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` UNITED STATES DISTRICT COURT
` DISTRICT OF MINNESOTA
`-----------------------------------------------------------
`Oxygenator Water Technologies,
`File No. 20-CV-358
`Inc.,
` (ECT/HB)
`
`Plaintiff,
`
`))))))))))))
`
`vs.
`Tennant Company,
`Defendant.
`-----------------------------------------------------------
`
`St. Paul, Minnesota
`October 6, 2021
`9:32 a.m.
`
`
`BEFORE THE HONORABLE HILDY BOWBEER
`UNITED STATES DISTRICT COURT MAGISTRATE JUDGE
`
`(MOTIONS HEARING)
`
`Proceedings reported by court reporter; transcript
`produced by computer.
`
`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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` UNITED STATES DISTRICT COURT
` DISTRICT OF MINNESOTA
`-----------------------------------------------------------
`Oxygenator Water Technologies,
`File No. 20-CV-358
`Inc.,
` (ECT/HB)
`
`Plaintiff,
`
`))))))))))))
`
`vs.
`Tennant Company,
`Defendant.
`-----------------------------------------------------------
`
`St. Paul, Minnesota
`October 6, 2021
`9:32 a.m.
`
`
`BEFORE THE HONORABLE HILDY BOWBEER
`UNITED STATES DISTRICT COURT MAGISTRATE JUDGE
`
`(MOTIONS HEARING)
`
`Proceedings reported by court reporter; transcript
`produced by computer.
`
`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`APPEARANCES (Via Zoom):
`For the Plaintiff:
`
`For the Defendant:
`
`Court Reporter:
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`2
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`Carlson Caspers
`NATHAN LOUWAGIE, ESQ.
`TODD S. WERNER, ESQ.
`HANNAH MOSBY O'BRIEN, ESQ.
`Suite 4200
`225 South Sixth Street
`Minneapolis, Minnesota 55402
`Fredrikson & Byron
`ADAM R. STEINERT, ESQ.
`TIMOTHY M. O'SHEA, ESQ.
`Suite 4000
`200 South Sixth Street
`Minneapolis, Minnesota 55402
`Fredrikson & Byron
`ROBERT S. JOHNSON, ESQ.
`CARA S. DONELS, ESQ.
`THOMAS M. PATTON, ESQ.
`Suite 301
`111 East Grand Avenue
`Des Moines, Iowa 50309
`LORI A. SIMPSON, RMR-CRR
`Suite 146
`316 North Robert Street
`St. Paul, Minnesota 55101
`
`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`P R O C E E D I N G S
`IN OPEN COURT
`(VIA ZOOM)
`THE COURT: So this is the United States District
`Court for the District of Minnesota. We are gathered by
`Zoom for a hearing in the matter of Oxygenator Water
`Technologies, Inc. vs. Tennant Company.
`Let's start by getting appearances. And since
`we've got quite a few people with us, I'm going to call out
`the names one at a time. So you don't know in what order
`you are supposed to identify yourselves.
`So we will start with counsel for OWT. And,
`Mr. Louwagie, I will let you lead off.
`MR. LOUWAGIE: Good morning, Your Honor. This is
`Nate Louwagie from Carlson Caspers on behalf of OWT.
`THE COURT: And, Mr. Werner, you're up next.
`MR. WERNER: Good morning, Your Honor. Todd
`Werner from Carlson Caspers, also on behalf of OWT.
`THE COURT: And Ms. Mosby O'Brien?
`MS. O'BRIEN: Good morning. Hannah Mosby O'Brien
`on behalf of OWT, also with Carlson Caspers.
`THE COURT: And I will ask you to look around the
`virtual courtroom and tell me whether you are expecting
`anybody you don't see to attend on behalf of OWT.
`COUNSEL: (Indicating.)
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`THE COURT: And I am seeing shakes of heads.
`All right. Let's turn now to Tennant, and I will
`call out names in the order in which they happen to appear
`on my list. And, Ms. Donels, your name happens to be at the
`top of my list at the moment.
