Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Entered: October 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRIDCO, INC.,
`Petitioner,
`
`v.
`
`VARENTEC, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01134
`Patent 9,293,922 B2
`____________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`Paper 7
`Entered: October 2, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GRIDCO, INC.,
`Petitioner,
`
`v.
`
`VARENTEC, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01134
`Patent 9,293,922 B2
`____________
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`FREDERICK C. LANEY, Administrative Patent Judges.
`
`LANEY, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`Petitioner Gridco, Inc. filed a Petition (Paper 2, “Pet.”) requesting
`
`inter partes review of claims 1–3, 8–10, 15, and 16 of U.S. Patent
`
`No. 9,293,922 B2 (Ex. 1001, “the ’922 patent”) pursuant to 35 U.S.C.
`
`§ 311(a). Patent Owner Varentec, Inc. filed a Preliminary Response
`
`(Paper 6, “Prelim. Resp.”) pursuant to 35 U.S.C. § 313. Pursuant to
`
`35 U.S.C. § 314(a), the Director may not authorize an inter partes review
`
`unless the information in the petition and preliminary response “shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” For the reasons that
`
`follow, we have decided not to institute an inter partes review.
`
`
`
`I. BACKGROUND
`
`A. The ’922 Patent1
`
`The ’922 patent relates to the optimization of a power distribution grid
`
`network. Ex. 1001, 1:30–31. The ’922 patent addresses new requirements
`
`for regulating (i.e., controlling) line voltage that were being “driven by
`
`distribution renewable energy penetration and the need to increase grid
`
`capacity without building new lines or infrastructure.” Id. at 5:37–40.
`
`Generally, to address these regulation concerns, the Specification describes
`
`“[s]ystems and methods for an edge of network voltage control of a power
`
`grid.” Id. at 2:26–27.
`
`A volt-ampere reactive (“VAR”) device is placed near loads that
`
`receive power on the grid to individually regulate the line voltage to quickly
`
`
`1 Case IPR2017-01135 involves the same parties and another patent,
`U.S. Patent No. 9,014,867 B2, in the same family as the ’922 patent. See
`Pet. 1.
`
`
`
`2
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`and independently react to events or changes along the power grid and avoid
`
`centralized control, wherein centralized control requires knowledge of a
`
`complete state of the grid, including all variables that affect load and input.
`
`Id. at 7:45–56. Multiple VAR devices are “deployed along the length of a
`
`typical distribution feeder to flatten the required voltage and respond to
`
`network conditions.” Id. at 9:25–28.
`
`The Specification describes the VAR device as including a processor
`
`configured to control a relay and semiconductor switch that enables or
`
`disables a capacitor based on the line voltage. Id. at 9:49–57. The VAR
`
`processor provides the additional ability to control the switching of the VAR
`
`device in a manner that prevents “fighting” between multiple VAR devices.
`
`Id. at 5:67–6:3. Infighting results from the VAR devices constantly
`
`correcting and re-correcting the line voltage. Id. at 19:51–53. To avoid this
`
`infighting, the VAR processor is configured to control the timing of the
`
`switching (or the point at which VAR compensation is engaged/disengaged)
`
`to ensure it is different between the various VAR devices. Id. at 6:52–56.
`
`The Specification states that the disclosed regulation scheme results in
`
`flattening the overall voltage range along the distance from the substation,
`
`“thereby saving energy, increasing responsiveness, and improving overall
`
`control along longer distribution feeders[, as well as avoiding infighting].”
`
`Id. at 6:48–52.
`
`
`
`
`
`B. Illustrative Claim
`
`Claim 1 of the ’922 patent recites:
`
`1. A system comprising:
`
`a distribution power network;
`
`3
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`a plurality of loads at an edge of the distribution power
`network, each load configured to receive power from the
`distribution power network; and
`
`a plurality of shunt-connected, switch-controlled Volt-
`Ampere Reactive (“VAR”) sources, wherein each VAR source
`is located at or near the edge of the distribution power network,
`is configured to non-continuously monitor and detect a
`proximate voltage at or near the edge of the distribution power
`network, and comprises a processor and a VAR compensation
`component, the processor configured to enable the VAR source
`to determine, after a delay, whether to enable the VAR
`compensation component based on the proximate voltage and
`adjust network volt-ampere reactive by controlling a switch to
`enable the VAR compensation component based on the
`determination;
`
`wherein the delay associated with each VAR source
`extends for a predetermined length of time that is not equal to
`the delay associated with any other of the plurality of VAR
`sources.
`
`
`
`C. The Prior Art
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 5,402,057, issued Mar. 28, 1995
`(Ex. 1003, “D’Aquila”);
`
`ELECTRIC UTILITY ENGINEERING REFERENCE BOOK,
`VOLUME 3: DISTRIBUTION SYSTEMS, Westinghouse Electric
`Corporation (1965) (Ex. 1004, “Green Book”);
`
`Static Var Compensator Models for Power Flow and
`Dynamic Performance Simulation, 9 IEEE Transactions on
`Power Systems 229–240 (Feb. 1994) (Ex. 1005, “IEEE SVC”);
`and
`
`NOMAX INSTRUCTION MANUAL 900 SERIES SWITCHED
`CAPACITOR CONTROLS, HD Electric Company (2007) (Ex.
`1006, “NoMAX”).
