CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 1 of 118
`
`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 1 of 118
`
`Exhibit 4
`Exhibit 4
`
`
`
`Page 1
`
`OWTEx. 2135
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 2 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`TENNANT COMPANY,
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Patent No. RE45,415
`
`Reissue Date: March 17, 2015
`
`
`
`Title: FLOW-THROUGH OXYGENATOR
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DR. MARIO TREMBLAY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 3 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`II. QUALIFICATIONS ........................................................................................ 1
`III. MATERIALS CONSIDERED ........................................................................ 6
`IV. DEFINITIONS AND STANDARDS .............................................................. 7
`V.
`STATE OF THE ART ................................................................................... 10
`VI. THE ’415 PATENT ....................................................................................... 11
`VII. CLAIM CONSTRUCTION .......................................................................... 11
`A.
`“Critical Distance” .............................................................................. 11
`B.
`“Microbubble” ..................................................................................... 12
`C.
`“Nanobubble” ...................................................................................... 12
`D.
`“Supersaturated” .................................................................................. 13
`VIII. ANALYSIS OF PRIOR ART ........................................................................ 15
`A. U.S. Patent No. 4,917,782 (“Davies”) ................................................ 15
`i.
`Overview of Davies .................................................................. 43
`ii.
`Davies Cell Embodiment #1 ..................................................... 44
`iii. Davies Cell Embodiment #2 ..................................................... 50
`Faithful and Accurate Reproduction of Davies Cell
`iv.
`Embodiment #1 ......................................................................... 57
`Testing of Water Electrolyzed by the Reproduced Davies
`Cell #1 ....................................................................................... 60
`Faithful and Accurate Reproduction of Davies Cell
`Embodiment #2 ......................................................................... 70
`vii. Testing of Water Electrolyzed by the Reproduced Davies
`Cell #2 ....................................................................................... 73
`B. U.S. Patent No. 5,324,398 (“Erickson”) ............................................ 83
`C. U.S. Patent No. 5,439,576 (“Schoeberl”) ............................................ 85
`D. U.S. Patent No. 3,984,303 (“Peters”) .................................................. 86
`E.
`U.S. Patent No. 3,891,535 (“Wikey”) ................................................. 15
`i.
`Overview of Wikey ................................................................... 15
`ii.
`Faith and Accurate Reproduction of Wikey Cell ..................... 20
`iii.
`Testing of Water Electrolyzed by the Wikey Cell .................... 25
`Aquariums for Dummies, First Edition, 1999 (“AFD”) ..................... 40
`F.
`G. U.S. Patent No. 4,039,439 (“Clark”) ................................................... 41
`-i-
`
`
`vi.
`
`v.
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 4 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`H. U.S. Patent No. 6,296,756 (“Hough”) ................................................. 89
`I. Wendt .................................................................................................. 90
`J.
`Han ...................................................................................................... 90
`K. Glembotsky ......................................................................................... 91
`L.
`Burns .................................................................................................... 94
`M. Motivation to Combine the Prior Art .................................................. 97
`N.
`The Grounds for Challenge ...............................................................113
`
`-ii-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 5 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`I, Dr. Mario Tremblay, make this declaration in connection with the
`
`proceeding identified above.
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by counsel for TENNANT COMPANY
`
`(“Tennant”) as a technical expert in connection with the proceeding identified
`
`above. I submit this declaration in support of Tennant’s Petition for Inter Partes
`
`Review (“Petition”) of United States Patent No. RE45,415 (“the ’415 patent”),
`
`Exhibit 1101.
`
`II. QUALIFICATIONS
`
`2. My complete qualifications and professional experience are described
`
`in my curriculum vitae, a copy of which is attached as Exhibit 1104 to the Petition.
`
`Following is a brief summary of my relevant qualifications and professional
`
`experience:
`
`3.
`
`I received a Bachelor of Science degree in 1983 from the University
`
`of Florida. I also received a Ph.D degree in Chemistry from the University of
`
`Florida in 1987. My Ph.D. emphasis was in analytical chemistry.
`
`4.