`MS. DONELS: Good morning, Your Honor. Cara
`Donels on behalf of Tennant Company.
`THE COURT: And next, Mr. Johnson?
`MR. JOHNSON: Good morning, Your Honor. This is
`Scott Johnson with Fredrikson & Byron on behalf of the
`defendant, Tennant Company.
`THE COURT: And Mr. O'Shea?
`MR. O'SHEA: Good morning, Your Honor. Tim O'Shea
`with Fredrikson & Byron on behalf of Tennant.
`THE COURT: And Mr. Steinert?
`MR. STEINERT: Good morning, Your Honor. Adam
`Steinert, Fredrikson & Byron, on behalf of Tennant.
`THE COURT: And as we have already noted,
`Ms. Dean, who is in-house counsel for Tennant, is attending
`the hearing by telephone.
`I don't think you all need a refresher on the
`rules of the road for these hearings other than a reminder
`to make sure that if you are not the one speaking, mute your
`microphones.
`If you are not going to be speaking to any of the
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`motions, I would like you also to block video. If you will
`be speaking to at least one of the motions, you are welcome
`to remain on screen, although muted, until it's your turn.
`That at least gives me fewer faces to try to keep track of.
`Hold on one moment. I'm going to do one other
`thing here to make that a little simpler to keep an eye on.
`(Pause)
`THE COURT: All right. So we've got several
`motions to address. This is a continuation of a hearing
`that we began a couple of weeks ago.
`Oh, and for the record, we've got our court
`reporter. And I am also recording the session through the
`Zoom platform, but no other recording of this session is
`permitted.
`We previously handled arguments in connection with
`Docket Number 164. Up for hearing today are the following:
`Docket Number 175, which is a motion to compel by
`OWT. And my understanding is that Mr. Louwagie is going to
`address that for OWT and Mr. Johnson for Tennant. Is that
`correct?
`
`COUNSEL: (Indicating.)
`THE COURT: All right. We also have Docket
`Number 206, which is Tennant's motion regarding OWT's
`privilege log and privilege claims. My understanding is
`Mr. O'Shea is going to address that for Tennant and
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`Mr. Louwagie for OWT. Is that right?
`COUNSEL: (Indicating.)
`THE COURT: We have Tennant's motion to amend and
`supplement its invalidity claims. That's Docket Number 265.
`My understanding is that Mr. Steinert will address that for
`Tennant and Mr. Werner for OWT. Correct?
`MR. STEINERT: Correct, Your Honor.
`MR. WERNER: That is correct, Your Honor.
`THE COURT: All right. And last, but not least,
`we have OWT's motion to amend the protective order, Docket
`Number 370. And my understanding is that Mr. Werner will
`address that for OWT and Mr. Steinert will respond for
`Tennant. Also correct?
`MR. STEINERT: Correct, Your Honor.
`MR. WERNER: Correct, Your Honor.
`THE COURT: Okay. So let's start with Docket
`Number 175, which is OWT's motion to compel.
`MR. LOUWAGIE: Good morning, Your Honor, and may
`it please the Court.
`OWT's motion to compel is focused on two narrow
`issues that are directly relevant to the merits of the
`parties' claims and defenses in this case.
`The first issue is information related to
`Tennant's alleged design-arounds to the later two patents
`that are in this case, the '665 Patent and the '092 Patent.
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`This dispute, I think, is fairly straightforward.
`We had a long-standing interrogatory about any
`allegedly available design-arounds. Tennant's original
`answer said it didn't have any, and then two weeks before
`the close of fact discovery it supplemented and said here
`are two alleged design-arounds for these later two patents.
`And the long and short of it is we are entitled to
`discovery into facts and specifically to take a 30(b)(6)
`deposition regarding facts surrounding those alleged
`design-arounds.
`THE COURT: Hold on a minute. I am going to have
`you hold on one moment. It looks like we -- well, I don't
`know whether we lost Mr. Steinert or whether he just went
`off camera momentarily. Just let me -- there he is. We
`found him again.
