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CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 1 of 14
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MINNESOTA
`
`
`OXYGENATOR WATER
`TECHNOLOGIES, INC.,
`
`
`Plaintiff,
`
`Civil File No. 20-cv-00358-ECT-HB
`
`
`
`
`
`v.
`
`
`TENNANT COMPANY,
`
`
`Defendant.
`
`TENNANT’S OBJECTIONS TO ORDER ON MOTION FOR LEAVE TO
`SUPPLEMENT INVALIDITY CONTENTIONS
`
`Defendant Tennant Company (“Tennant”) hereby objects to the Magistrate Judge’s
`
`
`
`Order on Tennant’s Motion for Leave to Supplement Invalidity Contentions. The
`
`challenged order (Dkt. 445) denies in part Tennant’s motion to supplement its invalidity
`
`contentions. Tennant moved to supplement its invalidity contentions within 14 days of the
`
`Court’s claim construction Order, as required by the Court’s Scheduling Order. Despite
`
`Tennant’s compliance with the Scheduling Order, the Magistrate Judge denied Tennant’s
`
`motion to supplement its contentions based on the Court’s adverse construction of the
`
`“flowing water” terms. The Magistrate Judge’s ruling was clearly erroneous and contrary
`
`to law, and should be overruled.
`
`BACKGROUND
`THE PRETRIAL SCHEDULING ORDER
`
`I.
`
`The Court’s Scheduling Order (“Scheduling Order”) allows for amendment of
`
`patent contentions “for good cause shown.” (Dkt. 43 at 16, § 2(c).) The Scheduling Order
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 2 of 14
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`goes on to list what constitutes good cause, including, for example, learning of new
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`information that could not have been previously known through reasonable diligence, (id.
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`at § 2(c)(i)), and adoption of an adverse claim construction by the Court. (Id. at § 2(c)(ii).)
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`An excerpt of the Scheduling Order is shown below:
`
`
`
`(Id.)
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`Tennant understood this language as allowing the parties to amend their contentions
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`following an adverse claim construction. (E.g., Dkt. 265 at 1; Declaration of Cara S.
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`Donels (“Donels Decl.”), Exhibit 1 at 86:17-21, 95:7-11.) Tennant acted according to this
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`understanding. For example, Tennant’s November 27, 2020 initial invalidity contentions
`
`indicated that “Tennant reserves the right to supplement or amend these Prior Art Charts
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`as . . . rulings are made by the Court, such as the Court’s Claim Construction Order.” (Dkt.
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`268-1, Exhibit A at 1-2.) Tennant’s February 11, 2021 supplement contained similar
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`language. (Dkt. 268-1, Exhibit B at 1-2.)
`
`II.
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`CLAIM CONSTRUCTION
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`During claim construction briefing, OWT acknowledged that its proposed
`
`construction of the “flowing water” terms was intended to avoid the Wikey reference. (See
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`- 2 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 3 of 14
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`Dkt. 78 at 28-29.) Wikey is a prior art patent that was not considered during prosecution
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`of the asserted patents and is one of the primary references in the instituted IPR. The Wikey
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`reference discloses an emitter that is placed in an aquarium. The electrolysis process causes
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`water to flow through the emitter. (See Donels Decl., Exhibit 1 at 91:12-22.)
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`In its claim construction brief, Tennant argued that OWT’s construction of the
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`“flowing water” terms would create invalidity issues because it excludes disclosed
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`embodiments and contradicts the Examiner’s reasons for allowing the patent claims. (See
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`Dkt. 76 at 17-19, Dkt. 143 at 12-14.)
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`During the claim construction hearing, Tennant raised the need to supplement
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`contentions in the event of an adverse ruling, which OWT acknowledged. (Dkt 159 at
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`115:3-11 (“If Mr. Steinert thinks that the patents are invalid under 112 under a construction,
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`the Court can adopt those constructions and deal with the 112 issue then.”).) OWT also
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`admitted during the claim construction hearing that, “to the extent [OWT] lose[s] on [its
`
`construction of the flowing water term], that may change some analysis on some issues,
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`but that’s the point.” (Dkt. 159 at 58:7-9 (emphasis added).)
