UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GRIDCO INC.
`Petitioner
`
`v.
`
`VARENTEC, INC.
`Patent Owner
`
`Patent No. 9,293,922
`Issue Date: Mar. 22, 2016
`Title: Systems And Methods For
`Edge Of Network Voltage Control Of A Power Grid
`_______________
`
`Inter Partes Review No. IPR2017-01134
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
`(CLAIMS 1-3, 8-10, AND 15-16 OF PATENT NO. 9,293,922)
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`EXHIBIT LIST .......................................................................................................... 5
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ...................................... 1
`A.
`Real Party-In-Interest ............................................................................ 1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) ................... 1
`D.
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 2
`INTER PARTES REVIEW FEE UNDER 37 C.F.R. § 42.103 .......................... 2
`II.
`III. CONTENTS OF PETITION UNDER 37 C.F.R. § 42.104 ................................ 2
`A.
`Grounds For Standing: 37 C.F.R. § 42.104(a) ..................................... 2
`B.
`Challenged Claims ................................................................................ 2
`C.
`Grounds Of Challenge: 37 C.F.R. § 42.104(b) .................................... 2
`IV. OVERVIEW OF THE ’922 PATENT, EXHIBIT 1001..................................... 4
`A.
`Purported Invention in the ’922 patent .................................................. 4
`B.
`Independent Claim 1 ............................................................................. 5
`C.
`Prosecution History of the ’922 patent line........................................... 5
`1.
`Prosecution history of the ’867 patent, Exhibit 1013 ................. 5
`2.
`Prosecution history of the ’922 patent, Exhibit 1014 ................. 6
`V. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3) ........................ 7
`A.
`“at or near the edge of the distribution power network” ....................... 7
`1.
`“at an edge of the distribution power network” .......................... 7
`2.
`“at or near the edge of a power distribution network” ..............11
`“non-continuously monitor the proximate voltage” ............................13
`B.
`VI. TECHNOLOGY AT ISSUE .............................................................................13
`A.
`Power Distribution Networks ..............................................................13
`B.
`Voltage regulation on Power Distribution Networks ..........................15
`C.
`Switched Capacitors ............................................................................17
`D.
`Infighting .............................................................................................17
`VII.LEVEL OF SKILL AND KNOWLEDGE IN THE ART ................................18
`VIII.
`CLAIM-BY-CLAIM EXPLANATION OF GROUND FOR
`UNPATENTABILITY.............................................................................................18
`A.
`Ground 1A: Claims 1-2, 8-10, and 15-16 are obvious in view of
`D’Aquila and the Green Book .............................................................18
`1.
`Independent claim 1 ..................................................................19
`2.
`The Green Book teaches the time delay approach recited in
`claim 1 .......................................................................................27
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`3.
`
`4.
`
`5.
`
`D’Aquila provides an explicit reason to look to the Green Book
`and apply its methods ................................................................30
`Use of the Green Book’s time delay method is obvious under
`KSR even absent D’Aquila’s explicit teaching ........................30
`Dependent claims 2, 8-10, and 15-16, are likewise unpatentable
`in view of the D’Aquila and the Green Book ...........................31
`a. Dependent claim 2 ....................................................31
`b. Dependent claim 8 ....................................................32
`c. Dependent claim 9 ....................................................32
`d. Dependent claim 10 ..................................................33
`e. Dependent claim 15 ..................................................34
`f. Dependent claim 16...................................................34
`Ground 1B: Dependent claim 3 is obvious in view of D’Aquila and
`the Green Book, further in view of IEEE SVC ...................................35
`Ground 2A: Claims 1-2, 8-10, and 15-16 are obvious in view of the
`Green Book and NoMAX ...................................................................36
`1.
`Independent claim 1 ..................................................................37
`2.
