Paper 53
`Trials@uspto.gov
`571-272-7822
` Entered: August 17, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00625
`Patent RE45,415 E
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`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Granting Patent Owner’s Motion to Seal (Paper 37)
`37 C.F.R. §§ 42.55
`
`
`
`
`Trials@uspto.gov
`571-272-7822
` Entered: August 17, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00625
`Patent RE45,415 E
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Granting Patent Owner’s Motion to Seal (Paper 37)
`37 C.F.R. §§ 42.55
`
`
`
`
`
`IPR2021-00625
`Patent RE45,415 E
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`
`INTRODUCTION
`I.
`Tennant Company (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 13, 14, and 17–27 of U.S. Patent
`No. RE45,415 E (Ex. 1101, “the ’415 patent”). Oxygenator Water
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 8).
`We instituted an inter partes review of claims 13, 14, and 17–27 of
`the ’415 patent on the grounds of unpatentability alleged in the Petition.
`Paper 9 (“Dec.”). After institution of trial, Patent Owner filed a Patent
`Owner Response. Paper 34 (private version), Paper 35 (public version)
`(“PO Resp.”). Petitioner filed a Reply. Paper 42 (“Reply”). Patent Owner
`filed a Sur-Reply. Paper 45 (“Sur-Reply”). Patent Owner filed a Motion to
`Seal. Paper 37. We held an oral hearing on May 20, 2022, and a transcript
`of the hearing is included in the record. Paper 52 (“Tr.”).
`This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has not shown by a
`preponderance of the evidence that claims 13, 14, and 17–27 of the ’415
`patent are unpatentable.
`A. Related Proceedings
`The parties identify Oxygenator Water Technologies, Inc. v. Tennant
`Company, No. 0:20-cv-00358-ECT-HB (D. Minn.) as a related matter.
`Pet. 86–87; Paper 5, 1.
`B. The ’415 Patent
`The ’415 patent is a reissue of U.S. Patent No. 7,670,495 and is titled
`“Flow-Through Oxygenator.” Ex. 1101, codes (54), (64). The ’415 patent
`“relates to the electrolytic generation of microbubbles of oxygen for
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`increasing the oxygen content of flowing water,” and “also relates to the use
`of superoxygenated water to enhance the growth and yield of plants;” its
`flow-through model “is useful for oxygenating water for hydroponic plant
`culture, drip irrigation and waste water treatment.” Id. at 1:24–30.
`The ’415 patent explains that the “production of oxygen and hydrogen
`by the electrolysis of water is well known,” in which hydrogen gas and basic
`water are produced at the cathode during electrolysis, and oxygen gas and
`acidic water are produced at the anode. Id. at 2:5–6, 2:9–11, 2:21–23.
`The ’415 patent explains that pumps to supply oxygen have high power
`requirements and produce acidic and basic water, which can be detrimental
`to live animals. Id. at 2:47–50. In view of this, the ’415 patent expresses a
`need for “quiet, portable, low voltage means to oxygenate water” and for
`oxygenator models suitable to be placed in-line in water distribution devices
`and for hydroponic culture. Id. at 2:52–54, 2:60–62.
`The ’415 patent describes “an oxygen emitter which is an electrolytic
`cell which generates very small microbubbles and nanobubbles of oxygen in
`an aqueous medium, which bubbles are too small to break the surface
`tension of the medium, resulting in a medium supersaturated with oxygen.”
`Id. at 2:66–3:3. Figure 1B of the ’415 patent is reproduced below.
`
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`3
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`Figure 1B depicts oxygen emitter 6 that includes anode 1, cathode 2, and
`non-conducting spacer 3 having gap 4 for the passage of gas and the mixing
`of anodic and cathodic water. Id. at 3:46, 4:60–67, 5:2.
`The ’415 patent states that “to form microbubbles and nanobubbles,
`the anode and cathode are separated by a critical distance.” Id. at 3:13–14.
