ....................................................................... 30, 41
`
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ......................................................... 43, 44, 47, 51
`
`
`Bentley Motors Limited et al v. Jaguar Land Rover Limited,
`IPR2019-01539, Paper 9 at 13 (Mar. 10, 2020) ................................................... 23
`
`
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 at 7-8 (PTAB May 15, 2020) ..................................... 20
`
`
`Cont'l Can Co. v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ............................................................................ 31
`
`
`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) ..................................................................................... 16
`
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) ................................................ 19
`
`
`Grunenthal GmbH v. Alkem Labs. Ltd.,
`919 F.3d 1333 (Fed. Cir. 2019) ............................................................................ 44
`
`
`In re Arkeley,
`455 F.2d 586 (C.C.P.A. 1972) ........................................................... 29, 30, 35, 41
`
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 43
`
`
`
`
`
`v
`
`

`

`In re Oelrich,
`666 F.2d 578 (C.C.P.A. 1981) .............................................................................. 31
`
`
`In re Ruschig,
`343 F.2d 965 (C.C.P.A. 1965) ................................................................. 30, 35, 41
`
`
`Intel Corp. v. VLSI Tech. LLC,
`IPR2020-00141, Paper 16 at 9-11 (PTAB June 4, 2020) ..................................... 20
`
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................. 43
`
`
`MEHL/Biophile Int'l Corp. v. Milgraum,
`192 F.3d 1362 (Fed. Cir. 1999) ............................................................................ 31
`
`
`Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V.,
`989 F.3d 1375 (Fed. Cir. 2021) ............................................................................ 14
`
`
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) ............................................................................ 29
`
`
`Next Caller, Inc. v. TRUSTID, Inc.,
`IPR2019-00961, Paper 10 at 16 (PTAB Oct. 16, 2019) ....................................... 24
`
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8, 19-20 (PTAB Sept. 12, 2018) ........................ 14, 18, 19
`
`
`Osram Sylvania, Inc. v. Am. Induction Techs., Inc.,
`701 F.3d 698 (Fed. Cir. 2012) ..................................................... 30, 33, 36, 39, 42
`
`
`Oxygenator Water Techs. v. Tennant Co.,
`Civil Action No. 20-cv-358 (D. Minn.) ................................................................ 13
`
`
`Samsung Electronics Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 at 17 (Jan. 5, 2021) ............................................. 21, 23
`
`
`Skky, Inc. v. Manwin USA, Inc.,
`No. 13-2086 (PJS/JJG), 2014 U.S. Dist. LEXIS 183449 at *8
`(D. Minn. Oct. 29, 2014) ...................................................................................... 16
`
`
`
`
`
`vi
`
`

`

`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) ..................................................................................... 16
`
`
`TA Instruments-Waters LLC v. Malvern Panalytical Inc.,
`IPR2021-00210, Paper 9 at 10-11 ................................................................. 20, 23
`
`
`Toshiba Samsung Storage Tech. Korea Corp. v. LG Elecs., Inc.,
`193 F. Supp. 3d 345 (D. Del. 2016) ..................................................................... 16
`
`
`Transclean Corp. v. Bridgewood Servs.,
`290 F.3d 1364 (Fed. Cir. 2002) .............................................................................. 3
`
`
`Unigene Labs., Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011). ........................................................ 43, 44, 47, 51
`
`
`Verizon Business Network Services LLC v. Huawei Technologies Co., Ltd.,
`IPR2020-01278, Paper 12 at 14 (Jan. 26, 2021) .................................................. 26
`
`
`Wasica Fin. GmbH v. Cont'l Auto. Sys.,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................... 43, 47, 51
`
`
`ZTE (USA) Inc. v. Fractus, S.A.,
`IPR2018-01451, Paper 12 at 20 (PTAB Feb. 19, 2019) ...................................... 24
`
`
`Statutes
`
`35 U.S.C. § 314(a) .............................................................................................. 2, 14
`
`35 U.S.C. §103 ......................................................................................................... 43
`
`35 U.S.C. §315(b) ......................................................................................... 1, 13, 23
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`
`Regulations
`
`77 Fed. Reg. 48,680, 48,734 (Aug. 14, 2012) ......................................................... 17
`
`
`
`
`
`vii
`
`