`MR. STEINERT: I am still here, Your Honor.
`THE COURT: Okay. Very well.
`I'm sorry, Mr. Louwagie. Please go ahead.
`MR. LOUWAGIE: No problem, Your Honor.
`And so the Baxter case that we cited in our brief
`is directly on point. It compelled a response to a very
`similar 30(b)(6) topic.
`The two design-arounds at issue here are, first,
`an alleged flow diverter, which is included -- which
`apparently is included in an ActiveIon product. ActiveIon
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`is a close related company to Tennant. They are a licensee.
`And there's testimony about the kind of joint work that they
`did together, and there are a lot of documents showing the
`close relationship between Tennant Company and ActiveIon.
`THE COURT: So let me just check in on that one
`point. Are you alleging that or arguing that Tennant has
`possession, custody, and control over ActiveIon's documents
`or just that you are not satisfied that Tennant has done the
`kind of search that it should have done of its own documents
`to look for materials relating to that ActiveIon product?
`It looks like you are arguing the latter.
`MR. LOUWAGIE: Correct, Your Honor, I am arguing
`the latter. I am not arguing that they have possession,
`custody, and control over ActiveIon. Instead, the point is
`that they are -- the documents are pretty clear that there
`was a lot of conversation between the two parties and so I
`think that the idea that they don't have any information
`about it is, frankly, unlikely.
`And, importantly, Tennant has refused to say,
`actually, that they don't have any information about this
`product. They've said other things. They've said, well, we
`did a word search for "flow diverter" and we didn't find
`anything. And they said that they don't have possession,
`custody, and control over ActiveIon. Those are not the same
`issue. The issue is do they have information about this
`
`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`product. And the fact that Tennant is refusing to even put
`together a declaration saying they don't have any of this
`factual information is a problem.
`And we think we are entitled to a deposition to
`explore that and in particular to explore the specifics
`about this flow diverter, as well as whether it's really an
`available design-around alternative that could have been
`implemented in the ec-H20 products that are accused here.
`THE COURT: So it sounds like -- I mean, obviously
`if Tennant really doesn't have -- you know, has conducted a
`reasonably diligent search and really doesn't have
`additional documents or information, I can't order them to
`produce something they don't have, but it sounds like you
`are just not satisfied, from the way they have described
`what they have done, you're not satisfied that that
`reasonably diligent search has been conducted, correct?
`MR. LOUWAGIE: I think that's right, Your Honor.
`And I would add that, you know, I think that we're entitled
`to a deposition to explore the facts surrounding what they
`do know and what they don't know.
`And particularly -- you know, they have produced
`some documents about the ActiveIon products and about the
`testing of the ActiveIon products, and so we think we're
`entitled to take a deposition about those documents in the
`context of this design-around.
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`THE COURT: All right. Go ahead.
`MR. LOUWAGIE: That's the first alleged
`design-around.
`The second alleged design-around is this NanoClean
`product. And so, Your Honor, in 2015 Tennant introduced a
`new -- kind of a Generation 2 of its ec-H20 product, but
`this Generation 2 was never implemented with regard to
`Tennant's industrial floor scrubbers, which we understand
`are higher flow rate, bigger products.
`And so Tennant -- now Tennant is saying that it's
`available as a design-around for those products, for the
`industrial floor scrubbers, and so we are entitled to take a
`deposition to probe into that issue and to probe into
`whether it really is available because, again, we think it's
`not.
`
`And so ultimately, Your Honor, Tennant has stated
`that it intends to offer expert opinions about this
`design-around -- the possibility of these design-arounds.
`It would be unfair for them to be able to offer expert
`testimony on this while shielding facts that potentially
`undermine that expert's opinion from fact discovery.
`THE COURT: What about Tennant's argument that --
`from what I can tell, this applies primarily to the question
`of whether the Generation 2, the NanoClean technology, could
`have been incorporated into the industrial floor scrubbers.
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`But Tennant argues that any deficiencies in their response
`weren't fairly raised in the pre-motion conference or the
`meet-and-confer.