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`On August 18, 2021, the Court issued a Claim Construction Order adopting OWT’s
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`proposed construction of the “flowing water” terms. (See Dkt. 162 at 27-30.) Specifically,
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`the Court held that the “flowing water” terms require movement of water through the
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`electrolysis emitter by means other than electrolysis. (Dkt. 162 at 3.)
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`- 3 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 4 of 14
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`III. TENNANT’S MOTION TO SUPPLEMENT ITS INVALIDITY
`CONTENTIONS
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`Following the Court’s claim construction, Tennant immediately sought to
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`supplement its invalidity contentions. Because Wikey does not expressly disclose the
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`“flowing water” limitation as construed by the Court, Tennant sought leave to (a) allege
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`that moving water through the Wikey emitter by means other than electrolysis would have
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`been obvious to one of ordinary skill in the art, and (b) combine Wikey with references
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`that teach moving water through the emitter by means other than electrolysis. Using a
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`pump in an aquarium is well known, making it obvious to use the Wikey emitter in an
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`aquarium that has a pump. (Donels Decl., Exhibit 1 at 92:2-19.) For example, Wikey
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`could be combined with the Aquariums for Dummies reference which discloses a pump.
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`The parties are actively litigating the combination of Wikey and Aquariums for Dummies
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`in the pending IPR. (E.g., Dkt. 255-1, Exhibit 1 at 32-33.)
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`OWT opposed the requested supplement. Accordingly, Tennant filed a motion for
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`leave to supplement. Tennant filed the motion within 14 days of the Claim Construction
`
`Order. Tennant also sought leave to supplement its invalidity arguments under § 112 as
`
`discussed during the claim construction briefing and hearing. 1
`
`
`Despite OWT’s agreement throughout claim construction that Tennant would
`1
`address the § 112 invalidity issues raised by OWT’s proposed claim constructions if and
`when the Court adopted OWT’s constructions (as Tennant understood the Scheduling
`Order to contemplate), when Tennant moved to supplement its contentions, OWT’s stance
`changed. First, OWT tried to walk back the parties’ prior understanding. Then, OWT
`began arguing that validity contentions are excluded from the provision of the Scheduling
`Order that allows for supplementation of contentions after an adverse claim construction
`order.
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`- 4 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 5 of 14
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`The Court held a hearing on Tennant’s Motion to Supplement on October 6, 2021.
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`During the hearing, OWT noted that, while the section of the Scheduling Order that states
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`a party may move to supplement contentions after an adverse claim construction is located
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`under the Infringement Contentions heading, there is no reason to have different rules for
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`infringement and invalidity contentions. (Donels Decl., Exhibit 1 at 101:7-102:8.) The
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`Magistrate Judge noted that her Scheduling Order has since been updated to identify a
`
`Markman order as a “potential . . . trigger for modifying not only infringement contentions,
`
`but also invalidity contentions,” and that she “[did not] know of a good reason to
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`distinguish between the two” in the form used by the parties in this litigation. (Id. at 34:20-
`
`35:8.)
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`During the hearing, The Magistrate Judge asked OWT to describe the prejudice it
`
`would suffer if Tennant’s motion was granted. (Id. at 100:4-101:6.) OWT was unable to
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`offer a cognizable basis of prejudice other than delay. (Id.)
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`On October 25, 2021, the Court denied Tennant’s motion to supplement as to the
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`Wikey reference in a brief oral ruling. The ruling appears below in its entirety.
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`- 5 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 6 of 14
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`(Dkt. 445 at 37:6-24.)