`The’415 patent defines “critical distance” as “the distance separating the
`anode and cathode at which evolved oxygen forms microbubbles and
`nanobubbles.” Id. at 4:1–3. The ’415 patent describes the critical distance
`
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`as ranging “from 0.005 inches to 0.140 inches” and that the “preferred
`critical distance is from 0.045 to 0.060 inches.” Id. at 3:14–16. With regard
`to Figure 1B’s embodiment, the ’415 patent states:
`The spacer thickness is critical as it sets the critical distance. It
`must be of sufficient thickness to prevent arcing of the current,
`but thin enough to separate the electrodes by no more than 0.140
`inches. Above that thickness, the power needs are higher and the
`oxygen bubbles formed at higher voltage will coalesce and
`escape the fluid. Preferably, the spacer is from 0.005 to 0.075
`inches thick. At the lower limits, the emitter tends to foul more
`quickly. Most preferably, the spacer is about 0.050 inches thick.
`Id. at 5:4–13.
`Illustrative Claim
`C.
`Claim 13 is the sole independent claim of the challenged claims.
`Claim 13 is representative and is reproduced below:
`13. A method for producing an oxygenated aqueous
`composition comprising:
`flowing water at a flow rate no greater than 12 gallons per
`minute through an electrolysis emitter comprising an
`electrical power source electrically connected to an anode
`electrode and a cathode electrode contained in a tubular
`housing,
`causing electricity to flow from the power source to the
`electrodes, and,
`producing the composition comprising a suspension
`comprising oxygen microbubbles and nanobubbles in the
`water, the microbubbles and nanobubbles having a
`bubble diameter of less than 50 microns, wherein:
`the anode electrode is separated at a critical distance from
`the cathode such that the critical distance is from 0.005
`inches to 0.140 inches;
`the power source produces a voltage no greater than
`about 28.3 volts and an amperage no greater than about
`13 amps,
`
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`the tubular housing has an inlet and an outlet and a tubular
`flow axis from the inlet to the outlet;
`the water flows in the inlet, out the outlet, is in fluid
`connection with the electrodes, and the water flowing
`into the inlet has a conductivity produced by the presence
`of dissolved solids such that the water supports plant or
`animal life.
`Ex. 1101, 11:20–45.
`Instituted Grounds of Unpatentability
`D.
`We instituted inter partes review of claims 13, 14, and 17–27 of
`the ’415 patent on the following grounds:
`
`Ground
`
`Reference(s)/Basis
`
`35 U.S.C. §1
`
`1
`2
`3
`
`Wikey2
`Wikey, AFD3
`Wikey, AFD, the general
`knowledge, experience, and
`common sense of a POSITA,
`
`§ 102
`§ 103
`
`§ 103
`
`Claim(s)
`Challenged
`13, 18–23, 25
`13, 18–23, 25
`
`13, 18–23, 25
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and 103 that became
`effective on March 16, 2013. Because the ’415 patent issued from an
`application filed before March 16, 2013, we apply the pre-AIA version of
`§§ 102 and 103.
`2 US 3,891,535, issued June 24, 1975 (Ex. 1112).
`3 M. Hargrove & M. Hargrove, Aquariums for Dummies, IDG Books
`Worldwide, Inc. (1999) (Ex. 1114).
`
`
`
`
`6
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`
`Ground
`
`4
`5
`6
`
`7
`8
`9
`
`Reference(s)/Basis
`as reflected in Wendt, 4 Han,5
`Glembotsky, 6 and Burns7
`Wikey, Clark8
`Wikey, Clark, AFD
`Wikey, Clark, AFD, the
`general knowledge,
`experience, and common
`sense of a POSITA, as
`reflected in Wendt, Han,
`Glembotsky, and Burns
`Davies9
`Davies, Hough10
`Davies, Erickson11
`
`35 U.S.C. §1
`
`Claim(s)
`Challenged
`
`§ 103
`§ 103
`
`26, 27
`26, 27
`
`§ 103
`
`26, 27
`
`§ 102
`§ 103
`§ 103
`
`13, 14, 17–23, 25
`13, 14, 17–23, 25
`13, 14, 17–23, 25
`
`
`4 H. Wendt & G. Kreysa, Electrochemical Engineering: Science and
`Technology in Chemical and Other Industries, Springer-Verlag Berlin
`Heidelberg, 81–127 (1999) (Ex. 1117).
