Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: August 20, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: August 20, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`
`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. 1001, “the ’415 patent”). Oxygenator Water
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Response to the
`Petition (Paper 8, “Prelim. Resp.”).
`To institute inter partes review, we must determine that the
`information presented in the Petition shows “there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed
`below, after considering the parties’ submissions and the evidence of record,
`we determine that Petitioner has demonstrated a reasonable likelihood of
`prevailing with respect to at least one claim of the ’415 patent. Thus, we
`institute an inter partes review.
`A. Related Proceedings
`The parties identify Oxygenator Water Technologies, Inc. v. Tennant
`Company, No. 0:20-cv-00358-ECT-HB (D. Minn.) (“the District Court
`litigation”) as a related matter. Pet. 86–87; Paper 5, 1. Patent Owner also
`identifies IPR2021-00602 as another proceeding filed by Petitioner against
`the ’415 patent. Paper 5, 1.
`B. Real Parties-In-Interest
`The parties identify themselves as real parties-in-interest. Pet. 86;
`Paper 5, 1.
`C. 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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`Patent RE45,415 E
`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 for in-line water distribution 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.
`
`3
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`IPR2021-00625
`Patent RE45,415 E
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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 “[i]n order 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 as ranging “from 0.005 inches to 0.140 inches” and that the
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`Patent RE45,415 E
`“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.
`D. Illustrative Claim
`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,
`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
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`IPR2021-00625
`Patent RE45,415 E
`the inlet has a conductivity produced by the presence of
`dissolved solids such that the water supports plant or animal
`life.
`Ex. 1001, 11:20–45.
`E. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 13, 14, and 17–27 of the ’415 patent
`are unpatentable on the following grounds. Pet. 4–6, 19–83.
`
`Ground
`
`References
`
`1
`
`2
`
`Wikey2
`
`Wikey, AFD3
`
`Basis1
`
`§ 102
`
`§ 103
`
`Claim(s)
`Challenged
`13, 18–23, 25
`
`13, 18–23, 25
`
`3
`
`§ 103
`
`13, 18–23, 25
`
`Wikey, AFD, the general
`knowledge, experience, and
`common sense of a POSITA, as
`reflected in Wendt,4 Han,5
`Glembotsky,6 and Burns7
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the ’415 patent
`has an effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of §§ 102, 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).
`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,
`vol. 2 no. 2 Water Sci. and Tech.: Water Supply 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).
`
`6
`
`
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`
`Ground
`
`References
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`Basis1
`
`§ 103
`
`§ 103
`
`Claim(s)
`Challenged
`26, 27
`
`26, 27
`
`§ 103
`
`26, 27
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`13, 14, 17–23, 25
`
`13, 14, 17–23, 25
`
`13, 14, 17–23, 25
`
`13, 14, 17–23, 25
`
`§ 103
`
`13, 14, 17–23, 25
`
`§ 103
`
`13, 14, 17–23, 25
`
`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
`
`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
`
`Davies, Schoeberl12
`
`Davies, Schoeberl, Hough
`
`§ 103
`
`§ 103
`
`24
`
`24
`
`
`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).
`12 US 5,439,576, issued Aug. 8, 1995 (Ex. 1108).
`
`
`7
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`Ground
`
`References
`
`Basis1
`
`Claim(s)
`Challenged
`24
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`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, as reflected in
`Wendt, Han, Glembotsky, and
`Burns
`
`§ 103
`
`24
`
`§ 103
`
`24
`
`§ 103
`
`24
`
`Davies, Peters1314
`
`Davies, Peters, Hough
`
`Davies, Peters, Erickson
`
`§ 103
`
`§ 103
`
`§ 103
`
`Davies, Peters, Erickson, Hough § 103
`
`26, 27
`
`26, 27
`
`26, 27
`
`26, 27
`
`Davies, Peters, Erickson, the
`general knowledge, experience,
`and common sense of a
`POSITA, as reflected in Wendt,
`Han, Glembotsky, and Burns
`
`§ 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,
`we view Petitioner as relying on Peters in Grounds 19–24 instead of Clark.
`
`8
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`
`Ground
`
`24
`
`References
`
`Basis1
`
`Claim(s)
`Challenged
`
`Davies, Peters, Erickson,
`Hough, the general knowledge,
`experience, and common sense
`of a POSITA, as reflected in
`Wendt, Han, Glembotsky, and
`Burns
`
`§ 103
`
`26, 27
`
`In support of its unpatentability arguments, Petitioner relies on the
`declaration of Dr. Mario Tremblay. Ex. 1103. Patent Owner relies on the
`declaration of Dr. Ralph E. White. Ex. 2109.
`II. ANALYSIS
`
`A. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b) (2020).
`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 invention.” Id.
