UNITED STATES PATENT AND TRADEMARKOFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TENNANT COMPANY,
`
`Petitioner,
`
`V.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`Case IPR2021-00625
`
`Patent No. RE 45,415
`
`PETITIONER TENNANT COMPANY’S OPPOSITION TO
`PATENT OWNER’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 No. RE 45,415
`
`PETITIONER TENNANT COMPANY’S OPPOSITION TO
`PATENT OWNER’S MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`AsPetitioner stated during the Parties’ teleconference with the Board,
`
`Petitioner has no objection to Patent Owner’s Requests (1) and (4) as they relate to
`
`the prior art at issue in this I.P.R. Those are the only legitimate discovery
`
`materials sought by Patent Ownerin this motion. The remainder of Patent
`
`Owner’s requests seek materials outside the scope of the instituted I.P.R., including
`
`materials expressly protected as litigation work product under Federal Rule of
`
`Civil Procedure 26(b)(4). Because Petitioner is already in the process of producing
`
`the only materials Patent Owneris legitimately entitled to, the motion should be
`
`denied.
`
`1
`
`Patent Owner’s Attempt to Obtain Discovery Regarding Testing of
`Other Prior Art References from the District Court Litigationis
`Improper
`
`AsPetitioner has repeatedly informed Patent Owner, Petitioner has no
`
`objection to Patent Owner’s Requests (1) and (4) as they relate to the prior art at
`
`issue in this I.P.R. (ie., the Wikey and Davies references). (See Ex. 2115 at 1, 3,
`
`5.) Petitioner is in the process of producing those materials and anticipates that
`
`production will be complete by the end of this week. (See id. at 1.)
`
`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
`
`in connection with the parties’ district court lawsuit that are not part of this I.P.R.
`
`_l-
`
`
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`(See Paper No. 21 at 3.) Such attempts to obtain discovery of Petitioner’s litigation
`
`positions are improper in an I.P.R. See Garmin Int'l, Inc. v. Cuozzo Speed Techs.
`
`LLC, IPR2021-00001, Paper No. 26, 2013 WL 11311697, at *7 (P.T.A.B. March
`
`5, 2013) (precedential) (“In Factor (2), we indicate that asking for the other party’s
`
`litigation positions and the underlying basis for those positions is not necessary in
`
`the interest ofjustice.”).
`
`Patent Owneridentifies two casesas allegedly supporting the idea that a
`
`party in an I.P.R. may seek document discovery regarding an opponent’s
`
`evaluation ofprior art that is not cited or discussed in the I.P.R. (See Paper No. 21
`
`at 5.) Neither case supports Patent Owner’s position.
`
`First, Patent Ownercites the Board’s decision in Adobe Inc. v. RAH Color
`
`Technologies LLC, IPR219-00627, Paper 59 at 4 (P.T.A.B. Dec. 12, 2019). The
`
`Adobe decision does not deal with written discovery at all. That decision
`
`addressed questions posed at a deposition, in which the expert was asked(a)
`
`whetherhe had performedanyprior art searches, (b) whether he had considered
`
`any prior art claim charts before he signed his declaration, and (c) whether he
`
`determined that any ofthe prior art provided to him by the Petitioner failed to
`
`render the challenged claims obvious. See id., Paper 59 at 3. The Board allowed
`
`those as deposition questions, because they were asked at a high level and did not
`
`delve into the substance ofthe prior art that the expert considered:
`
`_2-
`
`
`
`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.
`
`Id., Paper 59 at 4-5 (emphasis added). The Board also noted that while the
`
`expert’s consideration of prior art outside the scope of the I.P.R. may have been
`
`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.
