UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`TENNANT COMPANY,
`
`Petitioner,
`
`v.
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`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00625
`
`Patent RE45415
`
`____________
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`
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`
`
`PATENT OWNER OXYGENATOR WATER TECHNOLOGIES, INC.’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TENNANT COMPANY,
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00625
`
`Patent RE45415
`
`____________
`
`
`
`
`
`PATENT OWNER OXYGENATOR WATER TECHNOLOGIES, INC.’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
`
`
`
`I.
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`Relief Requested
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`
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`Patent Owner (“PO”) seeks the following Additional Discovery1:
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`(1) Laboratory notebooks and other documents containing or
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`reflecting the protocols used in connection with the experiments
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`considered by Petitioner’s expert Dr. Tremblay related to his
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`consultation with Petitioner;
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`(2) Documents identifying, including, or referring to any instructions,
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`suggestions, or advice provided to Dr. Tremblay concerning the
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`design and/or structure of the purported physical embodiments;
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`(3) Documents identifying, including, or referring to any instructions,
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`suggestions, or advice provided to Dr. Tremblay concerning the
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`parameters for operation of the purported physical embodiments; and
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`(4) Test reports or other raw data from any experiments conducted by,
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`at the direction of, or for consideration by Dr. Tremblay that analyze
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`the impact of any parameter that is the subject of the claims of the
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`’415 patent.
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`II. Background of Dispute
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`
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`Grounds 1 and 7 are based on Petitioner’s arguments that Wikey and Davies
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`inherently anticipate a number of instituted claims of the ’415 patent. All instituted
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`1 To the extent Petitioner possesses information that is inconsistent with the data
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`provided in support of its petition, such as information that unspecified variables
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`impact bubble formation and size, that information is a matter of Routine
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`Discovery and PO respectfully requests the Board order Petitioner to produce it.
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`
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`1
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`
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`claims require the formation of micro- and nanobubbles using electrolysis, but
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`neither Wikey nor Davies teach or suggest the formation of bubbles. As a result,
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`Petitioner, through its expert Dr. Mario Tremblay, fabricated and tested devices it
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`contends are based on the Wikey and Davies references. Paper 1 at 22-29, 52-61;
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`Ex. 1103, ¶¶39-69, 111-57. Petitioner contends that these experiments demonstrate
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`that the devices and operating parameters taught by Wikey and Davies inherently
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`yield micro- and nanobubbles and so inherently anticipate the claims.
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`
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`The problem is that every one of Petitioner’s experiments is based on a
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`fictional embodiment of Wikey and Davies. In performing these tests, Dr.
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`Tremblay had to select a combination of structural and operational parameters that
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`are not taught by the references. Instead, each of these references describe ranges
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`of these variables without teaching an embodiment that combines them in the
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`fashion that Dr. Tremblay did. And, as PO explained in its Preliminary Response,
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`these variables directly impact both the formation of bubbles and the size thereof.
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`See Paper 8 at 34, 39-40; Ex. 2109 at ¶¶ 55-57, 61-66. All of the requested
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`discovery at issue is directly relevant to this fundamental, disputed issue: the
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`impact of Dr. Tremblay’s selection of unspecified variables on his results.
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`Despite the direct relevance of the requested information, Petitioner refuses
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`to produce some documents responsive to Requests 1 and 4, and any information
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`responsive to Requests 2 and 3. Ex. 2115.
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`2
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`
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`III. Requests 1 and 4 are in the Interest of Justice
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`Requests 1 and 4 seek documents concerning all of the protocols and data
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`for any experiments that Dr. Tremblay considered in forming his opinions that
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`assessed the formation of bubbles using electrolysis as required by the claims. It is
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`unclear how Dr. Tremblay could have been privy to such information without
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`considering it in forming his opinions in this proceeding. Accordingly, the Board
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`has routinely granted requests to such. See Apple Inc. v. Singapore Asahi Chemical
`
`& Solder Industries Pte Ltd., IPR2019-00377, Paper 22, at 3-4, 16 (PTAB Oct. 21,
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`2019); Mylan Pharmaceuticals Inc. v. Allergan Inc., IPR2016-01127, Paper 28, at
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`3-4 (PTAB May 31, 2017); Corning Inc. v. DSM IP Assets B.V., IPR2013-00043,
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`Paper 27, at 2-5 (PTAB June 21, 2013).
