CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 1 of 37
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
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`OXYGENATOR WATER
`TECHNOLOGIES, INC.,
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`Plaintiff,
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`Civil File No. 20-cv-00358-ECT-HB
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`v.
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`TENNANT COMPANY,
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`Defendant.
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`TENNANT’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 2 of 37
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION ............................................................................................................... 1
`ARGUMENT ....................................................................................................................... 2
`I.
`THE PATENTS PROVIDE EXPRESS DEFINITIONS FOR
`“WATER” AND “NANOBUBBLE” ............................................................ 2
`
`II.
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`“OXYGENATED AQUEOUS COMPOSITION,” “AQUEOUS
`MEDIUM,” AND “CONDUCTIVITY PRODUCED BY THE
`PRESENCE OF DISSOLVED SOLIDS SUCH THAT THE
`WATER SUPPORTS PLANT OR ANIMAL LIFE”
`INCORPORATE THE APPLICANT’S DEFINITION OF
`“WATER” ..................................................................................................... 8
`III. THE “FLOWING WATER” TERMS NARROWED THE CLAIMS
`FOR ALLOWANCE ................................................................................... 12
`IV. THE SPECIFICATION AND FILE HISTORY MAKE IT CLEAR
`THAT A “TUBULAR” HOUSING HAS A CIRCULAR CROSS-
`SECTION .................................................................................................... 14
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`“TUBULAR FLOW AXIS” REQUIRES AN ACTUAL AXIS ................. 17
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`V.
`VI.
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`“POWER SOURCE” AND “AN ELECTRICAL POWER
`SOURCE” ARE READILY UNDERSTOOD, NON-TECHNICAL
`TERMS ........................................................................................................ 21
`VII. THE PATENTS EQUATE “INCAPABLE OF BREAKING THE
`SURFACE TENSION OF THE WATER” WITH
`“NANOBUBBLES” .................................................................................... 24
`VIII. “UP TO SEVERAL HOURS” DOES NOT MEAN “AT LEAST
`SEVERAL HOURS” ................................................................................... 25
`IX. LIMITATIONS IN A METHOD CLAIM ARE STEPS OF THE
`METHOD THAT MUST BE PERFORMED ............................................. 26
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`X.
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`THE CLAIMED “FIRST ANODE ELECTRODE PORTION” AND
`“SECOND ANODE ELECTRODE PORTION” REQUIRE TWO
`SEPARATE ANODE ELECTRODES ....................................................... 30
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`CONCLUSION ................................................................................................................. 31
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`i
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 3 of 37
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Alcon, Inc. v. Teva Pharms. USA, Inc.,
`664 F.Supp. 2d 443 (D. Del. Oct. 19, 2009) .................................................................. 5
`
`Alice Corp. Pty. Ltd. v. CLS Bank Intern.,
`573 U.S. 208 (2014) ..................................................................................................... 27
`
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) ....................................................... 28, 29, 31
`
`Beachcombers v. WildeWood Creative Prods., Inc.,
`31 F.3d 1154 (Fed. Cir. 1994) ...................................................................................... 21
`
`Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc.,
`749 F.3d 1349 (Fed. Cir. 2014) ...................................................................................... 6
`
`Cent. Admixture Pharmacy Servs., Inc. v. Advanced Cardiac Sols., P.C.,
`482 F.3d 1347 (Fed. Cir. 2007) ...................................................................................... 9
`
`Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC,
`677 F.3d 1361 (Fed. Cir. 2012) .................................................................................... 26
`
`Computer Docking Station Corp. v. Dell, Inc.,
`519 F.3d 1366 (Fed. Cir. 2008) ...................................................................................... 7
`
`Cordis Corp. v. Boston Sci. Corp.,
`658 F.3d 1347 (Fed. Cir. 2011) .......................................................................... 7, 24, 31
`
`Eon Corp. IP Holdings v. Silver Spring Networks,
`815 F.3d 1314 (Fed. Cir. 2016) ...................................................................................... 9
`
`General Hosp. Corp. v. Sienna Biopharmaceuticals, Inc.,
`888 F.3d 1368 (Fed. Cir. 2018) .................................................................................... 23
`
`GPNE Corp. v. Apple Inc.,
`830 F.3d 1365 (Fed. Cir. 2016) .................................................................................... 25
`
`Helmsderfer v. Bobrick Washroom Equip., Inc.,
`527 F.3d 1379 (Fed. Cir. 2008) .................................................................................... 26
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`ii
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 4 of 37
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`Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp.,
`493 F.3d 1358 (Fed. Cir. 2007) ............................................................................. passim
`
`Jack Guttman, Inc. v. Kopykake Enterprises, Inc.,
