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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TENNANT COMPANY,
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`Petitioner,
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`V.
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`OXYGENATOR WATER TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case IPR2021-00625
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`Patent No. RE 45,415
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`PETITIONER TENNANT COMPANY’S OPPOSITION TO
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
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`
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`AsPetitioner stated during the Parties’ teleconference with the Board,
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`Petitioner has no objection to Patent Owner’s Requests (1) and (4) as they relate to
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`the prior art at issue in this I.P.R. Those are the only legitimate discovery
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`materials sought by Patent Ownerin this motion. The remainder of Patent
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`Owner’s requests seek materials outside the scope of the instituted I.P.R., including
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`materials expressly protected as litigation work product under Federal Rule of
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`Civil Procedure 26(b)(4). Because Petitioner is already in the process of producing
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`the only materials Patent Owneris legitimately entitled to, the motion should be
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`denied.
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`1
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`Patent Owner’s Attempt to Obtain Discovery Regarding Testing of
`Other Prior Art References from the District Court Litigationis
`Improper
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`AsPetitioner has repeatedly informed Patent Owner, Petitioner has no
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`objection to Patent Owner’s Requests (1) and (4) as they relate to the prior art at
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`issue in this I.P.R. (ie., the Wikey and Davies references). (See Ex. 2115 at 1, 3,
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`5.) Petitioner is in the process of producing those materials and anticipates that
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`production will be complete by the end of this week. (See id. at 1.)
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`The sole dispute regarding Requests (1) and (4) is Patent Owner’s attempt to
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`obtain discovery regarding Dr. Tremblay’s evaluation of other prior art references
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`in connection with the parties’ district court lawsuit that are not part of this I.P.R.
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`_l-
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`(See Paper No. 21 at 3.) Such attempts to obtain discovery of Petitioner’s litigation
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`positions are improper in an I.P.R. See Garmin Int'l, Inc. v. Cuozzo Speed Techs.
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`LLC, IPR2021-00001, Paper No. 26, 2013 WL 11311697, at *7 (P.T.A.B. March
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`5, 2013) (precedential) (“In Factor (2), we indicate that asking for the other party’s
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`litigation positions and the underlying basis for those positions is not necessary in
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`the interest ofjustice.”).
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`Patent Owneridentifies two casesas allegedly supporting the idea that a
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`party in an I.P.R. may seek document discovery regarding an opponent’s
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`evaluation ofprior art that is not cited or discussed in the I.P.R. (See Paper No. 21
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`at 5.) Neither case supports Patent Owner’s position.
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`First, Patent Ownercites the Board’s decision in Adobe Inc. v. RAH Color
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`Technologies LLC, IPR219-00627, Paper 59 at 4 (P.T.A.B. Dec. 12, 2019). The
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`Adobe decision does not deal with written discovery at all. That decision
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`addressed questions posed at a deposition, in which the expert was asked(a)
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`whetherhe had performedanyprior art searches, (b) whether he had considered
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`any prior art claim charts before he signed his declaration, and (c) whether he
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`determined that any ofthe prior art provided to him by the Petitioner failed to
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`render the challenged claims obvious. See id., Paper 59 at 3. The Board allowed
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`those as deposition questions, because they were asked at a high level and did not
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`delve into the substance ofthe prior art that the expert considered:
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`Questions 1—3 each seek information about whether Dr. Poynton
`reviewed or considered a document or documents(e.g. prior art
`search, claim chart, or references) in preparing his testimony. The
`questions do not seek the substance of any communication between
`Dr. Poynton and Petitioner’s attorneys and do not, for example, seek
`information regarding the specific content of any prior art search that
`may have been conducted or claim chart that may have been
`reviewed.
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`Id., Paper 59 at 4-5 (emphasis added). The Board also noted that while the
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`expert’s consideration of prior art outside the scope of the I.P.R. may have been
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`irrelevant to the I.P.R., irrelevancealoneis not a basis for instructing a witness not
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`to answer a deposition question. See id., Paper 59 at 5.