`The combination of Green Book with NoMAX is obvious as
`merely applying a known technique to solve a previously
`recognized problem ...................................................................49
`a. The Green Book recognized the purported problem
`with the prior art systems ................................................49
`b. The Green Book also recognized the claimed solution
`
`51
`One of skill would look to NoMAX to provide the details of
`implementing the known solution and thereby arrive at the
`claimed invention ......................................................................53
`Dependent claims 2, 8-10, and 15-16, are likewise unpatentable
`in view of the Green Book and NoMAX ..................................53
`a. Dependent claim 2 ....................................................53
`b. Dependent claim 8 ....................................................54
`c. Dependent claim 9 ....................................................55
`d. Dependent claim 10 ..................................................56
`e. Dependent claim 15 ..................................................58
`f. Dependent claim 16...................................................59
`Ground 2B: Dependent claim 3 is obvious in view of The Green
`Book and NoMAX and further in view of IEEE SVC ........................60
`Ground 3A: Claims 1-2, 8-10, and 15-16 are obvious in view of
`D’Aquila, further in view of NoMAX ................................................61
`
`B.
`
`C.
`
`D.
`
`E.
`
`3.
`
`4.
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`1.
`
`2.
`
`3.
`
`F.
`
`Independent claim 1: D’Aquila and NoMAX together teach all
`the elements of claim 1 .............................................................61
`The combination of D’Aquila and NoMAX is an obvious
`design choice
`that merely combines prior art elements
`according to known methods to yield predictable results .........66
`Dependent claims 2, 8-10, and 15-16, are likewise unpatentable
`in view of the D’Aquila and NoMAX ......................................68
`a. Dependent claim 2 ....................................................68
`b. Dependent claim 8 ....................................................68
`c. Dependent claim 9 ....................................................69
`d. Dependent claim 10 ..................................................70
`e. Dependent claim 15 ..................................................70
`f. Dependent claim 16...................................................71
`Ground 3B: Dependent claim 3 is obvious in view of D’Aquila and
`NoMAX, and further in view of IEEE SVC .......................................71
`IX. ONE SKILLED IN THE ART WOULD REASONABLY EXPECT
`SUCCESS IN THE PROPOSED COMBINATIONS IN GROUNDS 1-3. ............72
`X. THERE
`ARE
`NO
`OBJECTIVE
`INDICIA
`INDICATING
`NONOBVIOUSNESS .............................................................................................74
`CONCLUSION ........................................................................................................74
`
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`Patent No. 9,293,922
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`EXHIBIT LIST
`
`Exhibit Name
`Ex. #
`1001 U.S. Patent No. 9,293,922
`1002 Declaration of Dr. Richard E. Brown, P.E.
`1003 U.S. Patent No. 5,402,057 to D’Aquila
`1004 Electric Utility Engineering Reference Book:
`Volume 3: Distribution Systems
`1005 Static Var Compensation Models for Power Flow
`and Dynamic Performance Simulation, 9 IEEE
`Transactions on Power Systems 229, 1994
`1006 NoMAX Instruction manual 900 Series Switched
`Capacitor Controls ©2007
`1007 Declaration of Christopher Butler of Internet
`Archive regarding NoMAX
`1008 Declaration of Kimberly A. Bengson of HD
`Electric Company regarding NoMAX
`1009 District Court Complaint
`1010 District Court PI memorandum opinion
`1011 Joint Proposed Claim Constructions
`1012 Patent Owner Markman Brief
`1013 Excerpted File History of U.S. Patent No.
`9,014,867 (App. No. 13/488,330)
`1014 Excerpted File History of U.S. Patent No.
`9,293,922 (App. No. 14/659,480)
`1015 U.S. Patent No. 9,014,867
`1016
`
`1017
`
`1018
`
`1019
`
`
`Identifier
`the ’922 patent
`Brown
`D’Aquila
`the Green Book or
`GB
`IEEE SVC
`
`NoMAX
`
`Butler
`
`Bengson
`
`Complaint
`PI Decision
`Proposed CC
`PO Markman
`the ’867 file history
`
`the ’922 file history
`
`the ’867 patent
`
`-v-
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A.
`
`Real Party-In-Interest
`
`Petitioner certifies that Gridco, Inc. (“Petitioner”) is the real party-in-
`
`interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
` Petitioner is aware of one related judicial matter:
`
`Varentec, Inc. v. Gridco, Inc., Case No. 1:16-cv-00217 filed on April 1,
`
`2016 in the District of Delaware. The ’922 patent—along with two others—is
`
`being asserted against Gridco in this proceeding. The two other patents, U.S.
`
`Patent Nos. 9,014,867 and 9,104,184, are in the same patent family.