`at 1313. Only terms that are in controversy need to be construed, and then
`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).
`Petitioner refers us to definitions for certain terms in the ’415 patent’s
`“Definitions” section. Pet. 17–18 (quoting Ex. 1101, 4:1–6, 4:10–18).
`Otherwise, Petitioner does not propose claim term constructions. Patent
`Owner agrees that no terms need to be construed. Prelim. Resp. 8. On this
`record, we determine that no claim terms require express construction.
`
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`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
`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 does not dispute Petitioner’s definition but
`reserves the right, should trial be instituted, to submit a different
`definition than Petitioner’s. Prelim. Resp. 7.
`In light of the record before us, we adopt Petitioner’s proposal
`regarding the level of one of ordinary skill in the art. The level of ordinary
`skill in the art is also reflected by the prior art of record. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
`C. Discretion Under 35 U.S.C. § 314(a) Due to Parallel Proceeding
`Patent Owner argues that the Board should exercise its discretion to
`deny institution under 35 U.S.C. § 314(a) in view of the District Court
`litigation. Prelim. Resp. 13–29. For the reasons stated below, we are not
`persuaded to exercise discretion to deny institution.
`Institution of an inter partes review is discretionary. See 35 U.S.C.
`§ 314(a) (authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
`
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`(“[Section] 314(a) invests the Director with discretion on the question
`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
`but never compelled, to institute an IPR proceeding.”).
`In the NHK case, the Board denied institution, relying, in part, on
`§ 314(a), because the parallel district court proceeding was scheduled to
`finish before the Board reached a final decision. NHK Spring Co. v. Intri-
`Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential). “Thus, NHK applies to the situation where the district court
`has set a trial date to occur earlier than the Board’s deadline to issue a final
`written decision in an instituted proceeding.” Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential)
`(“Fintiv”). When determining whether to exercise discretion to deny
`institution under NHK due to an earlier trial date, we consider the following
`factors (“Fintiv factors”):
`1. whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and
`the parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. “These factors relate to whether efficiency, fairness, and the
`merits support the exercise of authority to deny institution in view of an
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`earlier trial date in the parallel proceeding.” Id. at 6. In evaluating these
`factors, we take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Id. (citing Patent
`Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG”) 58
`(November 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated).
`We address the Fintiv factors below and discuss in detail our reasons for not
`exercising discretion to deny institution based on § 314(a).
`1. Whether a Stay Exists or Is Likely to Be Granted if a Proceeding
`Is Instituted
`Petitioner asserts that it intends to seek a stay after filing its petitions
`against the ’415 patent, and that this factor is at least neutral. Pet. 84.
`Petitioner further argues that this factor “ultimately favors institution,”
`because “instituting will resolve several invalidity issues presented in district
`court, may resolve the entire district court case on the ʼ415 patent, and may
`simplify other issues even if the Board confirms the challenged claims.” Id.
`Patent Owner argues that this factor favors denial because the District
`Court litigation has not been stayed and Petitioner has yet to seek a stay.
`Prelim. Resp. 15. Patent Owner further contends that a stay would very
`likely be denied under the factors considered by the District of Minnesota.
`Id. at 15–17.
`There is no evidence in the record that a stay has been requested in the
`District Court litigation. We decline to speculate on how the court in the
`District Court litigation would rule on a stay, if one were requested, in the
`absence of evidence regarding such a stay. Accordingly, this factor is
`neutral.
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`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline
`Petitioner asserts that “a trial date has not yet been scheduled” and
`that this weighs significantly against denial. Pet. 84. Patent Owner, on the
`other hand, contends that the “parties must be ready for trial in the parallel
`district court litigation on April 18, 2022, about five months before a final
`written decision would be due,” and that this favors denial. Prelim. Resp. 18
`n.2 (citing Ex. 2103, 3), 18–20 (citing Fintiv, Paper 11 at 9; NHK, Paper 8 at
`19–20; Fintiv, Paper 15 at 12–13).
`The Amended Pretrial Case Management Order for the District Court
`litigation states: “This case shall be ready for a jury trial on March 21, 2022
`April 18, 2022.” Ex. 2103, 3 (edits in original). This date is about five
`months before the statutory deadline for a Final Written Decision. Although
`we appreciate Petitioner’s position that “a trial date has not yet been
`scheduled” (Pet. 84), the district court’s order requires the parties to be
`“ready for a jury trial” on April 18, 2022. We therefore determine that the
`facts underlying this factor weigh somewhat in favor of exercising of our
`discretion to deny institution.
`3. Investment in the Parallel Proceeding by the Court and Parties
`Petitioner argues that this factor weighs against denial because “[f]act
`discovery is ongoing, expert reports are not yet due, claim construction has
`not yet occurred, and substantive motion practice is yet to come.” Pet. 84–
`85 (citing Ex. 1146 (“Scheduling Order from District Court with Subsequent
`Amendments”)).