`302 F.3d 1352 (Fed. Cir. 2002) ...................................................................................... 6
`
`In re Katz Interactive Call Processing Pat. Litig.,
`639 F.3d 1303 (Fed. Cir. 2011) ...................................................................................... 7
`
`Laitram Corp. v. NEC Corp.,
`163 F.3d 1342 (Fed. Cir. 1998) .............................................................................. 14, 16
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`Merck & Co. v. Teva Pharms USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ...................................................................................... 5
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`O2 Micro Int’l v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed Cir. 2008) ....................................................................................... 9
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ............................................................................. passim
`
`Praxair Dist., Inc. v. Mallinckrodt Hos. Prods. IP Ltd.,
`890 F.3d 1024 (Fed. Cir. 2018) .................................................................................... 27
`
`Rhine v. Casio, Inc.,
`183 F.3d 1342 (Fed. Cir. 1999) .................................................................................... 23
`
`Ricoh Co. v. Quanta Computer, Inc.,
`550 F.3d 1325 (Fed. Cir. 2008) .................................................................................... 26
`
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005) .................................................................................... 13
`
`SandBox Logistics LLC v. Proppant Express Invs. LLC,
`813 F. App’x 548 (Fed. Cir. 2020) .............................................................................. 13
`
`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570 (Fed. Cir. 1995) ...................................................................................... 20
`
`SRI Int’l v. Matsushita Elec. Corp.,
`775 F.2d 1107 (Fed. Cir. 1985) .............................................................................. 16, 22
`
`TDM Am., LLC v. U.S.,
`85 Fed. Cl. 774 (2009) ................................................................................................. 27
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`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ...................................................................................... 15
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`VLSI Tech. LLC v. Intel Corp.,
`No. 17-cv-05671-BLF, 2019 WL 652892 (N.D. Cal. Feb. 15, 2019) ....................... 4, 5
`
`Wright Med. Tech., Inc. v. Osteonics Corp.,
`122 F.3d 1440 (Fed. Cir. 1997) .................................................................................... 15
`Statutes
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`35 U.S.C. § 101 ................................................................................................................. 27
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`35 U.S.C. § 112 ........................................................................................................... 23, 31
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`iv
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 6 of 37
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`INTRODUCTION
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`As explained in its opening brief, Tennant’s proposed claim constructions match the
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`express definitions provided in the patent specification, the arguments OWT made to the
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`Patent and Trademark Office (“PTO”) to obtain the Patents-In-Suit, and—where
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`appropriate—the plain English meaning of the claim terms. OWT’s proposed
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`constructions and the arguments in its opening brief turn claim construction on its head.
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`For terms that the patentee expressly defined, OWT nitpicks its own lexicography
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`and then asks the Court to proceed as if the patent specification never contained a definition
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`to begin with. For other terms that the patent specification does not define, OWT points to
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`poorly-written phrases in the specification, arguing that those somehow change the plain
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`meaning of the claim terms into things the patents never disclosed or contemplated.
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`OWT likewise argues that the Court should ignore the portions of the patent file
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`histories that expressly disclaimed claim scope in order to obtain allowance of the asserted
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`patent claims. Instead, OWT would have the Court read attorney arguments during
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`prosecution as expanding the scope of the alleged inventions, years after the original patent
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`applications were filed.
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`OWT’s arguments are improper. The rules of claim construction exist to put the
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`world on notice of the metes and bounds of the claimed invention. Those rules must be
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`followed. The Court should adopt Tennant’s proposed constructions.
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`1
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 7 of 37
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`I.