`
`In addition, Gridco files today a petition for inter partes review challenging
`
`claims in the ’867 patent.
`
`C.
`
` Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Gridco appoints William G. Jenks (Reg. No. 48,818) of Jenks IP Law as lead
`
`counsel, and appoints Victor B. Lebovici (Reg. No. 30,864) of Preti Flaherty as
`
`back-up counsel. An appropriate Power of Attorney is filed herewith.
`
`In addition, Gridco intends to seek the admission of Jeffrey Talbert as
`
`additional back-up counsel pro hac vice under 37 C.F.R. § 42.10(c). Mr. Talbert is
`
`an experienced litigating attorney and is familiar with the subject matter at issue as
`
`he is lead counsel in the related litigation.
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of any documents to lead and back-up counsel can be made to Jenks
`
`IP Law, 1050 17th ST NW, Suite 800, Washington DC, and PretiFlaherty, 60 State
`
`Street, Suite 1100, Boston, MA 02109.
`
`Petitioner consents to service by email at wjenks@jenksiplaw.com,
`
`vlebovici@preti.com, and patents@preti.com.
`
`II.
`
`INTER PARTES REVIEW FEE UNDER 37 C.F.R. § 42.103
`The inter partes review fee set forth in § 42.15(a) accompanies this petition.
`
`The undersigned authorizes the Office to charge or credit Petitioner’s
`
`Deposit Account No. 23-0804 for any additional required fees or overpayments,
`
`respectively.
`
`III. CONTENTS OF PETITION UNDER 37 C.F.R. § 42.104
`
`Grounds For Standing: 37 C.F.R. § 42.104(a)
`A.
`Petitioner certifies that the ’922 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the claims of the ’922 Patent on the grounds identified in this petition.
`
`B.
`
`Challenged Claims
`
`Petitioner requests IPR of claims 1-3, 8-10, and 15-16 of the ’922 patent.
`
`C.
`
`Grounds Of Challenge: 37 C.F.R. § 42.104(b)
`
`Petitioner relies on the following prior art:
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`(i)
`
`D’Aquila—Exhibit 1003—U.S. Patent No. 5,402,057 issued Mar. 28,
`
`1995 and is prior art under 35 U.S.C. § 102(b).
`
`(ii)
`
`The Green Book—Exhibit 1004—Electric Utility Engineering
`
`Reference Book, Distribution Systems, Westinghouse Electric
`
`Corporation. This well-known manual was printed in 1965 and is prior
`
`art under Section 102(b).
`
`(iii)
`
`IEEE SVC—Exhibit 1005—Static Var Compensation Models for Power
`
`Flow and Dynamic Performance Simulation, 9 IEEE Transactions on
`
`Power Systems 229-240 (1994), was printed in February 1994 and is
`
`prior art under Section 102(b).
`
`(iv) NoMAX—Exhibit 1006—NoMAX® Instruction Manual 900 SERIES
`
`Switched Capacitor Controls was distributed to the relevant population
`
`and made publically available by the HD Electric Company during 2007.
`
`Exhibit 1008, Bengson ¶¶2-6. It was also published on that company’s
`
`website during 2007. Exhibit 1007, Butler ¶¶3-6, Exhibit A. It is
`
`therefore prior art under Section 102(b).
`
`Petitioner requests cancellation of the challenged claims on the following
`
`grounds:
`
`Ground Claims
`1A
`1-2, 8-10, and 15-
`16
`
`Basis
`§ 103
`
`References
`D’Aquila and the Green Book
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`Ground Claims
`1B
`3
`
`2A
`2B
`
`3A
`3B
`
`1-2, 8-10, 15-16
`3
`
`1-2, 8-10, 15-16
`3
`
`Basis
`§ 103
`
`§ 103
`§ 103
`
`§ 103
`§ 103
`
`References
`D’Aquila, the Green Book, and IEEE
`SVC
`The Green Book and NoMAX
`The Green Book, NoMAX, and IEEE
`SVC.