`Patent Owner contends that “there has already been a significant
`expenditure of time, effort, and financial resources” because, prior to the
`deadline for this Decision, the parties will have exchanged final
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`infringement and invalidity contentions, completed fact discovery,
`completed claim construction,15 and identified experts and exchanged
`opening expert reports. Prelim. Resp. 20–22 (citing Ex. 2104, 14, 17; Ex.
`2105; Ex. 2103, 1–2; Ex. 2102, 1–2).
`According to the District Court litigation’s Amended Pretrial Case
`Management Order and Briefing Order, fact discovery (July 19, 2021), non-
`dispositive motions except those relating to expert discovery (August 2,
`2021), and the claim construction hearing (August 5, 2021) will have been
`completed by the projected date of this Decision. Ex. 2103, 1; Ex. 2102, 1.
`On the other hand, the record indicates that some work remains after the
`scheduled date for this Decision: expert discovery will be completed by
`November 12, 2021, and dispositive motions must be filed and served by
`December 20, 2021. Ex. 2103, 2–3. The present circumstances are
`somewhat similar to those in Sand Revolution II v. Continental Intermodal
`Group-Trucking LLC, IPR2019-01393, Paper 24 (PTAB June 16, 2020)
`(informative), in which the parties exchanged preliminary infringement and
`invalidity contentions, and the district court conducted a Markman hearing
`and entered an order construing claim terms. Id. at 10. The Sand Revolution
`panel found that “aside from the district court’s Markman Order, much of
`the district court’s investment relates to ancillary matters untethered to the
`validity issue itself” and “much work remains in the district court case as it
`relates to invalidity: fact discovery is still ongoing, expert reports are not yet
`due, and substantive motion practice is yet to come.” Id. at 10–11. Here,
`although the fact discovery is complete, expert reports are not yet due, and
`
`
`15 Claim construction in the District Court litigation was completed on
`August 18, 2021.
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`substantive motion practice is yet to come, so “much work remains in the
`district court case as it relates to invalidity.” Id. at 11.
`Fintiv also directs us to consider whether “the petitioner filed the
`petition expeditiously.” Fintiv, Paper 11 at 11. Patent Owner asserts that
`“Petitioner waited to file its petition until the 35 U.S.C. § 315(b) deadline”
`without offering an explanation for this delay. Prelim. Resp. 23. Patent
`Owner represents that “Petitioner received Patent Owner’s infringement
`contentions identifying the asserted claims on September 11, 2020,”
`“Petitioner also served its invalidity contentions in November of 2020,” and
`Patent Owner responded to those contentions on January 14, 2021. Id.
`Petitioner does not present any argument as to diligence. Accordingly, there
`is no showing of Petitioner diligence that weighs against exercising our
`discretion to deny.
`Considering the above facts, we find this factor weighs marginally in
`favor of exercising our discretion to deny institution under § 314(a).
`4. Overlap between Issues Raised in the Petition and in the Parallel
`Proceeding
`Petitioner states it “will, and hereby does, stipulate that, if this IPR is
`instituted, Petitioner will not pursue any ground raised in this petition or that
`reasonably could have been raised.” Pet. 85.
`Patent Owner asserts that Petitioner relies on twelve references in the
`Petition and all but one have been cited in the District Court litigation.
`Prelim. Resp. 24. Patent Owner argues that “this nearly complete overlap in
`cited art” favors denial. Id. (citing Fintiv, Paper 11 at 12). With regard to
`Petitioner’s stipulation, Patent Owner contends that it ignores the other
`patents in the District Court litigation. Id. at 24–25.
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`Concerns about the degree of overlap may be mitigated where a
`petitioner agrees not to pursue in the parallel district court litigation the
`grounds advanced in the petition. Sand Revolution, Paper 24 at 11–12, 12
`n.5. A petitioner stipulating not to pursue “any ground raised or that could
`have been reasonably raised” weighs strongly in favor of not exercising
`discretionary denial. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A)
`(“Sotera”)). Petitioner unequivocally stipulates that, if the Board institutes
`this inter partes review, it will not pursue in the District Court litigation
`“any ground raised in this petition or that reasonably could have been
`raised” in this proceeding. Pet. 85.
`Considering that Petitioner has agreed to be bound by a stipulation
`with substantively the same wording as the stipulation addressed in Sotera,
`we follow the Sotera precedent in finding that this factor weighs strongly
`against exercising discretion to deny. Sotera, Paper 12 at 18–19.
`5. Whether the Petitioner and the Defendant in the Parallel
`Proceeding Are the Same Party
`Petitioner states that “Petitioner is the defendant in the [District Court]
`litigation” and that this factor should be neutral. Pet. 85 (citing Apple Inc. v.