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`Petitioner has agreed to produce some information responsive to these
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`requests but has refused to produce information about any other experiments Dr.
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`Tremblay is aware of involving “attempts” to reproduce other prior art not
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`disclosed in IPR2021-00602. Ex. 2115. Further, Petitioner has refused to confirm
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`that Dr. Tremblay was unaware of additional experiments assessing the formation
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`and size of bubbles. Id. This suggests Dr. Tremblay did consider additional
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`experiments. Petitioner should not be permitted to shield such data.
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`This information will be useful to assessing Petitioner’s inherent anticipation
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`argument. A reference only inherently anticipates if “the reference discloses prior
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`3
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`
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`art that must necessarily include the unstated limitation”. Transclean Corp. v.
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`Bridgewood Servs., 290 F.3d 1364, 1373 (Fed. Cir. 2002). A reference that
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`discloses a range does not anticipate when the claimed invention “work[s]
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`differently at different points within the prior art range”. Osram Sylvania, Inc. v.
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`Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed. Cir. 2012). It is not enough
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`that a certain result may be achieved. Cont'l Can Co. v. Monsanto Co., 948 F.2d
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`1264, 1269 (Fed. Cir. 1991).
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`In making and testing his alleged reproductions, Dr. Tremblay chose
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`structural and operational values within various ranges described by the references,
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`and he also chose values for some parameters that are not disclosed in the
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`references at all. To the extent the selection of different structural and operational
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`variables impacts the formation and size of bubbles yielded by electrolysis
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`devices—whether or not those devices were intended to be “reproductions” of
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`Davies or Wikey—the results of those experiments will be useful to show that
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`Wikey and Davies do not inherently yield micro- and nanobubbles.
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`
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`All five Garmin factors support requiring Petitioner to produce these
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`documents. First, there is more than a mere possibility that something useful will
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`be discovered. As described above, data demonstrating that the unspecified
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`structural and operational parameters of Wikey and Davies impact bubble size will
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`refute inherent anticipation. Ex. 2115. For reasons like this, 37 C.F.R. § 42.65
`
`
`
`4
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`
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`requires disclosure of any “any other information necessary for the Board to
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`evaluate [a technical test] and data.” Petitioner argues that evaluation of uncited
`
`prior art is irrelevant. Ex. 2115. But Petitioner’s line is arbitrary and ignores the
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`scientific process. An expert cannot ignore information about the impact of a
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`variable just because it was assessed in a different experiment. The PTAB has
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`found that an expert’s evaluation of other prior art references is discoverable.
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`Adobe Inc. v. RAH Color Technologies LLC, IPR2019-00627, Paper 59 at 4
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`(PTAB Dec. 12, 2019).
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`Second, these requests seek only factual information related to electrolysis,
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`not litigation theories. Third, PO cannot generate this information by other means.
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`PO does not know what additional experiments Dr. Tremblay considered that
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`Petitioner appears to be withholding. Fourth and fifth, the requests are easily
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`understandable and not burdensome because they are limited to the protocols and
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`data Dr. Tremblay considered.
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`Petitioner argues these documents are prohibited by disclosure under Federal
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`Rule 26. Ex. 2115 at 7. It is unclear how Rule 26 relates to PO’s request for
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`additional discovery. But regardless, Rule 26 requires the production of
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`information Dr. Tremblay considered whether or not Petitioner believes it is
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`related to the Petition. Yeda Research & Dev. Co. v. Abbott GMBH & Co. KG, 292
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`F.R.D. 97, 110-15 (D.D.C. 2013) (ordering production of documents related to
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`5
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`
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`expert’s testing even though it was outside of the scope of the opinion).2
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`III. Requests 2 and 3 are in the Interest of Justice
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`Requests 2 and 3 seek instructions that were provided to Dr. Tremblay
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`concerning the selection of structural and operational parameters for his
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`“reproductions” of Wikey and Davies. As described above, Dr. Tremblay chose a
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`particular combination of parameters that are never described by Wikey or Davies.