`D’Aquila and NoMAX
`D’Aquila, NoMAX, and IEEE SVC
`
`IV. OVERVIEW OF THE ’922 PATENT, EXHIBIT 1001
`
`The application that issued as the ’922 patent was filed March 16, 2015. It
`
`claimed priority to the ’867 patent and five provisional applications the earliest of
`
`which was filed on Sept. 16, 2011. Exhibit 1001, ’922 patent, Col. 1:8-25. There
`
`are multiple patents and pending applications in the ’922 patent, family including
`
`the ’867 and ’184 patents, which have been asserted in the related litigation.
`
`A.
`
`Purported Invention in the ’922 patent
`
`The ’922 patent generally addresses voltage regulation on a power
`
`distribution network. It characterizes the purported invention as “edge of network
`
`voltage control of a power grid.” Exhibit 1001, ’922 patent, Abstract. It discloses
`
`volt-ampere reactive (“VAR”) sources (essentially a combination of switch,
`
`capacitor, and control processor) that may be placed near loads that receive power
`
`on the grid. Voltage regulation is accomplished by switching the capacitor into the
`
`circuit when higher voltage is desired and switching the capacitor out of the circuit
`
`when lower voltage is desired. Exhibit 1001, ’922 patent, Col. 3:1-12. The VAR
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`Patent No. 9,293,922
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`sources may each activate or deactivate their capacitors “based at least on voltages
`
`proximate to the VAR sources.” Exhibit 1001, ’922 patent, Col. 6:57-61.
`
`B.
`
`Independent Claim 1
`
`Independent claim 1 recites a “system” that includes a “distribution power
`
`network,” “loads,” and “shunt-connected switch-controlled VAR sources,” which
`
`VAR sources include a processor and a VAR compensation component, e.g. a
`
`capacitor. Claim 1 requires (1) loads “at an edge of the distribution power
`
`network” (2) VAR sources “at or near the edge of the distribution power network,”
`
`and (3) the processor being configured to determine after a delay whether to enable
`
`the VAR compensation component and adjust network VAR by controlling “a
`
`switch to enable the corresponding VAR compensation component.”
`
`Claim 1 also requires that the delay extend for a predetermined length of
`
`time and that the VAR sources have different delays.
`
`C.
`
`Prosecution History of the ’922 patent line
`
`1.
`
`Prosecution history of the ’867 patent, Exhibit 1013
`
`The ’922, Exhibit 1001, is a continuation of the ’867 patent, Exhibit 1015.
`
`Prior to issuance of the ’867 patent, its independent claims stood rejected in view
`
`of D’Aquila alone. Exhibit 1013 at 195-197. Patent Owner amended the
`
`independent claims by, among other things, adding that the relevant delay(s)
`
`extend “for a predetermined length of time.” Exhibit 1013 at 249-251. An
`
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`Patent No. 9,293,922
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`
`interview followed, in which the Patent Owner agreed to incorporate the
`
`“different-delay” limitations of then-dependent claims into the challenged
`
`independent claims. Exhibit 1013 at 268. The Examiner allowed these claims,
`
`explaining that D’Aquila taught every element of the claims except the different
`
`delays:
`
`Referring to claim 1, none of D’Aquila, Folts, or Shapiro, taken
`either alone or in obvious combination disclose a system,
`having all the claimed features of applicant’s instant invention,
`specifically including “wherein the delay of each of the
`plurality of shunt-connected, switch-controlled VAR sources is
`not equal.”
`
`Exhibit 1013 at 283-84 (same for present-claims 3 and 17.)
`
`2.
`
`Prosecution history of the ’922 patent, Exhibit 1014
`
`Prosecution of the ’922 patent was almost identical. Claim 1 was rejected as
`
`anticipated by D’Aquila. Exhibit 1014 at 80-81. Patent Owner amended claim 1
`
`by, among other things, adding that the relevant delay(s) extend “for a
`
`predetermined length of time.” Exhibit 1014 at 95-96. The Examiner then rejected
`
`claim 1 as obvious, finding that D’Aquila contained every element except the
`
`predetermined delays, which was found in another reference. Exhibit 1014 at 108-
`
`1014. Patent Owner then amended claim 1 to indicate that the delays associated
`
`with each VAR source were not equal. Exhibit 1014 at 126-127. The Examiner
`
`then allowed the claims, without apparently attaching a statement of reasons for
`
`allowance. Exhibit 1014 at 137 (relevant box unchecked).