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`ARGUMENT
`THE PATENTS PROVIDE EXPRESS DEFINITIONS FOR “WATER”
`AND “NANOBUBBLE”
`There is no legitimate dispute that the patentee intended to act as his own
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`lexicographer, setting out an entire section of express “Definitions” in the patent
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`specification. The patents’ “Definitions” include two of the disputed claim terms,
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`“nanobubble” and “water”:
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`Definitions
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`For the purpose of describing the present invention, the following terms
`have these meanings: …
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`“Nanobubble” means a bubble with a diameter less than that necessary to
`break the surface tension of water. Nanobubbles remain suspended in the
`water, giving the water an opalescent or milky appearance. …
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`“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.
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`Joint Appendix (Dkt. 74, “JA”) at JA12, 3:64-67, 4:12-15, 4:22-26.
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`When a patent applicant provides express definitions of claim terms, those
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`definitions control. Honeywell Int’l, Inc. v. Universal Avionics Sys. Corp., 493 F.3d
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`1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the patentee’s
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`definition governs, even if it is contrary to the conventional meaning of the term.”)
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`(citations omitted). The applicant’s unmistakable lexicography should be the beginning
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`and the end of the analysis.
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`2
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 8 of 37
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`1.
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`“Water”
`OWT contends that 33 of the 49 words in the patentee’s definition of “water”
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`should be struck out and ignored altogether. The basis for OWT’s argument is its
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`expert’s contention that the applicant used the word “resistance” when he meant
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`“resistivity” and expressed its numerical limits using the wrong units. See Dkt. 78 at 12
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`n.5, 14-15.
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`The patentee’s definition calls for “resistance less than one ohm per square
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`centimeter.” OWT argues that the correct units for resistance are Ohms, and that the
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`patent should have been discussing the “resistivity” of water rather than “resistance.” Id.
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`Throughout the seventeen-year prosecution history of the Patents-in-Suit and their parent
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`patents, OWT never once asked the PTO to correct these alleged typographical errors,
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`despite seeking a Certificate of Correction to fix other errors. See JA99. Notably,
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`OWT’s proposed construction does not ask the Court to correct these alleged typos either.
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`Instead, OWT asks the Court to throw out the majority of the definition wholesale and
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`rule that there is “no numerical restriction” in the definition. Dkt. 78 at 15.
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`Excising the numerical limits that the patentee expressly included as part of his
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`lexicography would violate black letter claim construction law and render this term
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`indefinite. Nor is it necessary to do so. At his deposition, OWT’s expert acknowledged
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`that while “ohms per square centimeter” were not the correct unit of measurement, “ohm-
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`centimeters” are “correct units of resistivity.” Supplemental Declaration of Cara S.
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`Donels (“Suppl. Donels Decl.”) Ex. B at 66:18-25. He also admitted that water with “a
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`resistivity of less than one ohm-centimeter has a dissolved solid content that’s probably
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`3
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 9 of 37
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`much higher than 2000 ppm,” id. at 68:3-7, which is the second numerical constraint in
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`the patent’s definition. Thus, if the Court believes it is necessary to correct the alleged
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`typographical errors complained about in OWT’s brief, Tennant would not object to the
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`following modifications of the patent’s express definition of “water” (italicized for
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`convenience):
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`Water means any aqueous medium with resistivity less than one ohm-
`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.
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`Those minor corrections would address the alleged typographical errors while preserving
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`the patentee’s clear intent to set specific numerical limits on the definition of “water.”
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`The cases cited by OWT do not support its argument that the Court should ignore
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`express lexicography. To the contrary, in VLSI Tech. LLC v. Intel Corp., No. 17-cv-
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`05671-BLF, 2019 WL 652892 (N.D. Cal. Feb. 15, 2019), the court dealt with a patent
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`specification that included two separate passages that appeared to define the word
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`“height.” 2019 WL 652892, at *6. The court ruled that the correct definition was the one
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`the patent specification stated was “defined… to aid in understanding this
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`specification.” Id. (emphasis and ellipses in original). The express definition of “water”
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`in the asserted patents is introduced with similar language, which states that “[f]or the
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`purpose of describing the present invention, the following terms have these
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`4
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 10 of 37
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`meanings[.]” JA12 at 3:66-67. 1 The reasoning in VLSI confirms that the expressly
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`identified definition in the patent specification governs.