`
`After obtaining my Ph.D., I worked at Procter & Gamble Company
`
`(“P&G”) for nearly 30 years from 1987-2017, developing products for the personal
`
`care industry, including skin care, cosmetics and household care products. From
`
`1987 to 1990, I worked as a Principal Scientist Group Leader responsible for
`
`-1-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 6 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`leading analytical lab work for food and beverage research and product
`
`development. From 1990 to 2010, I worked as a Principal Scientist & Section
`
`Head responsible for leading analytical lab work for research and product
`
`development for various of P&G’s global business units in the personal care
`
`industry. From 2010 to 2017, I worked a Research Fellow responsible for
`
`providing technical leadership to various product development initiatives for
`
`several of P&G’s brands in the personal care and household care industries. After
`
`leaving Proctor & Gamble in 2017, I became a self-employed consultant working
`
`in personal care and household care industries.
`
`5.
`
`Over the course of my career, I have developed a deep understanding
`
`of electrolysis cell design. For example, I designed various electrolysis cells for
`
`disinfection and water purification. I also developed more than a dozen different
`
`electrolysis cell designs to electrolyze water and/or water with different salts that
`
`resulted in the decontamination of liquids, hard surfaces, fabrics or air.
`
`Additionally, I designed electrolysis cells for the purpose of water purification of
`
`both drinking and bathing water in developing geographies. These systems were
`
`connected to water purification and/or wash machines and dishwashing machines.
`
`Further, I worked directly with the Pentagon, DARPA and other government
`
`agencies for three years in developing electrolysis cells for the purpose of forming
`
`chlorine dioxide for decontamination and biological countermeasures. Even
`
`-2-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 7 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`further, I developed various electrolysis cell designs where the gap size was critical
`
`for performance and for maximization of efficiency. Finally, I have developed
`
`electrolysis cell design with different geometry, cell sizes, cell gap, flow rates and
`
`efficiencies so that they can be operated with batteries or AC power converted to
`
`DC. I also have experience with different cell coatings that delivered high
`
`efficiencies with various electrolysis cell designs.
`
`6. My work has led to the filing of numerous U.S patent applications,
`
`resulting in over fourteen U.S. patents related to products in the personal care
`
`industry. Some of these U.S. patent applications and resulting U.S. patents relate
`
`specifically to electrolysis cell design. I am a named inventor on the following
`
`U.S. patents and U.S. patent applications:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Patent No. 6,921,743, titled “Automatic Dishwashing Compositions
`Containing a Halogen Dioxide Salt and Methods for use with
`Electrochemical Cells and/or Electrolytic Devices,”
`
`Patent No. 7,048,842, titled “Electrolysis Cell for Generating Chlorine
`Dioxide,”
`
`Patent No. 7,413,637, titled “Self-Contained, Self-powered Electrolytic
`Devices for Improved Performance in Automatic Dishwashing,”
`
`Patent No. 7,816,314, titled “Automatic Dishwashing Compositions
`and Methods for Use with Electrochemical Cells and/or Electrolytic
`Devices,”
`
`Patent No. 8,333,873, titled “Apparatus for Electrolyzing an
`Electrolytic Solution,”
`
`Patent No. 9,358,085, titled “Device and Method for Cleaning Dental
`Appliances,”
`
`-3-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 8 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`7.
`
`Patent Publication No. 20030213505, titled “Energy-Efficient
`Automatic Dishwashing Appliances,”
`
`Patent Publication No. 20030213503, titled “Signal-based
`Electrochemical Methods for Automatic Dishwashing,”
`
`Patent Publication No. 20050067300, titled “Electrolysis Device for
`Treating A Reservoir of Water,”
`
`Patent Publication No. 20040231977, titled “Compositions, Devices
`and Methods for Stabilizing and Increasing the Efficacy of Halogen
`Dioxide,”
`
`Patent Publication No. 20040149571, titled “Halogen Dioxide
`Generating System,” and
`Patent Publication No. 20030042134, titled “High Efficiency
`Electrolysis Cell for Generating Oxidants in Solutions.”
`I am the first named inventor of U.S. Patent Publication No.