`
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`Patent No. 9,293,922
`Petition For Inter Partes Review
`
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`
`Claims in an IPR are given their broadest reasonable construction. 37
`
`C.F.R. § 42.100(b). In the related litigation, the parties have exchanged proposed
`
`claim constructions but briefing is not yet complete. Exhibits 1011-1012. The
`
`District Court has denied Patent Owner’s preliminary injunction motion, and in
`
`doing so set forth a preliminary understanding of certain terms. Exhibit 1010.
`
`Petitioner proposes the following constructions for the purposes of this IPR
`
`only, reserving the right to argue a narrower or no construction in the District
`
`Court.
`
`A.
`
`“at or near the edge of the distribution power network”
`
`All challenged independent claims recite “loads at an edge of the distribution
`
`power network” and/or VAR “sources at or near the edge of the distribution power
`
`network.” Thus, understanding the scope of the claims requires understanding the
`
`meaning of “an edge” of the distribution network. And further what it means to be
`
`“at or near” that edge.
`
`1.
`
`“at an edge of the distribution power network”
`
`As shown below, “at an edge of the distribution power network” should be
`
`understood to mean “on that portion of the distribution power network that is close
`
`to the load that is to receive power, which portion may be on a medium voltage
`
`portion or a low voltage portion of a distribution feeder.” One of skill would
`
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`Patent No. 9,293,922
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`
`understand that the medium voltage portion of a distribution feeder would typically
`
`be at 1,000 to 35,000 volts; while the low voltage portion would typically be at up
`
`to 1,000 volts. Brown, Exhibit 1002 ¶27.
`
`The specification defines “an edge of the network” in terms of proximity to a
`
`load:
`
`An edge of the network is the portion of a power distribution
`network that is proximate the load that is to receive power.
`
`Exhibit 1001, ’922 patent, Col. 8:48-50. Thus, the edge is defined in relationship
`
`to the load that is to receive power. “In one example,” the specification states, “the
`
`load is a customer load.” Id., Col. 8:50-51.
`
`“Load” alone is broadly defined and does little to limit the scope of “an
`
`edge”:
`
`A load is any component, circuit, device, piece of equipment or
`system on the power distribution network which consumes,
`dissipates, radiates or otherwise utilizes power.
`
`Exhibit 1001,’922 patent, Col. 8:40-43. Thus, every physical component of the
`
`network is a load. Power lines, for example, dissipate and radiate power.
`
`In the figures,“[l]oads are depicted as houses or residences.” Id., Col. 8:36-
`
`37. But loads may be commercial or industrial establishments:
`
`In addition to houses or residences, those skilled in the art will
`appreciate that the loads can be any loads including but not
`limited to, commercial or industrial establishments.
`
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`Id., Col. 8:37-40. Thus the loads contemplated include residential, commercial,
`
`and industrial loads regardless of the amount of power or voltage required by the
`
`load. Id., Col. 8:36-40.
`
`The ’922 patent’s specification further states that: “An edge of the network
`
`may be on the low-voltage side of a transformer. For example, the edge of the
`
`network may comprise one or more feeder lines configured to provide power to
`
`multiple customer loads (e.g. housing residences).” Exhibit 1001, Col. 8:51-54.
`
`Under the broadest reasonable interpretation, the repeated use of the permissive
`
`“may” indicates that the “edge” referenced in all independent claims need not be
`
`on the secondary (low voltage) feeder. The ’922 specification further states that
`
`VAR sources “may be coupled to any line or feeder configured to provide power to
`
`one or more loads (e.g., on or at the edge of a network).” Thus, the “edge” might
`
`also be on the primary (medium voltage) feeder, i.e., the low voltage side of a
`
`substation transformer—so long as the edge is proximate a load that receives
`
`power.
`
`Thus, in this proceeding “an edge of the distribution power network” is best
`
`understood as “that portion of the distribution power network that is near a load
`
`that receives power.”
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`Patent No. 9,293,922
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`
`Having defined “an edge,” what does it mean to be “at an edge of a power
`
`distribution network?” One example of “at the edge of the network” is “near a
`
`load of the power grid.” Id., Col. 16:24-26.