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`The other cases cited by OWT do not involve express lexicography at all. In
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`Merck & Co. v. Teva Pharms USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005), and Alcon, Inc.
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`v. Teva Pharms. USA, Inc., 664 F.Supp. 2d 443 (D. Del. Oct. 19, 2009), the patents did
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`not include an express recitation of “definitions.” The courts in each case held that the
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`patents did not contain any express definition of the disputed terms. See Merck, 395 F.3d
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`at 1370-71 (“We have repeatedly emphasized that the statement in the specification must
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`have sufficient clarity to put one reasonably skilled in the art on notice that the inventor
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`intended to redefine the claim term.”); Alcon, 664 F.Supp. 2d at 456 (“In order for a
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`patentee to act as his own lexicographer, any redefinition must ‘appear with reasonable
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`clarity, deliberateness, and precision before it can affect the claim.’”). Unlike the
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`specification passages considered in Merck and Alcon, the asserted patents’ definition of
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`“water” is set out explicitly in a section of the specification titled “Definitions.” JA12 at
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`3:64. The patentee’s intent to redefine “water” and the other terms set out in his list of
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`“Definitions” could not be more clear or deliberate.
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`OWT argues that the patents’ express definition of “water” does not match “the
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`plain and ordinary meaning of ‘water.’” Dkt. 78 at 16. Defining a term to mean
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`something other than its plain and ordinary meaning is, however, the entire point of
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`lexicography. “When a patentee defines a claim term, the patentee’s definition governs,
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` All emphasis is added unless noted otherwise.
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`5
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 11 of 37
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`even if it is contrary to the conventional meaning of the term.” Honeywell, 493 F.3d at
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`1361 (citations omitted). OWT also attempts to argue that “[t]he second sentence is not
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`definitional at all[,]” id. at 15, but that sentence appears in the section of the patent titled
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`“Definitions.” OWT may not like the definition of “water” that the applicant set forth in
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`the patent specification, but the applicant’s definition governs.
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`2.
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`“Nanobubble”
`The parties agree that “nanobubble” is a defined term in the patent specification,
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`yet OWT once again asks the Court to strike the second sentence of the patentee’s
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`express definition as not being “definitional.” Dkt. 78 at 37. As with “water,” the
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`sentence OWT seeks to ignore is half of the specification’s explicit lexicography,
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`contained in the section titled “Definitions.” JA12, 4:12-15.
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`None of the cases cited by OWT stand for the proposition that when a patent
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`expressly sets forth a “definition” for a claim term, the Court should pick the patent’s
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`definition apart and decide which words within it are the most “definitional.” Here the
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`patentee made a clear and unmistakable choice to provide a two-sentence definition, and
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`that lexicography governs. Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc., 749 F.3d 1349,
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`1355-56 (Fed. Cir. 2014) (noting that “[u]nder our precedent, the patentee’s lexicography
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`must govern the claim construction analysis[,and t]herefore, we disagree with the district
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`court’s modification of the clear language found in the specification”); Jack Guttman,
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`Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1360-61 (Fed. Cir. 2002) (“Where, as
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`here, the patentee has clearly defined a claim term, that definition usually is dispositive…
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`and it was error for the district court to overlook it.”).
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`6
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 12 of 37
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`Furthermore, the second half of the patentee’s definition is not an optional
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`description of “a result that can occur” as OWT argues. See Dkt. 78 at 37. To the
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`contrary, OWT relied on the second sentence to distinguish the prior art during
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`prosecution:
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`Murrell’s [electrode] separation will produce large bubbles which
`immediately rise to the surface. In contrast, the microbubbles and
`nanobubbles generated according to the present claims have a diameter of
`less than 50 microns and for the most part do not immediately rise to the
`surface. Instead, according to the present invention, these micro and
`nanobubbles form an opalescent or milky fluid and are suspended in the
`water.
