`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Steinert, Adam <ASteinert@fredlaw.com>
`Monday, October 04, 2021 12:09 PM
`Nate D Louwagie
`Johnson, R. Scott; Aaron W Pederson; _Tennant Company/Oxygenator Water Technologies; OWT
`RE: IPR2021-00625 Proposed Changes and Motions re: Scheduling Order
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`Dear Nate,
`
`You appear to be missing the point regarding your questions about testing other prior art devices that do not appear in
`either IPR. You have not pointed us to any authority supporting the idea that OWT is allowed to inquire into other
`testing that might or might not have occurred in support of prior art theories from the district court lawsuit that were
`not presented in an IPR. Your question below is in effect an improper interrogatory couched in an email. Because the
`question itself is an improper discovery request, you are not entitled to an answer to it.
`
`Regarding your Requests 1 & 4, as I have said twice before, Tennant does not object to those requests as they relate to
`Wikey and Davies. I do not know what you find confusing about that statement, but to be clear, Tennant will produce
`information related to all efforts by Dr. Tremblay to reproduce and test embodiments of Wikey and Davies on Tennant’s
`behalf.
`
`Regarding requests 2 & 3, it is not Tennant’s job to rewrite your discovery requests for you. We have repeatedly
`objected to the requests as written, which seek materials beyond (a) those permitted by any prior IPR decision you have
`cited and (b) the Federal Rules of Civil Procedure. You told the Board that your requests match the Apple case, but they
`do not. We have repeatedly asked you to explain the origin of your requests, but you have not. We have repeatedly
`encouraged you to narrow your requests to match the scope of discovery allowed by the Board and Rule 26, but you
`have not. If you wish to propose a permissible discovery request, please send it to us, rather than wasting more of the
`Board’s time and Tennant’s resources fighting over your attempt to obtain overbroad discovery.
`
`We anticipate producing materials related to the Wikey and Davies testing next week. Dr. Tremblay is available to be
`deposed at our offices on November 4 or November 5. Please let us know which of those dates OWT prefers. We can
`make the reconstructed Wikey and Davies devices available for inspection in our offices during the weeks of October 25
`and November 1. Please let us know what day you would like to schedule the inspection for.
`
`Best regards,
`Adam
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Saturday, October 2, 2021 3:02 PM
`To: Steinert, Adam <ASteinert@fredlaw.com>
`Cc: Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W Pederson <APederson@carlsoncaspers.com>; _Tennant
`Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT <OWT@carlsoncaspers.com>
`Subject: Re: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`1
`
`
`
`Adam,
`
`
`
`It appears that the parties may be able to avoid motion practice on Requests 1 and 4.
`
`
`
`
`
`First, if Tennant can provide a clear statement that it is not aware that Dr. Tremblay is aware of attempts to reproduce
`prior art that was not cited in either IPR, there will be no need for us to move on this basis. Your email below does not
`provide such a statement, and if Tennant cannot make that statement it appears the attempts exist. As you know, this
`information is relevant because the Davies and Wikey references only disclose ranges – rather than particular
`embodiments. Therefore, attempts to reproduce other references may well have fallen within (or near) the ranges
`disclosed by these references and would be highly relevant to whether those references inherently create microbubbles
`and nanobubbles.
`
`
`
`
`
`Second, with regard to Requests 1 and 4 for Wikey and Davies, I do not believe your response cleanly answers my
`question. Please provide a clear statement that Tennant will be producing (a) information about any additional
`attempts to reproduce Wikey or Davies that Dr. Tremblay was aware of, and (b) any data that was generated related the
`alleged reproductions of these references that were included in Dr. Tremblay’s declaration.
`
`
`
`If Tennant can provide a clear statement on the issues above we can likely avoid motion practice on Requests 1 and 4.
`
`
`Regarding Requests 2 and 3, is Tennant suggesting it would be willing to produce documents on some portion of these
`topics? OWT does not see a relevant distinction between its requests and the Apple case, but if Tennant wants to
`propose a compromise OWT is certainly willing to consider it.
`
`
`
`
`
`For the documents Tennant does not object to in Requests 1 and 4, please provide a date certain by which Tennant will
`produce them by noon Monday. We may need to mention the timing issue in our motion if Tennant cannot commit to
`production sufficiently in advance of the deadline for OWT’s response. Tennant’s argument that it is entitled to delay
`production of documents it agrees are responsive because it forced OWT to seek relief from the Court and Board on
`other issues is meritless.