`
`The patent provides an example where the VAR source may be coupled to
`
`the low voltage side of a service transformer. Id., Col. 10:1-3. But that is not
`
`limiting. Another example, noted above, states that a VAR source which “may be
`
`coupled to any line or feeder configured to provide power to one or more loads
`
`(e.g., on or at the edge of a network).”). Id., Col. 10:3-6. Thus, being “at an edge”
`
`allows for coupling to “any” line/feeder that powers one or more loads, including
`
`medium voltage and low voltage feeders.
`
`The claims themselves make clear that “at an edge” is not limited to the
`
`secondary or low voltage side of a service transformer. While claim 1 recites a
`
`plurality of VAR “sources at the edge of the distribution power network,” claim 8
`
`is more specific. Claim 8 recites “at least two of the VAR sources are on a low
`
`voltage side of a transformer.” Under the doctrine of claim differentiation, claim 1
`
`is understood to be broader than claim 8. Thus, claim 1 does not require any VAR
`
`sources be on a low voltage side of any transformer. Instead, claim 1 may be met
`
`by VAR sources on the high voltage side of a transformer. In other words, “at an
`
`edge” may include a portion of the power distribution network on either side (high
`
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`Patent No. 9,293,922
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`
`or low voltage) of a transformer so long as the transformer is near a load that is to
`
`receive power.
`
`Combining this evidence, in this proceeding, “at an edge of the distribution
`
`power network” is best understood as “on that portion of the distribution power
`
`network that is close to the load that is to receive power, which portion may be on
`
`a medium voltage portion or a low voltage portion of a distribution feeder.” A
`
`POSA understands that the medium voltage portion of a distribution feeder would
`
`typically be at 1,000 to 35,000 volts; while the low voltage portion would typically
`
`be at up to 1,000 volts. Brown, Exhibit 1002 ¶27.
`
`This construction excludes the high voltage transmission lines on the high
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`voltage side of a substation but does not exclude the primary (medium voltage) or
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`secondary (low voltage) feeders that deliver power to loads. It does not exclude
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`loads that require higher levels of power and voltage—such as a factory or
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`industrial plants—even when that voltage is higher than the voltage supplied to
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`most homes by secondary feeders.
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`“at or near the edge of a power distribution network”
`2.
`Having defined “at an edge,” what does it mean to be “at or near an edge of
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`a power distribution network?” The ’922 patent’s specification summary uses “at
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`or near an edge” in paragraphs that appear to mimic claim language. See, e.g.,
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`Exhibit 1001, Col. 2:26-42.
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`This includes the Examiner, who initially rejected the claims because the
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`“[t]he term ‘near’ in claims 1-17 is a relative term which renders the claims
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`indefinite.” Exhibit 1014 at 79. The specification did not provide a standard for
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`“ascertaining the requisite degree” disclosed and “one of skill in the art would not
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`be reasonably apprised of the scope.” Id.
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`Patent Owner responded by arguing that “‘near the edge’ describes a well-
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`defined location in the power grid.” Exhibit 1014 at 99-100. “For example,”
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`Patent Owner continued, Figures 3A and 3B shows that “VAR sources 310a-e are
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`near the edge of the … distribution power network.” Id. “That is, VAR sources
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`310a-e are not at the edge, but instead are closer to the edge than they are to the
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`substation 302, and are located between service transformers 308a-e and the
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`edge.” Id.(emphasis added). The Examiner initially did not accept this argument,
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`id. at 107, but Patent Owner renewed it after final, id. at 131-32, renewing its prior
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`argument and citing case law. Petitioner agrees that “at or near the edge” means
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`“closer to the edge than [ ] to the substation” but for the reasons discussed above,
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`“at or near” the edge is not limited to any particular feeder referenced in the
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`examples shown in the drawings.
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`Thus, the file history shows that the Patent Owner provided a standard
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`during prosecution for understanding “near the edge of the distribution power
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`network” it is “that portion of the power distribution network that is closer to the
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`edge than to the substation.” Incorporating this into the meaning of at the edge
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`given above renders a definition of “at or near the edge of a power distribution
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`network.” It means:
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`“on that portion of the power distribution network that is closer to the load
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`that is to receive power than to the substation serving that load, which portion may
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`be on a medium voltage portion or low voltage portion of a distribution feeder.”
