CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 1 of 53
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MINNESOTA
`
`OXYGENATOR WATER
`TECHNOLOGIES, INC.
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`
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`v.
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`TENNANT COMPANY
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`
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`
`
`
` Civil Action No. 0:20-cv-00358 (ECT/HB)
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.’S OPENING CLAIM
`CONSTRUCTION BRIEF
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 2 of 53
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`
`
`TABLE OF CONTENTS
`
`
`
`Introduction .............................................................................................................. 1
`I.
`The Inventions Described in the Specification......................................................... 1
`II.
`III. Legal Standard .......................................................................................................... 4
`IV. Tennant’s IPR Petitions (and Its Expert, Dr. Tremblay) Acknowledged That the
`Relevant Claim Terms Do Not Include the Narrowing Limitations Tennant
`Requests In Its Proposed Constructions ................................................................... 4
`V. Argument .................................................................................................................. 6
`A.
`“water” ........................................................................................................... 7
`1.
`The Intrinsic Record Shows That “Water” Was Intended Only to be
`Limited to Water that Supported the Electrolysis of Water to Form
`Oxygen ............................................................................................... 9
`The “Definitions” Section of the Patent Does Not Compel a
`Construction that is Contrary to the Rest of the Intrinsic Record .... 11
`B. Other “Water”-Related Terms ..................................................................... 17
`1.
`“conductivity produced by the presence of dissolved solids such that
`the water supports plant or animal life” (’415 Patent, Claim 13) .... 17
`“aqueous medium” (’665 Patent, Claim 55) .................................... 21
`2.
`“oxygenated aqueous composition” (’415 Patent, Claim 13) .......... 21
`3.
`“tubular housing” (’415 Patent, Claims 13, 26) .......................................... 22
`“tubular flow axis from the inlet to the outlet” (’415 Patent, Claim 13) .... 24
`“Flow-Through”-Related Terms ................................................................. 27
`1.
`The Intrinsic Record Shows These Claim Terms Limit the Claims to
`Embodiments that Oxygenate Flowing Water, Not Embodiments
`That Create Incidental Flow Through the Process of Electrolysis ... 29
`Tennant Has Not Identified the Basis for Its Proposed
`Construction ..................................................................................... 31
`“an electrical power source” (’415 Patent, Claim 13) and “a power source”
`(’092 Patent, Claims 13 and 27; 665 Patent, Claims 13 and 67; ’665 Patent,
`Claim 13) ..................................................................................................... 32
`
`2.
`
`2.
`
`C.
`D.
`E.
`
`F.
`
`
`
`i
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 3 of 53
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`2.
`
`1.
`
`The Intrinsic Record Suggests the Power Source Should be
`Construed to Include All Components That Affect the Power
`Provided to the Electrodes ............................................................... 34
`A POSA Would Understand Power Source to Include All
`Components That Affect the Power Provided to the Electrodes ..... 35
`“nanobubble” ............................................................................................... 37
`“incapable of breaking the surface tension of the water” (’415 Patent, Claim
`25) ................................................................................................................ 39
`“the water temperature is a factor for formation of the suspension” (’415
`Patent, Claim 18) ......................................................................................... 40
`“microbubbles and nanobubbles remain in the water at least in part for a
`period up to several hours” (’415 Patent, Claim 19) ................................... 42
`“wherein the period for which the microbubbles and nanobubbles at least in
`part remain in the water is determined by containing the water with
`microbubbles and nanobubbles in a two and one half gallon aquarium
`reservoir container” (’415 Patent, Claim 20) .............................................. 44
`“a first anode electrode portion that is non parallel to a second anode
`electrode portion” (’415 Patent, Claim 20) ................................................. 46
`
`
`
`
`
`
`ii
`
`G.
`H.
`
`I.
`
`J.
`
`K.
`
`L.