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`JA1147. Having relied on the second sentence to distinguish the prior art and obtain the
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`Patents-in-Suit, OWT is estopped from arguing that it is not actually a requirement of the
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`claims. See, e.g., Cordis Corp. v. Boston Sci. Corp., 658 F.3d 1347, 1356-57 (Fed. Cir.
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`2011); In re Katz Interactive Call Processing Pat. Litig., 639 F.3d 1303, 1324-25 (Fed.
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`Cir. 2011); Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1377–78 (Fed.
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`Cir. 2008).
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`Finally, OWT attempts to argue that the Court should construe “nanobubbles”
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`based on how “Tennant’s technical people” allegedly understood the term and used it in
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`Tennant’s patent applications. Dkt. 78 at 39. How Tennant used the term is irrelevant.
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`What governs claim construction is the patentee’s lexicography, not Tennant’s.
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`Honeywell, 493 F.3d at 1361. The Court should apply the express definition recited in
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`the patent and used to distinguish the prior art.
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`7
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 13 of 37
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`II.
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`“OXYGENATED AQUEOUS COMPOSITION,” “AQUEOUS MEDIUM,”
`AND “CONDUCTIVITY PRODUCED BY THE PRESENCE OF
`DISSOLVED SOLIDS SUCH THAT THE WATER SUPPORTS PLANT OR
`ANIMAL LIFE” INCORPORATE THE APPLICANT’S DEFINITION OF
`“WATER”
`The patentee’s express definition of “water” applies to the related terms
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`“oxygenated aqueous composition” and “aqueous medium.” To the extent that the phrase
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`“conductivity produced by the presence of dissolved solids such that the water supports
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`plant or animal life” is not indefinite, it must also derive meaning from the applicant’s
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`definition of “water.”
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`1.
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`“Oxygenated Aqueous Composition” and “Aqueous Medium”
`The parties agree that the word “aqueous” is a synonym for “water.” See Dkt. 78
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`at 21. OWT acknowledges that the definition of “water” in the patents equates it with an
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`“aqueous medium,” JA12, 4:22-23 (“‘Water’ means any aqueous medium…”), but
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`argues that doing so somehow renders the definition “circular.” Dkt. 78 at 21. To the
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`contrary, the patent specifications use the terms “water” and “aqueous medium”
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`interchangeably:
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`When the object of generating bubbles is to oxygenate the water, either air,
`with an oxygen content of about 21%, or pure oxygen may be used. The
`production of oxygen and hydrogen by the electrolysis of water is well
`known. A current is applied across an anode and a cathode which are
`immersed in an aqueous medium… Hydrogen gas is produced at the
`cathode and oxygen gas is produced at the anode.
`
`Models of different size are provided to be applicable to various volumes of
`aqueous medium to be oxygenated… Those models with low voltage
`requirements are especially suited to oxygenating water in which animals
`are to be held.
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`8
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 14 of 37
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`JA11, 2:3-11, 3:17-22. OWT continued to use the terms as synonyms in its prosecution
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`arguments before the USPTO. See, e.g., JA1142-43 (“These phases [sic] accordingly
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`support the characterizing phrase ‘aqueous medium (or water) having a conductivity
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`produced by dissolved solids so that the aqueous medium (or water) is capable of
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`supporting plant or animal life.’”).
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`OWT’s opening claim construction brief makes an additional argument regarding
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`“oxygenated aqueous composition,” which appears nowhere in its proposed construction
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`of “plain and ordinary meaning.” OWT argues for the first time that the phrase
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`“oxygenated aqueous composition” requires the addition of some specific—but
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`unidentified—amount of oxygen to the water. Dkt. 78 at 22. Because OWT’s proposed
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`construction does not address this alleged dispute, let alone explain what amount of
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`added oxygen the term allegedly requires, OWT apparently intends to argue this issue of
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`claim construction to the jury. Doing so is impermissible. O2 Micro Int’l v. Beyond
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`Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed Cir. 2008) (noting that “the court, not
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`the jury, must resolve” claim construction disputes). If OWT intended to argue that
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`“oxygenated aqueous composition” requires a specific level of dissolved oxygen, it
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`needed to propose a construction setting forth that requirement instead of arguing “plain
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`and ordinary meaning.” See, e.g., Cent. Admixture Pharmacy Servs., Inc. v. Advanced
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`Cardiac Sols., P.C., 482 F.3d 1347, 1356 (Fed. Cir. 2007) (finding a party waives an
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`argument with respect to a term if it fails to raise the argument during the correct claim
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`construction phase); Eon Corp. IP Holdings v. Silver Spring Networks, 815 F.3d 1314,
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`1320 (Fed. Cir. 2016) (holding the district court improperly left the issue of claim scope
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`9
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 15 of 37
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`to the jury when it construed the terms as having their plain and ordinary meaning
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`because doing so “did not resolve the parties’ dispute” regarding the terms at issue).