`
`20030042134, titled “High Efficiency Electrolysis Cell for Generating Oxidants in
`
`Solutions” (“Tremblay”), Exhibit 1146. Tremblay discloses a method for killing
`
`microorganisms in water. As water passes between electrodes, the microorganisms
`
`are killed and the water is sterilized. Further, Tremblay teaches generating mixed
`
`oxidants and that a higher concentration of oxidants provides even higher
`
`disinfection and oxidation of numerous compounds. Tremblay teaches a cell for
`
`electrolyzing an aqueous feed solution comprising water. The aqueous feed
`
`solution passes in and out of the cell. Figure 4 shows a tubular housing having an
`
`anode 21 and a cathode 22 contained in the housing.
`
`-4-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 9 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`anode
`
`cathode
`
`inlet
`
`outlet
`
`
`
`Ex. 1146, Fig. 4 (emphasis added). Tremblay discloses examples where the water
`
`flow rate is less than 12 gallons per minute. In Example 1, Tremblay discloses a
`
`flow rate of 300ml/minute (equal to 0.0793 gallons per minute). Id., ¶ [0088].
`
`Tremblay teaches that the anode and cathode are in close proximity, “preferably
`
`0.5 mm or less, more preferably 0.2 mm or less.” Id., ¶ [0001]. Tremblay teaches
`
`that a preferred electrical current supply is a battery or set of batteries, and that the
`
`batteries can have a nominal voltage potential of 1.5 volts, 3 volts, 4.5 volts, 6
`
`volts, or any other voltage that meets the power requirements of the electrolysis
`
`device. Id., ¶ [0069]. Tremblay discloses multiple examples where the power
`
`source provides a voltage below 28.3 volts and an amperage below 13 amps. For
`
`example, in Example 1, Tremblay discloses a voltage of 4.5 volts in combination
`
`with a current of 0.43 amps. Id., ¶ [0088]. Thus, Tremblay discloses a tubular
`
`-5-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 10 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`water electrolysis emitter having an anode separated from a cathode by the claimed
`
`critical distance in combination with the claimed voltage, amperage and flow rate.
`
`I therefore have direct experience with the claimed features of the ʼ415 patent.
`
`8.
`
`In summary, I have extensive experience with electrolysis cell design,
`
`including electrolysis cell design to electrolyze water. I had first-hand experience
`
`with these technologies at and before the time of the application that resulted in the
`
`ʼ415 patent was filed.
`
`III. MATERIALS CONSIDERED
`
`9.
`
`In preparing this declaration, I have reviewed, among other things, the
`
`following materials:
`
`(a) The ʼ415 patent and its prosecution history (Ex. 1101, 1102);
`
`(b) U.S. Patent No. 3,891,535 (“Wikey”) (Ex. 1112);
`
`(c) Aquariums for Dummies, published in 1999 (“AFD”) (Ex. 1114);
`
`(d) U.S. Patent No. 4,039,439 (“Clark”) (Ex. 1106);
`
`(e) U.S. Patent No. 4,917,782 (“Davies”) (Ex. 1105);
`
`(f) U.S. Patent No. 6,171,469 (“Hough”) (Ex. 1141);
`
`(g) U.S. Patent No. 5,324,398 (“Erickson”) (Ex. 1107);
`
`(h) U.S. Patent No. 5,439,576 (“Schoeberl”) (Ex. 1108);
`
`(i) U.S. Patent No. 3,984,303 to Peters (“Peters”) (Ex. 1109);
`
`-6-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 11 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`(j) WENDT, H. and Kreysa, G. (1999), Electrochemical Engineering:
`
`Science and Technology in Chemical and Other Industries, Springer-Verlag
`
`Berlin Heidelberg, ISBN 3-540-64386-9 (hardcover) (“Wendt”) (Ex. 1117);
`
`(k) HAN, M.Y., PARK, Y.H., and YU, T.J. (2002), Development of a
`
`New Method of Measuring Bubble Size, Water Science and Technology:
`
`Water Supply Vol 2 No 2 pp 77–83 (“Han”) (Ex. 1137),
`
`(l) GLEMBOTSKY, V.A., MAMAKOV, A.A., SOROKINA, V.N.