`
`
`
`
`
`Please also identify dates for Dr. Tremblay’s deposition and the inspection of his creations.
`
`
`
`
`
`Thank you,
`
`
`
`
`
`Nate
`
`
`2
`
`
`
`To help protect your privacy, Microsoft Office prevented automatic download of this picture from the Internet.
`
`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
`On Oct 1, 2021, at 3:14 PM, Steinert, Adam <ASteinert@fredlaw.com> wrote:
`
`
`
`
`
`
`
`
`
`Dear Nate,
`
`
`No, you may not “understand” anything about the substance of Dr. Tremblay’s work as an expert
`witness based on my statement that “[t]o the extent that materials regarding uncited prior art exist,
`they are irrelevant to the IPR proceeding and an improper attempt to obtain discovery outside the scope
`of the IPR.” You have not pointed to any authority for the relevance in an IPR proceeding of whether or
`not an expert evaluated prior art that is not part of the IPR proceeding. This is an improper fishing
`expedition to attempt to learn the scope of protected litigation communications.
`
`
`Regarding your Requests 1 & 4, as stated in my message below, Tennant does not object to those
`requests as they relate to Wikey and Davies. As noted above, Tennant’s objection is to the attempt to
`seek discovery regarding prior art that is not part of the instituted IPR petition.
`
`
`Regarding Requests 2 & 3, you appear to be arguing that those requests contain some overlap with
`permissible discovery requests from other cases. Requests that seek both permissible and impermissible
`discovery materials are, by definition, overbroad. In the nine days since we spoke with the Board, you
`have done nothing to conform Requests 2 and 3 to the scope of discovery permitted by the Board or
`Fed. R. Civ. P. 26.
`
`
`We are in the process of collecting and reviewing materials in response to the non‐objectional portions
`of Requests 1 & 4. We will produce them in due course. Your demand for immediate production is
`inappropriate when you have forced the parties to waste considerable time and energy before both the
`Board and the district court fighting over the scope of your overbroad discovery requests.
`
`
`Sincerely,
`Adam
`
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Wednesday, September 29, 2021 2:55 PM
`To: Steinert, Adam <ASteinert@fredlaw.com>; Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W
`Pederson <APederson@carlsoncaspers.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`Adam,
`
`
`3
`
`
`
`
`
`Thanks for your note. A couple comments/questions:
`
`
`First, based on your email below, we understand that Dr. Tremblay is aware of attempts to reproduce
`prior art that was not cited in either IPR. If that is not true, please let us know. Otherwise, OWT
`believes that information is clearly discoverable because it is not clear how Dr. Tremblay could not have
`considered the information he gained from reviewing those attempted reproductions. This discovery is
`supported by at least the Yeda case OWT identified on the call. Note that if Dr. Tremblay reviewed any
`product and assessed the types of bubbles that product might create (if any) as part of his consultation
`with Tennant, OWT believes that information is directly relevant and discoverable.
`
`
`Second, for Requests 1 and 4, please clarify whether Petitioner is also refusing to produce (a)
`information about any additional attempts by Dr. Tremblay to reproduce Wikey or Davies, or (b) any
`data that was generated related the alleged reproductions of these references that were included in Dr.
`Tremblay’s declaration.
`
`
`Third, for Requests 2 and 3, OWT suggested the possibility of the compromise you identify below, but it
`was clear OWT was not prepared to formally offer that compromise on the phone. Regardless, OWT
`also explained that Requests 2 and 3 were very similar to Request 1 from the Apple case which required
`production of instructions provided to a testing lab specifying the studies to be conducted. Requests 2
`and 3 seek the instructions provided to Dr. Tremblay related to the studies identified in his declaration.
`This information is discoverable under Rule 26 and the discovery is in the interest of justice under the
`Garmin factors.
`
`
`Finally, on a related note, please explain when we can expect Tennant to produce the documents
`responsive to requests 1 and 4 that it does not object to producing. Given the deadline for OWT’s
`response in November, it is important that Tennant produce these documents next week at the
`latest. Please also provide dates for Dr. Tremblay’s deposition and the examination of Tennant’s alleged
`reproductions pursuant to the parties’ previous discussions.
`
`
`Thank you,
`
`
`Nate
`
`
`
`
`
`
`
`To help protect your privacy, Microsoft Office prevented automatic download of this picture from the Internet.