`5 M. Han et al., Development of a New Method of Measuring Bubble Size,
`Water Sci. and Tech.: Water Supply Vol. 2 No. 2, 77–83 (2002) (Ex. 1137).
`6 V. Glembotsky et al., Size of gas bubbles forming during electroflotation,
`5 Elektronnaia Obrabotka Materialov 66–68 (1973) (Ex. 1123). Petitioner
`provides a certified English translation of Glembotsky (Ex. 1124).
`7 S. Burns et al., Application of Digital Image Analysis for Size Distribution
`Measurement of Microbubbles, Imaging Technologies: Techniques and
`Civil Engineering Applications Engineering Foundation (1997) (Ex. 1131).
`8 US 4,039,439, issued Aug. 2, 1977 (Ex. 1106).
`9 US 4,917,782, issued Apr. 17, 1990 (Ex. 1105).
`10 US 6,171,469 B1, issued Jan. 9, 2001 (Ex. 1141).
`11 US 5,324,398, issued June 28, 1994 (Ex. 1107).
`
`
`
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`7
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`
`Ground
`
`Reference(s)/Basis
`
`35 U.S.C. §1
`
`10
`11
`
`12
`
`13
`14
`15
`16
`
`17
`
`18
`
`§ 103
`
`§ 103
`
`§ 103
`
`Davies, Erickson, Hough
`Davies, Erickson, the general
`knowledge, experience, and
`common sense of a POSITA,
`as reflected in Wendt, Han,
`Glembotsky, and Burns
`Davies, Erickson, Hough,
`the general knowledge,
`experience, and common
`sense of a POSITA, as
`reflected in Wendt, Han,
`Glembotsky, and Burns
`§ 103
`Davies, Schoeberl12
`§ 103
`Davies, Schoeberl, Hough
`Davies, Erickson, Schoeberl § 103
`Davies, Erickson, Schoeberl,
`Hough
`Davies, Erickson, Schoeberl,
`the general knowledge,
`experience, and common
`sense of a POSITA, as
`reflected in Wendt, Han,
`Glembotsky, and Burns
`Davies, Erickson, Schoeberl,
`Hough, the general
`knowledge, experience, and
`common sense of a POSITA,
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`12 US 5,439,576, issued Aug. 8, 1995 (Ex. 1108).
`8
`
`
`
`Claim(s)
`Challenged
`13, 14, 17–23, 25
`
`13, 14, 17–23, 25
`
`13, 14, 17–23, 25
`
`24
`24
`24
`
`24
`
`24
`
`24
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`Ground
`
`19
`20
`21
`22
`
`23
`
`24
`
`Reference(s)/Basis
`as reflected in Wendt, Han,
`Glembotsky, and Burns
`Davies, Peters13, 14
`Davies, Peters, Hough
`Davies, Peters, Erickson
`Davies, Peters, Erickson,
`Hough
`Davies, Peters, Erickson, the
`general knowledge,
`experience, and common
`sense of a POSITA, as
`reflected in Wendt, Han,
`Glembotsky, and Burns
`Davies, Peters, Erickson,
`Hough, the general
`knowledge, experience, and
`common sense of a POSITA,
`as reflected in Wendt, Han,
`Glembotsky, and Burns
`
`35 U.S.C. §1
`
`Claim(s)
`Challenged
`
`§ 103
`§ 103
`§ 103
`§ 103
`
`26, 27
`26, 27
`26, 27
`
`26, 27
`
`§ 103
`
`26, 27
`
`§ 103
`
`26, 27
`
`
`13 US 3,984,303, issued Oct. 5, 1976 (Ex. 1109).