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`Thus, an “aqueous medium” is a mixture made with water, and an “oxygenated
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`aqueous composition” is “a composition of water and oxygen,” where “water” has the
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`definition ascribed in the patents. OWT’s repeated efforts to ignore the patents’ express
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`definition of “water” should be rejected.
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`2.
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`“Conductivity Produced by the Presence of Dissolved Solids
`Such that the Water Supports Plant or Animal Life”
`On its own, the phrase “conductivity produced by the presence of dissolved solids
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`such that the water supports plant or animal life” has no plain meaning and would render
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`the patent claims containing it indefinite. There is no ordinary understanding of how the
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`electrical “conductivity” of water “supports plant or animal life,” nor does the patent
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`specification provide any explanation of how the water’s conductivity allegedly does so.
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`To the contrary, different forms of plant and animal life thrive in different kinds of water,
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`containing different levels of dissolved solids. For example, as OWT’s expert admitted
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`at his deposition, many ocean creatures and plants would die if placed in freshwater:
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`Q: Okay. Are there any animals or plants that actually die in normal tap
`water?
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`A: Probably. I don’t know of any offhand.
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`Q: It’s fair to say if I put ocean plants or ocean fish in normal tap water,
`they’ll die?
`
`A: Yeah. Unfortunately, I think that would happen.
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`Suppl. Donels Decl., Ex. B at 83:24-84:4. The patent specification does not provide any
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`specific range of dissolved solids or conductivity as allegedly “supporting plant or animal
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`10
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 16 of 37
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`life.” The only guidance provided by the specification to save this term from
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`indefiniteness is the patents’ definition of “water,” which “contain[s] more than 2000
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`ppm total dissolved solids.” JA12, 4:22-26.
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`Although its proposed construction is “plain and ordinary meaning,” OWT’s brief
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`argues that this term is a euphemism for “tap water or natural water that houses fish.”
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`Dkt. 78 at 18. There are multiple flaws in OWT’s argument. First and foremost, as
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`OWT’s expert admitted, some plant and animal life will die if placed in tap water. Suppl.
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`Donels Decl., Ex. B at 83:24-84:4.
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`The prosecution history contradicts OWT’s argument that this term is a
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`euphemism for “tap water.” OWT initially sought claims directed to “tap water.” The
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`Examiner rejected those claims based on the prior art, finding that the patent did not
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`disclose any particular characteristics of “tap water,” and therefore “‘tap water’ will be
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`any water capable of flowing through a tap, essentially any water”:
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`Claim 2 has been amended to contain the new limitation of tap water. The
`applicant point [sic] out page 3 line 25 of the specification which discloses
`a watering hose. The reference is silent on what type of water the hose is
`attached to. Therefore, reading the claim in light of the specification, the
`term tap water can only mean water flowing through a tap. Essentially any
`water is capable of flowing through a tap. There is no positive recitation of
`a tap, therefore the claim is only drawn to water of any type. … For
`Examination purposes, “tap water” will be any water capable of flowing
`through a tap, essentially any water.
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` JA1112. In response, OWT removed the references to “tap water” from the patent
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`claims and inserted the phrase “having a conductivity produced by dissolved solids so
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`that the aqueous medium is capable of supporting plant or animal life.” JA1132. The
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 17 of 37
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`prosecution history is thus clear that OWT sought to narrow the claims from the original
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`recitation of “tap water.”