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`ARGUMENT
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`The Court may set aside a Magistrate Judge’s ruling on a nondispositive issue if it
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`is “clearly erroneous or contrary to law.” Fed. R. Civ. P. 72(a); 28 U.S.C. § 636(b)(1)(A);
`
`LR 72.2(a). For an order to be clearly erroneous, the reviewing court must be “left with a
`
`definite and firm conviction that a mistake has been committed.” Lisdahl v. Mayo Found.,
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`633 F.3d 712, 717 (8th Cir. 2011). “A decision is contrary to law when a court fails to
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`- 6 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 7 of 14
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`
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`apply or misapplies relevant statues, case law or rules of procedure.” Smith v. Bradley
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`Pizza, Inc., 314 F.Supp.3d 1017, 1026 (D. Minn. 2018).
`
`The challenged Order is clearly erroneous and contrary to law because Tennant met
`
`the deadline provided in the Court’s Scheduling Order. Because Tennant complied with
`
`the Scheduling Order, no showing of good cause is required. Shank v. Carleton College,
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`329 F.R.D. 610, 613-14 (D. Min. 2019) (good cause only required if a motion is brought
`
`after the court-ordered deadline). Even if the Court finds that the good cause standard
`
`applies, Tennant met the good cause standard expressed in the Court’s Scheduling Order,
`
`and the Court’s application of the good cause standard was clearly erroneous and contrary
`
`to law.
`
`I.
`
`TENNANT COMPLIED WITH THE DEADLINE SET IN THE
`COURT’S SCHEDULING ORDER
`
`The Scheduling Order sets out what Tennant understood to be the standard for
`
`good cause to supplement contentions. The Scheduling Order indicates that good cause
`
`must be shown, followed by three examples where good cause exists:
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`- 7 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 8 of 14
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`(Dkt. 43 at 16(c).)
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`
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`Subparagraph (i) indicates that good cause exists when Defendant “acqui[res]
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`information that Defendant did not have and could not through the exercise of reasonable
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`diligence have obtained before it produced its claim chart.” Subparagraph (ii), the
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`- 8 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 9 of 14
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`language most relevant here, indicates that parties may seek leave to supplement
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`contentions within 14 days of an adverse claim construction ruling. Subparagraph (iii)
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`allows for automatic supplementation when Plaintiff amends its claim chart. And
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`subparagraph (iv) describes the meet and confer process.
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`Tennant reasonably interpreted subparagraph (ii) as allowing the parties to
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`supplement their contentions within 14 days of an adverse claim construction ruling.
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`Several districts allow parties to supplement their contentions after an adverse
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`claim construction ruling. E.g., D. Ill. Pat. Rule 3.4; D. Kan. Pat. Rule 3.5(a)(2)(A)-(B);
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`Cell & Network Selection LLC v. AT&T Inc., No. 6:13-CV-403, 2014 WL 10727108, at
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`*3 (E.D. Tex. Nov. 10, 2014) 3 (noting that a party was “not required to incorporate
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`[opposing party’s] contrasting proposed constructions in its infringement contentions
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`prior to those constructions being adopted by the Court.”); Ferring B.V. v. Watson Lab'ys,
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`Inc. - (FL), No. 3:11-CV-00481-RCJ, 2013 WL 2325111, at *2 (D. Nev. May 28, 2013)
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`(“Claim construction different from a party’s proposal is also given as an example of
`
`good cause.”); Chrimar Systems, Inc. v. Cisco Systems, Inc., No. 13-cv-01300-JSW
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`(MEJ), 2015 WL 13449849, at *3 (N.D. Cal. May 14, 2015) (“Examples of good cause
`
`include (a) a claim construction by the Court different from that proposed by the party
`
`seeking amendment....”); MyMedicalRecords, Inc. v. Quest Diagnostics, Inc., No. 2:13-
`
`cv-02538-ODW(SHx), 2014 WL 5810363, at *3 (C.D. Cal. Nov. 6, 2014); GPNE Corp.
`
`v. Apple Inc., No. 512CV02885LHKPSG, 2013 WL 6157930, at *2 (N.D. Cal. Nov. 22,
`
`2013) (“GPNE could not have anticipated the full scope of the amendments needed
`
`without the court's claims construction order before it.”).
