Markman Orders and Federal Circuit Deference


TransData, Inc., a manufacturer of advanced solid-state power and energy metering products, recently announced that an Oklahoma federal judge issued a significant and favorable ruling in its ongoing patent infringement litigation against a group of the nation’s largest electric utilities over wireless smart electric meter technology developed by the company.

The exceptionally brief Order, issued October 1, 2013, by Judge Robin Cauthron of the U.S. District Court for the Western District of Oklahoma, construed the disputed claim terms of TransData’s U.S. Patent Nos. 6,181,294; 6,462,713; and 6,903,699 in a manner consistent with the constructions offered by TransData.  More specifically, the court rejected all of the defendants’ proposed constructions in an Order that was only a few lines longer than three double-spaced pages. The relevant claim constructions were as follows:

The Court finds that the term “electric meter chassis” will be construed to mean the base or supporting structure of the electric meter, including any circuit board rack.

[T]he Court finds that “unbalanced output port” is defined as “output port with unbalanced impedance.” “Balance Circuit” means: “a circuit that balances impedance.”

Additionally, the term “antenna elements” was construed. TransData argued for the ordinary plain meaning, while the defendants proposed a definition as follows: “conductor of the antenna used for receiving or transmitting electromagnetic radiation / two or more conductors of the antenna used for receiving or transmitting electromagnetic radiation.” The Court determined that adopting the defendant’s construction would inject terms and limitations into the patent and would render the term otherwise “indecipherable.”

Presently, the Federal Circuit is considering whether deference should be given to claim constructions of district court judges. See Federal Circuit Puzzles Over Claim Construction Deference.  I have heard Chief Judge Paul Michel (ret.) say that perhaps some kind of sliding scale deference would be appropriate. The more effort the district court put into the claim construction, as evidenced by “showing their work,” the more deference. If that winds up being where the Federal Circuit goes, I don’t know that this type of claim construction would get much deference. While it may be perfectly correct, a three-page double-spaced Markman Order seems rather perfunctory.

In any event, also of note in this exceptionally short Order was the Court’s ruling relative to  indefiniteness under 35 U.S.C. 112. On this point, the court summarized and then ruled as follows:

Defendants argue that there are two terms within the patents which are indefinite under 35 U.S.C. § 112, ¶ 2. Those terms are “power quality information” and “site analysis information.” Defendants argue that because these terms are indefinite, they insert an ambiguity in the patents which makes the patents unenforceable. However, Defendants have offered nothing in support of their arguments other than the assertions of counsel. As Plaintiff noted at the hearing, to establish indefiniteness requires “clear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249- 50 (Fed. Cir. 2008). Argument of counsel falls short of this exacting standard. Accordingly, Defendants’ claims of indefiniteness fail at this stage.

According to TransData, the claim constructions prove that the defendants infringe the asserted patents.  “We are extremely pleased with the Court’s claim constructions and the timeliness of the Markman Order,” said Trace Gleibs, President of TransData.  “The Court’s Markman Order is a significant step in this litigation and further validates TransData’s intellectual property rights.”

In the litigation, TransData has asserted its patents against CenterPoint Energy Houston Electric LLC (NYSE: CNP); Oncor Electric Delivery Company LLC; Texas-New Mexico Power Company (NYSE: PNM); Denton Municipal Utilities; San Diego Gas & Electric Co. (NYSE: SRE); Denton County Electric Cooperative Inc. (d/b/a CoServ Electric); Alabama Power Company, Georgia Power Company, and Mississippi Power Company, subsidiaries of Southern Company (NYSE: SO); Oklahoma Gas & Electric Co. (NYSE: OGE); Tri-County Electric Coop Inc.; and Wisconsin Power & Light Co. (NYSE: LNT). In particular, TransData alleges that defendants are making, using, offering to sell, selling, and/or importing certain digital electric meters equipped with an internal wireless communication circuit and antenna that infringe TransData’s patents.


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