`571-272-7822
`
`Paper 10
`Date: August 20, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TENNANT COMPANY,
`Petitioner,
`
`Vv.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`Patent Owner.
`
`IPR2021-00602
`Patent RE45,415 E
`
`Before KRISTINA M. KALAN, CHRISTOPHER M.KAISER,and
`WESLEYB. DERRICK,Administrative Patent Judges.
`
`KALAN,Administrative Patent Judge.
`
`DECISION
`Denying Institution of /nter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`I.
`
`INTRODUCTION
`
`Tennant Company(“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 13, 14, and 17—27 of U.S. Patent
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`No. RE45,415 E (Ex. 1001, “the ’415 patent”). Oxygenator Water
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`Technologies, Inc. (“Patent Owner”) filed a Preliminary Responseto the
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`Petition (Paper 9, “Prelim. Resp.”).
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`To institute inter partes review, we must determinethat the
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`information presented in the Petition shows“there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims
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`challengedin the petition.” 35 U.S.C. § 314(a). The Board, however, has
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`discretion to deny a petition even whena petitioner meets that threshold.
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`Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the
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`Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki
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`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
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`§ II.B.4.i) (recognizing the same); see also Patent Trial and Appeal Board
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`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55-63, available
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`at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
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`considerations that may warrant exercise of this discretion).
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`For the reasons discussed below,after considering the parties’
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`submissions and the evidence of record, we determine it is appropriate to
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`exercise our discretion and decline to institute inter partes review.
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`A. Related Proceedings
`
`The parties identify Oxygenator Water Technologies, Inc. v. Tennant
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`Company, No. 0:20-cv-00358-ECT-HB (D. Minn.) as a related matter.
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`Pet. 69; Paper 5, 1. Patent Owneralso identifies IPR2021-00625 as another
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`proceedingfiled by Petitioner against the 415 patent. Paper 5, 1.
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`IPR2021-00602
`Patent RE45,415 E
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`B. Real Parties-In-Interest
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`The parties identify themselves as real parties-in-interest. Pet. 69;
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`Paper5, 1.
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`C. The ’415 Patent
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`The °415 patent is a reissue of U.S. Patent No. 7,670,495 andis titled
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`‘“Flow-Through Oxygenator.” Ex. 1001, codes (54), (64). The ’415 patent
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`“relates to the electrolytic generation of microbubbles of oxygen for
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`increasing the oxygen content of flowing water,” and “also relates to the use
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`of superoxygenated water to enhance the growth andyield of plants;”its
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`flow-through model“is useful for oxygenating water for hydroponic plant
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`culture, drip irrigation and waste water treatment.” Id. at 1:24-30.
`The °415 patent explains that the “production of oxygen and hydrogen
`by the electrolysis of water is well known,” in which hydrogen gas and basic
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`water are producedat the cathode during electrolysis, and oxygen gas and
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`acidic water are produced at the anode. /d. at 2:5—6, 2:9-11, 2:21-23.
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`The ’415 patent explains that pumps to supply oxygen have high power
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`requirements and produceacidic and basic water, which can be detrimental
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`to live animals. Jd. at 2:47—50. In view ofthis, the °415 patent expresses a
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`need for “quiet, portable, low voltage means to oxygenate water” and for
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`oxygenator models suitable for in-line water distribution and for hydroponic
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`culture.
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`/d. at 2:52-54, 2:60-—62.
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`The °415 patent describes “an oxygen emitter whichis an electrolytic
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`cell which generates very small microbubbles and nanobubbles of oxygen in
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`an aqueous medium, which bubbles are too small to break the surface
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`tension of the medium,resulting in a medium supersaturated with oxygen.”
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`Id. at 2:66-3:3. Figure 1B of the ’415 patent is reproduced below.
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`
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`IPR2021-00602
`Patent RE45,415 E
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`PT
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`4
`Ls i
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`il
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`i||“
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`]
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`Ky]
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`Fig. 1B
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`Figure 1B depicts oxygen emitter 6 that includes anode 1, cathode 2, and
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`non-conducting spacer 3 having gap 4 for the passage of gas and the mixing
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`of anodic and cathodic water. Id. at 3:46, 4:60-—67, 5:2.