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`- 9 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 10 of 14
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`This approach is particularly appropriate where, as here, the case involves
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`numerous patent claims. Celegene Corp. v. Natco Pharma Ltd., No. Civ. A. 10-5197
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`SDW, 2015 WL 4138982, at *2 (D.N.J. July 9, 2015) (affirming magistrate judge finding
`
`of good cause that noted “the number of disputed patents, claims, and claim terms is so
`
`great [40 disputed claim terms] that the Court cannot conclude that Defendants should
`
`have moved to amend on June 8, 2011 to address every possible adverse claim
`
`construction ruling.”); Network Protection Scis., LLC v. Fortinet, Inc., 2013 WL
`
`1949051, at *2-3 (N.D. Cal. 2013) (noting that the patentee's improper assertion of a
`
`large number of claims at the beginning of the case created an undue burden on the
`
`accused infringer, and hence the accused infringer was entitled to some leeway in
`
`evaluating its diligence and need to amend in view of the patentee's “unreasonable”
`
`behavior in asserting 54 claims).
`
`Tennant was faced with 122 asserted claims—three times the number of claims as
`
`the accused infringer in Celegene. Tennant understood that the Scheduling Order
`
`adopted an approach allowing for supplementation if a party received an adverse claim
`
`construction ruling, thereby avoiding the need to prepare invalidity charts attempting to
`
`anticipate and address every possible construction for 122 claims.
`
`Tennant’s actions throughout this litigation reflect Tennant’s understanding of the
`
`Scheduling Order. Tennant brought its motion to supplement within the time provided in
`
`the Scheduling Order, and the proposed supplement directly responds to the Court’s
`
`adverse construction of the “flowing water” terms. Tennant even understood OWT’s
`
`position to be that, if OWT had received an adverse ruling on the “flowing water” term, it
`
`- 10 -
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`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 11 of 14
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`
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`would have supplemented its own contentions. (Dkt. 159 at 58:7-9 (“[T]o the extent
`
`[OWT] lose[s] on [its construction of the flowing water term], that may change some
`
`analysis on some issues, but that’s the point.”).)
`
`The Magistrate Judge’s finding that Tennant cannot supplement its contentions is
`
`contrary to the Scheduling Order and therefore clearly erroneous and contrary to law.
`
`Smith, 314 F.Supp.3d at 1026 (noting a decision is clearly erroneous where it misapplies
`
`case law or rules of procedure).
`
`II.
`
`IN THE ALTERNATIVE, TENNANT’S GOOD FAITH COMPLIANCE
`WITH AN AMBIGUOUS SCHEDULING ORDER CONSTITUTES
`GOOD CAUSE.
`
`Even if Tennant’s understanding of the Scheduling Order was not what the
`
`Magistrate Judge intended, Tennant’s good faith reliance on the text of the Scheduling
`
`Order provides good cause for supplementing Tennant’s infringement contentions.
`
`This Court’s decision in Shank v. Carleton College, 329 F.R.D. 610 (D. Minn.
`
`2019) is instructive. In Shank, a plaintiff sought to amend her complaint to add a claim
`
`for punitive damages after the deadline in the Scheduling Order based in part upon her
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`“good faith, albeit mistaken, interpretation of the scheduling order.” 329 F.R.D. at 614.
`
`The Court distinguished cases where dilatory parties offered no justification for “extreme
`
`dereliction” of deadlines. Id. (citation omitted). The Court held that good cause existed
`
`to modify the scheduling order based on the plaintiff’s “incorrect but good-faith
`
`interpretation” of the scheduling order, and further noted that “there is nothing here to
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`suggest that a lawyer or party is inventing excuses and applying them retroactively.”
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`Shank, 329 F.R.D. at 615.