`
`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
`From: Steinert, Adam <ASteinert@fredlaw.com>
`Sent: Wednesday, September 29, 2021 1:57 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Johnson, R. Scott <RSJohnson@fredlaw.com>;
`Aaron W Pederson <APederson@carlsoncaspers.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Dear Nate,
`
`
`
`4
`
`
`
`
`I write to follow up on our meet and confer this morning.
`
`
`Regarding your requests (1) and (4), we stated (as we did during last week’s call with the Board) that we
`have no objection to these requests as they relate to the prior art at issue in the instituted IPR (Wikey
`and Davies).
`
`
`You stated that you were not seeking materials related to the prior art presented in the non‐instituted
`IPR petition (the Tremblay reference), but that you are seeking materials related to any prior art that
`was not cited in either IPR. You directed us to the decision in Yeda Research v. Abbott GMBH, 292 F.R.D.
`97 (D.D.C. 2013), as allegedly supporting discovery of such materials. We have reviewed the Yeda
`decision. Nothing in it relates to discovery regarding expert analysis of uncited prior art, let alone
`seeking such discovery in an IPR. To the extent that materials regarding uncited prior art exist, they are
`irrelevant to the IPR proceeding and an improper attempt to obtain discovery outside the scope of the
`IPR.
`
`
`Regarding your requests (2) and (3), you proposed dropping those requests in exchange for us agreeing
`to the discovery you seek in items (1) and (4) above related to uncited prior art. We stated that horse‐
`trading objectionable discovery requests is not appropriate.
`
`
`We asked you to identify the source of the text for Requests (2) and (3) in the two IPR decisions you
`cited to the Board (Apple v. Singapore Asahi Chemical, IPR2019‐00377, Paper No. 22 (Oct. 21, 2019) and
`Corning v. DSM IP, IPR2013‐00043, Paper No. 27 (June 21, 2013)). You were unable to do so. As we
`indicated on the call, the text of Requests (2) and (3) does not appear to come from any request
`authorized by the Board in Apple or Corning. Based on the current record, it appears that you made up
`the text of Requests (2) and (3). You indicated that if there is a source for the text of Requests (2) and
`(3), you will send it to us. We requested that you do so today, so that we have an opportunity to
`evaluate it in advance of your Monday deadline.
`
`
`Best regards,
`Adam
`
`
`
`From: Steinert, Adam <ASteinert@fredlaw.com>
`Sent: Tuesday, September 28, 2021 9:38 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Johnson, R. Scott <RSJohnson@fredlaw.com>;
`Aaron W Pederson <APederson@carlsoncaspers.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Dear Nate,
`
`
`We are available to meet and confer at 10:30AM tomorrow if that time works for you.
`
`
`Best regards,
`Adam
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Monday, September 27, 2021 10:52 AM
`To: Steinert, Adam <ASteinert@fredlaw.com>; Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W
`Pederson <APederson@carlsoncaspers.com>
`
`5
`
`
`
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`Adam,
`
`
`The two cases I referenced on the call are attached. Pursuant to the board’s direction, please provide
`your availability for a meet and confer tomorrow between 2 and 4 pm or anytime Wednesday.
`
`
`Thanks,
`
`
`Nate
`
`
`
`
`<image003.jpg>
`
`
`
`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
`From: Steinert, Adam <ASteinert@fredlaw.com>
`Sent: Sunday, September 26, 2021 7:13 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Johnson, R. Scott <RSJohnson@fredlaw.com>;
`Aaron W Pederson <APederson@carlsoncaspers.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: Re: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Dear Nate,
`
`
`During Wednesday’s call with the Board, you indicated for the first time that the wording of OWT’s four
`enumerated discovery requests was based on discovery granted in prior PTAB decisions. Please send us
`copies of those decisions so that we can evaluate them.
`
`
`Best regards,
`Adam
`
`
`
`
`
`
`
`On Sep 20, 2021, at 2:36 PM, Steinert, Adam <ASteinert@fredlaw.com> wrote:
`
`
`
`Dear Nate,
`
`
`Regarding the Protective Order in the district court lawsuit, we do not believe that it is
`appropriate to use discovery materials from the district court case to expand the scope
`of discovery in the IPR beyond what the PTAB allows. Tennant does not consent to
`informal dispute resolution on this matter.