`
`In this case, Patent Owner does “seek information regarding the specific
`
`content” of other prior art that Dr. Tremblay may have evaluated in the district
`
`court litigation, and what the conclusionsof that analysis were. Also, unlike
`
`responding to a generalized deposition question, irrelevance is a basis for denying
`
`additional document discovery in an I.P.R. See Garmin, 2013 WL 11311697, at *3
`
`(“The essence of Factor (1) is unambiguously expressed by its language, i.e., the
`
`requester of information should already be in possession of a threshold amount of
`
`evidence or reasoning tending to show beyondspeculation that something useful
`
`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
`
`Owner’s request to obtain documentdiscovery regarding Dr. Tremblay’s
`
`-3-
`
`
`
`evaluation of prior art references that were not considered aspart of his opinions in
`
`this I.P.R. should be denied.
`
`Patent Owneralso cites Yeda Research & Dev. Co. v. Abbott GMBH & Co.,
`
`292 F.R.D. 97 (D.D.C. 2013), as allegedly supporting the argument that an expert’s
`
`evaluation of uncited prior art is discoverable in an I.P.R. Yeda stands for no such
`
`proposition.
`
`As a preliminary matter, Yeda does not address discovery in an I.P.R.atall.
`
`Yeda addressesa district court review of a patent interference. See id. at 100. That
`
`proceeding applied district court discovery rules. As the Board has madeclear, “in
`
`inter partes review, discovery is limited as comparedto that available in district
`
`court litigation.” Garmin, 2013 WL 11311697, at *3. Furthermore, the discovery
`
`at issue in Yeda resulted from a party’s decision to use one of the inventors onits
`
`patent application as both a consulting expert in the interference and asa testifying
`
`expert in the district court lawsuit. See Yeda, 292 F.R.D. at 102-03. The court
`
`expressly acknowledged that the expert’s work as a consultant wasprotected
`
`litigation work product, and “unless the privilege was later waived, documents
`
`prepared by Dr. Engelmann as Yeda’s consultant in connection with the 2003
`
`experiments are protected from discovery by the work productprivilege.” Jd. at
`
`112. The court found that Yeda had waivedtheprivilege by subsequently using
`
`the same expert to take litigation positions directly contrary to the positions it had
`
`_4-
`
`
`
`taken in the interference proceeding. Jd. at 112-115.
`
`Noneofthose issues are at play here. Patent Owner has not argued that Dr.
`
`Tremblay’s I.P.R. declaration is a work product waiver with regard to his
`
`evaluation of different prior art in the district court lawsuit, nor could it. Patent
`
`Ownerhaslikewise failed to identify any decision of the Board allowing document
`
`discovery in an I.P.R. regarding an expert’s litigation evaluation ofpriorart thatis
`
`outside the scope ofthe instituted I.P.R.
`
`Atbest, Patent Owner appears to be arguing that if Dr. Tremblay had
`
`performedtesting of different prior art references in the district court lawsuit that
`
`conflicted with the testing results or opinions presented in this I.P.R., that
`
`information might be discoverable pursuant to 37 C.F.R. § 42.51(b)(1)(ii1).
`
`Petitioner states that no such inconsistent testing or evaluation of other priorart
`
`references exist. Petitioner is aware of and in compliance with its obligations
`
`under 37 C.F.R. § 42.51(b)(1)(iii).
`
`Accordingly, Patent Owner’s request to seek discovery regarding Dr.
`
`Tremblay’s district court litigation evaluation of prior art not cited in the instituted
`
`I.P.R. should be denied.
`
`II.
`
`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)
`
`Patent Owner’s Requests (2) and (3) attempt to discoverall correspondence
`
`~5-
`
`
`
`between Petitioner’s counsel and Dr. Tremblay “referring” to the reconstruction or
`
`testing of the priorart, including any “suggestions” or “advice” counsel may have
`
`expressed. (Paper No. 21 at 1.) Those requests run directly afoul of Federal Rule
`
`of Civil Procedure 26(b)(4) and dramatically exceed the discovery authorized in
`
`the Apple case cited by Patent Owner.
`
`The relevant portions of Federal Rule of Civil Procedure 26(b)(4) are
`
`reproduced below:
`
`Trial Preparation: Experts....
`
`(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.