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`In this case, Patent Owner does “seek information regarding the specific
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`content” of other prior art that Dr. Tremblay may have evaluated in the district
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`court litigation, and what the conclusionsof that analysis were. Also, unlike
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`responding to a generalized deposition question, irrelevance is a basis for denying
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`additional document discovery in an I.P.R. See Garmin, 2013 WL 11311697, at *3
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`(“The essence of Factor (1) is unambiguously expressed by its language, i.e., the
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`requester of information should already be in possession of a threshold amount of
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`evidence or reasoning tending to show beyondspeculation that something useful
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`will be uncovered. ‘Useful’ in that context does not mean merely ‘relevant’ and/or
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`‘admissible.’”). Thus, under the express reasoning of the Adobe decision, Patent
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`Owner’s request to obtain documentdiscovery regarding Dr. Tremblay’s
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`-3-
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`evaluation of prior art references that were not considered aspart of his opinions in
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`this I.P.R. should be denied.
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`Patent Owneralso cites Yeda Research & Dev. Co. v. Abbott GMBH & Co.,
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`292 F.R.D. 97 (D.D.C. 2013), as allegedly supporting the argument that an expert’s
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`evaluation of uncited prior art is discoverable in an I.P.R. Yeda stands for no such
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`proposition.
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`As a preliminary matter, Yeda does not address discovery in an I.P.R.atall.
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`Yeda addressesa district court review of a patent interference. See id. at 100. That
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`proceeding applied district court discovery rules. As the Board has madeclear, “in
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`inter partes review, discovery is limited as comparedto that available in district
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`court litigation.” Garmin, 2013 WL 11311697, at *3. Furthermore, the discovery
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`at issue in Yeda resulted from a party’s decision to use one of the inventors onits
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`patent application as both a consulting expert in the interference and asa testifying
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`expert in the district court lawsuit. See Yeda, 292 F.R.D. at 102-03. The court
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`expressly acknowledged that the expert’s work as a consultant wasprotected
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`litigation work product, and “unless the privilege was later waived, documents
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`prepared by Dr. Engelmann as Yeda’s consultant in connection with the 2003
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`experiments are protected from discovery by the work productprivilege.” Jd. at
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`112. The court found that Yeda had waivedtheprivilege by subsequently using
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`the same expert to take litigation positions directly contrary to the positions it had
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`_4-
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`taken in the interference proceeding. Jd. at 112-115.
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`Noneofthose issues are at play here. Patent Owner has not argued that Dr.
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`Tremblay’s I.P.R. declaration is a work product waiver with regard to his
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`evaluation of different prior art in the district court lawsuit, nor could it. Patent
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`Ownerhaslikewise failed to identify any decision of the Board allowing document
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`discovery in an I.P.R. regarding an expert’s litigation evaluation ofpriorart thatis
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`outside the scope ofthe instituted I.P.R.
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`Atbest, Patent Owner appears to be arguing that if Dr. Tremblay had
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`performedtesting of different prior art references in the district court lawsuit that
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`conflicted with the testing results or opinions presented in this I.P.R., that
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`information might be discoverable pursuant to 37 C.F.R. § 42.51(b)(1)(ii1).
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`Petitioner states that no such inconsistent testing or evaluation of other priorart
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`references exist. Petitioner is aware of and in compliance with its obligations
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`under 37 C.F.R. § 42.51(b)(1)(iii).
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`Accordingly, Patent Owner’s request to seek discovery regarding Dr.
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`Tremblay’s district court litigation evaluation of prior art not cited in the instituted
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`I.P.R. should be denied.
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`II.