`MR. LOUWAGIE: Well, Your Honor, they refuse to
`produce a witness for this entire topic. So they did not --
`it is not that they agreed to produce a witness for part of
`the topic and not other parts of the topic.
`We clearly raised the -- at the pre-motion
`conference this topic, this 30(b)(6) topic. And so, you
`know, I don't know that there's any requirement for us to
`project every single question we would ask underneath a
`topic in order to take a deposition, during the
`meet-and-confer process.
`THE COURT: Okay. And then you've got a third
`point, not specific to design-arounds, but relating to the
`bench testing. Let me hear from Mr. Johnson on the
`design-around piece, which is one set of requests, and then
`I'll turn back to you for reply on that and then move on to
`the bench testing issue. Okay?
`MR. LOUWAGIE: Sounds good.
`THE COURT: All right. Mr. Johnson, you're up.
`MR. JOHNSON: All right. Good morning, Your
`Honor, and thank you. May it please the Court.
`To address the key issues raised by OWT, Tennant
`has produced the testimony and the documents that it really
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`has to show this flow diverter product, the first one.
`This was a product that was designed and developed
`by Bruce Field, who is a former Tennant employee, no longer
`works with the company and hasn't for years. He developed a
`flow diverter, which is essentially an insert that goes
`into --
`
`THE COURT: I am going to stop you right there. I
`am having some trouble hearing you. Can you either up the
`volume on your mike or get closer to it or some of both?
`MR. JOHNSON: Is that better?
`THE COURT: Oh, much better, yes.
`MR. JOHNSON: Good. Sorry, my mike was behind my
`screen there. So I apologize, Your Honor.
`Initially, the flow diverter itself is a concept
`that was developed by Bruce Field, who is a former Tennant
`employee. Mr. Field developed this flow diverter, which is
`essentially an insert into the sparger, the tubular-housed
`cylindrical electrode sparger, and there's an insert that
`goes into the middle of it. OWT has claimed that all
`require that there be nothing in that gap, and so
`introducing a flow diverter gets around those claims.
`Tennant learned of that during Mr. Field's
`deposition. We found his patent applications that describe
`the flow diverter. They describe how the flow diverter
`works. And those were used as exhibits during Mr. Field's
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`LORI A. SIMPSON, RMR-CRR
`(651) 848-1225
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`deposition.
`This isn't a product that Tennant implemented. It
`was a product that Mr. Field, because of those patent
`applications, when he left Tennant, he wanted to make that
`product in another company called ActiveIon.
`That company took a license from Tennant in 2008.
`That is 13 years ago. That company is defunct. It no
`longer exists. And Tennant doesn't have documents that show
`the technical details of the flow diverter. In fact, we
`searched our R&D files for anything that mentioned flow
`diverter and didn't find anything.
`So we are kind of faced with the old blood from a
`turnip argument here, Judge, where we've given OWT technical
`documents in the form of those patent applications and
`testimony in the form of Tennant's own former employee,
`Bruce Field, that sufficiently describe how this alternative
`works, operates, and could be implemented.
`Because we've done that, we have satisfied OWT's
`requests related to Interrogatory 19. And we supplemented
`Interrogatory 19, as we are required to do throughout
`discovery, when we learned about those things.
`So there just isn't anything really more to be had
`here. Tennant does --
`THE COURT: So let me unpack that a little bit,
`because --
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`MR. JOHNSON: You bet.
`THE COURT: -- one of the points that Mr. Louwagie
`made is that a search -- a word search, key term search for
`"flow diverter" won't necessarily find what there is to be
`found if it's reasonably possible that that part or that --
`yeah, I guess we'll call it a part was referred to in some
`other way or bound up in some other umbrella description,
`and I think one of the suggestions was water diverter or
`inner core.
`So why should they feel confident, why should you
`feel confident that if there was something there, it would
`surely have been picked up by the single search for "flow
`diverter"?
`MR. JOHNSON: Because that's how Mr. Field
`referred to it and he was sort of the one -- he was the guy,
`he was the source of this implementation that he proposed in
`a patent application that was never built by Tennant.