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`The ’415 patent states that “[iJn order to form microbubbles and
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`nanobubbles, the anode and cathodeare separated bya critical distance.” Jd.
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`at 3:13-14. The’415 patent defines “critical distance” as “the distance
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`separating the anode and cathode at which evolved oxygen forms
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`microbubbles and nanobubbles.” Jd. at 4:1-3. The °415 patent describes the
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`critical distance as ranging “from 0.005inches to 0.140 inches” andthat the
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`IPR2021-00602
`Patent RE45,415 E
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`“preferred critical distance is from 0.045 to 0.060 inches.” Jd. at 3:14-16.
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`With regard to Figure 1B’s embodiment, the ’415 patent states:
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`The spacer thicknessiscritical as it sets the critical distance. It
`must be of sufficient thickness to prevent arcing of the current,
`but thin enough to separate the electrodes by no more than 0.140
`inches. Abovethat thickness, the power needsare higher and the
`oxygen bubbles formed at higher voltage will coalesce and
`escape the fluid. Preferably, the spacer is from 0.005 to 0.075
`inches thick. At the lower limits, the emitter tends to foul more
`quickly. Most preferably, the spacer is about 0.050 inchesthick.
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`Id. at 5:4-13.
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`D.
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`Illustrative Claim
`
`Claim 13 is the sole independent claim of the challenged claims.
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`Claim 13 is representative and is reproduced below:
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`13. A method for producing an oxygenated aqueous
`composition comprising:
`flowing water at a flow rate no greater than 12 gallons per
`minute through an electrolysis emitter comprising an electrical
`powersourceelectrically connected to an anode electrode and a
`cathode electrode contained in a tubular housing,
`causing electricity to flow from the power source to the
`electrodes, and,
`producing the composition comprising a suspension
`comprising oxygen microbubbles and nanobubblesin the water,
`the microbubbles and nanobubbles having a bubble diameter of
`less than 50 microns, wherein:
`the anodeelectrode is separated at a critical distance from
`the cathode such that the critical distance is from 0.005
`inches to 0.140 inches;.
`the powersource produces a voltage no greater than
`about 28.3 volts and an amperage no greater than about 13
`amps,
`the tubular housing has an inlet and an outlet anda
`tubular flow axis from theinlet to the outlet;
`the water flowsin the inlet, out the outlet, is in fluid
`connection with the electrodes, and the water flowing into
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`
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`IPR2021-00602
`Patent RE45,415 E
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`the inlet has a conductivity produced by the presence of
`dissolved solids such that the water supports plant or animal
`life.
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`Ex. 1001, 11:20-45.
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`E. The Asserted Grounds of Unpatentability
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`Petitioner contends that claims 13, 14, and 17—27 of the °415 patent
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`are unpatentable on the following grounds. Pet. 3-4.
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`
`
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`Reference(s)|Basis'|Claim(s)Challenged_|
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`
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`
`
`
`
`
`
`Tremblay, the general knowledge,
`experience, and commonsense of a
`
`POSITA,as reflected in Wendt*
`Han,* Glembotsky,° and Burns’
`
`
`
`
`§ 103
`
`13, 18-23, 25
`
`! The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103. Because the °415 patent
`has an effective filing date prior to the effective date of the applicable AIA
`amendments, werefer to the pre-AIA versions of §§ 102, 103.
`2 US 2003/0042134 A1, published Mar. 6, 2003 (Ex. 1012).
`3 US 6,251,259 B1, issued June 26, 2001 (Ex. 1046).
`4H. Wendt & G. Kreysa, Electrochemical Engineering: Science and
`Technology in Chemical and Other Industries, Springer-Verlag Berlin
`Heidelberg, 81-127 (1999) (Ex. 1017).
`> M.Hanet al., Development ofa New Method ofMeasuring BubbleSize,
`vol. 2 no. 2 Water Sci. & and Tech.: Water Supply 77—83 (2002) (Ex. 1037).
