CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 1 of 12
`
`
`
`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 MEMORANDUM IN SUPPORT OF ITS MOTION FOR
`LEAVE TO AMEND AND SUPPLEMENT INVALIDITY CONTENTIONS
`
`Defendant Tennant Company (“Tennant”) hereby moves the Court for leave to
`
`amend and supplement its invalidity contentions in light of the Court’s August 18, 2021
`
`Claim Construction Order.
`
`FACTS
`
`On August 11, 2020, the Court issued the original Case Management Order,
`
`stating inter alia that,
`
`If Defendant’s claim construction proposal as to a particular term or phrase
`is not adopted by the Court, or the Court issues a claim construction different
`from either party’s proposal, Defendant may request permission to amend its
`contentions, only related to that particular term/phrase. Such requests must
`be made to the magistrate judge no later than 14 days after the Court’s claim
`construction order.
`
`(Dkt. 43 at 16, § 2(c)(ii).)
`
`
`
`
`
`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 MEMORANDUM IN SUPPORT OF ITS MOTION FOR
`LEAVE TO AMEND AND SUPPLEMENT INVALIDITY CONTENTIONS
`
`Defendant Tennant Company (“Tennant”) hereby moves the Court for leave to
`
`amend and supplement its invalidity contentions in light of the Court’s August 18, 2021
`
`Claim Construction Order.
`
`FACTS
`
`On August 11, 2020, the Court issued the original Case Management Order,
`
`stating inter alia that,
`
`If Defendant’s claim construction proposal as to a particular term or phrase
`is not adopted by the Court, or the Court issues a claim construction different
`from either party’s proposal, Defendant may request permission to amend its
`contentions, only related to that particular term/phrase. Such requests must
`be made to the magistrate judge no later than 14 days after the Court’s claim
`construction order.
`
`(Dkt. 43 at 16, § 2(c)(ii).)
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 2 of 12
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`
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`On November 27, 2020, Tennant timely served its initial invalidity contentions.
`
`(Declaration of Thomas M. Patton, ¶ 2; Exhibit A.)1 Tennant’s initial invalidity
`
`contentions repeatedly mentioned the potential need to supplement based on any claim
`
`construction ruling, noting on the cover “Tennant reserves the right to supplement or
`
`amend these Prior Art Charts as . . . rulings are made by the Court, such as the Court’s
`
`Claim Construction Order. . .” (Exhibit A at 1-2) and specifically stated that,
`
`The parties have not yet exchanged proposed claim construction[s], and
`Tennant does not presently know the full claim scope that OWT asserts is
`covered by the asserted patents. Moreover, OWT has not yet produced prior
`art responsive to Tennant’s Requests for Production served on July 29, 2020.
`Tennant reserves the right to assert other bases for invalidity in light of those
`proposed constructions and/or OWT’s production of prior art. Tennant
`initially contends the inventions as claimed fail the written description
`requirements of 35 U.S.C. § 112.
`
`(Exhibit A at 18.) Tennant then included in its initial invalidity contentions exemplary 35
`
`U.S.C. § 112 bases for eight terms.
`
`Tennant served supplemental invalidity contentions on February 11, 2021. (Exhibit
`
`
`
`B.)
`
`In March and April 2021, the parties exchanged preliminary constructions and filed
`
`their Joint Patent Case Status Report and Claim Construction Statement, respectively.
`
`(Patton Decl. ¶ 4; see Dkt. 64.) In the April 9, 2021 Joint Patent Case Status Report and
`
`Claim Construction Statement, OWT and Tennant agreed that Tennant would not “request
`
`the Court find any claim terms indefinite during claim construction proceedings” and
`
`
`The Exhibits referenced in this memorandum are attached to the Patton
`1
`Declaration.
`
`2
`
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 3 of 12
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`
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`confirming this was “without waiving [Tennant’s] ability to make any argument at
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`summary judgment, trial, or in post-trial briefing....” (Dkt. 64 at 3 n. 1, 7.)