`This was a product that Mr. Field, you know,
`wanted to form his own company with, ActiveIon, and
`ActiveIon was created to allow him to do so. That company
`is defunct. Tennant never built this product.
`So if it didn't exist at the R&D stage, it
`wouldn't have existed later because it never was
`commercialized by Tennant. It was only commercialized by
`ActiveIon, this company that went defunct.
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`And it was commercialized in a sort of unique way,
`Your Honor. It was a spray bottle, essentially. There's
`actually an entertaining video about it done by The Science
`Guy. I can't remember his first name here.
`THE COURT: Bill Nye?
`MR. JOHNSON: Bill Nye, that's it. Thank you.
`Bill Nye The Science Guy actually did a presentation on this
`water bottle that was made by ActiveIon years and years ago.
`But this is a license that was done in 2008.
`We've done other searches. In fact, I'm being told that we
`just did a search for things like "water diverter." Again,
`zero hits.
`This just isn't something that Tennant took and
`ran with. It's something it allowed one of its former
`employees to take and run with, and he did. He tried. It
`didn't -- it wasn't a successful company, for one reason or
`another. OWT has deposed him. They have had the
`opportunity to ask all of the questions from the source on
`this technology.
`And we have the patent applications, which, above
`anything else, will describe how this was built or could
`have been built, how it performed, how it could have
`performed. They show -- those patent applications show how
`easy it was to stick a little flow diverter in the center of
`this tube and divert the water into the electrodes. That's
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`the alternative that's at issue here.
`OWT has gotten all they can get from Tennant on
`the subject and trying to ask us to find documents that may
`have existed in a licensee relationship 13 years ago, it's a
`13-year --
`THE COURT: Well, and I guess here's what I'm
`trying to understand. If you have looked in all of the
`places where such documents would be if they existed and run
`the necessary -- and run the searches that would reasonably
`pull up those documents, then, as I indicated at the
`beginning, I can't order you to produce what you don't have.
`But your response, it was a little unclear whether
`what you were saying is we shouldn't have to look for
`anything else because it would be really hard or we have
`looked, we have done all the looking that anybody could do,
`and there isn't anything more there. And I want to be
`really clear about which of those things you're saying.
`MR. JOHNSON: I understand that, Judge, and we
`believe we have searched the reasonable spots to look for
`this material and have not found the material that shows how
`these things work if it would have been implemented. Any of
`that stuff that they are seeking, we've searched the areas
`where it's reasonable to search.
`I can't represent to the Court that we have done a
`scorched earth, search every file at a giant Fortune 100
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`company for anything that mentions the word "diverter."
`We've searched areas where these documents would likely
`appear or exist if they still existed today, and we have
`either produced what we found or we don't have anything,
`Judge. There just isn't anything more to get.
`THE COURT: And in terms of -- to the extent that
`there's a request for a deposition, is there anyone -- is
`there any kind of corporate knowledge within Tennant about
`the flow diverter or about Tennant's consideration of using
`the flow diverter in these products that -- other than
`Mr. Field, who doesn't work for Tennant anymore? In other
`words, is there any other knowledge within the company that
`Mr. Field himself didn't bring to bear?
`MR. JOHNSON: We believe Mr. Field had all of that
`knowledge; and when he left, so did it. No, Judge, we don't
`believe there's any additional corporate testimony that
`Tennant could provide. Of course, the best source of this
`information, those patent applications, Mr. Field himself,
`they've been produced and he's been deposed. There isn't
`anything else, Judge.
`It would be -- I will note it would be in
`Tennant's interest, if we had more, to produce more because
`these are design-arounds, alternative embodiments that we
`could implement that help us avoid damages.
`So, yes, if we had something, we would have given
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`it by now, but the best source has been deposed. There
`isn't anybody else within Tennant that has knowledge
`relating to a flow diverter.
`THE COURT: The other term that I think, and I'm
`not saying that Mr. Louwagie's list was necessarily
`exhaustive, but the other term that I think OWT had
`suggested was the term "inner core." Is that also a term
`that was used in your searchs for information about the flow
`diverter?