`6 V. Glembotskyet al., Size ofgas bubbles forming during electroflotation,
`5 Elektronnaia Obrabotka Materialov 66-68 (1973) (Ex. 1023). Petitioner
`providesa certified English translation of Glembotsky (Ex. 1024).
`7S, Burnset al., Application ofDigital Image Analysisfor Size Distribution
`MeasurementofMicrobubbles, Imaging Technologies: Techniques and
`Civil Engineering Applications Engineering Foundation (1997) (Ex. 1031).
`
`6
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`
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`
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`§ 103
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`13, 18-23, 25
`
`-
`
`§ 103
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`13, 14, 18-25
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`
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`IPR2021-00602
`Patent RE45,415 E
`
`
`Z Reference(s)‘:_|Basis!|Claim(s) Challenged
`
`Tremblay, Hough® § 103|13, 18-23, 25
`Tremblay, Hough, the general
`
`
`knowledge, experience, and common
`sense of a POSITA,as reflected in
`Wendt, Han, Glembotsky, and Burns
`
`
`
`Tremblay, Satoh, the general
`knowledge, experience, and common
`
`
`sense of a POSITA,as reflected in
`Wendt, Han, Glembotsky, and Burns
`
`
`
`Satoh, the general knowledge,
`experience, and commonsense of a
`POSITA,as reflected in Wendt, Han,
`
`Glembotsky, and Burns
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`Satoh, Aoki? |§103|26, 27
`
`
`
`Satoh, Aoki, the general knowledge,
`
`experience, and commonsense of a
`
`POSITA,as reflected in Wendt, Han,
`
`
`Glembotsky, and Burns
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`In support ofits unpatentability arguments, Petitionerrelies on the
`declaration of Dr. Mario Tremblay. Ex. 1003. Patent Ownerrelies on the
`
`§ 103
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`26, 27
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`declaration of Dr. Ralph E. White. Ex. 2010.
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`Tl.
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`ANALYSIS
`
`Under35 U.S.C. § 314(a), we have discretion to deny institution of an
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`inter partes review. Cuozzo, 136 S. Ct. at 2140; SAS Inst. Inc. v. Iancu, 138
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`S. Ct. 1348, 1356 (2018). In deciding whetherto institute an inter partes
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`8 US 6,171,469 B1, issued Jan. 9, 2001 (Ex. 1041).
`° US 5,378,339, issued Jan. 3, 1995 (Ex. 1047).
`
`7
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`IPR2021-00602
`Patent RE45,415 E
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`review, we consider the guidance in the Consolidated Trial Practice Guide,
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`whichstates:
`
`Based on the Board’s experience, one petition should be
`sufficient to challenge the claims of a patent in mostsituations.
`Two or morepetitions filed against the same patent at or about
`the same time ... may place a substantial and unnecessary burden
`on the Board and the patent owner and could raise fairness,
`timing, and efficiency concerns.
`there may be
`that
`Nonetheless,
`the Board recognizes
`circumstances in which more than onepetition may be necessary,
`including, for example, when the patent owner has asserted a
`large numberof claimsin litigation or when there is a dispute
`aboutpriority date requiring arguments under multiple prior art
`references.
`In such cases twopetitions by a petitioner may be
`needed, althoughthis should berare.
`
`CTPG 59.
`
`Here, Petitioner filed two petitions on the same day, both challenging
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`claims 13, 14, and 17-27 of the ’415 patent. In this proceeding, Petitioner
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`presents two anticipation grounds and eight obviousness grounds. Pet. 3-4.
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`In IPR2021-00625, Petitioner presents two anticipation grounds over
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`different references and twenty-two obviousness grounds based on those and
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`other references. IPR2021-00625, Paper1.
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`Petitioner ranks this Petition second betweenthe twopetitions.
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`Pet. 69.!° Petitioner contends that the “TPG expressly contemplates that
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`multiple petitions may be justified where,like here, ‘there is a dispute about
`priority date requiring arguments under multiple prior art references.” Jd.
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`(quoting CTPG 59). Petitioner further contendsthatinstituting inter partes
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`'0 Petitioner did notfile a separate paper ranking the two petitions, but
`ranked the twopetitions and madeits ranking arguments in the Petition
`itself.