`
`(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:
`
`(i) relate to compensation for the expert’s study or testimony;
`
`(ii) identify facts or data that the party’s attorney provided and that the
`expert considered in forming the opinions to be expressed; or
`
`(iii) identify assumptionsthat the party’s attorney provided andthat
`the expert relied on in forming the opinions to be expressed.
`
`Fed. R. Civ. P. 26(b)(4)(B)-(C). The Advisory Committee notes for the 2010
`
`amendments to Rule 26(b)(4) makeit clear that the current version of the Rule was
`
`crafted “to provide work-product protection against discovery regarding draft
`-6-
`
`
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`expert disclosures or reports and — with three specific exceptions —
`
`communications between expert witnesses and counsel.” Fed. R. Civ. P. 26
`
`Comm. Notes (2010), available at https://www.law.cornell.edu/rules/frcp/rule_26.
`
`The Committee Notes explain:
`
`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....
`
`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....
`
`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.
`
`Id. Thus, as the Committee Notes make clear, Patent Owneris legitimately
`
`entitled to discovery of the assumptions made in an expert’s testing and the results
`
`of that testing, but Patent Owner may not broadly seek discovery ofthe
`
`communications between counsel and the expert discussing the testing.
`
`The requests authorized by the Board in the Apple case cited by Patent
`
`Ownerare precisely the types of materials allowed by Rule 26(b)(4):
`
`(i)
`
`the directions from Dr. Hwang to The SingaporeInstitute of
`Manufacturing Technology (SIMTech) specifying the
`
`-7-
`
`
`
`verification studies referenced in Dr. Hwang’s declaration (Ex.
`2013) conducted by SIMTech in connection with this proceeding,
`
`(ii)
`
`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[.]
`
`Apple Inc. v. Singapore Asahi Chem. & Solder Indus. , 1PR219-00377, Paper 22 at
`
`3-4, 16 (P.T.A.B. Oct. 21, 2019). Notably, the allowed Apple requests cover the
`
`instructions provided by the expert to the testing laboratory and thetesting results
`
`providedbythe lab that were relied on by the expert. Jd. Neither request even
`
`attempted to obtain the communications between the experts and the party’s
`
`counsel discussing the testing, though presumably such communications would
`
`have existed (as they do in virtually every case). Cf id.
`
`During the Parties’ call with the Board, Patent Ownerasserted that the scope
`
`of its Requests (2) and (3) tracked the discovery authorized in the Apple case. (See
`
`Ex. 2115 at 6.) They do not. Petitioner has repeatedly asked Patent Ownerto
`
`either (a) identify a decision of the Board that actually authorizes the discovery
`
`sought in Requests (2) and (3) or (b) conform its requests to discovery that the
`
`Board’s prior decisions have authorized. (See id. at 1,3, 5.) Patent Owner has
`
`refused to do either. (See id. at 1.)
`
`Applying the discovery requests authorized in the Apple case to the expert
`
`opinionsin this I.P.R. results in the following requests:
`
`-8-
`
`
`
`(i)
`
`(ii)
`
`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,
`
`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.
`
`Petitioner has no objection to either of those discovery requests. To the
`
`extent that those Apple requests are not co-extensive with the materials Petitioner
`
`has already agreed to produce in response to Requests (1) and (4), Petitioneris
`
`voluntarily collecting and producing such materials. Petitioner anticipates
`
`completing the production by the end of this week.
`
`Accordingly, the Board should deny Patent Owner’s Requests (2) and (3),
`
`which seek discovery that is not supported by the Board’s prior decisions and
`
`would violate the work product protection created by the 2010 amendments to
`
`Federal Rule of Civil Procedure 26(b)(4).
`
`III.
`
`Patent Owner’s Argumentin a Footnote Improperly Attempts to
`Expandthe Scopeof 37 C.F.R. § 42.51(b)(1)(ii)
`
`In a footnote, Patent Ownerasserts that the Board should “order Petitioner to
`
`produce” any “information that unspecified variables impact bubble formation and
`
`size” as Routine Discovery pursuant to 37 C.F.R. § 42.51(b)(1)(Giii). (See Paper
`
`No. 21 at 1 n.1.) It is well-established that cursory arguments raised in footnotes
`
`_9-
`
`
`
`and not fully developed are deemed waived. See, e.g., Kennametal, Inc. v.