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 4 of 53
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`
`Abbott Labs. v. Sandoz, Inc.,
`544 F.3d 1341 (Fed. Cir. 2008) ........................................................................................ 6
`
`
`Abbott Labs. v. Syntron Bioresearch, Inc.,
`334 F.3d 1343 (Fed. Cir. 2003) ...................................................................................... 11
`
`
`Adams Respiratory Therapeutics, Inc. v. Perrigo Co.,
`616 F.3d 1283 (Fed. Cir. 2010) ...................................................................................... 25
`
`
`AIP Acquisition LLC v. Cisco Sys.,
`714 F. App’x. 1010 (Fed. Cir., 2017) ............................................................................ 41
`
`
`AK Steel Corp. v. Sollac & Ugine,
`344 F.3d 1234 (Fed. Cir. 2003) ...................................................................................... 43
`
`
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co.,
`811 F.3d 1334 (Fed. Cir. 2016) ........................................................................................ 9
`
`
`Alcon, Inc. v. Teva Pharms. USA, Inc.,
`664 F.Supp. 2d 443 (D. Del. Oct. 19, 2009) ............................................................ 12, 15
`
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ........................................................................................ 5
`
`
`Ancora Techs. v. Apple, Inc.,
`744 F.3d 732 (Fed. Cir. 2014) ........................................................................................ 15
`
`
`Bd. of Regents v. BENQ Am. Corp.,
`533 F.3d 1362 (Fed. Cir. 2008) ...................................................................................... 24
`
`
`BreathableBaby, LLC v. Crown Crafts, Inc.,
`No. 12-CV-0094 (PJS/TNL), 2013 U.S. Dist. LEXIS 132626
`(D. Minn. Sep. 17, 2013) ................................................................................................ 42
`
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ...................................................................................... 38
`
`
`Cephalon, Inc. v. Abraxis Bioscience, LLC,
`618 F. App'x 663 (Fed. Cir. 2015) ................................................................................. 34
`
`
`
`iii
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 5 of 53
`
`
`Ecolab, Inc. v. FMC Corp.,
`569 F.3d 1335 (Fed. Cir. 2009) ...................................................................................... 15
`
`
`Edwards Sys. Tech., Inc. v. Digit. Control Sys.,
`99 F. App'x 911 (Fed. Cir. 2004) ................................................................................... 10
`
`
`Eko Brands, LLC v. Adrian Rivera Maynez Enters.,
`946 F.3d 1367 (Fed. Cir. 2020) ...................................................................................... 35
`
`
`Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
`845 F.3d 1357 (Fed. Cir. 2017) ...................................................................................... 43
`
`
`EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc.,
`714 F. App'x 995 (Fed. Cir. 2017) ................................................................................... 6
`
`
`Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp.,
`616 F.3d 1357 (Fed. Cir. 2010) ...................................................................................... 24
`
`
`Hill-Rom Servs. v. Stryker Corp.,
`755 F.3d 1367 (Fed. Cir. 2014) ...................................................................................... 41
`
`
`In re Katz Interactive Call Processing Pat. Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) ...................................................................................... 35
`
`
`In re Paulsen,
`30 F.3d 1475 (Fed. Cir. 1994) ........................................................................................ 11
`
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004) ........................................................................................ 4
`
`
`Kumar v. Ovonic Battery Co.,
`351 F.3d 1364 (Fed. Cir. 2003) ...................................................................................... 34
`
`
`Meds. Co. v. Mylan, Inc.,
`853 F.3d 1296 (Fed. Cir. 2017) ...................................................................................... 16
`
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ...................................................................................... 12
`
`
`Nobel Biocare Servs. AG v. Instradent USA, Inc.,
`903 F.3d 1365 (Fed. Cir. 2018) ...................................................................................... 35
`
`
`
`
`
`iv
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 6 of 53
`
`Noven Pharm. v. Watson Labs., Inc.,
`No. 11-cv-5997 (DMC)(MF), 2012 U.S. Dist. LEXIS 182486,
`(D.N.J. Dec. 27, 2012) ................................................................................................... 38
`
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd.,
`521 F.3d 1351 (Fed. Cir. 2008) .................................................................................. 6, 24
`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................. 4, 5, 33, 35, 41
`
`
`Shire Dev., LLC v. Watson Pharms., Inc.,
`787 F.3d (Fed. Cir. 2015) ............................................................................................... 33
`
`
`Source Search Techs., LLC v. LendingTree, LLC,
`588 F.3d 1063 (Fed. Cir. 2009) ........................................................................................ 5
`
`
`Synqor, Inc. v. Artesyn Techs., Inc.,
`709 F.3d 1365 (Fed. Cir. 2013) ...................................................................................... 25
`
`
`Thorner v. Sony Comput. Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) ................................................................................ 38, 41
`
`
`Verve, LLC v. Crane Cams, Inc.,