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`Patent Owner’s Requests (2) and (3) are Unsupported by the Board’s
`Prior Decisions and Violate Federal Rule of Civil Procedure 26(b)(4)
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`Patent Owner’s Requests (2) and (3) attempt to discoverall correspondence
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`~5-
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`between Petitioner’s counsel and Dr. Tremblay “referring” to the reconstruction or
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`testing of the priorart, including any “suggestions” or “advice” counsel may have
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`expressed. (Paper No. 21 at 1.) Those requests run directly afoul of Federal Rule
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`of Civil Procedure 26(b)(4) and dramatically exceed the discovery authorized in
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`the Apple case cited by Patent Owner.
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`The relevant portions of Federal Rule of Civil Procedure 26(b)(4) are
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`reproduced below:
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`Trial Preparation: Experts....
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`(B) Trial-Preparation Protection for Draft Reports or Disclosures.
`Rules 26(b)(3)(A) and (B)protect drafts of any report or disclosure
`required under Rule 26(a)(2), regardless of the form in whichthe draft
`is recorded.
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`(C) Trial-Preparation Protection for Communications Between a
`Party’s Attorney and Expert Witnesses. Rules 26(b)(3)(A) and (B)
`protect communications between the party’s attorney and any witness
`required to provide a report under Rule 26(a)(2)(B), regardless of the
`form of the communications, except to the extent that the
`communications:
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`(i) relate to compensation for the expert’s study or testimony;
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`(ii) identify facts or data that the party’s attorney provided and that the
`expert considered in forming the opinions to be expressed; or
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`(iii) identify assumptionsthat the party’s attorney provided andthat
`the expert relied on in forming the opinions to be expressed.
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`Fed. R. Civ. P. 26(b)(4)(B)-(C). The Advisory Committee notes for the 2010
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`amendments to Rule 26(b)(4) makeit clear that the current version of the Rule was
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`crafted “to provide work-product protection against discovery regarding draft
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`expert disclosures or reports and — with three specific exceptions —
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`communications between expert witnesses and counsel.” Fed. R. Civ. P. 26
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`Comm. Notes (2010), available at https://www.law.cornell.edu/rules/frcp/rule_26.
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`The Committee Notes explain:
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`Rule 26(b)(4)(B) is added to provide work-product protection under
`Rule 26(b)(3)(A) and (B) for drafts of expert reports or disclosures....
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`Rule 26(b)(4)(C) is added to provide work-product protection for
`attorney-expert communications regardless of the form of the
`communications, whetheroral, written, electronic, or otherwise. The
`addition of Rule 26(b)(4)(C) is designed to protect counsel’s work
`product and ensure that lawyers may interact with retained experts
`without fear of exposing those communications to searching
`discovery....
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`Rules 26(b)(4)(B) and (C) do not impede discovery about the opinions
`to be offered by the expert or the development, foundation, or basis of
`those opinions. For example, the expert’s testing of material involved
`in litigation, and notes of any such testing, would not be exempted
`from discovery bythisrule.
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`Id. Thus, as the Committee Notes make clear, Patent Owneris legitimately
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`entitled to discovery of the assumptions made in an expert’s testing and the results
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`of that testing, but Patent Owner may not broadly seek discovery ofthe
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`communications between counsel and the expert discussing the testing.
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`The requests authorized by the Board in the Apple case cited by Patent
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`Ownerare precisely the types of materials allowed by Rule 26(b)(4):
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`(i)
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`the directions from Dr. Hwang to The SingaporeInstitute of
`Manufacturing Technology (SIMTech) specifying the
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`-7-
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`verification studies referenced in Dr. Hwang’s declaration (Ex.
`2013) conducted by SIMTech in connection with this proceeding,
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`(ii)
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`the test reports or other raw data provided by SIMTechafter
`conducting the requested verification studies and that underlies
`the figures and tables in the expert declarations submitted by Dr.
`Hwangand Dr. Suhir[.]
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`Apple Inc. v. Singapore Asahi Chem. & Solder Indus. , 1PR219-00377, Paper 22 at
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`3-4, 16 (P.T.A.B. Oct. 21, 2019). Notably, the allowed Apple requests cover the
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`instructions provided by the expert to the testing laboratory and thetesting results
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`providedbythe lab that were relied on by the expert. Jd. Neither request even
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`attempted to obtain the communications between the experts and the party’s
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`counsel discussing the testing, though presumably such communications would
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`have existed (as they do in virtually every case). Cf id.