`
`6
`
`
`
`
`
`Regarding item 1 in your list of requested discovery, as we stated during the call,
`Tennant is willing to produce those materials in the IPR to the extent that they would be
`discoverable under the Federal Rules of Civil Procedure in a district court case. Without
`having collected or reviewed the materials, Tennant is not prepared to engage in a
`hypothetical discussion regarding what irrelevant or non‐discoverable materials may be
`swept into your request. The issue at this juncture is your request to seek the Board’s
`permission to pursue discovery beyond what the PTAB rules normally allow. If you are
`seeking the PTAB’s authorization to pursue expert discovery that would not be allowed
`under the Federal Rules, Tennant opposes such a request.
`
`
`As we discussed during the call, your items 2 and 3 seek documents that are protected
`from discovery under Federal Rule of Civil Procedure 26(b)(4), in addition to seeking
`discovery not normally allowed by the PTAB. Tennant opposes those requests.
`
`
`Regarding item 4, Tennant agrees to produce any testing results and data considered by
`Dr. Tremblay in forming the opinions expressed in his declaration. Tennant objects to
`any request for testing results or data beyond those considered by Dr. Tremblay in
`forming the opinions expressed in IPR2021‐00625. Such materials are protected from
`discovery by Fed. R. Civ. P. 26(b)(4) and are irrelevant to the instituted IPR.
`
`
`Regarding the videotaping of depositions, Tennant believes that the parties should seek
`the Board’s guidance on whether it believes videotaped depositions will be helpful in
`this matter. If the Board believes that videotaped depositions will be helpful, then all
`depositions should be videotaped. If the Board does not believe that videotaped
`depositions will be helpful, there is no reason to change the scope of discovery normally
`authorized in IPR proceedings.
`
`
`Best regards,
`Adam
`
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Monday, September 20, 2021 12:03 PM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`
`
`Scott and Adam,
`
`
`Thanks for the call today.
`
`
`First, we discussed using confidential information from the district court in the
`PTAB. OWT told Tennant that it planned to approach the district court to ask for the
`protective order to be amended to allow the use of confidential and attorney‐eyes only
`information from the district court in IPRs under the PTAB protective order. We asked
`whether Tennant consented to having this issue resolved through the district court’s
`informal dispute resolution procedure. Tennant said it needed to consider that and
`
`7
`
`
`
`would get back to us today or tomorrow. To help narrow the scope of documents
`potentially impacted by the requested change to the protective order, OWT can agree
`to limit the scope of documents that can be used in the IPR proceedings to those
`concerning commercial success, copying, and praise.
`
`
`Second, we discussed the four discovery requests identified below. OWT’s
`understanding on Tennant’s position for each of the topics is shown here:
`
`
`1. Tennant will produce these documents to the extent they are not excluded from
`discovery under Rule 26 of Federal Rules of Civil Procedure. OWT explained it
`was concerned with this reservation because it believed the entire scope was
`consistent with Rule 26. To the extent Tennant is arguing it will be redacting
`information that (1) is completely unrelated to these proceedings, (2) relate to
`communications with Tennant’s counsel that do not provide facts, data, or
`assumptions that Dr. Tremblay considered, or (3) relate solely to the Tremblay
`reference, OWT can agree to with that limitation. If there are other limitations
`Tennant seeks to carve out with this requirement, please let us know.
`2. Tennant opposes this discovery.
`3. Tennant opposes this discovery.
`4. Tennant will agree to produce this information for the tests Dr. Tremblay relied
`upon in this proceeding. Tennant will not agree to produce them for tests that
`Dr. Tremblay considered but did not include in his expert report for this
`proceeding. OWT can agree that Dr. Tremblay does not need to produce the
`tests related to the Tremblay reference with the understanding that Tennant is
`likewise precluded from referencing or relying on those tests in this
`proceeding. Outside of that, however, OWT intends to approach the board
`regarding any other tests that Dr. Tremblay considered.
`
`
`
`Third, we discussed video taped depositions. OWT said it would pay to video tape the
`deposition of Dr. Tremblay and told Tennant it would not oppose Tennant video taping
`the depositions of any OWT witnesses. Tennant said it would get back to us about
`whether this changed Tennant’s position that video taping depositions was improper.
`
`
`OWT told Tennant it intended to send the board an email on the above issues
`today. Please let us know by 3:30 pm if I misunderstood any of Tennant’s positions
`articulated above.