`311 F.3d 1116 (Fed. Cir. 2002) ...................................................................................... 35
`
`
`VLSI Tech. LLC v. Intel Corp.,
`No. 17-cv-05671-BLF, 2019 U.S. Dist. LEXIS 25379, (N.D. Cal. Feb. 15, 2019) ...... 12
`
`
`Wilson Sporting Goods Co. v. Hillerich & Bradsby Co.,
`442 F.3d 1322 (Fed. Cir. 2006) ................................................................................ 23, 32
`
`
`Woods v. DeAngelo Marine Exhaust, Inc.,
`692 F.3d 1272 (Fed. Cir. 2012) ........................................................................................ 9
`
`
`Rules
`
`37 C.F.R. § 42.100(b) .......................................................................................................... 5
`
`
`
`
`v
`
`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 7 of 53
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`I.
`
`Introduction
`
`Defendant Tennant Company (“Tennant”) used the specification from the asserted
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`patent family to design its accused product. Unsurprisingly, Tennant ended up with a
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`product that infringes the three patents-in-suit (“the Patents”). Tennant attempts to avoid
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`accountability for its infringement by proposing narrow claim constructions that contort
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`the understanding of the claims to a person of skill in the art (“POSA”) reading the claims
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`in the context of the specification and prosecution history. These narrow constructions
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`are contrary to the law of claim construction and should be rejected. They are also
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`contrary to the positions Tennant and its expert have taken in recently-filed petitions for
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`Inter Partes Review (“IPR”).
`
`II.
`
`The Inventions Described in the Specification
`
`The Patents describe novel techniques for creating micro and nanobubbles of
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`oxygen in water through electrolysis. Electrolysis of water is done by placing oppositely
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`charged electrodes in water to induce an electric current and break the chemical bonds
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`between the hydrogen and oxygen atoms in water.
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`
`
`1
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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 8 of 53
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`(JA3, Fig. 1 (annotation added).) 1
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`The Patents describe an efficient apparatus that can be used in methods of
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`conducting electrolysis of water in a way that creates microbubbles and nanobubbles of
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`oxygen. (JA1, Abstract; JA11-JA12, 2:64-3:42.) These extremely small bubbles are
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`valuable, inter alia, because they “remain in suspension, forming a solution
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`supersaturated in oxygen.” (JA1, Abstract.) The apparatuses the Patents disclose fall
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`into two general categories that are useful in different applications.
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`First, the Patents discloses a “button” emitter that can be set in water that houses
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`live animals:
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`
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`1 The three patents-in-suit have the same specifications and figures. Pin cites throughout
`this brief are directed to the ’415 patent. (See JA1-JA16.)
`2
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 9 of 53
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`(JA4, Fig. 2; JA12, 4:42-45 (“The first objective of this invention was to make an oxygen
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`emitter with low power demands, low voltage and low current for use with live animals.
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`For that reason, a small button emitter was devised.”).) The patent discloses that
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`exemplary uses for this button category of emitters include aquariums and bait buckets
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`(JA13, 5:24-25)), hydroponic cultures (JA14, 7:48-54), and containers of water that are
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`later used to water plants (JA14, 8:22-24).
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`Second, the Patents disclose “a flow-through emitter” that is used to “oxygenate
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`running water efficiently.” (JA15, 9:7-10.)
`
`
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`(JA9, Figs. 7A, 7B.) In this embodiment, electrodes are appropriately sized to be placed
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`within a tube or a hose such that the water flows through the tube in contact with the
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`electrodes. (JA12, 3:27-29; JA15, 9:11-15.) Exemplary uses for the flow-through
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`embodiment include agricultural applications. For example, the specification discloses
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`using this embodiment in watering hoses, drip irrigation systems, and hydroponic
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`circulating systems. (JA12, 3:25-42; JA15, 9:9-11.)