`14 Petitioner cites Clark instead of Peters for Grounds 19–24 in the summary
`on pages 5–6 of the Petition. However, Petitioner cites Peters in its detailed
`challenges for Grounds 19–24 on pages 79–83 of the Petition. Therefore, as
`noted in the Institution Decision (Dec. 8 n.14), and without any clarification
`otherwise from the parties, we view Petitioner as relying on Peters in
`Grounds 19–24 instead of Clark.
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`Petitioner relies on the declaration testimony of Dr. Mario Tremblay.
`Ex. 1103. Patent Owner relies on the declaration testimony of Dr. Ralph E.
`White. Ex. 2109; Ex. 2116 (private version); Ex. 2117 (public version).
`II. ANALYSIS
`
`A. Legal Standards
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). A “prior art reference—in order to anticipate under
`35 U.S.C. § 102—must not only disclose all elements of the claim within the
`four corners of the document, but must also disclose those elements
`‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
`1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722
`F.2d 1542, 1548 (Fed. Cir. 1983)). If a prior art device in its normal and
`usual operation would necessarily perform the claimed method, then the
`method is arguably inherently anticipated by the prior art device. In re
`King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). A “prior art reference may
`anticipate when the claim limitation or limitations not expressly found in
`that reference are nonetheless inherent in it.” Mehl/Biophile Int’l Corp. v.
`Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious to a person of
`ordinary skill in the art at the time the invention was made. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is resolved based on
`underlying factual determinations, including: (1) the scope and content of
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`the prior art; (2) differences between the prior art and the claims at issue;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness, i.e., secondary considerations. 15 Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966). Subsumed within the Graham
`factors are the requirements that all claim limitations be found in the prior
`art references and that the skilled artisan would have had a reasonable
`expectation of success in combining the prior art references to achieve the
`claimed invention. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
`Cir. 2007).
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). Petitioner must demonstrate unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2019); see also Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356,
`1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter
`partes review petitions to identify “with particularity . . . the evidence that
`supports the grounds for the challenge to each claim”)).
`B. Level of Ordinary Skill in the Art
`Petitioner asserts:
`A person of ordinary skill in the art (POSITA) would have had a
`degree in chemistry, chemical engineering, or a similar discipline
`
`15 Patent Owner presents evidence and arguments about objective indicia of
`nonobviousness, namely, copying. PO Resp. 64–68. Because we determine
`that Petitioner has not demonstrated a sufficient basis for obviousness of the
`challenged claims, we need not reach Patent Owner’s evidence and
`arguments relating to objective indicia.
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`and at least two years of experience with electrolysis systems.
`Ex. 1103, ¶ 14. Alternatively, a POSITA could have equivalent
`experience
`in
`industry or research, such as designing,
`developing, testing, or implementing electrolysis systems. Id.
`Also, as noted in the ʼ415 patent, a POSITA “can readily
`fabricate any of the emitters shown in FIG. 4 or 5 or can design
`other embodiments that will oxygenate flowing water.”
`Ex. 1101, 9:20–22.
`Pet. 16.
`Patent Owner states, for “purposes of this proceeding, PO does not
`challenge Petitioner’s proposed level of ordinary skill.” PO Resp. 53 n.6.
`Neither party argues that the outcome of this case would differ based
`on our adoption of any particular definition of one of ordinary skill in the art.
`Accordingly, we adopt Petitioner’s definition, because it is consistent with
`the cited prior art. We further note that the prior art itself demonstrates the
`level of skill in the art at the time of the invention. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific
`findings on the level of skill in the art . . . [are not required] ‘where the prior
`art itself reflects an appropriate level and a need for testimony is not
`shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985))).