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`Finally, OWT argues that the patent’s definition of “water” does not discuss
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`“supporting plant or animal life.” (Dkt. 78 at 18.) While that is true, the definition
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`expressly states “the lower limit of resistance for a medium that can support electrolysis
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`is water containing more than 2000 ppm total dissolved solids.” JA12, 4:22-26. The
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`words “dissolved solids” do not appear anywhere else in the patent specification. See
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`JA11-JA15. The word “conductivity” does not appear in the patent specification at all.
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`See id. The only disclosure of the conductivity of water comes from the definition’s
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`discussion of the electrical resistance of water. JA12, 4:22-26. As OWT’s expert admits,
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`electrical conductivity is the inverse of resistivity. Suppl. Donels Decl., Ex. B at 61:1-9.
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`Increasing the dissolved solid content makes water more conductive. Id.
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`Thus, the only support in the patent specification for the phrase “conductivity
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`produced by the presence of dissolved solids” in the patent specification comes from its
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`definition of “water.” Without that definition, this claim element is indefinite and lacks
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`written description support. Accordingly, to the extent that the element can be construed
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`at all, it should be construed as “water containing more than 2000 ppm total dissolved
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`solids.”
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`III. THE “FLOWING WATER” TERMS NARROWED THE CLAIMS FOR
`ALLOWANCE
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`As explained in Tennant’s opening brief, the Examiner allowed the claims of the
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`ʼ415 patent over the cited prior art because the patent describes “placing the emitting
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 18 of 37
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`device in fluid to be treated,” whereas the prior art teaches “flowing the fluid through the
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`device using a pipe system”:
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`The following is a statement of reasons for the indication of allowable
`subject matter: The prior are [sic] does not disclose the method step of
`placing the emitting device in the fluid to be treated. It discloses flowing
`the fluid through the device using a pipe system.
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`JA1119. The Examiner gave this same reason for allowance four times. See id., JA1070,
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`JA1197, and JA1278. OWT never refuted the Examiner’s statement. See generally
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`JA981-1313. Because that distinction allowed OWT to obtain the claims, the claims
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`cannot cover “using a pipe system.” See, e.g., Salazar v. Procter & Gamble Co., 414
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`F.3d 1342, 1347 (Fed. Cir. 2005) (“Statements about a claim term made by an examiner
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`during prosecution of an application may be evidence of how one of skill in the art
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`understood the term at the time the application was filed.”); SandBox Logistics LLC v.
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`Proppant Express Invs. LLC, 813 F. App’x 548, 554 (Fed. Cir. 2020) (“[F]ailure to
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`challenge the Examiner’s understanding amounts to a disclaimer.”).
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`In contrast, OWT seeks to add a limitation requiring water to move “by means
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`other than electrolysis,” which appears nowhere in the claims, the specification, or the
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`prosecution history. OWT admits that it wants to add this requirement solely to
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`distinguish the Wikey prior art reference—a reference that was not considered by the
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`Examiner during patent prosecution. Dkt. 78 at 28; see JA1-JA2 (listing cited prior art
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`references). OWT does not cite any authority for the novel proposition that patent claims
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`should be construed to avoid prior art that was not in the prosecution record. See Dkt. 78
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`at 28-30. There is no such case. As Phillips makes clear, the appropriate bases for claim
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`CASE 0:20-cv-00358-ECT-HB Doc. 143 Filed 07/27/21 Page 19 of 37
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`construction are the claims themselves, the patent specification, the prosecution file
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`history, and, where appropriate, dictionaries and treatises used by those in the field.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1316-19 (Fed. Cir. 2005). Uncited prior art is not
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`on the list.
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`OWT argues that the “flowing water” terms intentionally exclude many of the
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`embodiments disclosed in its patent specification and that none of the remaining
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`embodiments use electrolysis to impart motion to the water. See Dkt. 78 at 29-30. Yet
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`nothing in the patent claims specifies how the water begins flowing, just that the water
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`“flows” or “passes” through the emitter. See ʼ415 Cl. 13; ʼ665 Cl. 13; ʼ092 Cl. 13.
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`OWT