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`During the Parties’ call with the Board, Patent Ownerasserted that the scope
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`of its Requests (2) and (3) tracked the discovery authorized in the Apple case. (See
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`Ex. 2115 at 6.) They do not. Petitioner has repeatedly asked Patent Ownerto
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`either (a) identify a decision of the Board that actually authorizes the discovery
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`sought in Requests (2) and (3) or (b) conform its requests to discovery that the
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`Board’s prior decisions have authorized. (See id. at 1,3, 5.) Patent Owner has
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`refused to do either. (See id. at 1.)
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`Applying the discovery requests authorized in the Apple case to the expert
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`opinionsin this I.P.R. results in the following requests:
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`-8-
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`(i)
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`(ii)
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`the directions from Dr. Tremblay to any testing laboratories or
`other entities involved in the recreation and testing referenced in
`Dr. Tremblay’s declaration (Ex. 1103) in connection with this
`proceeding,
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`the test reports or other raw data provided by anytesting
`laboratories or other entities after conducting the requested
`recreation and testing and that underlies the expert declaration
`submitted by Dr. Tremblay.
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`Petitioner has no objection to either of those discovery requests. To the
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`extent that those Apple requests are not co-extensive with the materials Petitioner
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`has already agreed to produce in response to Requests (1) and (4), Petitioneris
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`voluntarily collecting and producing such materials. Petitioner anticipates
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`completing the production by the end of this week.
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`Accordingly, the Board should deny Patent Owner’s Requests (2) and (3),
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`which seek discovery that is not supported by the Board’s prior decisions and
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`would violate the work product protection created by the 2010 amendments to
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`Federal Rule of Civil Procedure 26(b)(4).
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`III.
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`Patent Owner’s Argumentin a Footnote Improperly Attempts to
`Expandthe Scopeof 37 C.F.R. § 42.51(b)(1)(ii)
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`In a footnote, Patent Ownerasserts that the Board should “order Petitioner to
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`produce” any “information that unspecified variables impact bubble formation and
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`size” as Routine Discovery pursuant to 37 C.F.R. § 42.51(b)(1)(Giii). (See Paper
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`No. 21 at 1 n.1.) It is well-established that cursory arguments raised in footnotes
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`and not fully developed are deemed waived. See, e.g., Kennametal, Inc. v.
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`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015); SmithKline
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`Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006).
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`Accordingly, the Board should disregard Patent Owner’s footnote and deem the
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`argument waived.
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`Regardless, Patent Owner’s interpretation of Routine Discovery under 37
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`C.F.R. § 42.51(b)(1)(iii) has been expressly rejected by the Board:
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`Routine discovery under 37 C.F.R. § 41.51(b)(1)(ii) is narrowly
`directed to specific information known to the responding party to be
`inconsistent with a position advanced bythat party in the proceeding,
`and not broadly directed to any subject area in general within which
`the requesting party hopesto discover such inconsistent information.
`Cuozzo’s attempt to label very broad discovery requests as narrowly
`tailored routine discovery is misplaced.
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`Garmin, 2013 WL 11311697,at *2.
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`Here, Patent Owneris apparently asking the Boardto orderPetitioner to
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`combthrough every documentrelated to electrolysis in the possession of either
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`Petitioner or Dr. Tremblay for any reference to any “unspecified variable” that
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`could hypothetically have some impact on the “formation and size” of oxygen
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`bubbles. That request stretches far outside the scope of the challenged ’415 patent
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`and the analysis performed by Dr. Tremblay.
