Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 30
` Entered: October 18, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00625
`Patent RE45,415 E
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting-in-Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.51(b)(1), 42.51(b)(2)
`
`ORDER
`Granting Patent Owner’s Motion to Expunge
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 30
` Entered: October 18, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TENNANT COMPANY,
`Petitioner,
`v.
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00625
`Patent RE45,415 E
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`WESLEY B. DERRICK, Administrative Patent Judges.
`KALAN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting-in-Part Patent Owner’s Motion for Additional Discovery
`37 C.F.R. §§ 42.51(b)(1), 42.51(b)(2)
`
`ORDER
`Granting Patent Owner’s Motion to Expunge
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`IPR2021-00625
`Patent RE45,415 E
`
`
`Pursuant to our authorization, Oxygenator Water Technologies, Inc.
`(“Patent Owner”) filed a Motion for Additional Discovery in the instant
`proceeding, and Tennant Company (“Petitioner”) filed an Opposition.1 We
`indicated in our authorization that we expected the parties to address the five
`Garmin factors that are important in determining whether additional
`discovery is in the interest of justice. Paper 18, 3 (citing Garmin Int’l, Inc.
`v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB
`Mar. 5, 2013) (precedential)).
`Patent Owner seeks additional discovery related to experiments
`conducted by Dr. Tremblay, Petitioner’s declarant, who submitted testimony
`in this proceeding. Mot. 1. Specifically, Patent Owner requests:
`(1) Laboratory notebooks and other documents containing or
`reflecting the protocols used in connection with the experiments
`considered by Petitioner’s expert Dr. Tremblay related to his
`consultation with Petitioner;
`(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;
`(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; and
`(4) Test reports or other raw data from any experiments
`conducted by, at the direction of, or for consideration by Dr.
`Tremblay that analyze the impact of any parameter that is the
`subject of the claims of the ’415 patent.
`Id. Petitioner indicates that it will produce materials relating to Requests 1
`and 4 “as they relate to the prior art at issue in this I.P.R. (i.e. the Wikey and
`
`
`1 See IPR2021-00625, Papers 18 (authorizing filing of the Motion), 21
`(“Mot.”), and 25 (“Opp.”).
`
`2
`
`
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`IPR2021-00625
`Patent RE45,415 E
`
`Davies references).” Opp. 1. Petitioner, however, objects to “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.” Id.
`After considering the arguments, evidence, and facts before us, we
`determine that it is in the interest of justice to grant Patent Owner’s Motion
`in part. For the reasons that follow, Patent Owner’s Motion is granted, but
`as to Requests 1 and 4 only.
`Petitioner also filed a Motion to Expunge Paper No. 23. Paper 24.
`Paper 23 is a version of the Opposition that exceeded the 7-page limit set
`forth in our authorization. Paper 18, 3.
`Motion for Additional Discovery
`In an inter partes review, a party seeking discovery beyond what is
`expressly permitted by rule must do so by motion, and must show that such
`additional discovery is “necessary in the interest of justice.” 35 U.S.C.
`§ 316(a)(5); see 37 C.F.R. § 42.51(b)(2)(i). Patent Owner, as the movant,
`bears the burden of demonstrating that it is entitled to the additional
`discovery sought. 37 C.F.R. § 42.20(c). We consider the five Garmin
`factors in determining whether additional discovery is necessary in the
`interest of justice. Garmin, Paper 26 at 6–7. The five Garmin factors are:
`(1) whether there exists more than a possibility and mere allegation that
`something useful will be discovered; (2) whether the requests seek the other
`party’s litigation positions and the underlying basis for those positions; (3)
`whether the moving party has the ability to generate equivalent information
`by other means; (4) whether the moving party has provided easily
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`IPR2021-00625
`Patent RE45,415 E
`
`understandable instructions; and (5) whether the requests are overly
`burdensome. Id.
`1. Garmin Factor 1: Useful Information
`The first Garmin factor asks whether the party seeking additional
`discovery demonstrates more than “[t]he mere possibility of finding
`something useful, and mere allegation something useful will be found.”
`Garmin, Paper 26 at 6. “The party requesting discovery should already be in
`possession of evidence tending to show beyond speculation that in fact
`something useful will be uncovered.” Id. “Useful” in this context means
`“favorable in substantive value to a contention of the party moving for
`discovery,” not just “relevant” or “admissible.” Id. at 7. A good cause
`showing requires the moving party to provide a specific factual reason for
`reasonably expecting that the discovery will be “useful.”
