Oxygenator Water Technologies, Inc. v. Tennant Company

Background

This is a patent-infringement case brought by Oxygenator Water Technologies, Inc. (OWT) against Tennant Company. The order resolves the parties’ motions in limine, which are pretrial requests to limit evidence or arguments at trial. The court had already ruled from the bench on some motions at the October 31, 2024 final pretrial conference and used this order to record those decisions and decide the remaining issues.

OWT’s Motions

1. Past licensing efforts — granted in part and denied in part. The court allowed Tennant to present evidence about OWT’s past offers to license its patents because the offers predated the lawsuit, were genuine, and were relevant to damages. OWT may challenge the differences between those offers and the hypothetical license negotiation through cross-examination. However, Tennant may not introduce evidence or testimony that OWT suggested competitors could use the licenses to sue Tennant for infringement. The court found that point had limited value, created risks of unfair prejudice, hearsay, and speculation, and could waste time or confuse the jury. Tennant also may not argue that competitors’ rejection of the licenses showed Tennant’s infringement was not willful.

2. Non-infringing alternative — denied in full. The court allowed Tennant to present evidence that it believed a version of its ec-H2O module without a sparger was available during the hypothetical negotiation used to evaluate damages. OWT may challenge whether that alternative was actually available, including by discussing Tennant’s later efforts that were unsuccessful or never implemented. The court treated the availability and quality of the alternative as matters for the jury rather than reasons to exclude the evidence.

3. Prior art — largely granted. Tennant may present evidence about the general state of electrolysis technology, including that the technology was well established. Tennant may not present evidence about specific patents that it considers similar to OWT’s asserted patents. The court found that evidence had limited relevance and could improperly raise validity disputes that were not before the jury, while creating collateral disputes and wasting time.

4. Tennant’s patents — granted as follows. Tennant may present general evidence that it owns patents, conducts research and development, and uses technology beyond the technology claimed by OWT’s patents in its ec-H2O products. Tennant may also cross-examine OWT’s damages expert about the value assigned to non-infringing technology. But Tennant may not present evidence or testimony that its products practice any specific Tennant-owned patent, or ask the expert why he failed to assign specific value to such patents. The court found that the relevance of that evidence was limited and outweighed by the risk of jury confusion and wasted time. The court also noted a factual dispute about whether Tennant’s products practice any Tennant patent.

5. Advice of counsel — granted as uncontested. Tennant clarified that it did not intend to elicit testimony from its in-house counsel about the legal analysis behind Tennant’s decision not to take OWT’s license offer. Based on that clarification, the court granted OWT’s motion. OWT may renew the motion during trial if live testimony creates a reason to revisit the decision.

Tennant’s Motions

1. Overall ec-H2O and NanoClean revenue — granted as unopposed. OWT stated that it did not intend to introduce evidence about Tennant’s overall revenue from those lines of business, so the court granted Tennant’s motion.

2. Entire market value and damages evidence — denied. The court allowed OWT to present evidence concerning past royalty rates and its damages expert’s comparison of those rates with a percentage of the full sales price of Tennant’s floor scrubbers. Tennant may argue through evidence and cross-examination that the earlier licenses involved different products. The court did not decide in this motion whether the expert’s ultimate dollar-value opinion violated the entire market value rule, which can limit use of a multicomponent product’s full value when the patented feature does not drive demand. The court stated that issue should be evaluated by the jury based on the trial evidence rather than resolved by excluding the evidence.

3. Whether infringement had already been determined — denied. The court denied Tennant’s request to prevent OWT from presenting evidence or argument that it had already been determined that Tennant’s floor scrubbers infringed certain asserted claims.

Jury Instructions and Verdict Form

The court determined that the jury instructions could use the word “infringed” and would tell the jury that certain aspects of infringement had already been determined, without emphasizing that the court itself made that determination. The court explained that Tennant had stipulated that its ec-H2O products practiced all limitations of certain asserted claims, OWT’s summary-judgment motion on infringement was unopposed, and the court then entered summary judgment on that issue. Tennant reserved its right to appeal claim construction and continue challenging patent validity.

The court also chose to use the term “damages” in the jury instructions rather than describe the task only as calculating a per-unit royalty rate. The court found that approach more consistent with model instructions and less confusing. The court deferred deciding whether the verdict form would require the jury to provide one damages number or show the royalty-rate calculation and multiplication by the number of units until near the conclusion of the evidence.

Overall Effect

This order governs the evidence and instructions for the upcoming patent trial. It does not itself enter a final judgment resolving the remaining damages or willfulness issues.