Trials@uspto.gov
`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
`
`
`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
`
`No. RE45,415 E (Ex. 1001, “the ’415 patent”). Oxygenator Water
`
`Technologies, Inc. (“Patent Owner”) filed a Preliminary Responseto the
`
`Petition (Paper 9, “Prelim. Resp.”).
`
`To institute inter partes review, we must determinethat the
`
`information presented in the Petition shows“there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
`
`challengedin the petition.” 35 U.S.C. § 314(a). The Board, however, has
`
`discretion to deny a petition even whena petitioner meets that threshold.
`
`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
`
`Patent Office’s discretion.”); General Plastic Indus. Co. v. Canon Kabushiki
`
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to
`
`§ II.B.4.i) (recognizing the same); see also Patent Trial and Appeal Board
`
`Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”) 55-63, available
`
`at https://www.uspto.gov/TrialPracticeGuideConsolidated (identifying
`
`considerations that may warrant exercise of this discretion).
`
`For the reasons discussed below,after considering the parties’
`
`submissions and the evidence of record, we determine it is appropriate to
`
`exercise our discretion and decline to institute inter partes review.
`
`A. Related Proceedings
`
`The parties identify Oxygenator Water Technologies, Inc. v. Tennant
`
`Company, No. 0:20-cv-00358-ECT-HB (D. Minn.) as a related matter.
`
`Pet. 69; Paper 5, 1. Patent Owneralso identifies IPR2021-00625 as another
`
`proceedingfiled by Petitioner against the 415 patent. Paper 5, 1.
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`B. Real Parties-In-Interest
`
`The parties identify themselves as real parties-in-interest. Pet. 69;
`
`Paper5, 1.
`
`C. The ’415 Patent
`
`The °415 patent is a reissue of U.S. Patent No. 7,670,495 andis titled
`
`‘“Flow-Through Oxygenator.” Ex. 1001, codes (54), (64). The ’415 patent
`
`“relates to the electrolytic generation of microbubbles of oxygen for
`
`increasing the oxygen content of flowing water,” and “also relates to the use
`
`of superoxygenated water to enhance the growth andyield of plants;”its
`
`flow-through model“is useful for oxygenating water for hydroponic plant
`|
`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
`
`water are producedat the cathode during electrolysis, and oxygen gas and
`
`acidic water are produced at the anode. /d. at 2:5—6, 2:9-11, 2:21-23.
`
`The ’415 patent explains that pumps to supply oxygen have high power
`
`requirements and produceacidic and basic water, which can be detrimental
`
`to live animals. Jd. at 2:47—50. In view ofthis, the °415 patent expresses a
`
`need for “quiet, portable, low voltage means to oxygenate water” and for
`
`oxygenator models suitable for in-line water distribution and for hydroponic
`
`culture.
`
`/d. at 2:52-54, 2:60-—62.
`
`The °415 patent describes “an oxygen emitter whichis an electrolytic
`
`cell which generates very small microbubbles and nanobubbles of oxygen in
`
`an aqueous medium, which bubbles are too small to break the surface
`
`tension of the medium,resulting in a medium supersaturated with oxygen.”
`
`Id. at 2:66-3:3. Figure 1B of the ’415 patent is reproduced below.
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`PT
`
`4
`Ls i
`
`il
`
`i||“
`
`]
`
`Ky]
`
`|
`
`Fig. 1B
`
`Figure 1B depicts oxygen emitter 6 that includes anode 1, cathode 2, and
`
`non-conducting spacer 3 having gap 4 for the passage of gas and the mixing
`
`of anodic and cathodic water. Id. at 3:46, 4:60-—67, 5:2.
`
`The ’415 patent states that “[iJn order to form microbubbles and
`
`nanobubbles, the anode and cathodeare separated bya critical distance.” Jd.
`
`at 3:13-14. The’415 patent defines “critical distance” as “the distance
`
`separating the anode and cathode at which evolved oxygen forms
`
`microbubbles and nanobubbles.” Jd. at 4:1-3. The °415 patent describes the
`
`critical distance as ranging “from 0.005inches to 0.140 inches” andthat the
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`“preferred critical distance is from 0.045 to 0.060 inches.” Jd. at 3:14-16.
`
`With regard to Figure 1B’s embodiment, the ’415 patent states:
`
`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.
`
`Id. at 5:4-13.
`
`D.
`
`Illustrative Claim
`
`Claim 13 is the sole independent claim of the challenged claims.
`
`Claim 13 is representative and is reproduced below:
`
`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
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`the inlet has a conductivity produced by the presence of
`dissolved solids such that the water supports plant or animal
`life.
`
`Ex. 1001, 11:20-45.
`
`E. The Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 13, 14, and 17—27 of the °415 patent
`
`are unpatentable on the following grounds. Pet. 3-4.