`Patent Owner alleges that all of the requested discovery is directed to
`“the impact of Dr. Tremblay’s selection of unspecified variables on his
`results.” Mot. 2. Petitioner argues that the requested discovery “will be
`useful to assessing Petitioner’s inherent anticipation argument” based on
`Dr. Tremblay’s experiments. Id. at 3. Regarding Requests 1 and 4, Patent
`Owner contends that “there is more than a mere possibility that something
`useful will be discovered” because “data demonstrating that the unspecified
`structural and operational parameters of Wikey and Davies impact bubble
`size will refute inherent anticipation,” and disagrees with Petitioner’s
`position that “evaluation of uncited prior art is irrelevant.” Id. at 4.
`Regarding Requests 2 and 3, Patent Owner argues that it will be “highly
`useful” to “show that specific instructions and recommendations were
`
`4
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`IPR2021-00625
`Patent RE45,415 E
`
`provided to Dr. Tremblay for his creation of alleged ‘reproductions.’” Id.
`at 6–7.
`Regarding Requests 1 and 4, Petitioner responds that Patent Owner’s
`reliance on Adobe Inc. v. RAH Color Technologies LLC, IPR2019-00627,
`Paper 59 at 4 (PTAB Dec. 12, 2019) is inapposite, because Patent Owner
`here seeks information regarding the specific content of “other prior art that
`Dr. Tremblay may have evaluated in the district court litigation and what the
`conclusions of that analysis were.” Opp. 2. According to Petitioner, Adobe
`stands for the proposition that requests for document discovery regarding an
`expert’s substantive analysis of uncited prior art references should be denied.
`Id. at 3. Petitioner further argues that “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. runs afoul of at least Garmin
`factors 1 and 2.” Id. at 4–5. Regarding Requests 2 and 3, Petitioner argues
`that they are “unsupported by the Board’s prior decisions” and “violate
`Federal Rule of Civil Procedure 26(b)(4).” Id. at 5.
`As noted above, information is “useful” if it is “favorable in
`substantive value to a contention of the party moving for discovery,” not just
`“relevant” or “admissible.” Garmin, Paper 26 at 7. Regarding Requests 1
`and 4, the facts here are sufficiently similar to those in Adobe to allow us to
`reach the same conclusion as the panel in that case, namely, that “inquiring
`about the facts (e.g. prior art references) that a declarant considered and
`reviewed in preparing his testimony” falls “squarely within routine
`discovery permitted by our rules.” Adobe, Paper 59 at 5 (citing 37 C.F.R.
`§ 42.51(b)(1)(ii) (permitting “[c]ross examination of affidavit testimony
`prepared for the proceeding”)). Even if we were to adopt Petitioner’s
`
`5
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`IPR2021-00625
`Patent RE45,415 E
`
`reasoning that Adobe applies only to depositions and not written discovery,
`it makes no sense to us to deny the document discovery requested here and
`then permit it in Dr. Tremblay’s deposition as in Adobe. We note that Patent
`Owner has noticed Dr. Tremblay’s deposition (Paper 26), and having the
`documents Dr. Tremblay relied upon in constructing his reproductions
`would typically be useful in conducting such a cross-examination. See
`Mylan Pharm. Inc. v. Allergan, Inc., IPR2016-01127, Paper 28 at 3 (“[W]e
`agree with Petitioner that the underlying data is necessary to evaluate figures
`fully, will aid Petitioner’s rebuttal to Patent Owner’s arguments and
`evidence, and will afford Petitioner a fair cross-examination of Patent
`Owner’s witnesses.”).
`Regarding Requests 2 and 3, Petitioner argues that Apple Inc. v.
`Singapore Asahi Chem. & Solder Indus., IPR2019-00377, Paper 22 at 3–4,
`16 (PTAB Oct. 21, 2019) does not apply, because the requests in this case
`“dramatically exceed the discovery authorized” in Apple. Opp. 5. Although
`the facts of every case are different, and although the discovery authorized in
`Apple was different than the discovery requested here, we agree that Apple is
`helpful to delineate some boundaries of our rules as they apply to the
`discovery requested here.