`
`Tennant served its Opening Claim Construction Brief on June 10, 2021. (See
`
`generally Dkt. 76.) Tennant argued that under OWT’s constructions for “water” and
`
`“conductivity produced by the presence of dissolved solids such that the water supports
`
`plant or animal life,” claim 13 of the ’415 patent, claims 13 and 27 of the ’092 patent, and
`
`claim 13 of the ’665 patent would be indefinite, and that other OWT-proposed
`
`constructions lacked support in the specification. (See, e.g., Dkt. 76, at 15-16, id. at 27,
`
`34-35.) As claim construction briefing continued and OWT further explained its proposed
`
`constructions, Tennant identified other potential § 112 defects in the claims that would
`
`exist if the Court adopted OWT’s or other non-Tennant constructions for various terms,
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`including for each and every claim that includes the following terms: “water”,
`
`“conductivity . . . supports plant or animal life”, “power source” and “electrical power
`
`source”, and “first anode electrode portion” and “second anode electrode portion.” (Dkt.
`
`76 at 15; Dkt. 143 at 3, 8, 10, 11, 12, 23, 25, 31.)
`
`The Court held the Claim Construction Hearing on August 5, 2021. (Dkt. 159.)
`
`Counsel for OWT expressly acknowledged that if the Court adopted OWT’s claim
`
`construction positions, Tennant would be free to address the § 112 invalidity issues created
`
`by those constructions later in this case. For example, Counsel for Tennant stated that
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`“there’s a written description support problem . . . [and] an indefiniteness problem” with
`
`the term “water,” and absent Tennant’s proposed construction being adopted, Tennant
`
`would be filing “at least a summary judgment [motion on this] Section 112 issue.” (Dkt.
`
`3
`
`
`
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`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 4 of 12
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`
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`159, at 54:7-13.) Counsel for OWT explicitly agreed, stating that, “we would be fine with
`
`that,” and that,
`
`We did discuss ahead of time that Tennant was not going to at this point bring
`its indefiniteness arguments. If it thinks the term is indefinite and wants to
`bring it to the Court, [summary judgment] would provide an opportunity for
`the Court to further make sure that this phrase can be understood.
`
`(Dkt. 159, at 54:14-21.) OWT made similar statements throughout the hearing, arguing
`
`the Court should reject Tennant’s proposed construction and address any § 112 issues later
`
`in the case:
`
`And finally, a number of Mr. Steinert’s arguments today appear to boil down
`to, well, if this is wrong, if his construction is not adopted, then the patent is
`invalid under 112… If Mr. Steinert thinks that the patents are invalid under
`112 under a construction, the Court can adopt those constructions and deal
`with the 112 issue then.
`
`(See, e.g., Dkt. 159, at 115:3-11.)
`
`On August 18, 2021, the Court issued a Claim Construction Order. (See generally
`
`Dkt. 162.) Relevant here, the Court adopted OWT’s proposed constructions (or lack of
`
`construction) related to “water”, “conductivity . . . supports plant or animal life”, “a first
`
`anode electrode portion that is non parallel to a second anode electrode portion”, and
`
`“flowing water . . . through an electrolysis emitter,” but drafted its own construction for
`
`“power source” and “electrical power source.” (See id. at 3-5, 20, 27-30, 44-45, 52-54.)
`
`The Court acknowledged that Tennant had reserved the rights to assert its § 112 theories
`
`and that “Tennant is free to pursue its [§ 112] invalidity arguments later in the litigation if
`
`it elects to do so.” (See, e.g., Dkt. 162 at 54 n. 13; id. at 53, 27 n. 8.)
`
`4
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`
`
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`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 5 of 12
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`
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`Following the Claim Construction Order, Tennant contacted OWT to confirm that
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`OWT would not oppose Tennant’s motion to amend its invalidity contentions to raise all
`
`of the § 112 issues resulting from claim construction. (Patton Decl. ¶ 6.) Despite OWT’s
`
`prior agreement on the record and the plain language of the Court’s Markman Order, OWT
`
`now opposes allowing Tennant to pursue the defenses discussed during claim
`
`construction.2
`
`Thus, Tennant now files this motion less than 14 day after the Court issued its Claim
`
`Construction Order, which Tennant contends created the § 112 issues that render the claims
`
`invalid as indefinite, lacking written description, and failing the enablement requirement.