`
`
`Finally, we discussed the date for the deposition of Mr. Tremblay and OWT’s inspection
`of Tennant’s alleged physical embodiments. Tennant said it would provide some dates
`and locations for these events soon.
`
`
`Nate
`
`
`
`<image004.jpg>
`
`
`
`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
`
`8
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`BIO | vCard | Disclaimers
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Monday, September 20, 2021 8:46 AM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Hi Scott,
`
`
`Here are some specific discovery requests we are envisioning for point 3 below. We
`look forward to discussing these at 10:30.
`
`
`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.
`
`
`
`Nate
`
`
`
`
`<image004.jpg>
`
`
`
`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
`From: Johnson, R. Scott <RSJohnson@fredlaw.com>
`Sent: Friday, September 17, 2021 2:46 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`
`
`
`9
`
`
`
`
`
`You too. Thanks.
`
`
`R. Scott Johnson 111 E. Grand Avenue, Suite 301 | Des Moines, IA 50309
`Main: 515.242.8900 | Direct: 515.242.8930 |Cell 515.745.2245|
`rsjohnson@fredlaw.com
`
`
`**This is a transmission from the law firm of Fredrikson & Byron, P.A. and may contain
`information which is privileged, confidential, and protected by the attorney‐client or attorney
`work product privileges. If you are not the addressee, note that any disclosure, copying,
`distribution, or use of the contents of this message is prohibited. If you have received this
`transmission in error, please destroy it and notify us immediately.**
`
`
`Our office is working tirelessly to help our employees and clients manage the effects of the
`COVID‐19 pandemic. We appreciate your patience and remain dedicated to helping you
`through this situation. For additional information, see
`https://www.fredlaw.com/news__media/fredrikson‐byron‐business‐operations‐and‐the‐
`covid‐19‐outbreak/#.Xm0nf7jrA5M.linkedin. Please contact us if you need any COVID‐19
`related legal assisstance.
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Friday, September 17, 2021 2:45 PM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`10:30 is good. We will circulate dial in information. Have a good weekend.
`
`
`Nate
`
`
`
`
`<image001.jpg>
`
`
`
`
`
`
`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
`From: Johnson, R. Scott <RSJohnson@fredlaw.com>
`Sent: Friday, September 17, 2021 2:43 PM
`To: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Nate,
`
`
`10
`
`
`
`Let’s discuss Monday morning as my afternoon has filled up. Would 10:30 work for a
`call?
`
`‐Scott
`
`
`R. Scott Johnson 111 E. Grand Avenue, Suite 301 | Des Moines, IA 50309
`Main: 515.242.8900 | Direct: 515.242.8930 |Cell 515.745.2245|
`rsjohnson@fredlaw.com
`
`
`**This is a transmission from the law firm of Fredrikson & Byron, P.A. and may contain
`information which is privileged, confidential, and protected by the attorney‐client or attorney
`work product privileges. If you are not the addressee, note that any disclosure, copying,
`distribution, or use of the contents of this message is prohibited. If you have received this
`transmission in error, please destroy it and notify us immediately.**
`
`
`Our office is working tirelessly to help our employees and clients manage the effects of the
`COVID‐19 pandemic. We appreciate your patience and remain dedicated to helping you
`through this situation. For additional information, see
`https://www.fredlaw.com/news__media/fredrikson‐byron‐business‐operations‐and‐the‐
`covid‐19‐outbreak/#.Xm0nf7jrA5M.linkedin. Please contact us if you need any COVID‐19
`related legal assisstance.
`
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Friday, September 17, 2021 1:53 PM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; Aaron W Pederson
`<APederson@carlsoncaspers.com>; Steinert, Adam <ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`Thanks Scott. I am available between now and 3 pm. Alternatively I can talk Monday
`morning. Let me know what you would prefer. If you want to talk now please feel free
`to give me a call on my cell phone. 612‐716‐3924.
`
`
`
`Nate
`
`
`
`
`
`<image001.jpg>
`
`
`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
`From: Johnson, R. Scott <RSJohnson@fredlaw.com>
`Sent: Thursday, September 16, 2021 11:33 AM
`To: Aaron W Pederson <APederson@carlsoncaspers.com>; Steinert, Adam
`<ASteinert@fredlaw.com>
`
`
`
`
`
`11
`
`
`
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: RE: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`
`Aaron,
`
`
`Tennant responds to your requests as indicated below each request in red. Tennant is
`not available to meet and confer today due to Yom Kippur. We could meet and confer
`tomorrow after the district court hearing.