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`To the extent Dr. Tremblay was encouraged to select a particular variable it would
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`indicate that his experiments were biased—“picked and chosen”—to achieve a
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`particular outcome. See also In re Arkeley, 455 F.2d 586, 587-88 (C.C.P.A. 1972)
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`(“picking and choosing . . . has no place in the making of a 102, anticipation
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`rejection.”); In re Ruschig, 343 F.2d 965, 974 (C.C.P.A. 1965). The PTAB has
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`required production of these types of instructions in other cases. Apple Inc.,
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`IPR2019-00377, Paper 22, at 4-5 (in the interests of justice to allow discovery of
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`the directions provided to a testing laboratory).
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`All five Garmin factors support requiring Petitioner to produce these
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`documents. First, there is more than a mere possibility that something useful will
`
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`2 Petitioner also generally refuses to produce documents that fall outside the scope
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`of Rule 26 while also refusing to specify what it is withholding on this basis. This
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`vague objection should be rejected.
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`
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`6
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`
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`be discovered. It will be highly useful for PO to show that specific instructions and
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`recommendations were provided to Dr. Tremblay for his creation of alleged
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`“reproductions.” For example, if Petitioner instructed or suggested Dr. Tremblay
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`use the most narrow electrode gap included in the range disclosed by those
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`references or use a particular electrode size that would provide evidence that his
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`“reproductions” were not objectively designed, but biased by an outside source.
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`Second, these requests only seek instructions and suggestions for creating
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`reproductions that Dr. Tremblay considered and relied upon in this proceeding.
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`The requests seek information relating to the scientific process, not Petitioner’s
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`litigation theories. Third, PO cannot generate this nonpublic information by other
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`means. Fourth and fifth, the requests are easily understandable and not
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`burdensome because they are limited to the instructions and suggestions Dr.
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`Tremblay considered in designing his alleged “reproductions”.
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`PO argues that this information is not discoverable under Federal Rule of
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`Civil Procedure 26. But the Federal Rules expressly allow for discovery of facts,
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`data, and assumptions the expert considered. FED. R. CIV. P. 26(b)(4)(C)(ii)-(iii).
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`Moreover, the PTAB has found that instructions like those sought by this request
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`fall are not protected work product. Apple Inc., IPR2019-00377, Paper 22, at 4-5. It
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`would be wholly unjust for Petitioner to instruct Dr. Tremblay to use specific
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`variables and thereby bias the results, and yet shield that direction from PO.
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`7
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`
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`Dated: October 4, 2021
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`Respectfully submitted,
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`/s/ J. Derek Vandenburgh
`J. Derek Vandenburgh
`Registration No. 32,179
`Carlson, Caspers, Vandenburgh, &
`Lindquist, P.A.
`Capella Tower, Suite 4200
`225 South Sixth Street
`Minneapolis, MN 55402
`dvandenburgh@carlsoncaspers.com
`
`Lead Counsel for Patent Owner
`Oxygenator Water Technologies, Inc.
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`8
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreement of the parties, the
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`undersigned certifies that on October 4, 2021, a true and correct copy of the
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`foregoing was served via electronic mail upon the following:
`
`R. Scott Johnson (Reg. No. 45,792)
`Fredrikson & Byron, P.A.
`505 E. Grand Ave., Suite 200
`Des Moines, IA 50309
`Phone: (515) 242-8930
`Fax: (515) 242-8950
`Email: RSJohnson@fredlaw.com
`
`Adam R. Steinert
`Fredrikson & Byron, P.A.
`200 South 6th Street, Suite 4000
`Minneapolis, MN 55402
`Tel: (612) 492-7000
`Fax: (612) 492-7797
`Email: asteinert@fredlaw.com
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`
`
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`
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`9
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`/s/ J. Derek Vandenburgh
`J. Derek Vandenburgh
`(Lead Counsel)
`
`
`
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