`C. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
`§ 42.100(b). Under Phillips, claim terms are afforded “their ordinary and
`customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
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`invention.” Id. at 1313. Only terms that are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`In the Petition, Petitioner refers us to definitions for certain terms in
`the ’415 patent’s “Definitions” section, namely, “critical distance,”
`“microbubble,” “nanobubble,” and “supersaturated.” Pet. 17–18 (quoting
`Ex. 1101, 4:1–6, 4:10–18). Otherwise, Petitioner does not propose express
`claim constructions in the Petition, although it addresses Patent Owner’s
`proposed constructions in its Reply, as discussed below. Reply 2–5.
`Patent Owner represents that the parties agree that the construction of
`“nanobubble” should include the language “a bubble with a diameter less
`than that necessary to break the surface tension of the water.” PO Resp. 10–
`11. Patent Owner disputes Petitioner’s requested inclusion of additional
`language requiring that “nanobubbles remain suspended in the water, giving
`the water an opalescent or milky appearance.” Id. at 11.
`Petitioner argues that the ’415 patent defines both “microbubble” and
`“nanobubble.” Reply 2 (quoting Ex. 1101, 4:10–15). The quoted portion of
`the ’415 patent is reproduced below:
`“Microbubble” means a bubble with a diameter less than
`50 microns.
`“Nanobubble” means a bubble with a diameter less than that
`necessary to break the surface tension of water. Nanobubbles
`remain suspended in the water, giving the water an opalescent or
`milky appearance.
`
`Ex. 1101, 4:10–15.
`
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`Petitioner notes that the ’415 patent’s definition of “microbubble” has a
`numerical bound but the definition of “nanobubble” does not. Id. at 3. 16
`Because patentee has acted as its own lexicographer, and because
`Petitioner agrees that the definition provided in the specification is the
`preferred construction, we adopt the construction of “nanobubble” provided
`in the specification. Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 796
`(Fed. Cir. 2019) (citing Phillips, 415 F.3d at 1316) (“When the patentee acts
`as its own lexicographer, that definition governs.”). Namely, we construe
`“nanobubble” as “a bubble with a diameter less than that necessary to break
`the surface tension of water.” Ex. 1101, 4:12–13. We decline to add any
`additional language to our construction, as proposed by Petitioner, because
`the additional quoted sentence in the specification appears to describe an
`effect of nanobubbles on the appearance of water when nanobubbles are
`present, rather than define the nanobubbles themselves.
`On this record, we determine that no other claim terms require express
`construction.
`D. Summary of Relevant Prior Art
`1. Wikey (Ex. 1112)
`Wikey is titled “Aquarium Water Treatment Apparatus.” Ex. 1112,
`code (54). Wikey’s Figure 1 is reproduced below.
`
`
`16 While not set forth as part of an explicit claim construction, Petitioner’s
`declarant elsewhere opines that nanobubbles have a diameter of roughly 100
`nanometers (0.1 microns). Ex. 2172, 69:11–25; Sur-Reply 2.
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`Figure 1 depicts water treatment apparatus 11 “for aerating and treating
`water in fish tanks, aquariums and the like.” Id. at 1:60–61, 1:66–2:1.
`Power supply 12, which can be a DC source, feeds power to electrode
`units 13 that are under water. Id. at 2:1–4, 2:23–24. Electrode units 13
`include electrodes 16 and 17 that are oppositely polarized plates. Id. at 2:4–
`11. The plates are mounted on insulated rod 26 and separated from each
`other by insulated washers 27. Id. at 2:18–20. Apparatus 11 also includes a
`means for periodically changing the polarity of the electrodes, such as
`motor 32 that drives cam 33 and switches 36, 37. Id. at 2:26–33.