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`
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`IPR2021-00602
`Patent RE45,415 E
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`review “on two or morepetitions will not result in any inefficiencies because
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`Petitioner requests that the Board consolidate the petitions on a single
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`schedule anda single trial date.” Jd.
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`Patent Ownerarguesthat Petitioner has not justified the need for this
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`parallel petition. Prelim. Resp. 31-32. With regard to the priority dispute
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`that Petitioner references, Patent Ownerstates that “no such dispute exists.”
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`Id. at 32. Specifically, Patent Owneravers that “[w]ith respect to the
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`Tremblay reference, Patent Owner does not contest priority date.” Jd. at 32-
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`33.
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`Weare not persuaded that Petitioner’s arguments justify a second
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`petition challenging claims 13, 14, and 17—27 of the 415 patent. We agree
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`with Patent Ownerthat Petitioner appears to refer to Tremblay!'' when
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`arguing the existence of a possible dispute aboutpriority dates. We notethat
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`Petitioner does not refer to Tremblay in discussing the priority date dispute
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`in the Petition. See Pet. 69. In IPR2021-00625, however, Petitioner argues
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`that there is a priority date dispute becauseof“the Petition [in IPR2021-
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`00602] being filed based on the Tremblay reference.” IPR2021-00625,
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`Paper1, 86.
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`Asnoted above, Patent Ownerdoes not dispute whether Tremblayis
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`prior art for the °415 patent. Prelim. Resp. 32. Thus, there is no dispute
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`aboutpriority date that would require arguments under multiple priorart
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`references that would justify two petitions.
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`Petitioner’s contentions regarding the efficiency of instituting two
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`petitions are also unpersuasive becauseinstitution of inter partes review for
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`‘1! Satoh’s issue date andfiling date are prior to any of the ’415 patent’s
`filing dates. Compare Ex. 1046, codes (45), (86), with Ex. 1001, codes (60),
`(64).
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`
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`IPR2021-00602
`Patent RE45,415 E
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`this petition would result in the review of ten additional challenges that are
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`based on references not asserted in IPR2021-00625. That would require
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`resources for analysis in addition to those needed to analyze the challenges
`presented in IPR2021-00625. Petitioner’s request for consolidation also |
`does not support its rationale for institution of parallel petitions. Whether
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`the two proceedings are later consolidated or not, the ten additional
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`challenges set forth in this Petition still would require additional resources;
`Petitioner fails to address why the existenceofthose ten additional
`challengesis not an inefficiency weighing against institution on both
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`petitions. In this case, we find insufficient reasoningto institute inter partes
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`review on both petitions, and thus, the argument regarding consolidation is
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`effectively moot.
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`In view of the above, Petitioner has not adequately explained whythe
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`Petition in this proceeding contains sufficient material differences in its
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`analysis to support instituting an additional inter partes review ofthe
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`challenged claims. Accordingly, because weinstitute inter partes review of
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`claims 13, 14, and 17—27 of the ’415 patent on the groundspresented in the
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`IPR2021-00625 petition, we exercise our discretion under § 314(a) to deny
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`institution in this proceeding.
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`lil.
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`CONCLUSION
`
`For the reasons set forth above, we determine that the circumstances
`
`weigh in favor of discretionary denial of this Petition. Accordingly, we
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`exercise our discretion to deny institution under 35 U.S.C. § 314(a).
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`IV. ORDER
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`In consideration of the foregoing, it is hereby:
`
`ORDEREDthat the Petition is denied and notrial is instituted.
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`
`
`IPR2021-00602
`Patent RE45,415 E
`
`FOR PETITIONER:
`
`R. Scott Johnson
`Adam R.Steinert
`Fredrikson & Byron, P.A.
`RSJohnson@fredlaw.com
`asteinert@fredlaw.com
`
`FOR PATENT OWNER:
`
`J. Derek Vandenburgh
`Aaron W. Pederson
`Nathan D. Louwagie
`Carlson, Caspers, Vandenburgh, & Lindquist, P.A.
`dvandenburgh@carlsoncaspers.com
`nlouwagie@carlsoncaspers.com
`
`1]
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