`
`(1973), Size of gas bubbles forming during electroflotation. Elektronnaya
`
`Obrabotka Materialov 5, 66–68. 1973 (“Glembotsky”) (Ex. 1123, 1124);
`
`(m) Burns, S.E., Yiacoumi, S. and Tsouris, C. (1997), Application of
`
`Digital Image Analysis for Size Distribution Measurement of Microbubbles,
`
`Imaging Technologies: Techniques and Civil Engineering Applications
`
`Engineering Foundation, Davos, Switzerland, May 25-30, 1997 (“Burns”)
`
`(Ex. 1131); and
`
`(n) The Petition.
`
`IV. DEFINITIONS AND STANDARDS
`
`10.
`
`I have been informed and understand that claims are to be given their
`
`ordinary and customary meaning as understood by a person of ordinary skill in the
`
`art (“POSITA”) at the time of the invention in light of the claims, the ’415 patent’s
`
`specification, and the prosecution history.
`
`-7-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 12 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`11.
`
`I have been informed that if the patent specification provides a
`
`particular definition for a term used in the claims, or uses a term in a special way,
`
`the claims will be construed in accordance with the special meaning given to the
`
`term by the patent specification, even if that special meaning contradicts the
`
`normal definition of the term.
`
`12.
`
`I have been informed and understand that a claim is invalid because of
`
`anticipation when every element of the claim is described in a single prior art
`
`reference, such that the elements are arranged as required by the claim. I have
`
`been informed and understand the description of a claim element in a prior art
`
`reference can be express or inherent. For a prior art reference to describe a claim
`
`element inherently, the claim element must be necessarily present. Probabilities
`
`are not sufficient to establish inherency.
`
`13.
`
`I have also been informed and understand that the subject matter of a
`
`patent claim is obvious if the differences between the subject matter of the claim
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious to a POSITA at the time the patent application was filed. I have also been
`
`informed that the framework for determining obviousness involves considering the
`
`following factors: (i) the scope and content of the prior art; (ii) the differences
`
`between the prior art and the claimed subject matter; (iii) the level of ordinary skill
`
`in the art; and (iv) any objective evidence of non-obviousness. I understand that
`
`-8-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 13 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`the claimed subject matter would have been obvious to a POSITA, for example, it
`
`results from the combination of known elements according to known methods to
`
`yield predictable results, the simple substitution of one known element for another
`
`to obtain predictable results, use of a known technique to improve similar devices
`
`in the same way or applying a known technique to a known device ready for
`
`improvement to yield predictable results. I have also been informed that the
`
`analysis of obviousness may include recourse to logic, judgment, and common
`
`sense available to a POSITA that does not necessarily require explication in any
`
`reference.
`
`14. Based on my experience in the field, a POSITA pertaining to the ʼ415
`
`patent in the 2003 time frame would have been someone with a degree in
`
`chemistry, chemical engineering, or a similar discipline and at least two years of
`
`experience with electrolysis systems. Alternatively, a POSITA could have
`
`equivalent experience in industry or research, such as designing, developing,
`
`testing or implementing electrolysis systems. Also, as noted in the ʼ415 patent, a
`
`POSITA “can readily fabricate any of the emitters shown in FIG. 4 or 5 or can
`
`design other embodiments that will oxygenate flowing water.” Ex. 1101, 9:20-22.
`
`15.
`
`I have been informed that the earliest priority date for considering the
`
`patentability of the claims of the ʼ415 patent is December 10, 2003. I have not
`
`analyzed whether the ʼ415 patent is legally entitled to this filing date. I shall refer
`
`-9-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 14 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`to this time frame as the “relevant date” or the “relevant time frame.” Based on my
`
`education and experience in the field of electrolytic cell designs, I believe I am
`
`more than qualified to provide opinions about how one of ordinary skill in the art
`
`in 2003 would have interpreted and understood the ʼ415 patent and the prior art
`
`discussed below.