`MR. JOHNSON: I don't know that. I don't know the
`answer to that, Your Honor. I can certainly check and see
`if "inner core" was used in a search. I just don't know and
`I don't want to make a representation one way or the other
`to the Court today about that.
`And -- well, of course, working on a computer
`during a hearing is a wonderful thing, especially when you
`have associates on the call, Judge. I have associates who
`have just run that search and they only hit on OWT
`documents. There aren't documents from Tennant that have
`"inner core" in them.
`THE COURT: Okay. Hold on a moment, though.
`MR. JOHNSON: Yep.
`THE COURT: What's being searched here? I mean,
`obviously, if it's already been produced, then --
`MR. JOHNSON: Sure.
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`THE COURT: -- it's already been produced. What
`I'm wondering is: Have the corporate files, which might
`include things that haven't been produced, been searched for
`these documents?
`MR. JOHNSON: Sure. I understand the distinction
`there, Judge, and what I can tell you is that of course
`during any litigation we download documents from the client,
`most of which, I'll say, are not produced in the case
`because they're not relevant to anything, but that download
`enables us to actually perform the searching without having
`to keep going back to the client and say, hey, run this
`again, run this again. So we have searched both responsive
`and nonresponsive documents to see if that hit did result.
`I don't know that we had searched the R&D files
`for "inner core" and whether or not that search would pull
`up anything more. If it does, I can tell you -- we're happy
`to run that search and see if we have any additional
`documents to produce on "inner core."
`It's still not going to change the fact that the
`person who had knowledge about any of that stuff has already
`been deposed and the documents showing and actually showing
`that inner core, that flow diverter, however you want to
`characterize it, have already been produced in the form of
`those patent applications. They actually did show the
`device in addition to describing it.
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`So, again, we're getting after duplicate
`information even if we have something there. So we just --
`I don't know that even going back to those are going to
`produce anything. I think it's probably an undue burden at
`this stage, especially since we have had the one witness
`with any knowledge on this already deposed.
`THE COURT: Let's talk for a bit, then, about the
`Gen 2 technology, the NanoClean technology.
`MR. JOHNSON: Absolutely, Your Honor. Tennant, of
`course, has produced tons of documents on the Gen 2
`technology. We've produced witnesses on the Gen 2
`technology. The Gen 2 technology was actually accused of
`infringement.
`It became, in Tennant's view, a noninfringing
`alternative after the Court ruled on claim construction that
`tubular housing requires a circular cross section. So after
`the Court's claim construction was when Tennant's lawyers
`could evaluate that and say, hey, this is a noninfringing
`alternative and it's one that kind of did implement into at
`least a commercial line.
`And OWT deposed Mr. Pylkki knowing that Gen 2 was
`implemented on its commercial lines and not on its
`industrial lines. It had the opportunity to ask Mr. Pylkki
`both in his personal deposition and in his deposition as a
`corporate designee as to why Tennant made the choice to only
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`implement in the commercial lines. It certainly had that
`opportunity. We have produced a ton of documents on this.
`I don't know what else OWT is asking for.
`What I really think is going on here, Judge, is
`that OWT is trying to use this argument to limit our
`expert's ability to say what noninfringing alternatives
`could have been implemented by Tennant later on.
`Of course, noninfringing alternatives and
`design-arounds, those concepts are typically things that are
`discussed by experts; and the reason for that is in cases,
`particularly like this case, where the accused infringer
`didn't know about the patents until right before the lawsuit
`was filed, it can't design around, it can't create
`noninfringing alternatives. Noninfringing to what? It
`can't create a design-around to a patent that it didn't know
`about.
`
`THE COURT: And just -- I mean, I understand that,
`but OWT is certainly entitled to find out whether Tennant
`did try or did explore or did conceptualize the
`implementation of the NanoClean technology in the industrial
`line of products.
