TransData Inc., a manufacturer of advanced solid-state electricity meters, recently announced that it entered into the first licensing agreements to its wireless smart electric meter patent portfolio, consisting of U.S. Patent Nos. 6,181,294; 6,462,713; and 6,903,699 (the “Smart Meter Patents”). The ‘713 patent is a continuation of the ‘294 patent, and the ‘699 patent is a continuation-in-part of the ‘713 patent, which in part entitles it to the priority date of the ‘294 patent, which is at least as early as its original filing date of March 17, 1998.
The innovation disclosed in the ‘294 patent seeks to provide a more effective way to receive timely and accurate information about electrical consumption from, and provide remote commands to, geographically distributed electric meters. The patent explains that this innovation is the first to introduce the broad concept of outfitting an electric meter with an internal, wireless communications antenna, allowing the electric meter circuitry to communicate via a data network wirelessly. Such communication can be bidirectional, allowing the meter to report data to a central location or to accept remotely generated operational commands. The range of the communications antenna should be sufficient to allow wireless communication with a data network, thereby eliminating a need to employ roving trucks to establish communication.
More tangibly, the invention described in the ‘294 patent incorporates an electric meter chassis having a dielectric housing that protrudes from the chassis, an antenna for allowing electric meter circuitry within the chassis to communicate wirelessly through the dielectric housing, and a method of manufacturing. In one particular embodiment, the antenna is adapted to transmit and receive electromagnetic radiation, and a balance circuit coupled to the antenna causes the antenna to act as a dipole and couplable to an unbalanced output port of a wireless communication circuit. This balances an impedance of the unbalanced output port in order to balance the dipole.
The license to these Smart Meter Patents was granted to an unnamed “leading smart grid solutions provider,” and marks the first license agreement generated by TransData’s Smart Meter Patents since the company began enforcing its patent portfolio in litigation. No doubt this licensing deal will be useful during litigation to establish some level of reasonable royalty, should the case ever proceed that far.
Meanwhile, TransData moves forward with patent enforcement proceedings against numerous defendants. Defendants in the litigation include 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). According to recent SEC filings, Itron, Inc. (NASDAQ: ITRI) and Silver Springs Networks, Inc. (NASDAQ:SSNI) stated that they, along with General Electric (NYSE:GE) are indemnifying numerous of these defendant utilities in the litigations.
TransData originally filed the lawsuits in October 2010. As a result of initiating litigation, as is now common-place, a third-party filed four patent reexamination requests with the U.S. Patent Office challenging the validity of TransData’s Smart Meter Patents. After concluding the reexaminations, the Patent Office ruled in TransData’s favor, re-confirmed validity of all the contested patents, and allowed 33 new claims to be added to the ‘699.
In the ongoing litigation, TransData also recently prevailed at a claim construction hearing held at the U.S. District Court for the Western District of Oklahoma. The Court issued a ruling construing all the disputed claim terms language of the Smart Meter Patents in a manner consistent with the constructions offered by TransData. In particular, the Court rejected all of the defendants’ proposed constructions and also rejected defendants’ argument that the Smart Meter Patents were invalid as indefinite.
On the issue of indefiniteness, the Court explained:
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.
The Court explained that arguments by counsel simply fell short of meeting the clear and convincing standard to cause claim language to fail for indefiniteness.
The only issue in the Court’s recent ruling that seemed to possibly cut against TransData was the issue of disavowal. The issue was whether or not Plaintiff’s statements to the Patent Office and the Patent Examiner’s statements during reexamination reflect a clear disavowal of terms, or a clear narrowing of the scope of the patent. Plaintiff’s statement that its patent measured metering data by using digital circuitry was found to clearly disavow. The Court did not finally resolve the disavowal issue, saying:
The extent to which Plaintiff’s actions during re-examination may give rise to a claim of intervening rights, or at what time the patents clearly required the use of digital meters, are issues left for another day.
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