`
`V. STATE OF THE ART
`
`16. Methods for producing an oxygenated aqueous or water composition
`
`using an electrolytic cell were well known in the art at the time of the ’415 patent’s
`
`alleged invention. The ʼ415 patent admits that “[t]he production of oxygen and
`
`hydrogen by the electrolysis of water is well known.” Ex 1101, 2:5-11. Further,
`
`prior art references such as Wikey and Davies show it was well known to provide
`
`an anode and cathode separated by the so-called “critical distance.” These
`
`references also show it was well known to provide this anode and cathode
`
`separation distance in combination with the claimed voltage, current and flow
`
`rates. It was also well known to use electrolysis to increase oxygen content in
`
`water as shown in Hough. Further, it was well known that electrolysis systems
`
`produce very fine bubbles of oxygen in water with sizes less than 50 microns as
`
`shown in Wendt, Han, Glembotsky and Burns.
`
`-10-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 15 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`VI. THE ’415 PATENT
`
`17. The claims of the ’415 patent are directed to “a method for producing
`
`an oxygenated aqueous composition” comprising “producing a suspension
`
`comprising oxygen microbubbles and nanobubbles, the microbubbles and
`
`nanobubbles having a diameter of less than 50 microns.” Ex. 1101, Claim 13. The
`
`method includes “flowing water… through an electrolysis emitter comprising an
`
`electrical power source electrically connected to an anode electrode and a cathode
`
`electrode contained in a tubular housing… wherein: the anode electrode is
`
`separated at a critical distance of 0.005 inches to 0.140 inches from the cathode,”
`
`with “a flow rate no greater than 12 gallons per minute,” “a voltage no greater than
`
`about 28.3 volts and an amperage no greater than about 13 amps.” Id. It was well
`
`known to provide an anode and cathode separated by the “critical distance”
`
`identified in the ’415 patent. It was also well known to provide this anode and
`
`cathode separation distance in combination with the claimed voltage, ampere and
`
`flow rates.
`
`VII. CLAIM CONSTRUCTION
`A.
`
`“Critical Distance”
`
`18. Claim 13 recites an “anode separated at a critical distance from the
`
`cathode such that the critical distance is from 0.005 inches to 0.140 inches.” The
`
`’415 patent explicitly defines the term “critical distance” as “the distance
`
`-11-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 16 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`separating the anode and cathode at which evolved oxygen forms microbubbles
`
`and nanobubbles.” Id. at 4:1-6. Accordingly, based on the explicit definition
`
`provided by the ’415 patent, I understand the term “critical distance” means “the
`
`distance separating the anode and cathode at which evolved oxygen forms
`
`microbubbles and nanobubbles.”
`
`B.
`
`“Microbubble”
`
`19. Claims 1, 13, 19-22 and 25 recite “microbubbles.” The ’415 patent
`
`explicitly defines the term “microbubble as “a bubble with a diameter less than 50
`
`microns.” Id. at 4:10-11. Accordingly, based on the explicit definition provided
`
`by the ’415 patent, I understand the term “microbubble” means “a bubble with a
`
`diameter less than 50 microns.”
`
`C.
`
`“Nanobubble”
`
`20. Claim 13, 19-22 and 25 recite “nanobubbles.” The ’415 patent
`
`explicitly defines the term “nanobubble as “a bubble with a diameter less than that
`
`necessary to break the surface tension of water.” Id. at 4:12-13. Accordingly,
`
`based on the explicit definition provided by the ’415 patent, I understand the term
`
`“nanobubble” means “a bubble with a diameter less than that necessary to break
`
`the surface tension of water.”
`
`-12-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 17 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`D.
`
`“Supersaturated”
`
`21. Claim 21 recites the term “supersaturate.” The ’415 patent explicitly
`
`defines the term “supersaturated” as “oxygen at a higher concentration than normal
`
`calculated oxygen solubility at a particular temperature and pressure.” Id. at 4:16-
`
`21.