`
`In addition to invalidity under Section 112, Tennant seeks leave to supplement the grounds
`
`for invalidity of the ’092 and ’665 patents based on Wikey as the primary reference in light
`
`of the Court’s construction of the “flowing water” terms. Because Wikey does not
`
`expressly disclose the “flowing water” limitation as construed by the Court, Tennant seeks
`
`leave to (a) allege that moving water through the Wikey emitter by means other than
`
`electrolysis would have been obvious to one of ordinary skill in the art, and (b) combine
`
`Wikey with references that teach moving water through the emitter by means other than
`
`electrolysis, such as the pump taught in the Aquariums for Dummies reference. The
`
`proposed cover pleading for Tennant’s supplemental contentions is attached as Exhibit C.
`
`
`Tennant also informed OWT that it should seek to supplement its infringement
`2
`contentions on terms where the Court adopted Tennant’s proposed constructions and drop
`claims where no good faith infringement claim can be advanced under the Court’s
`construction. OWT refused. (Patton Decl., ¶ 6.) OWT is therefore confined to the
`arguments disclosed in its existing infringement contentions.
`
`5
`
`
`
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`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 6 of 12
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`
`
`ARGUMENT
`GOOD CAUSE EXISTS TO PERMIT TENNANT TO SUPPLEMENT
`I.
`ITS § 112 POSITIONS IN ITS INVALIDITY STATEMENT IN LIGHT OF
`CLAIM CONSTRUCTION ARGUMENTS AND ORDER.
`
`A.
`
`Tennant Acted Diligently to Identify and Disclose the Invalidity Due to
`Indefiniteness, Written Description, and Enablement Created by the Court’s
`August 18, 2021 Order
`
`Tennant acted with diligence in identifying its invalidity positions under § 112.
`
`Tennant identified available invalidity positions under 35 U.S.C. § 112 in its initial
`
`invalidity contentions. (See, e.g., Exhibit A, at 18-21.) Tennant could not have identified
`
`the § 112 invalidity issues it now seeks to add in its initial or supplemental invalidity
`
`contentions. (Patton Decl. ¶ 5.) Indeed, as Tennant specifically noted in both contentions,
`
`“[t]he parties have not yet exchanged proposed claim construction, and Tennant does not
`
`presently know the full claim scope that OWT asserts is covered by the asserted patents.”
`
`(Exhibit A, at 18; Exhibit B, at 19-20.) Thus, Tennant identified the invalidity bases under
`
`35 U.S.C. § 112 that existed based on Tennant’s understanding of the claims and other
`
`available information and explicitly “reserve[d] the right to assert other bases for
`
`invalidity” in the event OWT’s proposed constructions that rendered the asserted patents
`
`invalid. (See, e.g., Exhibit A, at 18-21; Exhibit B, at 19-23.)
`
`OWT first disclosed its proposed claim constructions in late-March and April 2021.
`
`(Patton Decl. ¶ 4.) Tennant could not have anticipated the extent of the potential § 112
`
`issues created by OWT’s proposed claim constructions, let alone what constructions the
`
`Court would actually adopt. Indeed, it would have been unreasonable and likely wasteful
`
`for Tennant to amend its invalidity contentions at that point. See MyMedicalRecords, Inc.
`
`6
`
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 7 of 12
`
`
`
`v. Quest Diagnostics, Inc., No. 2:13-cv-02538-ODW(SHx), 2014 WL 5810363, at *3 (C.D.
`
`Cal. Nov. 6, 2014) (holding that it was reasonable to wait to move to amend infringement
`
`contentions until after claim construction order; noting “[n]either party had any way of
`
`predicting how the Court would rule on the claim construction dispute before it issued the
`
`Claim–Construction Order.”); 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.”).
