Haynes and Boone Advises TransData in Wireless Smart Electric Meter Patent Portfolio Licensing

11/12/2013


DALLAS – Haynes and Boone, LLP client TransData Inc., a leading manufacturer of advanced solid-state electricity meters has announced it has licensed 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”) to a leading smart grid solutions provider.

“This new licensing agreement further exhibits the significant advancement TransData’s patents provide and their importance to the manufacture and operation of smart meters,” said Jamie McDole, a Dallas-based intellectual property litigation partner at the firm.

The announcement marks the first license agreement generated by TransData’s Smart Meter Patents since TransData began enforcing its intellectual property.

The agreement covers technology TransData first invented in the Dallas-Fort Worth area and deployed in the mid-1990s that is directed towards digital electric meters equipped with an internal wireless communication circuit and antenna, that enables the electric meter circuitry within the meter to communicate wirelessly.

In October 2010, TransData filed the first of several lawsuits alleging that numerous electric utilities were infringing its patented technology without authorization. As a result of initiating litigation, 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 and considering hundreds of prior art references cited, 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 TransData’s U.S. Patent No. 6,903,699.

Haynes and Boone lawyers also represented TransData in its recent win at a claim construction hearing held at the U.S. District Court for the Western District of Oklahoma after the Court issued a ruling that construed 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. Previously, the Court adopted TransData’s proposed claim construction with respect to the term “electric meter circuitry”—a term the defendants characterized as “determinative” and “case dispositive” earlier in the litigations.

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.

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