`
`E. Other Teachings
`
`22. The ʼ415 patent teaches a “critical distance” of separation between the
`
`electrodes that produces microbubbles and nanobubbles. The abstract notes that,
`
`“when the anode and cathode are separated by a critical distance, very small
`
`microbubbles and nanobubbles of oxygen are generated.” Id., Abstract. The
`
`patent further indicates, “[i]n order to form microbubbles and nanobubbles, the
`
`anode and cathode are separated by a critical distance.” Id., 3:13-16. “The critical
`
`distance ranges from 0.005 to 0.140 inches.” Id. The preferred critical distance is
`
`from 0.045 to 0.060 inches.” Id.
`
`23. The ʼ415 patent also explains, “the anode and cathode were set at
`
`varying distances” and that at a “distance of 0.140 inches between the anode and
`
`cathode, it was observed that the oxygen formed bubbles at the anode. Therefore,
`
`the critical distance for microbubble and nanobubble formation was determined to
`
`be between 0.005 inches and 0.140 inches.” Id., 4:45-46, 4:50-54.
`
`-13-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 18 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`24. The ʼ415 patent teaches the critical distance is the “special
`
`dimensions” of the invention that produces microbubbles and nanobubbles:
`
`In the special dimensions of the invention, as explained in more detail
`in the following examples, O2 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,
`make the fluid opalescent or milky. Only after several hours do the
`bubbles begin to coalesce on the sides of the container and the water
`clears. During that time, the water is supersaturated with oxygen.
`
`Id., 4:27-38.
`
`25. Therefore, based on the teachings of the ’415 patent, a POSITA would
`
`have understood that an anode and cathode separated by the critical distance
`
`produces microbubbles and nanobubbles, and that those bubbles “remain
`
`suspended indefinitely in the fluid,” “make the fluid opalescent or milky,” and
`
`“supersaturate” the water. The patent specification discusses performing
`
`electrolysis on water with different levels of conductivity. See Ex. 1101, 1:35-40
`
`(ponds, lakes, marshes, reservoirs, and contaminated water); 8:11 (tap water). It
`
`was well known to perform electrolysis on any form of water, and that water that
`
`contains more dissolved solids is more conductive and would be suitable for low
`
`voltage systems. Furthermore, it would have been obvious to a POSITA to
`
`perform electrolysis using water containing varying amounts of dissolved solids
`
`and therefore varying conductivity.
`
`-14-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 19 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`VIII. ANALYSIS OF PRIOR ART
`A. U.S. Patent No. 3,891,535 (“Wikey”)
`i. Overview of Wikey
`
`26. Wikey discloses an electrolysis apparatus for electrolytically treating
`
`the water in aquariums, fish tanks, or fishponds. Ex. 1112, Abstract, 1:23-25,
`
`1:37-39, 1:67-67, 2:1 and 3:38-39. Wikey states that the apparatus acts to kill
`
`bacteria, aerate and increase the circulation of the water thereby improving the
`
`general environment of the aquarium. Id., Abstract.
`
`27. Wikey teaches causing water to electrolyze and break into its
`
`constituent gases, i.e., two parts hydrogen and one part oxygen. Id, 2:46-49.
`
`Wikey reports that his cell produces a “plethora” of oxygen bubbles that are
`
`extremely small. Id, 2:49-51, 3:18-21. A POSITA would have understood that
`
`Wikey discloses a method for producing extremely small oxygen bubbles in water
`
`and thus a method of producing an oxygenated aqueous composition.
`
`28.
`
`In Wikey, water flows through a tube 41 as shown in Figure 1 below.
`
`Id., 3:10-11 and Fig. 3.
`
`-15-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 20 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`
`
`A POSITA would have understood that Wikey’s tube 41 is a tubular housing.
`
`29. Moreover, with reference to Figure 1, Wikey teaches an electrode unit
`
`13 contained in the tube 41. Id., 3:1-8. Wikey also provides a power supply 12
`
`that feeds power to the electrode unit 13. The power supply 12 is shown in Figure
`
`1 as a D.C. source, such as a battery 28. Id., Fig. 1 and 2:22-24. Electricity flows
`
`from the power supply 12 to the electrodes 16, 17. Id., 2:9-11. A POSITA would
`
`have understood that the electrode unit 13 is an electrolysis cell.