`

`Table of Exhibits
`
`Exhibit #
`2101
`
`Description
`Supplemental Joint Patent Case Status Report and Claim
`Construction Statement, dated June 9, 2021
`
`2102
`
`Briefing Order regarding Claim Construction, dated April 26, 2021
`
`2103
`
`Amended Pretrial Order, dated May 12, 2021
`
`2104
`
`Pretrial Case Management Order, dated August 8, 2020
`
`2105
`
`2106
`
`2107
`
`2108
`
`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
`
`2109
`
`Declaration of Dr. Ralph E. White
`
`2110
`
`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) purported reproductions
`
`of embodiments described in the prior art. Regarding the alleged admissions of
`
`inherency by Applicant, Petitioner incorrectly interprets the statements they rely
`
`upon. A person of skill in the art (“POSA”) 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
`
`
`
`2
`
`

`

`an important variable, but it does not stand in a vacuum. POSAs would also know
`
`that other variables such as the electrode composition, dimensions/surface area,
`
`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” its two
`
`primary prior art references, Wikey and Davies, the apparatuses and methods
`
`Petitioner used were not “reproductions” at all. Instead, Petitioner created
`
`embodiments by picking and choosing different options for a series of parameters
`
`to create apparatuses and processes that are nowhere disclosed by Wikey and
`
`Davis. Even worse, Petitioner never accounts for the impact its choices had on the
`
`allegedly inherent results, and it 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 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.
`
`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.
`
`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
`
`
`
`4
`
`

`

`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.
`
`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
`
`
`
`5
`
`

`

`“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
`
`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
`
`
`
`6
`
`

`

`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. 1102 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. 2101. The parties also
`
`exchanged opening claim construction briefs on June 10, 2021, and will exchange
`
`reply briefs on July 22, 2021. See Ex. 2102. 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. Wikey (U.S. Patent No. 3,891,535)
`
`Wikey (Ex. 1112) is a very old reference from 1975 that describes a water
`
`treatment apparatus for use in aquariums to kill bacteria, aerate, and increase the
`
`circulation of water. Ex. 1112 at Abstract. Wikey describes a conventional
`
`electrolytic cell 13, such as that depicted in Fig. 3:
`
`
`
`8
`
`

`

`
`
`Wikey provides some design parameters for the electrolytic cell. Some of
`
`these variables are summarized as follows:
`
` Electrode composition: Platinum coated titanium (id. at 2:6-8)
`
` Electrode size: Unspecified, no guidance
`
` Electrode gap: 1/64 inch (id. at 2:39-41)
`
` Water flow rate: None other than any movement of water generated by
`
`rising bubbles
`
` Power sources:
`o Current: Depends on the size and conductivity of the water, but “in
`
`the order of ½ amp” (id. at 2:44-46)
`o Voltage: One example uses a 6 V battery (id. at 2:39-41)
`
`Wikey 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
`
`Wikey is directed.
`
`
`
`9
`
`

`

`B. Davies (U.S. Patent No. 4,917,782 to Davies)
`
`Davies (Ex. 1105) describes a method and apparatus for clarifying liquid
`
`that involves the use of an electrolytic cell to remove impurities from water or oil
`
`by adhering the impurities to an electrode. Ex. 1105 at Abstract; 1:25-57. These
`
`impurities can periodically be purged by reversing the polarity and flow of water,
`
`and trapping them in a filter. Impurities that can be removed from the liquid
`
`include chlorine, alkaline material, and biological materials such as algae and
`
`microbes/bacteria. Id. at 1:45-50. The device is used as a “finishing” clarifier
`
`after water has been treated. Id. at 2:46-58.
`
`Davies describes two different general designs for electrolytic cells that can
`
`be used to clarify water. The first embodiment is designed for use where the liquid
`
`will be filtered/clarified only one time, i.e. “a single pass.” Id. at 1:36-41. This
`
`design has a series of plates arranged in a cantilever fashion to produce a long
`
`sinuous path through which liquid flows as illustrated by the arrows in Fig. 2. Id.
`
`at 2:58-3:38.
`
`
`
`10
`
`
`
`