`Even if we were to assume FRCP 26(b)(4) applies to our proceedings
`(cf. Adobe, Paper 59 at 8 (“although the Federal Rules of Civil Procedure do
`not govern these proceedings, we note that FRCP Rule 26 is consistent with
`our determination”)), we are not persuaded that we would permit the
`discovery that Patent Owner seeks under Requests 2 and 3. As a threshold
`matter, even if Dr. Tremblay’s receipt of an instruction from counsel to use a
`particular parameter in his reproductions were discoverable under
`
`6
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`
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`IPR2021-00625
`Patent RE45,415 E
`
`FRCP 26(b)(4)(C), as Patent Owner alleges, Patent Owner has provided no
`basis for its belief that such an instruction exists. Moreover, Patent Owner’s
`requests appear to go beyond what would be permitted under
`FRCP 26(b)(4)(C), which “protects communications between a party’s
`counsel and its expert unless those communications are necessary to identify
`facts, data, or assumptions ‘that the party’s attorney provided and that the
`expert considered’ or ‘relied on’ in forming their opinions.” Opp. 5.
`Requests 2 and 3 seek not only documents that “identify” the material
`discoverable under FRCP 26(b)(4)(C), but also documents that “includ[e]”
`or “refer[] to” that material, as well as documents that identify, include, or
`refer to other material, such as suggestions and advice to Dr. Tremblay. We
`find Requests 2 and 3 too broad to be justified either under our rules, which
`do not expressly provide for discovery into communications between an
`attorney and an expert, or under FRCP 26, which only permits very limited
`discovery into such communications.
`We are persuaded by Patent Owner’s assertions that Requests 1 and 4
`will help Patent Owner evaluate Dr. Tremblay’s reproductions, which are
`the basis for Petitioner’s inherent anticipation arguments. For the reasons
`given above, we find that Garmin factor 1 weighs in favor of granting Patent
`Owner’s Motion as to Requests 1 and 4. We are not persuaded, however,
`that Patent Owner has demonstrated that granting Requests 2 and 3 would be
`in the interest of justice.
`2. Garmin Factor 2: Litigation Positions
`Garmin factor 2 asks whether the requests seek the other party’s
`litigation positions and the underlying basis for those positions. Garmin,
`Paper 26 at 6 (“Asking for the other party’s litigation positions and the
`
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`IPR2021-00625
`Patent RE45,415 E
`
`underlying basis for those positions is not necessary in the interests of
`justice.”). Patent Owner argues that Requests 1 and 4 seek “seek only
`factual information related to electrolysis not litigation theories.” Mot. 5.
`Patent Owner argues that Requests 2 and 3 “only seek instructions and
`suggestions for creating reproductions that Dr. Tremblay considered and
`relied upon in this proceeding” and “seek information relating to the
`scientific process, not Petitioner’s litigation theories.” Mot. 7.
`Regarding Requests 1 and 4, Petitioner responds that “Patent Owner’s
`attempt to obtain discovery regarding Dr. Tremblay’s evaluation of other
`prior art references in connection with the parties’ district court lawsuit” is
`improper. Opp. 1. Petitioner further argues that “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. runs afoul of at least Garmin
`factors 1 and 2.” Id. at 4–5. Regarding Requests 2 and 3, Petitioner invokes
`Federal Rule of Civil Procedure 26(b)(4), and argues: “Attempts to invade
`work product are the epitome of violating Garmin Factor 2.” Id. at 7.
`Patent Owner’s requests do not appear to be delving into Petitioner’s
`litigation position, notwithstanding Petitioner’s characterization of questions
`into prior art other than Wikey and Davies as “outside the scope of the
`instituted I.P.R.” Opp. 4. Requests 1 and 4, which ask for information (in
`addition to Wikey and Davies) that Dr. Tremblay considered in constructing
`and testing his reproductions for this inter partes review, appear to be fair.
`Petitioner submitted Dr. Tremblay’s reconstruction as part of its case-in-
`chief in this proceeding, and Patent Owner is not overreaching in its requests
`to obtain the documents supporting Dr. Tremblay’s reproduction in
`connection with this proceeding. As discussed above, however, Requests 2
`
`8
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`IPR2021-00625
`Patent RE45,415 E
`
`and 3, which ask for information provided to Dr. Tremblay in connection
`with preparing the reproduction in this proceeding, appear to exceed the
`scope of our rules.
`We find that Garmin factor 2 weighs in favor of granting Patent
`Owner’s Motion as to Requests 1 and 4.
`3. Garmin Factor 3: Ability to Generate Equivalent Information
`“Information a party can reasonably figure out or assemble without a
`discovery request would not be in the interests of justice to have produced
`by the other party.” Garmin, Paper 26 at 6. Patent Owner argues that,
`regarding Requests 1 and 4, it “cannot generate this information by other
`means” and it “does not know what additional experiments Dr. Tremblay
`considered that Petitioner appears to be withholding.” Mot. 5. Patent
`Owner argues that, regarding Requests 2 and 3, it “cannot generate this
`nonpublic information by other means.” Id. at 7.