`
`
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`The specification contains definitions of a number of the terms used in the claims
`
`of the Patents, including some of those disputed by the parties in this case. (JA12, 3:65-
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`4:26.)
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`
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`3
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 10 of 53
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`III. Legal Standard
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`Claim construction requires an assessment of how a POSA would understand a
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`claim term at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
`
`(Fed. Cir. 2005). “Importantly, the person of ordinary skill in the art is deemed to read
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`the claim term not only in the context of the particular claim in which the disputed term
`
`appears, but in the context of the entire patent, including the specification.” Id. at 1313.
`
`“In some cases, the ordinary meaning of claim language as understood by a person of
`
`skill in the art may be readily apparent even to lay judges, and claim construction in such
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`cases involves little more than the application of the widely accepted meaning of
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`commonly understood words.” Id. at 1314. In technically complex cases, however,
`
`courts look to other sources to help understand how a POSA would understand the term,
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`including “the words of the claims themselves, the remainder of the specification, the
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`prosecution history, and extrinsic evidence concerning relevant scientific principles, the
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`meaning of technical terms, and the state of the art.” Id. (citing Innova/Pure Water, Inc.
`
`v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).
`
`IV. Tennant’s IPR Petitions (and Its Expert, Dr. Tremblay) Acknowledged That
`the Relevant Claim Terms Do Not Include the Narrowing Limitations
`Tennant Requests In Its Proposed Constructions
`
`Tennant filed two IPR petitions in the Patent Office that argued that certain prior
`
`
`
`art references met each of the limitations of a number of the claims of the ’415 patent.
`
`(Ex. 1; Ex. 2.) These petitions were supported by declarations signed by Mario
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`Tremblay—the same expert Tennant relies on in support of its claim constructions in the
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`district court. (Ex. 3; Ex. 4.)
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`4
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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 11 of 53
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`As will be discussed in more detail with regard to specific terms below, Tennant’s
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`proposed claim constructions frequently attempt to create non-infringement positions for
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`Tennant by adding limitations to the claims that are not included in the plain meaning of
`
`the relevant claim terms. In many cases these arguments are directly contradicted by
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`Tennant’s arguments in the IPR proceedings, where Tennant argued that prior art
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`references met the relevant claim terms without attempting to show that they included the
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`limitations Tennant now suggests should be included in these claim terms. See Sections
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`V.A, V.B., V.D, V.I., and V.K., infra.
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`It is axiomatic that claims must be interpreted the same way for infringement as
`
`for validity. Source Search Techs., LLC v. LendingTree, LLC, 588 F.3d 1063, 1075 (Fed.
`
`Cir. 2009) (citing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330
`
`(Fed. Cir. 2003)). Moreover, the same standard of claim construction applies in IPRs and
`
`in district court proceedings. See 37 C.F.R. § 42.100(b).2 Tennant’s expert’s failure to
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`address Tennant’s proposed added limitations in its filing with the Patent Office shows
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`that a POSA would not agree with Tennant’s new, narrow, proposed claim constructions.
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`Additionally, Tennant should not be allowed to apply one claim construction at the Patent
`
`Office when arguing the patent is invalid only to turn around and argue a different claim
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`construction before this Court to argue it does not infringe.
`
`
`2 Prior to 2018, the Patent Trial and Appeal Board (“PTAB”) applied the “broadest
`reasonable interpretation” standard (used in ordinary patent prosecution) to IPR
`proceedings. That practice subsequently changed, and IPR petitioners are now required
`to use the same Phillips standard applicable in district court proceedings in their IPR
`petitions. See id.; Manual of Patent Examination and Procedure § 2111.
`5
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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 12 of 53
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`V.