`

`Davies provides some design parameters for this first embodiment, which are
`
`summarized as follows:
`
` Electrode composition: An “inert material, such as titanium coated with
`
`ruthenium oxide” (id. at 3:60-66)
`
` Electrode size: “For most purposes the plate width should be 3 to 5
`
`inches” and the length of the plate is preferably “in the range of 5 to 10
`
`inches” (id. at 3:43-59)
`
` Electrode gap: From one-eighth to one-quarter inch (id.)
`
` Water flow rate: 8 to 20 feet per minute “so that the water will be in
`
`contact with the plates for a period of 15 to 40 seconds” (id.)
`
` Power sources:
`o Current: Unspecified
`o Voltage: “[A] low voltage, such as 12V or 24V, depending on the
`
`particular type of installation for which the clarifier is to be used”
`
`(id. at 8:68-9:9)
`
`Davies describes a second embodiment designed for continuous clarification
`
`of a body of liquid. In this design the liquid passes through a single pair of
`
`electrodes instead of the long, sinuous path in the first embodiment. This design is
`
`identified for use in, among other things, clarifying the water in a hot tub. Id. at
`
`7:50-58. This design is illustrated in Figure 11:
`
`
`
`11
`
`

`

`
`
`Davies does not identify different design parameters for this design compared to
`
`the first embodiment, except that he does explain that “the time of contact of the
`
`liquid with the anode plates in such a through-passage cell would be only
`
`approximately one-seventh as long” as it is in the first embodiment having the
`
`sinuous liquid pathway. Id. at 7:1-7.
`
`Davies does describe one example where water is passed from a holding
`
`tank that serves well water to one or two houses (as distinguished from a larger
`
`commercial well) to an electrolytic clarifier. Id. at 5:22-36. In this particular
`
`arrangement the flow rate is 1 gallon/minute. Id. at 33-36. But Davies does not
`
`identify any other parameters for this arrangement, such as composition or size of
`
`the electrode plates, the distance between the electrodes, or the power supply.
`
`Davies never provides any guidance on how to achieve micro- or
`
`nanobubbles as neither oxygenation nor the formation of bubbles is a goal or
`
`outcome to which Davies is directed.
`
`
`
`12
`
`

`

`VI. THE BOARD SHOULD DECLINE TO INSTITUTE REVIEW
`
`A. ALL GROUNDS: Institution Should Be Denied Pursuant to 35
`U.S.C. § 314(a)
`Patent Owner filed litigation against Petitioner involving the ’415 Patent in
`
`the District of Minnesota 17 months ago. See Oxygenator Water Techs. v.
`
`Tennant Co., Civil Action No. 20-cv-358 (D. Minn.). Petitioner waited until
`
`March 9, 2020—the two days prior to the bar imposed by 35 U.S.C. § 315(b)—to
`
`file the petition at issue. As a result of Petitioner’s decision to wait until the last
`
`minute to file, the parties will have already completed claim construction briefing
`
`and arguments and exchanged opening expert reports concerning invalidity before
`
`the September 9, 2021 deadline for the Board’s decision on the petition. They will
`
`also be in the midst of preparing responsive expert reports, which are due less than
`
`two weeks after the institution decision. Nor does the litigation slow down at that
`
`point. The parties must be prepared for trial to begin April 18, 2022—about 5
`
`months before the deadline for a final written decision by this Board. And the
`
`invalidity defenses presented by Petitioner are fully redundant with defenses
`
`Petitioner has raised in the district court litigation. For these reasons, and pursuant
`
`to the other Fintiv factors discussed in more detail below, “efficiency and integrity
`
`
`
`13
`
`

`

`of the system are best served” by denying institution pursuant to § 314(a). Fintiv,
`
`Paper 11 at 6.
`
`This Office “is permitted, but never compelled, to institute an IPR.” Mylan
`
`Labs. Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021).
`
`Discretionary denial under 35 U.S.C. § 314(a) is warranted when parallel district
`
`court proceedings that raise the same issues of invalidity would render a trial at the
`
`PTAB an inefficient use of USPTO resources. NHK Spring Co. v. Intri-Plex
`
`Techs., Inc., IPR2018-00752, Paper 8, 19-20 (PTAB Sept. 12, 2018) (