`Wikey discloses that in “a preferred embodiment of the invention, the
`plates are maintained at a distance of 1/64 inch apart by the insulators and
`a 6 volt D.C. source is utilized.” Id. at 2:39–41. Wikey further teaches that
`the amperage between the plates depends on plate size and the conductivity
`of water but nonetheless, “the relative amperage of the preferred
`embodiment is in the order of ½ amp.” Id. at 2:42–46. Wikey states that,
`with a “platinum coated titanium plate, the bubbles of gas including oxygen
`are extremely small.” Id. at 2:49–51.
`
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`Wikey’s Figure 3 is reproduced below.
`
`
`Figure 3 shows a further refinement of apparatus 11. Id. at 1:64–65. A
`circulating device, such as vertical tube 41, surrounds electrolysis unit 13.
`Id. at 3:6–8. Bottom 42 of tube 41 “is open to enable the flow of water
`therein” and top 43 of tube 41 “is also open and extends above the normal
`level of water in the tank.” Id. at 3:10–13. Wikey teaches:
`A pumping action in tube 41 is caused by the electrolysis action
`of apparatus 13. In fact, the level of the water in tube 41
`increases until water is flowing in the direction shown by arrows
`44 in the horizontal tube 46 and back down through second
`vertical tube 47. The water that flows through the three tubes is
`forced therethrough by the electrolysis action and because of the
`electrolysis action contains a plethora of oxygen bubbles. The
`hydrogen that is released in tube 41 escapes into the atmosphere
`at opening 43. The water containing the oxygen bubbles passes
`back down through tube 47 which is open at the bottom portion
`48 thereof to enable aerated water to flow therethrough and
`supply oxygen to the lower levels of the tank.
`Id. at 3:13–27.
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`2. Davies (Ex. 1105)
`Davies is titled “Electrolytic Liquid Purification Process and
`Apparatus.” Ex. 1105, code (54). Davies “relates to a process and apparatus
`for electrolytically treating water and other liquids” and “for treating water
`to be used for drinking purposes or for human body contact.” Id. at 1:7–10.
`Davies’s Figure 2 is reproduced below.
`
`
`Figure 2 is a side view of a clarifying electrolytic cell. Id. at 1:66–2:1. The
`electrolytic cell includes cylindrical casing 1 connected to liquid supply
`pipe 2 and liquid discharge pipe 3. Id. at 2:60–63. Davies describes interior
`chamber 4 that includes “a stack of electrode plates including two
`components or plate sets disposed in interstratified or interleaved
`relationship” and that Figure 2 shows grouped anode plates 5 and grouped
`cathode plates 6 in an interleaved relationship. Id. at 2:63–68. Specifically,
`“anode plates 5 project in parallel, equally-spaced, cantilever fashion from
`an end connecting plate 7” and “cathode plates 6 project in parallel, equally-
`spaced, cantilever fashion from an end connecting plate 8.” Id. at 2:68–3:4.
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`Davies’s Figure 3 is reproduced below.
`
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`Davies describes the opposite edges of electrode plates 5, 6 being held by
`mounting blocks 9 located at opposite sides of the electrode stack to hold
`electrode plates 5, 6 “firmly in accurately spaced relationship.” Id. at 3:5–
`13. Spaces above and below the stack of plates 5, 6 are closed by filler
`blocks 11. Id. at 3:19–20.
`Davies describes interleaving anode plates 5 and cathode plates 6 so a
`free end of each cantilevered plate is spaced from the adjacent end plate a
`distance that is approximately equal to the spacing between adjacent plates
`to form a series of return bends and provide a sinuous passage from the
`entrance end of the casing to the exit end through the plate stack. Id.
`at 3:25–32. Davies teaches that for “most purposes the plate width should
`be in the range of 3 to 5 inches (7.62 to 12.7 cm) and the spacing between
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`adjacent plates should be one-eighth to one-quarter of an inch (3.5 to 7
`mm),” and that it is “desirable for the space between adjacent plates to be
`small so as to provide a short path for travel of electricity between the
`plates.” Id. at 3:43–49. Davies further teaches:
`The time during which the liquid is subjected to the electric field
`between the anode and cathode plates can be regulated by
`selection of the length of the path between the liquid and the
`plates which is determined by the length of the plates, and by the
`velocity of the liquid flowing through the interplate passage.