`
`-16-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 21 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`
`
`30. Also as shown in Figure 1, the electrode unit 13 comprises a plurality
`
`of juxtaposed electrode plates 16, 17. Id., 2:1-8. The consecutive plates are
`
`oppositely polarized; for example, when plate 16 is positively polarized, plate 17 is
`
`negatively polarized. A POSITA would have understood that Wikey discloses an
`
`electrical power source electrically connected to an anode electrode and a cathode
`
`electrode.
`
`31. Wikey’s tube 41 has an inlet (at the bottom 42), an outlet (at the
`
`junction with tube 44), and a tubular flow axis extending from the inlet to the
`
`outlet. Id., Fig. 3 and 3:10-18. Water flows in the inlet, along the electrolysis unit
`
`13, and out the outlet. Id., 2:42-44. A POSITA would therefore have understood
`
`that Wikey discloses a tubular housing where water flows along a tubular flow axis
`
`from an inlet to an outlet while being in fluid connection with electrodes.
`
`-17-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 22 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`
`32. Water flows through tube 41 in Wikey. Id., 3:10-11 and Fig. 3. A
`
`POSITA would have understood that Wikey discloses a method of flowing water
`
`at a flow rate through an electrolysis emitter. Although Wikey does not mention a
`
`particular flow rate, it was well understood that the arrangement of Wikey would
`
`result in flow rates less than 12 gallons per minute.
`
`33. Wikey states that an object of the invention is to provide low voltage,
`
`low current water electrolysis. Id., at 1:40-43. Wikey teaches a 6 volt D.C. source
`
`as the power source. Id., 2:39-41. In addition, Wikey teaches a preferred
`
`amperage being ½ amp. Id., 2:44-46. However, Wikey also states that the
`
`amperage depends on the size of the electrode plates and the conductivity of the
`
`water in which the electrodes are placed. Id., 2:42-44. A POSITA therefore would
`
`have understood that the Wikey system causes electricity to flow from a power
`
`source to its electrodes and that a current of ½ amp in combination with a voltage
`
`of 6 volts can be used. A POSITA also would have understood that the current can
`
`be higher than ½ amp depending on the size of the electrode plates and the
`
`conductivity of the water.
`
`34. Wikey teaches that the electrode plates 16, 17 are separated by a
`
`distance of 1/64 inch, i.e., about 0.016 inch. Id., 2:39-41. A POSITA would have
`
`understood that Wikey discloses an anode electrode separated from the cathode
`
`-18-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 23 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`electrode by about 0.016 inch, which is in a range of the critical distance from
`
`0.005 inches to 0.140 inches identified in the ’415 patent.
`
`35. Additionally, a POSITA would have understood that since Wikey’s
`
`electrodes are separated by the same distance the ’415 patent says is critical,
`
`Wikey’s electrodes would produce microbubbles and nanobubbles having the same
`
`size and properties as those disclosed in the ’415 patent. For example, Wikey’s
`
`electrodes would produce bubbles having a bubble diameter of less than 50
`
`microns or less than 0.0006 inches. Likewise, Wikey’s electrodes would produce
`
`bubbles that are too small to break the surface tension of water, and therefore
`
`remain suspended in water indefinitely, or at least for some period of time up to
`
`several hours, during which time the water would be supersaturated with oxygen.
`
`Regardless of the type of container the water is contained in, oxygen bubbles will
`
`remain in water for some period of time.
`
`36. Wikey’s apparatus is used in aquariums, fish tanks, or fishponds.
`
`Id.,3:38-39. A POSITA would have understood that aquarium water, fish tank
`
`water, and fishpond water contain dissolved solids. Wikey also indicates that the
`
`water processed by the apparatus increases the oxygen in all levels of the tank and
`
`contributes to the health of fish in aquariums. Id., 3:28-30. A POSITA would
`
`have understood that the water would have had a conductivity resulting from the
`
`presence of dissolved solids that would support plant or animal life. Further, a
`
`-19-
`
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 80-4 Filed 06/10/21 Page 24 of 118
`Petition for Inter Partes Review of U.S. Patent No. RE45,415
`
`POSITA would have understood that, as with a