`Petitioner does not appear to specifically address Garmin factor 3.
`See generally Opp. We agree that Patent Owner would have a difficult time
`generating the information it seeks, or its equivalent, by other means.
`Accordingly, we find that Garmin factor 3 weighs in favor of granting Patent
`Owner’s Motion.
`4. Garmin Factor 4: Easily Understandable Instructions
`Garmin factor 4 requires that the additional information sought
`“should be easily understandable.” Garmin, Paper 26 at 6.
`Patent Owner argues that Requests 1 and 4 “are easily
`understandable” because “they are limited to the protocols and data Dr.
`Tremblay considered.” Mot. 5. Patent Owner argues that Requests 2 and 3
`“are easily understandable” because “they are limited to the instructions and
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`IPR2021-00625
`Patent RE45,415 E
`
`suggestions Dr. Tremblay considered in designing his alleged
`‘reproductions.’” Id. at 7.
`Petitioner does not appear to specifically address Garmin factor 4.
`See generally Opp. On this record, the Patent Owner’s requests for
`additional information appear to be easily understandable. See Mot. 1. We
`find that Garmin factor 4 weighs in favor of granting Patent Owner’s
`Motion.
`5. Garmin Factor 5: Whether the Requests are Overly Burdensome
`Garmin factor 5 requires that “[t]he requests must not be overly
`burdensome to answer, given the expedited nature of Inter Partes Review[,]
`. . . includ[ing] financial burden, burden on human resources, and burden on
`meeting the time schedule.” Garmin, Paper 26 at 7.
`Patent Owner argues that Requests 1 and 4 are “not burdensome”
`because “they are limited to the protocols and data Dr. Tremblay
`considered.” Mot. 5. Patent Owner argues that Requests 2 and 3 are “not
`burdensome” because “they are limited to the instructions and suggestions
`Dr. Tremblay considered in designing his alleged ‘reproductions.’” Id. at 7.
`Petitioner does not appear to specifically address Garmin factor 5.
`See generally Opp. We have reviewed the requests, which appear to be
`limited in scope and do not appear to be overly burdensome for Petitioner to
`answer as to Requests 1 and 4. Regarding Requests 2 and 3, however, we
`believe that attempting to provide answers that would simultaneously
`comply with the requests and protect privileged information would be overly
`burdensome to Petitioner. We determine that Garmin Factor 5 weighs in
`favor of granting Patent Owner’s Motion with respect to Requests 1 and 4
`only.
`
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`IPR2021-00625
`Patent RE45,415 E
`
`6. Conclusion
`Having considered the Garmin factors with respect to the four
`
`requests presented by Patent Owner, we find that they support granting
`Patent Owner’s Motion as to Requests 1 and 4, but that they do not support
`granting Patent Owner’s Motion as to Requests 2 and 3.
`Motion to Expunge
`Petitioner’s Motion to Expunge requests that the Board “expunge the
`
`originally-filed version of its Opposition to Patent Owner’s Motion for
`Additional Discovery (Paper No. 23)” which “inadvertently exceeded the
`page limit set by the Board’s September 23 Order.” Paper 24, 1. Petitioner
`concurrently filed a corrected Opposition (Paper 25).
`
`We may determine a proper course of conduct in a proceeding for any
`situation not specifically covered by our rules. 37 C.F.R. § 42.5(a). We
`may also waive or suspend requirements of certain parts of our rules. 37
`C.F.R. § 42.5(b). Although typically, a “motion will not be entered without
`Board authorization” (37 C.F.R. § 42.20(b)), we invoke our ability to waive
`this requirement, and we grant Petitioner’s Motion to Expunge in view of the
`readily identifiable error and readily identifiable solution.
`
`Accordingly, it is
`ORDERED that Patent Owner’s Motion for Additional Discovery is
`granted as to Requests 1 and 4 and denied as to Requests 2 and 3; and
`FURTHER ORDERED that Patent Owner’s Motion to Expunge is
`granted and Paper 23 is expunged.
`
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`IPR2021-00625
`Patent RE45,415 E
`
`PETITIONER:
`Robert Johnson
`FREDRIKSON & BYRON, P.A.
`rsjohnson@fredlaw.com
`
`PATENT OWNER:
`Derek Vandenburgh
`Aaron Pederson
`Nathan Louwagie
`CARLSON, CASPERS, VANDENBURGH, & LINDQUIST, P.A.
`dvandenburgh@carlsoncaspers.com
`apederson@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`
`12
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`
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