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`Argument
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`The purpose of claim construction in a patent case is generally two–fold: (1) to put
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`technical or complex claim language into words that the jury can more easily understand;
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`and (2) to resolve non-infringement or invalidity issues that turn on the meaning of claim
`
`terms. See Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008)
`
`(explaining claims are construed to aid the decision-maker, by restating the claims in
`
`non-technical terms); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d
`
`1351, 1362 (Fed. Cir. 2008) (“When the parties present a fundamental dispute regarding
`
`the scope of a claim term, it is the court’s duty to resolve it.”).
`
` For the most part, the claims of the Patents use common, ordinary words that a
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`jury can easily understand. Nevertheless, Tennant frequently proposes narrow claim
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`constructions that depart from that ordinary meaning in order to manufacture non-
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`infringement defenses. For many of these terms, OWT’s position is “no construction
`
`required.” See EmeraChem Holdings, LLC v. Volkswagen Grp. of Am., Inc., 714 F.
`
`App'x 995, 997 (Fed. Cir. 2017).
`
`
`
`6
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 13 of 53
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`A.
`
`“water”3
`
`OWT Proposed Construction
`An aqueous medium that can support the
`electrolysis of water.
`
`Tennant Proposed Construction
`Water means any aqueous medium with
`resistance less than one ohm per square
`centimeter, that is, a medium that can
`support the electrolysis of water. In
`general, the lower limit of resistance for a
`medium that can support electrolysis is
`water containing more than 2000 ppm
`total dissolved solids.
`
`
`The Patents emphasize that the disclosed electrolysis apparatuses and methods do
`
`not require some specialized type of water, but instead preferably use ordinary tap water
`
`or natural lake or river water. This is due in part to something that has been known in the
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`electrolysis art for decades: in order for electrolysis to occur, the water needs to contain
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`some dissolved solids, but not too much. (Declaration of Ralph E. White (“White
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`Decl.”) at ¶¶ 31-32; Ex. 22 at 381-82; Ex. 23 at 2; Ex. 7 at 24, Fig. 1; Ex. 25.) If the level
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`of dissolved solids in the water is too low (as would be the case with distilled or
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`deionized water), the water becomes insufficiently conductive for electrolysis to occur.
`
`(White Decl. at ¶31.) Conversely, if the level of dissolved solids is too high, it becomes
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`too conductive, which creates problems with the electrolysis. (Id. at ¶32) Ordinary tap,
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`river, or lake water generally falls squarely within the range needed for electrolysis to
`
`occur efficiently. (Ex. 7 at 26; Ex. 5 at TC00045200-201.)
`
`The “Definitions” section of the Patents recognizes this well-known fact, stating:
`
`“Water” means any aqueous medium with resistance less than one ohm per
`square centimeter, that is, a medium that can support the electrolysis of
`
`3 This term appears in the following claims: ’415 Patent, Claims 13, 18, 19, 20, 21, 25,
`29; ’092 Patent, Claims 13, 27, 60; ’665 Patent, Claims 13, 55.
`7
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`
`
`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 14 of 53
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`water. In general, the lower limit of resistance for a medium that can
`support electrolysis is water containing more than 2000 ppm total dissolved
`solids.
`
`(JA12, 4:22-26 (emphasis added).) The first sentence indicates that the water needs to
`
`have sufficiently low “resistance” (resistance is the inverse of conductance) to support the
`
`electrolysis of water. (White Decl. at ¶34.) The second sentence indicates that the
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`resistance should not be too low (which is the equivalent of saying the conductance
`
`should not be too high). (Id.)
`
`However, the numerical reference in the first sentence (“resistance less than one
`
`ohm per square centimeter”) is not strictly accurate. Resistance is measured in ohms, not
`
`“ohms per square centimeter.” (White Decl. at ¶35.) Tennant attempts to take advantage
`
`of this fact by seeking to import the entire two sentences verbatim into the construction of
`
`“water.” If successful, it would likely lead to Tennant contending that the term “water”
`
`covers nothing – not even the ordinary tap, lake and river water discussed in the Patents.4
`
`Fortunately, the law does not require this absurd result. Claims are interpreted
`
`from the perspective of a POSA. A POSA reading the description of “water” in the
`
`specification would recognize that the numerical reference in the first sentence is not
`
`accurate, and would also understand that the passage as a whole is merely conveying
`
`what POSAs already know: that the “water” used in the disclosed electrolysis apparatuses
`
`and methods needs to be water that is suitable for electrolysis. The claim language,
`
`
`4 Tennant advertises that its accused products use an electric charge on “clean tap water”
`to create millions of nanobubbles of air. (ECF 9-8 at 4; see also ECF 9-6 at 10
`(instructing the users of its products to use “clean water only”).)