`
`- 11 -
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 12 of 14
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`
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`Here, as in Shank, Tennant acted according to a reasonable and consistently held
`
`understanding of the Scheduling Order. Tennant’s belief that either party could amend its
`
`contentions after an adverse claim construction ruling is well-documented in the record
`
`dating back to early claim construction proceedings. During the hearing on Tennant’s
`
`motion, OWT admitted that there is no reason to treat amendments to invalidity and
`
`infringement contentions differently from each other. The Magistrate Judge has even
`
`updated her form to clarify when a party may supplement contentions after a Markman
`
`ruling. (Dkt. 445 at 34:25-35:8.) While the Magistrate Judge acknowledged this
`
`ambiguity in her Scheduling Order, she still ruled that there was not good cause for
`
`Tennant to supplement its contentions with regard to the Wikey reference.
`
`In the face of the Scheduling Order’s ambiguity, Tennant’s clear expression of its
`
`understanding of the Scheduling Order, and the Court’s subsequent changes to the
`
`Scheduling Order, good cause exists for Tennant’s supplement. Denying Tennant’s
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`Motion to Supplement in these circumstances is clearly erroneous and contrary to law.
`
`III. OWT WILL NOT BE PREJUDICED BY A SUPPLEMENT
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`OWT cannot identify any prejudice from this supplement.2 As the claim
`
`construction briefing demonstrates, OWT understood Tennant’s invalidity contentions
`
`based on Wikey and argued for a construction of the “flowing water” terms in an effort to
`
`avoid Wikey. See, e.g., Dkt. 78, 27-29. Tennant’s proposed supplement merely combines
`
`
`OWT has attempted to argue that delay alone is prejudice. As the Court noted in
`2
`its ruling regarding Tennant’s motion to supplement its invalidity contentions, this is
`insufficient to establish prejudice. (Dkt. 445.)
`
`- 12 -
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`

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`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 13 of 14
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`
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`Wikey with Aquariums for Dummies, a reference that has been in this case from the
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`beginning and discloses a pump.
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`Tennant, on the other hand, is prejudiced because it would be unable to argue that
`
`the Wikey reference invalidates the ’092 and ’665 patents. Portz v. St. Cloud St. Univ.,
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`No. 16-1115 (JRT/LIB), 2017 WL 3332220, at *3-*4 (D. Min. Aug. 8, 2017) (considering
`
`the lack of prejudice to the non-moving party in evaluating good cause); Gen. Mills Mktg.,
`
`Inc. v. Fritsch GmbH, CV 11-2099 (PJS/JJG), 2014 WL 12599632, at *1 (D. Minn. Jan.
`
`27, 2014) (finding “significant prejudice if [the defendants] were precluded from using
`
`relevant [invalidity theories] to prove invalidity”); ChriMar Sys., 2015 WL 13449849, at
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`*5 (noting “proposed amendments do not affect deadlines in this case” and there is no
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`“additional discovery is needed to address [the] proposed amendments”).
`
`CONCLUSION
`
`For the reasons set forth herein, the Court should overrule the Magistrate Judge’s
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`denial of Tennant’s motion to supplement its Invalidity Contentions as to the Wikey
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`reference.
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` Respectfully submitted,
`
`Dated: November 8, 2021
`
`
`
`s/Lora M. Friedemann
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`- 13 -
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 448 Filed 11/08/21 Page 14 of 14
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`
`
`Lora M. Friedemann (#0259615)
`Adam R. Steinert (#0389648)
`Timothy O’Shea (#0386437)
`FREDRIKSON & BYRON, P.A.
`200 South Sixth Street, Suite 4000
`Minneapolis, MN 55402-1425
`Telephone: 612.492.7000
`lfriedemann@fredlaw.com
`asteinert@fredlaw.com
`toshea@fredlaw.com
`R. Scott Johnson (Admitted Pro Hac Vice)
`Thomas M. Patton (MN #0401728)
`Cara S. Donels (Admitted Pro Hac Vice)
`FREDRIKSON & BYRON, P.A.
`111 E. Grand Avenue, Suite 301
`Des Moines, IA 50309
`Telephone: 515.242.8900
`rsjohnson@fredlaw.com
`tpatton@fredlaw.com
`cdonels@fredlaw.com
`
`Attorneys for Defendant Tennant Company
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`
`
`
`
`
`74383222
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`- 14 -
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`

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