Haynes and Boone Advises TransData in Licensing Wireless Electric Meter Patents to Sensus USA Inc.

05/29/2014


DALLAS – Haynes and Boone. LLP has advised TransData Inc., a leading manufacturer of advanced solid-state electricity meters, in the licensing of three wireless “Smart Meter Patents” to Sensus USA Inc.

Terms of the agreement, which licenses Patent Nos. 6,181,294; 6,462,713 and 6,903,699, are confidential. This agreement settles TransData’s ongoing litigation with Alabama Power Company, Georgia Power Company, and Mississippi Power Company, subsidiaries of Southern Company, and Wisconsin Power & Light Company.

“This is the second successful licensing agreement generated by TransData’s Smart Meter Patents since TransData began enforcing its intellectual property,” said Haynes and Boone Partner Jamie McDole. “We expect more agreements will be forthcoming, given the strength of our client’s claims.”

Lawyers from five Haynes and Boone offices contributed to the representation. Dallas Partners Jamie McDole and Phillip Philbin led the Haynes and Boone team, which included Partners David Harper and Tom Kurth of Dallas, Ken Parker of Orange County, Calif., and Rich Rochford of New York. Dallas Associates Charles M. Jones II and Hamilton Simpson were integral to the work on this aspect of the licensing, McDole said.

Remaining 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); Oklahoma Gas & Electric Co. (NYSE:OGE); and Tri-County Electric Cooperative Inc.

According to recent U.S. Securities and Exchange Commission 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 litigation.

The agreement covers technology TransData first invented in the Dallas-Fort Worth area and deployed in the mid-1990s allows digital electric meters to communicate wirelessly when equipped with an internal wireless communication circuit and antenna.

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.

About TransData
TransData is a technology-based company specializing in the design and manufacture of advanced solid-state energy meters and related products that enable its global client base to more efficiently measure, monitor and control the flow of power and energy variables on the smart grid. Founded in 1969, TransData is a privately-held woman-owned business with headquarters in Dallas, serving over 2,000 customers in more than 25 countries worldwide, including most of the top 50 largest U.S. electric utilities. More information on TransData can be found at http://www.transdatainc.com. TransData is a registered trademark of TransData Inc.

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