`8
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`
`
`

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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 15 of 53
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`specification, and prosecution history all support the conclusion that a POSA would
`
`understand this and that “water” encompasses normal water. Tennant’s construction
`
`should be rejected.
`
`1.
`
`The Intrinsic Record Shows That “Water” Was Intended Only
`to be Limited to Water that Supported the Electrolysis of Water
`to Form Oxygen
`
`Claim Language. The plain meaning of the claim term “water” does not include
`
`the limitations that Tennant asks the Court to read into the term. Moreover, Claim 13 of
`
`the ’415 patent explicitly recites a limitation related to the resistance and dissolved solids
`
`content of the claimed water, suggesting the term “water” alone does not inherently
`
`include this type of limitation. See Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811
`
`F.3d 1334, 1340 (Fed. Cir. 2016) (finding a construction that renders other limitations
`
`“entirely superfluous” to be “disfavored”). Specifically, the claim states that “the water
`
`flowing into the inlet has a conductivity produced by the presence of dissolved solids
`
`such that the water supports plant or animal life.” As discussed below in connection with
`
`the next claim term, a POSA would understand this longer claim term to include normal
`
`tap water because normal tap water supports plant or animal life (e.g. pets routinely drink
`
`tap water and people routinely use tap water to water their plants). See pp. 17-21, infra.
`
`Therefore, a construction of the broader term “water” that excludes normal water is
`
`inappropriate. See, e.g., Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1285
`
`(Fed. Cir. 2012) (contextual claim language provided limitations on “angularly
`
`disposed,” such that the term “angularly disposed” itself has a broader meaning than the
`
`limiting language); Edwards Sys. Tech., Inc. v. Digit. Control Sys., 99 F. App'x 911, 918-
`
`
`
`9
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`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 16 of 53
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`19 (Fed. Cir. 2004) (holding that “the claim language itself, the specifications, the
`
`prosecution history, and the doctrine of claim differentiation all support[ed]” a finding
`
`that the phrase “predetermined size” was broader than a later-recited numerical
`
`limitation).
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`Specification. The specification of the patents discloses conducting electrolysis in
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`water to create microbubbles and nanobubbles so that the resulting suspension can be
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`used to (1) water plants (manually, through drip irrigation, or as part of a plant culture)
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`(e.g., JA1, Abstract), (2) improve the water quality of ponds, lakes, marshes and
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`reservoirs (e.g., JA11, 1:34-38), and (3) detoxify water that is used to house aquatic
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`animals such as fish (e.g., JA11, 1:38-44). The water that is electrolyzed in all of these
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`applications is tap water or natural water that houses fish. (White Decl. at ¶26) None of
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`the examples or embodiments in the patent indicate that the disclosure does not work
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`with normal tap water or that the invention is limited to using the electrolysis on
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`specialized water.
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`Prosecution History. During prosecution of the ’415 patent, the applicant added
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`the limitation to Claim 13 requiring that the water have “a conductivity produced by the
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`presence of dissolved solids such that the water supports plant or animal life.” When
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`adding this claim language, the applicant clearly informed the public and the examiner
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`that this claimed subset of water was not a specialized water, and was instead intended to
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`cover normal water such as potable water, well water, lake water, and irrigation water:
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`The alternative phrase “tap water” had formerly been recited by these
`claims. The PTO questioned the kind of water this phrase referred to.
`While the specification at Example 5 (8:4-10) discloses the words “tap
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`water” from a municipal source (Minneapolis Minnesota where the
`inventor lives and conducted his experiments), the descriptive phrase
`recited above has been used in place of tap water. The current phrase
`describing the water covers potable water delivered by a municipal water
`treatment plant in addition to well water, lake water and irrigation water.