`
`
`
`
`Reference(s)|Basis'|Claim(s)Challenged_|
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`§ 103
`
`13, 18-23, 25
`
`-
`
`§ 103
`
`13, 14, 18-25
`
`
`
`
`
`
`
`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
`
`Satoh, Aoki? |§103|26, 27
`
`
`
`Satoh, Aoki, the general knowledge,
`
`experience, and commonsense of a
`
`POSITA,as reflected in Wendt, Han,
`
`
`Glembotsky, and Burns
`
`In support ofits unpatentability arguments, Petitionerrelies on the
`declaration of Dr. Mario Tremblay. Ex. 1003. Patent Ownerrelies on the
`
`§ 103
`
`26, 27
`
`declaration of Dr. Ralph E. White. Ex. 2010.
`
`Tl.
`
`ANALYSIS
`
`Under35 U.S.C. § 314(a), we have discretion to deny institution of an
`
`inter partes review. Cuozzo, 136 S. Ct. at 2140; SAS Inst. Inc. v. Iancu, 138
`
`S. Ct. 1348, 1356 (2018). In deciding whetherto institute an inter partes
`
`8 US 6,171,469 B1, issued Jan. 9, 2001 (Ex. 1041).
`° US 5,378,339, issued Jan. 3, 1995 (Ex. 1047).
`
`7
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`review, we consider the guidance in the Consolidated Trial Practice Guide,
`
`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
`
`claims 13, 14, and 17-27 of the ’415 patent. In this proceeding, Petitioner
`
`presents two anticipation grounds and eight obviousness grounds. Pet. 3-4.
`
`In IPR2021-00625, Petitioner presents two anticipation grounds over
`
`different references and twenty-two obviousness grounds based on those and
`
`other references. IPR2021-00625, Paper1.
`
`Petitioner ranks this Petition second betweenthe twopetitions.
`
`Pet. 69.!° Petitioner contends that the “TPG expressly contemplates that
`
`multiple petitions may be justified where,like here, ‘there is a dispute about
`priority date requiring arguments under multiple prior art references.” Jd.
`
`(quoting CTPG 59). Petitioner further contendsthatinstituting inter partes
`
`'0 Petitioner did notfile a separate paper ranking the two petitions, but
`ranked the twopetitions and madeits ranking arguments in the Petition
`itself.
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`review “on two or morepetitions will not result in any inefficiencies because
`
`Petitioner requests that the Board consolidate the petitions on a single
`
`schedule anda single trial date.” Jd.
`
`Patent Ownerarguesthat Petitioner has not justified the need for this
`
`parallel petition. Prelim. Resp. 31-32. With regard to the priority dispute
`
`that Petitioner references, Patent Ownerstates that “no such dispute exists.”
`
`Id. at 32. Specifically, Patent Owneravers that “[w]ith respect to the
`
`Tremblay reference, Patent Owner does not contest priority date.” Jd. at 32-
`
`33.
`
`Weare not persuaded that Petitioner’s arguments justify a second
`
`petition challenging claims 13, 14, and 17—27 of the 415 patent. We agree
`
`with Patent Ownerthat Petitioner appears to refer to Tremblay!'' when
`
`arguing the existence of a possible dispute aboutpriority dates. We notethat
`
`Petitioner does not refer to Tremblay in discussing the priority date dispute
`
`in the Petition. See Pet. 69. In IPR2021-00625, however, Petitioner argues
`
`that there is a priority date dispute becauseof“the Petition [in IPR2021-
`
`00602] being filed based on the Tremblay reference.” IPR2021-00625,
`
`Paper1, 86.
`
`Asnoted above, Patent Ownerdoes not dispute whether Tremblayis
`
`prior art for the °415 patent. Prelim. Resp. 32. Thus, there is no dispute
`
`aboutpriority date that would require arguments under multiple priorart
`
`references that would justify two petitions.
`
`Petitioner’s contentions regarding the efficiency of instituting two
`
`petitions are also unpersuasive becauseinstitution of inter partes review for
`
`‘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).
`
`
`
`IPR2021-00602
`Patent RE45,415 E
`
`this petition would result in the review of ten additional challenges that are
`
`based on references not asserted in IPR2021-00625. That would require
`
`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
`
`the two proceedings are later consolidated or not, the ten additional
`
`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
`
`petitions. In this case, we find insufficient reasoningto institute inter partes
`
`review on both petitions, and thus, the argument regarding consolidation is
`
`effectively moot.
`
`In view of the above, Petitioner has not adequately explained whythe
`
`Petition in this proceeding contains sufficient material differences in its
`
`analysis to support instituting an additional inter partes review ofthe
`
`challenged claims. Accordingly, because weinstitute inter partes review of
`
`claims 13, 14, and 17—27 of the ’415 patent on the groundspresented in the
`
`IPR2021-00625 petition, we exercise our discretion under § 314(a) to deny
`
`institution in this proceeding.
`
`lil.
`
`CONCLUSION
`
`For the reasons set forth above, we determine that the circumstances
`
`weigh in favor of discretionary denial of this Petition. Accordingly, we
`
`exercise our discretion to deny institution under 35 U.S.C. § 314(a).
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDEREDthat the Petition is denied and notrial is instituted.
`
`
`
`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]
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