`Preferably the length of the plates 5 and 6 is in the range of 5
`inches to 10 inches (12.7 to 25.4 cm) and the velocity of the water
`may be 8 to 20 feet (2.4 to 6 m) per minute so that the water will
`be in contact with the plates for a period of 15 to 40 seconds.
`Id. at 3:49–59.
`Davies discloses that the cell can be powered by a 110 volt or a 220
`volt alternating current source, which can be transformed to a low voltage,
`such as 12 volts or 24 volts. Id. at 4:26–30, 8:68–9:5. Davies also describes
`using direct current electricity, such as a 12 volt battery. Id. at 5:65–68.
`Davies describes installing the cell in a household water system via
`connection to the cold water supply for a sink or a wash bowl. Id. at 4:66–
`5:1.
`
`Davies’s Figure 11 is reproduced below.
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`Figure 11 depicts an alternate type of clarifying electrolytic cell. Id. at 2:17–
`20. Davies teaches that anode plates 5a and cathode plates 6a “can be of the
`same size as the anode plates 5 and the cathode plates 6, as shown in
`FIGS. 1, 2, 3 and 4.” Id. at 6:43–47. However, anode plates 5a project in
`cantilever fashion from central connecting strap 7a, and cathode plates 6a
`project in cantilever fashion from connecting strap 8a. Id. at 6:47–52.
`Davies describes substantially straight parallel flow paths between plates 5a,
`6a from inlet 2 to outlet 3. Id. at 6:63–68. Davies further describes using an
`electrolytic cell to maintain an aquarium’s liquid in clean condition. Id.
`at 7:36–40. Davies teaches that a filter is not necessary in such an
`arrangement due to recirculation of water in the aquarium by a pump
`through the cell. Id. at 7:41–43.
`E. Asserted Anticipation of Claims 13, 18–23, and 25 by Wikey
`(Ground 1)
`1. Arguments
`Petitioner argues that Wikey anticipates claims 13, 18–23, and 25.
`Pet. 19–38; Reply 5–12. Patent Owner argues that Wikey does not
`anticipate. PO Resp. 18–32; Sur-Reply 1–15.
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`With respect to claim 13, Petitioner asserts that every element of
`claim 13 is found in Wikey, as follows:
`[pre] A method for producing an oxygenated aqueous composition
`comprising (Pet. 22; id. at 19–29 (summarizing Wikey’s method of
`producing “a suspension comprising microbubbles and nanobubbles in the
`water”));17
`[13a] flowing water at a flow rate no greater than 12 gallons per
`minute through an electrolysis emitter (Pet. 30 (relying on Ex. 1112, 3:10–
`11; Ex. 1103 ¶¶ 32, 61, 68, 69));
`[13b] comprising an electrical power source electrically connected to
`an anode electrode and a cathode electrode contained in a tubular housing,
`causing electricity to flow from the power source to the electrodes, and,
`(Pet. 30–31 (relying on Ex. 1112, 2:22–24, 2:1–11, 3:1–8, Fig. 3; Ex. 1103
`¶¶ 29–30));
`[13c] producing the composition comprising a suspension comprising
`oxygen microbubbles and nanobubbles in the water, the microbubbles and
`nanobubbles having a bubble diameter of less than 50 microns, (Pet. 31–32
`(relying on Ex. 1112, 2:39–41, 2:47–52, 3:18–21; Ex. 1103 ¶¶ 34–35, 61,
`68));
`
`[13d] wherein: the anode electrode is separated at a critical distance
`from the cathode such that the critical distance is from 0.005 inches to 0.140
`inches; (Pet. 32 (relying on Ex. 1112, 2:39–41; Ex. 1103 ¶ 34));
`[13e] the power source produces a voltage no greater than about 28.3
`volts and an amperage no greater than about 13 amps, (Pet. 32 (relying on
`
`
`17 We express no opinion on whether the preamble is limiting.