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`Further, one of skill would understand that the medium voltage portion of a
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`distribution feeder would typically be at 1,000 to 35,000 volts; while the low
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`voltage portion would typically be at up to 1,000 volts. Brown, Exhibit 1002 ¶27.
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`B.
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` “non-continuously monitor the proximate voltage”
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`In the related litigation, Patent Owner argues that the term “non-
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`continuously monitor the proximate voltage,” which appears in the independent
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`claims, be construed as “waiting for a delay and then evaluating the proximate
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`voltage to determine, after the delay, whether to enable a VAR compensation
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`component based on the proximate voltage.” Exhibit 1011 at 8.
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`Petitioner proposes, under BRI, for this proceeding only, that “non-
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`continuously monitor the proximate voltage,” be construed as proposed by Patent
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`Owner. Id.
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`VI. TECHNOLOGY AT ISSUE
`
`A.
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`Power Distribution Networks
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`Electric power systems may be thought of as including generating,
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`transmission, and distribution systems. Exhibit 1004 at 9. Figure 1, Green Book
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`page 1, is “an academic but accurate pictorial of the power system,” which
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`includes a generating plant, a transmission system, and the “component parts of the
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`distribution system.” Exhibit 1004 at 9. Those components include the bulk
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`power substation, the subtransmission system, the distribution substation, primary
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`feeder circuits, distribution transformers and secondary/service lines. Id.
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`B.
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`Voltage regulation on Power Distribution Networks
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`Power is delivered to loads throughout the power distribution network.
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`Power delivery may take place at different voltages depending on the requirements
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`of the loads that receive the power. Customers on a portion of the distribution
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`network may experience voltage drop—a difference between the voltage at the
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`transmitting and receiving ends of a feeder main or service. Exhibit 1004 at 255.
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`One illustration of voltage drop is shown in figure 18.
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`Exhibit 1004 at 270. Figure 18(a) shows that, particularly under heavy load,
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`the voltage provided consumers along a primary feeder drops as the distance from
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`the substation increases. Id. Such voltage drop may be harmful to equipment or
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`consumer appliances. It may also require higher than ideal voltages near the
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`substation. Therefore, system voltage regulation—“maintaining the voltage at the
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`consumer’s service entrance within permissible limits”—is needed in most power
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`networks. Exhibit 1004 at 255; Exhibit 1002 ¶¶29-33.
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`C.
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`Switched Capacitors
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`One method of voltage regulation uses switched shunt-connected capacitors
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`to increase or decrease voltage as needed. Exhibit 1004 at 270. Coupling a
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`capacitor in shunt with a load typically increases the voltage on a feeder and
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`disconnecting the capacitor typically decreases the voltage on the feeder. Exhibit
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`1002 ¶¶37-38.
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`Thus, for example, switched shunt-connected capacitors, as shown in Figure
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`18(c), are activated when the system is under heavy load (and the voltage would
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`drop below acceptable limits). The connection/disconnection of such capacitors
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`may be subject to various control methods, e.g. time, temperature, or voltage
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`control. Exhibit 1004 at 332. Voltage control has “the advantage of initiating a
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`switching operation only when the circuit voltage conditions request an operation.”
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`Exhibit 1004 at 333.
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`D.
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`Infighting
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`If multiple switched shunt capacitors are connected to a feeder at the same
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`time, it is possible that the combined introduction of two or more capacitors may
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`cause the feeder voltage to rise from below a lower threshold voltage to above an
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`upper threshold voltage. Exhibit 1002 ¶38. If two capacitors are disconnected
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`concurrently upon detection of a proximate voltage above the upper threshold, it
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`may cause the voltage to undesirably decrease from above the upper threshold
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`voltage to below the lower threshold voltage. Without coordination, such
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`undesired switching may result in unnecessary operations moving the system
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`voltage repetitively above and below the desired voltage. This condition is
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`variously referred to as hunting, pumping or infighting. Id.
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`VII. LEVEL OF SKILL AND KNOWLEDGE IN THE ART
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`The level of ordinary skill in the art is evidenced by the references. Here, a
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`person of ordinary skill in the art (“POSA”) would have either (1) a graduate
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`degree in electrical engineering with 5 years of experience in the design and
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`implementation of voltage regulation systems and methods on distribution power
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`grids, or (2) a bachel