`
`Ingersoll Cutting Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015); SmithKline
`
`Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006).
`
`Accordingly, the Board should disregard Patent Owner’s footnote and deem the
`
`argument waived.
`
`Regardless, Patent Owner’s interpretation of Routine Discovery under 37
`
`C.F.R. § 42.51(b)(1)(iii) has been expressly rejected by the Board:
`
`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.
`
`Garmin, 2013 WL 11311697,at *2.
`
`Here, Patent Owneris apparently asking the Boardto orderPetitioner to
`
`combthrough every documentrelated to electrolysis in the possession of either
`
`Petitioner or Dr. Tremblay for any reference to any “unspecified variable” that
`
`could hypothetically have some impact on the “formation and size” of oxygen
`
`bubbles. That request stretches far outside the scope of the challenged ’415 patent
`
`and the analysis performed by Dr. Tremblay.
`
`The challenged ’415 patent identifies three variables that allegedly impact
`
`the size of bubbles formedby electrolysis — the spacing between the electrodes, the
`
`-10-
`
`
`
`powersourcevoltage, and the current:
`
`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,
`
`the power source producesa voltage no greater than about 28.3 volts
`and an amperage nogreater than about 13 amps
`
`(Ex. 1101 at Cl. 13.) The ’415 patent asserts that the formation of “microbubbles”
`
`and “nanobubbles” inherently results from making an electrolysis system
`
`according to “special dimensions” for these variables disclosed in the patent:
`
`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....
`
`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.
`
`(Ud. at 4:27-54.)
`
`It is not hard to imagine that there are variables not identified in the ’415
`
`patent that could cause the electrolysis systems described in the ’415 patent and the
`
`prior art to malfunction. For example, if someone attempted to operate the devices
`
`in a vacuum chamber, with water heated close to boiling, or with chemicals added
`
`-ll-
`
`
`
`to the water that interfered with the electrolysis reaction, there would likely be an
`
`impact on the devices’ ability to form oxygen bubbles. None ofthose far-fetched
`
`scenarios are contemplated by the ’415 patent, nor do they have any impact on
`
`whatthe cited prior art expressly and inherently teaches to a person skilled in the
`
`art. These are certainly not “specific information knownto [Petitioner] to be
`
`inconsistent with a position advanced by”Petitioner or Dr. Tremblay.
`
`If Patent Ownerwishesto pursue an argument that some “unspecified
`
`variable” is necessary to meet the patent claims,its expert witness is capable of
`
`making that argument without help from Petitioner or Dr. Tremblay. See, e.g.,
`
`Garmin, 2013 WL 11311697, at *7 (noting that the Patent Owner“can rely onits
`
`own analysis of the state of the art or on the opinions of independent analysts”
`
`without needing to rely on information from the Petitioner). Of course, if Patent
`
`Ownerwere to successfully convince the Board that some “unspecified variable”
`
`were necessary to practice the ’415 patent claims, it would likely render the claims
`
`invalid for lack of written description or enablementin the process.
`
`Asnoted above, Petitioner is aware of and in compliance with its obligations
`
`under 37 C.F.R. § 42.51(b)(1)(iii). Patent Owner’s attempt to dramatically expand
`
`the scope of 37 C.F.R. § 42.51(b)(1)(iii) through a footnote is contrary to the
`
`Board’s precedent and should be rejected. Patent Owner’s motion for additional
`
`discovery should be deniedin its entirety.
`
`-12-
`
`
`
`Dated: October 11, 2021
`
`/s/ R. Scott Johnson
`R. Scott Johnson
`Reg. No. 45,792
`Lead Counsel for Petitioner
`
`-13-
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e) and the agreementofthe parties, the
`
`undersigned certifies that on October 11, 2021, a true and correct copy of the
`
`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
`
`Dated: October 11, 2021
`
`_14-
`
`
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