`Now, I'm not saying and I don't think they're
`saying that if they didn't, then you can't allege that's a
`noninfringing alternative. But having alleged that it's a
`noninfringing alternative, they are entitled to find out,
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`well, you know, did Tennant do anything to explore that; and
`if so, where's the information.
`MR. JOHNSON: I believe they actually did that
`already. They asked Tennant's designee, Russ Pylkki, about
`why it wasn't implemented. I was there. I was defending
`Mr. Pylkki at that deposition. I believe they did ask that
`question already.
`What they're complaining about is that we really
`were able to add this towards the end of discovery and the
`timing of it. The timing of it wasn't dictated by when we
`had a Gen 2 product and when we knew about the Gen 2
`product. It was about when we knew the Gen 2 product, which
`had previously been accused of infringing, was no longer
`infringing, and that time arose when the Court gave us the
`claim construction order that said it had to have a circular
`cross section in order to be a tubular housing, which the
`Gen 2 does not. The Gen 2 eliminated the sparger.
`OWT had ample opportunity and I believe did ask
`Mr. Pylkki why did you eliminate the sparger in Gen 2, why
`didn't you eliminate it in the commercial. I believe
`they've already asked those questions, so I am not sure what
`we're really arguing about today.
`THE COURT: Okay. Well, I will let -- anything
`else that -- any other point you wanted to make,
`Mr. Johnson? I will give Mr. Louwagie an opportunity to
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`reply.
`
`MR. JOHNSON: No, Your Honor, other than, as the
`Court noted, of course we believe certain of these topics
`were not discussed in the meet-and-confers, they weren't
`mentioned in the pre-motion conference, and for that reason
`alone we think OWT's motion to compel on these things should
`be denied.
`Thank you, Judge.
`THE COURT: Mr. Louwagie, brief response on the
`points before we move on to the bench testing.
`MR. LOUWAGIE: Yes, Your Honor.
`To start out, I'm a little bit shocked that
`Mr. Johnson just suggested that this design-around came
`about as a result of claim construction. The claim
`construction order was issued on August 18, 2021. They
`served their interrogatory response on July 1, 2021. So
`there is no way that it came about as a result of this claim
`construction order.
`Now, with regard to that Gen 2 product,
`Mr. Johnson is right that there was opportunities to ask
`certain questions about that, but, again, it was not
`until -- those depositions all occurred before Tennant had
`ever disclosed that this was an alleged design-around.
`Another reason that the claim construction order
`cannot have been the reason is because the claim
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`construction order said tubular housing -- because the
`tubular housing claim construction was related to the
`'415 Patent and the alleged design-around is for the '092
`and the '665 Patent.
`So the long and short of it is for that product,
`for that Gen 2 design-around, we did not have the
`opportunity to depose Tennant's witnesses and particularly
`not a 30(b)(6) witness on the topic of when the -- of
`whether this was actually an available design-around.
`THE COURT: Is there any concern about document
`production on that issue or is your point on that issue
`really about having an opportunity to supplement the
`deposition of a corporate designee on that topic as a
`design-around?
`MR. LOUWAGIE: Your Honor, I believe that -- I'm
`not overly concerned about the document production on that
`point. Now, of course, to the extent that when they're
`working on preparing the witness, they come across a
`document that says -- that, okay, now it's relevant, we
`didn't know it was relevant before, then they need to
`produce that. But in general I'm not worried about the
`document production on that particular issue.
`THE COURT: All right.
`MR. LOUWAGIE: With regard to the other issue, the
`flow diverter and particularly the ActiveIon product,
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`Mr. Johnson was talking about the searches that they did and
`I thought it was telling that they thought they were able to
`do a reasonable search on the fly during a conference call
`like this. But, regardless, all of those searches were to
`terms about the particular part and I don't -- we don't know
`all of the names that this part was called.
`But more fundamentally, there likely are documents
`about the product in general, this ActiveIon product, and
`specifically about how that ActiveIon product worked that
`would show how that flow diverter applies.
`So, in general, a search for the particular part
`alone is not going to be sufficient. What would be
`sufficient is a search for information about the
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