Paper No. 18
`
`Trials@uspto.gov
`571.272.7822
` Entered: September 23, 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.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`

`

`IPR2021-00625
`Patent RE45,415 E
`
`
`On September 20, 2021, Patent Owner’s counsel contacted the Board
`via email (Exhibit A), copying Petitioner’s counsel, and requesting “leave to
`file a motion seeking ‘routine’ and/or ‘additional’ discovery” for certain
`listed documents.
`A conference call was held on September 22, 2021, among respective
`counsel for Patent Owner and Petitioner, and Judges Kalan, Kaiser, and
`Derrick. For the reasons stated below, we authorize Patent Owner to file a
`motion for additional discovery and authorize Petitioner to file an opposition
`thereto.
`Patent Owner seeks authorization to file a motion “seeking ‘routine’
`and/or ‘additional’ discovery.” Ex. A. Patent Owner submits that it will
`make four requests to obtain certain documents in connection with
`experiments conducted by Dr. Tremblay, Petitioner’s declarant, who
`submitted testimony in this proceeding. Patent Owner represents that
`“Petitioner opposes at least some aspect of each of these four requests.”
`Petitioner responds that Patent Owner’s four requests are not in the
`nature of routine discovery, but are an additional obligation for Petitioner.
`Petitioner indicated that it did not oppose a reasonable examination of
`Dr. Tremblay’s lab notebooks, test results, and data, but that Patent Owner’s
`second and third requests, in particular, are not the type of expert discovery
`that would be allowed under the Federal Rules of Civil Procedure.
`37 C.F.R. § 42.51(b)(2) states that a party may move for additional
`discovery when appropriate. A party seeking additional discovery in an
`inter partes proceeding must demonstrate that the additional discovery is in
`the interest of justice. See 35 U.S.C. § 316(a)(5).
`
`2
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`

`

`IPR2021-00625
`Patent RE45,415 E
`
`
`After considering the arguments of the parties, we authorized Patent
`Owner to file a motion for additional discovery, limited to 7 pages, to be
`filed by close of business on October 4, 2021. We authorized Petitioner to
`file an opposition, also limited to 7 pages, to be filed by close of business on
`October 11, 2021. No other briefing was authorized. We expect the parties
`to address the five Garmin factors that are important in determining whether
`additional discovery is in the interest of justice. Garmin Int’l, Inc. v. Cuozzo
`Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013)
`(precedential). We gave the parties additional time before the due date for
`Patent Owner’s motion, instructing the parties to meet and confer to
`determine if Petitioner could agree to provide any of the discovery requested
`in Patent Owner’s email (Ex. A), and if any of Patent Owner’s four requests
`could be narrowed or eliminated to streamline the motions practice.
`
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a motion for
`additional discovery under 37 C.F.R. § 42.51(b)(2), and Petitioner is
`authorized to file an opposition;
`FURTHER ORDERED that Patent Owner’s motion is due October 4,
`2021, and Petitioner’s opposition is due October 11, 2021; and
`FURTHER ORDERED that Patent Owner’s motion and Petitioner’s
`opposition are limited to no more than 7 pages each.
`
`
`3
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`IPR2021-00625
`Patent RE45,415 E
`
`
`
`PETITIONER:
`R. Scott Johnson
`Adam R. Steinert
`Fredrikson & Byron, P.A.
`rsjohnson@fredlaw.com
`asteinert@fredlaw.com
`
`PATENT OWNER:
`J. Derek Vandenburgh
`Aaron W. Pederson
`Nathan D. Louwagie
`Carlson, Caspers, Vandenburgh, & Lindquist, P.A
`dvandenburgh@carlsoncaspers.com
`apederson@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`
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`4
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`

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`IPR2021-00625
`IPR2021-00625
`Patent RE45,415 E
`Patent RE45,415 E
`
`
`
`
`EXHIBIT A
`
`
`EXHIBIT A
`
`
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`5
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`IPR2021-00625
`Patent RE45,415 E
`
`
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Monday, September 20, 2021 6:07 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: OWT <OWT@carlsoncaspers.com>; Johnson, R. Scott
`<RSJohnson@fredlaw.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Subject: IPR2021-00625
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE
`SOURCE before responding, clicking on links, or opening attachments.
`
`Dear Board,  
`
` I
`
` represent Patent Owner Oxygenator Water Technologies, Inc. in the above-referenced
`IPR. Patent Owner seeks leave to file a motion seeking “routine” and/or “additional”
`discovery for the below listed documents. Each of these requests concern alleged
`physical embodiments of prior art references that Petitioner’s expert created and tested in
`support of the Petition. Petitioner opposes at least some aspect of each of these four
`requests.
`
`
`1. Laboratory notebooks and other documents containing or reflecting the protocols
`used in connection with the experiments considered by Dr. Tremblay in
`connection with this proceeding.
`2. Documents identifying, including, or referring to any instructions, suggestions, or
`advice provided to Dr. Tremblay concerning the design and/or structure of the
`purported physical embodiments in connection with this proceeding.
`3. Documents identifying, including, or referring to any instructions, suggestions, or
`advice provided to Dr. Tremblay concerning the parameters for operation of the
`purported physical embodiments in connection with this proceeding.
`4. Test reports or other raw data from any experiments conducted by, at the direction
`of, or for consideration by Dr. Tremblay in connection with this proceeding that
`analyze the impact of any parameter that is the subject of the claims of the ‘415
`patent.
`
`
`Additionally, Patent Owner requests permission to videorecord the deposition of
`Petitioner’s testifying expert, Dr. Tremblay (with Patent Owner bearing the cost of
`securing its own video file of the deposition).
`
`The parties have met and conferred and are available for a call with the Board during the
`following times:
`
`Tuesday, September 21: 10AM-11AM Central, 2PM-3PM Central
`Wednesday, September 22: 10AM-4PM Central
`
`Please let us know if one of these options work for the Board.
`
`
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`IPR2021-00625
`Patent RE45,415 E
`
`Respectfully submitted,
`
`
`
`
`Nate D Louwagie
` Carlson Caspers
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
` Direct: 612.436.9656
`Cell: 612.716.3924
`NLouwagie@carlsoncaspers.com
`carlsoncaspers.com
`BIO | vCard | Disclaimers
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