`Water used to clean clothes, wash floors and water plants is included in this
`phrase.
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`(JA1143.) Neither the examiner nor the applicant ever suggested that the claimed water
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`did not include tap water or that type of water claimed by the patent was critical to
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`overcoming any prior art.
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`In this context, a POSA reading the intrinsic record would understand that the term
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`“water” claimed in the patents-in-suit was not meant to limit the claims to conducting
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`electrolysis with some specialized type of water, and that this term was meant to cover
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`normal water that could be used for electrolysis—including tap water. (White Decl. at
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`¶24.)
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`2.
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`The “Definitions” Section of the Patent Does Not Compel a
`Construction that is Contrary to the Rest of the Intrinsic Record
`
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`Tennant’s proposed construction is based on a paragraph in the “Definitions”
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`section of the patent. OWT expects Tennant will argue that this paragraph provides
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`binding lexicography. But “lexicography must appear with reasonably clarity,
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`deliberateness, and precision before it can affect the claim.” Abbott Labs. v. Syntron
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`Bioresearch, Inc., 334 F.3d 1343, 1354-55 (Fed. Cir. 2003) (quoting In re Paulsen, 30
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`F.3d 1475, 1480 (Fed. Cir. 1994)) (definitional paragraph that provided multiple
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`definitions was found not to be sufficient for lexicography). In this case, the paragraph
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`Tennant cites includes multiple parts, as well as a numerical reference (“resistance less
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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 18 of 53
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`than one ohm per square centimeter”) that a POSA would easily recognize is not
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`accurate. As such, the description of “water” in the “Definitions” section does not
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`include sufficient “clarity, deliberateness, and precision” to narrow the claims such that
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`their meaning is contrary to the entire context of the patent and the definition provided in
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`the prosecution history above. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d
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`1364, 1369-71 (Fed. Cir. 2005) (reversing district court application of lexicography
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`where the portion of the cited portion of the specification was not clear enough to justify
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`a counterintuitive construction of the claim term); VLSI Tech. LLC v. Intel Corp., No.
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`17-cv-05671-BLF, 2019 U.S. Dist. LEXIS 25379, at *20-21 (N.D. Cal. Feb. 15, 2019)
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`(definition of term did not include the requisite “clarity, deliberateness, and precision” to
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`overcome inconsistent definition provided elsewhere in the intrinsic record); Alcon, Inc.
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`v. Teva Pharms. USA, Inc., 664 F.Supp. 2d 443, 455-57 (D. Del. Oct. 19, 2009) (rejecting
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`argument of lexicography where the rest of the intrinsic evidence was clear about the
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`meaning of the term and the alleged definition included an error).
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`Additional technical background related to resistivity,5 dissolved solids, and
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`electrolysis of water is necessary to understand the paragraph Tennant relies on.
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`Conductivity is a measure of how easily electrical current can flow through a specified
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`material. (White Decl. at ¶29; Ex. 7 at 25.) Resistivity is the inverse of conductivity; it is
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`a measure of the resisting power of a specified material to the flow of an electrical
`
`
`5 Resistance and resistivity are related. Resistance is the total resistance of a body of
`material. It is measured in ohms. Resistivity is the resistance per unit length. It has units
`of ohm-meters. (White Decl. at ¶35.)
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`CASE 0:20-cv-00358-ECT-HB Doc. 79 Filed 06/10/21 Page 19 of 53
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`current. (White Decl. at ¶29; Ex. 7 at 24.) If a material has very high resistivity, it is
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`difficult for electricity to flow through that material. (White Decl. at ¶29.) Conversely, if
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`a material has very low resistivity, then electricity flows easily through the material. (Id.)
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`In general, increasing the level of dissolved solids in a medium such as water
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`decreases the resistivity of the water:
`
`
`
`(Id.; Ex. 23 at 2.) This is because the dissolved solids in water help electrons move
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`through the solution. (White Decl. at ¶29.) As a result of this inverse correlation, water
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`with a low level of dissolved solids (such as de