`
`‐Scott
`
`
`R. Scott Johnson 111 E. Grand Avenue, Suite 301 | Des Moines, IA 50309
`Main: 515.242.8900 | Direct: 515.242.8930 |Cell 515.745.2245|
`rsjohnson@fredlaw.com
`
`
`**This is a transmission from the law firm of Fredrikson & Byron, P.A. and may contain
`information which is privileged, confidential, and protected by the attorney‐client or attorney
`work product privileges. If you are not the addressee, note that any disclosure, copying,
`distribution, or use of the contents of this message is prohibited. If you have received this
`transmission in error, please destroy it and notify us immediately.**
`
`
`Our office is working tirelessly to help our employees and clients manage the effects of the
`COVID‐19 pandemic. We appreciate your patience and remain dedicated to helping you
`through this situation. For additional information, see
`https://www.fredlaw.com/news__media/fredrikson‐byron‐business‐operations‐and‐the‐
`covid‐19‐outbreak/#.Xm0nf7jrA5M.linkedin. Please contact us if you need any COVID‐19
`related legal assisstance.
`
`
`From: Aaron W Pederson <APederson@carlsoncaspers.com>
`Sent: Wednesday, September 15, 2021 1:35 PM
`To: Johnson, R. Scott <RSJohnson@fredlaw.com>; Steinert, Adam
`<ASteinert@fredlaw.com>
`Cc: _Tennant Company/Oxygenator Water Technologies <OWT@fredlaw.com>; OWT
`<OWT@carlsoncaspers.com>
`Subject: IPR2021‐00625 Proposed Changes and Motions re: Scheduling Order
`
`[EXTERNAL E-MAIL]
`
`
`
`Counsel:
`
`
`Pursuant to section A.1 of the scheduling order in IPR2021‐00625, please indicate
`whether Tennant opposes any of the following in the IPR proceeding:
`
`
`1) A request to enter the Board’s default protective order with one change below:
`a. Replace 2(B) of the protective order with the following: “Outside
`Counsel: Attorneys of record for a party in the proceeding and
`employees of the law firms of such attorneys.” – This is fine.
`2) After entry of the protective order, confidential and AEO documents from the
`district court case can be used as confidential “Protective Order Material” in the
`IPR. – Tennant opposes this request. Discovery in IPR proceedings is controlled
`by PTAB rules and is to be narrowly tailored. This request goes well beyond the
`scope of the IPR proceedings.
`3) Additional discovery:
`
`12
`
`
`
`a.
`
`Inspection of the purported physical embodiments of alleged prior art
`considered or relied on by Dr. Tremblay in IPR2021‐00625, including but
`not limited to any physical embodiments of Wikey and Davies
`disclosures – This is fine.
`b. Document requests and interrogatories seeking information related to
`the design, assembly, modification, operation, testing, and analysis of
`purported physical embodiments of alleged prior art considered or
`relied on by Dr. Tremblay in IPR2021‐00625, including but not limited to
`any physical embodiments of Wikey and Davies disclosures; ‐ Tennant
`opposes this request for at least the reason it is beyond the scope of
`what the PTAB normally permits.
`c. Document requests seeking all communications related to design,
`assembly, modification, operation, testing, and analysis of purported
`physical embodiments of alleged prior art considered or relied upon by
`Dr. Tremblay in IPR2021‐00625, including but not limited to any physical
`embodiments of Wikey and Davies disclosures; ‐ Tennant opposes this
`request for at least the reason it is beyond the scope of what the PTAB
`normally permits.
`d. Documents seeking any facts or data considered by Dr. Tremblay in
`forming his opinions in IPR2021‐00625. ‐ Tennant opposes this request
`for at least the reason it is beyond the scope of what the PTAB normally
`permits.
`4) Routine discovery:
`a. A video‐recorded deposition to obtain cross‐examination testimony of
`Dr. Tremblay pursuant to section A.5 of the scheduling order at least 20
`days prior to Due Date 1 (Nov. 12, 2021). ‐ Tennant opposes this request
`for at least the reason the Board does not normally accept video
`depositions. If the Board requests video depositions, video depositions
`should be allowed for all witnesses from both parties.
`
`
`
`Plea