`
`Throughout claim construction, while Tennant repeatedly notified OWT of specific
`
`§ 112 positions its proposed constructions might cause, the parties agreed that Tennant
`
`would raise any § 112 invalidity issues following claim construction if the Court did not
`
`adopt Tennant’s proposed constructions. (See, e.g., Dkt. 64 at 3, n. 1; Dkt. 162 at 27 n. 8
`
`(noting Tennant’s reservation of rights and agreeing not to address “indefiniteness, which
`
`focuses on the validity of the patents rather than their meaning,” until later).) On April 9,
`
`2021 in the Joint Patent Case Status Report and Claim Construction Statement, the parties
`
`noted Tennant’s belief that certain terms would be invalid under § 112 unless the Court
`
`adopted Tennant’s proposed construction. The parties explicitly recited Tennant’s
`
`agreement not to raise those positions and Tennant’s position that it was “reserving the
`
`right” to argue its indefiniteness, written description, and enablement at summary
`
`judgment. (Dkt. 64 at 3, n. 1; see also Dkt. 162 at 27 n. 8 (noting Tennant’s reservation of
`
`rights and agreeing not to address “indefiniteness, which focuses on the validity of the
`
`patents rather than their meaning,” until later).)
`
`7
`
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 8 of 12
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`
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`Far from delaying disclosure in bad faith or in an effort to hide its § 112 positions,
`
`on June 10, 2021 in Tennant’s opening claim construction brief, Tennant again notified
`
`OWT and the Court of the potential invalidity issues OWT’s constructions may create if
`
`adopted by the Court. For example, in Tennant’s opening claim construction brief, Tennant
`
`explicitly stated that OWT’s constructions for “water” and “conductivity produced by the
`
`presence of dissolved solids such that the water supports plant or animal life,” claim 13 of
`
`the ’415 patent, claims 13 and 27 of the ’092 patent, and claim 13 of the ’665 patent would
`
`be indefinite. (See, e.g., Dkt. 76, at 15-16.) Tennant also explained that certain other OWT-
`
`proposed constructions lacked support in the specification, and continued to identify these
`
`§ 112 deficiencies thereafter. (See, e.g., id. at 27, 34-35; Dkt. 162 at 53 (noting Tennant
`
`stated “in its response brief that rejecting its proposed construction [on the term ‘a first
`
`anode electrode portion that is nonparallel to a second anode electrode portion’] would
`
`render the claim invalid for lack of written description support”).)
`
`Tennant and OWT’s agreement that it would be proper for Tennant to bring any
`
`§ 112 invalidity contentions, including those contentions dependent on the Court’s at-that-
`
`point-unknown claim constructions—and Tennant’s identification of which specific terms
`
`may lack support under OWT’s proposed construction—continued through oral arguments.
`
`Indeed, at the Claim Construction Hearing, OWT agreed that if the Court adopts OWT’s
`
`claim construction positions, Tennant’s § 112 invalidity theories could be asserted later in
`
`this case. In fact, OWT advocated for this approach. For example, Counsel for Tennant
`
`stated, “there’s a written description support problem . . . [and] an indefiniteness problem”
`
`with the term water and absent Tennant’s proposed construction being adopted, Tennant
`
`8
`
`
`
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`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 9 of 12
`
`
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`would be filing “at least a summary judgment [on this] Section 112 issue.” (Dkt. 159, at
`
`54:7-13.) Counsel for OWT explicitly agreed, stating that, “we would be fine with that,”
`
`and that,
`
`We did discuss ahead of time that Tennant was not going to at this point bring
`its indefiniteness arguments. If it thinks the term is indefinite and wants to
`bring it to the Court, [summary judgment] would provide an opportunity for
`the Court to further make sure that this phrase can be understood.
`
`(Dkt. 159, at 54:14-21.) OWT repeatedly reiterated to the Court that OWT believed the
`
`Court should reject Tennant’s proposed construction and address any § 112 issues with the
`
`constructions later in the case:
`
`And finally, a number of Mr. Steinert’s arguments today appear to boil down
`to, well, if this is wrong, if his construction is not adopted, then the patent is
`invalid under 112.... If Mr. Steinert thinks that the patents are invalid under
`112 under a construction, the Court can adopt those constructions and deal
`with the 112 issue then.
`
`(See, e.g., id. at 115:3-11.)