`Maxell, Ltd., IPR2020-00199, Paper 11 at 20 (Jun. 19, 2020)). Patent Owner
`argues that the “parties are identical in both proceedings” and that this favors
`denial. Prelim. Resp. 25.
`The same parties involved in the present proceeding are also involved
`in the District Court litigation and, thus, this factor weighs in favor of
`exercising our discretion to deny institution under § 314(a). Fintiv, Paper 11
`at 13–14.
`
`16
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`6. Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`Petitioner contends that this factor weighs against denial in view of
`the merits of the challenges to the clams, and that Petitioner’s challenges are
`the only challenges that have been before the Board. Pet. 85 (citing Google
`LLC v. Uniloc 2017 LLC, IPR2020-00115, Paper 10 at 6 (PTAB May 12,
`2020)).
`Patent Owner contends that there are numerous weaknesses in
`Petitioner’s arguments. Prelim. Resp. 26–28. Patent Owner also contends
`that “the’415 patent is a reissue patent and has already consumed significant
`USPTO resources” and that “[s]ubjecting this invention to yet another
`USPTO analysis cannot be said to serve the interest of judicial efficiency.”
`Id. at 28.
`As the Board explained in Fintiv, we consider this factor as “part of a
`balanced assessment of all the relevant circumstances in the case.” Fintiv,
`Paper 11 at 14. The goal of that assessment is to determine “whether
`efficiency and integrity of the system are best served by denying or
`instituting review.” Id. at 6. The assessment requires consideration of the
`“strengths or weaknesses regarding the merits,” but this “is not to suggest
`that a full merits analysis is necessary to evaluate this factor.” Id. at 15–16.
`We discuss the merits of the case below, finding Petitioner’s evidence
`and arguments persuasive on this preliminary record and sufficient to meet
`our standard for instituting inter partes review. Thus, we find this factor to
`be neutral.
`7. Evaluating the Fintiv Factors
`We have considered the circumstances and facts before us in view of
`the Fintiv factors. Because our analysis is fact-driven, no single factor is
`
`17
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`determinative of whether we exercise our discretion to deny institution under
`§ 314(a). We take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review” when evaluating
`these factors. Fintiv, Paper 11 at 6. Having evaluated all of the factors on
`this record, we determine that the circumstances presented here do not
`support exercising our discretion under § 314(a) to deny institution of inter
`partes review.
`D. Discretion under 35 U.S.C. § 314(a) Due to Parallel Petitions
`Under § 314(a), we have discretion to deny institution of an inter
`partes review. Cuozzo, 136 S. Ct. at 2140; SAS, 138 S. Ct. at 1356. In
`deciding whether to institute an inter partes review, we consider the
`guidance in the Consolidated Trial Practice Guide, which states:
`Based on the Board’s experience, one petition should be
`sufficient to challenge the claims of a patent in most situations.
`Two or more petitions filed against the same patent at or about
`the same time . . . may place a substantial and unnecessary burden
`on the Board and the patent owner and could raise fairness,
`timing, and efficiency concerns.
`CTPG 59.
`Here, Petitioner filed two petitions on the same day, both challenging
`claims 13, 14, and 17–27 of the ’415 patent. In this proceeding, Petitioner
`presents two anticipation grounds and twenty-two obviousness grounds.
`Pet. 4–6, 19–83. In IPR2021-00602, Petitioner presents two anticipation
`grounds over different references than those asserted in this proceeding, and
`eight obviousness grounds based on those and other references. IPR2021-
`00625, Paper 1.
`
`18
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`Petitioner ranks this Petition first between the two petitions. Pet. 86.16
`Patent Owner does not present arguments regarding the two petitions in this
`proceeding. See generally Prelim. Resp. Given Petitioner’s ranking of the
`Petition in this case above the petition in IPR2021-00602, we have no reason
`to exercise our discretion under § 314(a) to deny the instant Petition on
`parallel proceeding grounds.
`E. Asserted Anticipation over Wikey (Ground 1)
`Petitioner argues that claims 13, 18–23, and 25 are anticipated by
`Wikey. Pet. 19–38.
`1. Wikey
`Wikey is a patent titled “Aquarium Water Treatment Apparatus.”
`Ex. 1112, code (54). Wikey’s Figure 1 is reproduced below.
`
`Figure 1 depicts a 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
`
`
`
`
`16 Petitioner did not file a separate paper ranking the two petitions, but
`ranked the two petitions and made its ranking arguments in the Petition
`itself.
`
`19
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`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–
`9. 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.
`Wikey’s Figure 3 is reproduced below.
`
`
`
`20
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`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 a 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.
`2. 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, 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));
`
`17 We exp
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