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`The challenged ’415 patent identifies three variables that allegedly impact
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`the size of bubbles formedby electrolysis — the spacing between the electrodes, the
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`-10-
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`powersourcevoltage, and the current:
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`the anodeelectrode is separated at a critical distance from the cathode
`such that the critical distance is from 0.005 inches to 0. 140 inches,
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`the power source producesa voltage no greater than about 28.3 volts
`and an amperage nogreater than about 13 amps
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`(Ex. 1101 at Cl. 13.) The ’415 patent asserts that the formation of “microbubbles”
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`and “nanobubbles” inherently results from making an electrolysis system
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`according to “special dimensions” for these variables disclosed in the patent:
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`The present invention produces microbubbles and nanobubbles of
`oxygen via the electrolysis of water. ... In the special dimensions of
`the invention, as explained in more detail in the following examples,
`O» forms bubbles which are too small to break the surface tension of
`the fluid. These bubbles remain suspended indefinitely in the fluid
`and, when allowed to build up, makethe fluid opalescent or milky....
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`It was found that electrolysis took place at very short distances before
`arcing of the current occurred. Surprisingly, at slightly larger
`distances, the water became milky and no bubbles formedat the
`anode, while hydrogen continued to be bubbled off the cathode. At
`distance of 0.140 inches between the anode and cathode, it was
`observedthat the oxygen formed bubblesat the anode. Therefore, the
`critical distance for microbubble and nanobubble formation was
`determined to be between 0.005 inches and 0.140 inches.
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`(Ud. at 4:27-54.)
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`It is not hard to imagine that there are variables not identified in the ’415
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`patent that could cause the electrolysis systems described in the ’415 patent and the
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`prior art to malfunction. For example, if someone attempted to operate the devices
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`in a vacuum chamber, with water heated close to boiling, or with chemicals added
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`-ll-
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`to the water that interfered with the electrolysis reaction, there would likely be an
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`impact on the devices’ ability to form oxygen bubbles. None ofthose far-fetched
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`scenarios are contemplated by the ’415 patent, nor do they have any impact on
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`whatthe cited prior art expressly and inherently teaches to a person skilled in the
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`art. These are certainly not “specific information knownto [Petitioner] to be
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`inconsistent with a position advanced by”Petitioner or Dr. Tremblay.
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`If Patent Ownerwishesto pursue an argument that some “unspecified
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`variable” is necessary to meet the patent claims,its expert witness is capable of
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`making that argument without help from Petitioner or Dr. Tremblay. See, e.g.,
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`Garmin, 2013 WL 11311697, at *7 (noting that the Patent Owner“can rely onits
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`own analysis of the state of the art or on the opinions of independent analysts”
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`without needing to rely on information from the Petitioner). Of course, if Patent
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`Ownerwere to successfully convince the Board that some “unspecified variable”
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`were necessary to practice the ’415 patent claims, it would likely render the claims
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`invalid for lack of written description or enablementin the process.
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`Asnoted above, Petitioner is aware of and in compliance with its obligations
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`under 37 C.F.R. § 42.51(b)(1)(iii). Patent Owner’s attempt to dramatically expand
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`the scope of 37 C.F.R. § 42.51(b)(1)(iii) through a footnote is contrary to the
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`Board’s precedent and should be rejected. Patent Owner’s motion for additional
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`discovery should be deniedin its entirety.
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`-12-
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`Dated: October 11, 2021
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`/s/ R. Scott Johnson
`R. Scott Johnson
`Reg. No. 45,792
`Lead Counsel for Petitioner
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`-13-
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and the agreementofthe parties, the
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`undersigned certifies that on October 11, 2021, a true and correct copy of the
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`foregoing was served via email on the following:
`
`Nathan Louwagie
`NLouwagie@carlsoncaspers.com
`OWT@carlsoncaspers.com
`
`Larina Alton for Schwegman Lundberg & Woessner, P.A.
`Larina.Alton@maslon.com
`
`By:
`
`/s/R. Scott Johnson
`R. Scott Johnson
`Reg. No. 45,792
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`Dated: October 11, 2021
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`_14-
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