`
`On August 18, 2021, less than 14 day ago, the Court issued its Claim Construction
`
`Order. (See generally Dkt. 162.) By adopting OWT’s proposed constructions for three
`
`terms and articulating its own construction on one term,3 the Court’s Order created the
`
`§ 112 issues, which Tennant contends render the claims invalid as indefinite, lacking
`
`written description, and failing the enablement requirement. (See, e.g., id. at 3-5, 20, 27-
`
`30, 44-45, 52-54; Exhibit C.) In the same Order that created the invalidity issues that are
`
`the subject of this motion, the Court also specifically noted Tennant reserved the right to
`
`
`Notably, “water”, “conductivity . . . supports plant or animal life”, “power source”
`3
`and “electrical power source”, and “a first anode electrode portion that is non parallel to a
`second anode electrode portion.”
`
`9
`
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 10 of 12
`
`
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`assert its § 112 theories, and agreed that “Tennant is free to pursue its [§ 112] invalidity
`
`arguments later in the litigation if it elects to do so.” (See, e.g., Dkt. 162 at 54 n. 13; id. at
`
`27 n. 8.)
`
`These facts, including that neither OWT nor Tennant had any way of predicting how
`
`the Court would rule on the claim construction disputes before it issued the Claim
`
`Construction Order as well as the parties’ and Court’s agreement that Tennant “is free to
`
`pursue its [§ 112] invalidity arguments later in the litigation,” demonstrate that Tennant
`
`acted with diligence in identifying its § 112 invalidity positions. See MyMedicalRecords,
`
`Inc. v. Quest Diagnostics, Inc., No. 2:13-cv-02538-ODW(SHx), 2014 WL 5810363, at *3
`
`(C.D. Cal. Nov. 6, 2014) (holding that it was reasonable to wait to move to amend
`
`infringement contentions until after claim construction order); GPNE Corp. v. Apple Inc.,
`
`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.”).
`
`The Court’s Pretrial Case Management Order also shows Tennant acted diligently
`
`in moving to amend its invalidity contentions to add the § 112 theories created by the
`
`Court’s Claim Construction Order. The Pretrial Case Management Order contemplates
`
`amending contentions if the Court does not adopt the party’s proposed construction. (Dkt.
`
`43 at 16, 2(c)(ii).) Tennant brings this motion in compliance with that Order.4
`
`B.
`
`The Balance of Prejudice Wholly Favors Tennant.
`
`
`Local Rules in other districts also support that Tennant acted diligently. See, e.g.,
`4
`D. Kan. Pat. Rule 3.5(a)(2)(A)-(B).
`
`10
`
`
`
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`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 11 of 12
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`
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`OWT will not be prejudiced by Tennant’s amended Invalidity Contentions. Not
`
`only has Tennant already advanced § 112 positions in its invalidity contentions, OWT has
`
`long been aware and even agreed that Tennant would pursue its § 112 theories once the
`
`scope of the claims was resolved following claim construction. Moreover, expert
`
`discovery has not yet begun. (See Dkt. 251.) Tennant’s motion to stay this proceeding
`
`pending an instituted IPR on the primary patent in this case is pending. (See Dkt. 252.)
`
`Thus, the prejudice to OWT is non-existent.
`
`Conversely, Tennant would be prejudiced because it would not be permitted to rely
`
`on the particular indefiniteness, written description, and enablement bases for invalidity.
`
`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 *5 (noting “proposed amendments do not affect deadlines in this
`
`case” and there is no “additional discovery is needed to address [the] proposed
`
`amendments”).
`
`The balance of prejudice favors Tenant.
`
`CONCLUSION
`
`For the reasons set forth herein, Tennant should be granted leave to amend its
`
`Invalidity Contentions related to terms or phrases for which the Court did not adopt
`
`Tennant’s claim construction proposal.
`
`
`
`11
`
`
`
`
`CASE 0:20-cv-00358-ECT-HB Doc. 267 Filed 09/01/21 Page 12 of 12
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`
`
`
`Dated: September 1, 2021
`
`
`
`
`
`73750570
`
`
`
`Respectfully submitted,
`
`s/Lora M. Friedemann
`Lora M. Friedemann (#0259615)
`Adam R. Steinhart (#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
`
`12
`
`
`
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