`21
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`Ex. 1112, 1:40–43, 2:39–41, 2:44–46));
`[13f] the tubular housing has an inlet and an outlet and a tubular flow
`axis from the inlet to the outlet; (Pet. 33 (relying on Ex. 1112, 3:10–18,
`Fig. 3));
`[13g] the water flows in the inlet, out the outlet, is in fluid connection
`with the electrodes, (Pet. 33 (relying on Ex. 1112, 2:42–44; Ex. 1103 ¶ 31));
`[13h] and the water flowing into the inlet has a conductivity produced
`by the presence of dissolved solids such that the water supports plant or
`animal life (Pet. 33–34 (relying on Ex. 1112, 3:38–39; Ex. 1103 ¶ 36)).
`Petitioner presents additional arguments that Wikey anticipates
`claims 18–23 and 25. Pet. 34–38.
`2. Analysis
`As we noted in our Institution Decision, Wikey appears to disclose
`each limitation of claim 13 except “microbubbles and nanobubbles having a
`bubble diameter of less than 50 microns.” Dec. 24–25; Pet. 30–34.
`Petitioner argues that Wikey’s apparatus “forms a ‘plethora of oxygen
`bubbles’ that are ‘extremely small.’” Pet. 31 (citing Ex. 1112, 2:47–52,
`3:18–21). Petitioner also argues that the ’415 patent “admits that the
`claimed critical distance creates microbubbles and nanobubbles” and the
`“Wikey emitter has the same configuration as claim 13 and therefore
`produces the same result.” Id. at 31–32 (citing Ex. 1101, Abstract; Ex. 1103
`¶¶ 35, 61, 68). Petitioner reconstructed the Wikey apparatus using
`information provided in Wikey as to physical characteristics, i.e. “electrode
`spacing of 0.016 inches and a voltage of 6 volts,” and amperage “depending
`on the size of the electrode plates and the conductivity of the water” that can
`be “in the order of ½ amp.” Id. at 22; Ex. 1112, 2:39–46; Ex. 1103 ¶¶ 33,
`22
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`49, 56, 61, 68. Petitioner also relied on Wikey’s guidance on electrode plate
`size in relation to amperage and conductivity of the water, namely,
`“8 circular electrode plates having a 2-inch diameter” in its reconstructed
`apparatus. Ex. 1103 ¶ 42.
`Although we indicated in our Institution Decision that Petitioner need
`not test every possible iteration and parameter of a reference to make a
`successful inherent anticipation case (Dec. 25, citing Perricone v. Medicis
`Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005)), Petitioner
`nevertheless must demonstrate either express or inherent anticipation.
`Petitioner has accounted for most of the limitations of claim 13 in
`Wikey, but disclosure of microbubbles and nanobubbles is lacking.
`Petitioner’s arguments for the express or inherent creation of microbubbles
`and nanobubbles, on the record developed during trial, are not persuasive.
`a. Express Creation of Microbubbles and Nanobubbles
`Patent Owner argues that Wikey does not expressly teach the creation
`of microbubbles or nanobubbles, and is not directed to the formation of
`microbubbles or nanobubbles. PO Resp. 19. We agree with Patent Owner
`that Wikey does not expressly disclose microbubbles or nanobubbles, and
`that the Petition “does not even contend that Wikey expressly discloses that
`its device creates microbubbles or nanobubbles.” Id. (citing Pet. 31–32);
`compare Tr. 14:14–23 (Petitioner stating “Wikey does explicitly disclose the
`presence of the nanobubbles and microbubbles”) with id. at 35:8–17 (Patent
`Owner characterizing this as “a new argument on appeal” (citing Pet. 31)).
`b.
`Inherent Creation of Microbubbles or Nanobubble
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