`
`
`
`
`
`4
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`D. The Asserted Ground
`
`Petitioner challenges claims 1–3, 8–10, 15, and 16 of the ’922 patent
`
`on the following grounds:
`
`References
`
`Basis
`
`Claim(s)
`Challenged
`
`D’Aquila and the Green Book
`
`35 U.S.C. §
`103(a)2
`
`1, 2, 8–10, 15,
`and 16
`
`D’Aquila, the Green Book, and
`IEEE SVC
`
`35 U.S.C. §
`103(a)
`
`3
`
`The Green Book and NoMAX
`
`35 U.S.C. §
`103(a)
`
`1, 2, 8–10, 15,
`and 16
`
`The Green Book, NoMAX, and
`IEEE SVC
`
`35 U.S.C. §
`103(a)
`
`3
`
`D’Aquila and NoMAX
`
`D’Aquila, NoMAX, and IEEE
`SVC
`
`35 U.S.C. §
`103(a)
`
`35 U.S.C. §
`103(a)
`
`1, 2, 8–10, 15,
`and 16
`
`3
`
`
`
`E. Claim Interpretation
`
`The Board interprets claims in an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[they] appear[].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`
`reasonable interpretation standard).
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’922 patent are presumptively entitled to at least the filing date of the
`’922 patent, which is before the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of 35 U.S.C. § 103.
`
`
`
`5
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`Independent claim 1 recites a plurality of shunt-connected, switch-
`
`controlled VAR sources, each VAR source configured to “non-continuously
`
`monitor and detect a proximate voltage at or near the edge of the distribution
`
`power network” and comprising a processor and a VAR compensation
`
`component, “the processor configured to enable the VAR source to
`
`determine, after a delay, whether to enable the VAR compensation
`
`component based on the proximate voltage” (emphasis added).
`
`Petitioner argues that “non-continuously monitor and detect a
`
`proximate voltage” should be “construed as proposed by Patent Owner” in
`
`the related litigation. Pet. 13; see Ex. 1011, 5; Ex. 1012, 10–11 (Patent
`
`Owner’s claim construction brief). Patent Owner does not address the
`
`construction of the phrase in its Preliminary Response. In the related
`
`litigation, “[t]he parties agreed” to the district court’s construction of
`
`“non-continuously monitor [and detect a] proximate voltage”: “[w]aiting for
`
`a delay and then evaluating the proximate voltage to determine, after the
`
`delay, whether to enable a VAR compensation component based on the
`
`proximate voltage but not evaluating the proximate voltage during the delay
`
`to determine whether to enable a VAR compensation component.”
`
`Varentec, Inc. v. Gridco, Inc., No. 16-217-RGA, 2017 WL 3731243, at *6–7
`
`(D. Del. Aug. 30, 2017). Considering the claims, Specification, and
`
`prosecution history, we are persuaded that this construction is the broadest
`
`reasonable interpretation in light of the Specification, and adopt it for
`
`purposes of this Decision. We further conclude that only “non-continuously
`
`monitor and detect a proximate voltage” requires interpretation for purposes
`
`of this Decision.
`
`
`
`
`
`6
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`II. DISCUSSION
`
`
`
`Patent Owner challenges the sufficiency of Petitioner’s showing as to
`
`how the asserted prior art teaches a shunt-connected, switch-controlled VAR
`
`source configured to “non-continuously monitor and detect a proximate
`
`voltage,” as recited in independent claim 1. In particular, Patent Owner
`
`contends “[t]he ‘922 Patent claims non-continuous monitoring of proximate
`
`voltage prior to enabling a VAR source whereas the Cited References teach
`
`continuous monitoring of voltage.” Prelim. Resp. 24 (emphasis omitted).
`
`Because we find this issue dispositive, we need not reach Patent Owner’s
`
`other arguments. For the following reasons, we find Petitioner’s proof
`
`deficient in demonstrating the prior art discloses a switch-controlled VAR
`
`source configured to “non-continuously monitor and detect a proximate
`
`voltage” when determining whether to enable the corresponding VAR
`
`compensation component.
`
`Obviousness Grounds Based on D’Aquila and the Green Book
`A.
`(Claims 1, 2, 8–10, 15, and 16) and D’Aquila, the Green Book, and IEEE
`SVC (Claim 3)
`
`Petitioner asserts that claims 1, 2, 8–10, 15, and 16 are unpatentable
`
`over D’Aquila and the Green Book, and dependent claim 3 is unpatentable
`
`over D’Aquila, the Green Book, and IEEE SVC, under 35 U.S.C. § 103(a),
`
`citing the testimony of Richard Brown, Ph.D., P.E., as support. Pet. 18–36
`
`(citing Ex. 1002). With respect to these grounds, Petitioner argues that
`
`D’Aquila “teaches the use of time delays to avoid hunting . . . but does not
`
`detail the particular mechanism of the delay to be associated with each
`
`capacitor.” Id. at 24 (citation omitted). Petitioner, therefore, relies on the
`
`Green Book, arguing that “[t]he Green Book . . . provides the detailed
`
`mechanism for delays that avoid hunting including waiting for a delay and
`
`
`
`7
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`determining, after the delay, whether to enable a VAR compensation
`
`component. . . . Hence the Green Book satisfies the non-continuously
`
`monitoring portion [of the claims].” Id. at 24, 27–29 (citing Ex. 1002 ¶¶ 78–
`
`81). As support, Petitioner refers to a teaching about “Switched Capacitor
`
`Controls” in the Green Book that explains with “Voltage Control[,] a time
`
`delay is also required between the time when an operation is called for and
`
`when the switching operation actually takes place, to prevent unnecessary
`
`switching due to momentary disturbances.” Id. at 27–28 (quoting Ex. 1004,
`
`294). To illustrate this point, Petitioner directs us to Figure 55 (chapter 7) in
`
`the Green Book, reproduced below. Id. at 28.
`
`
`
`Figure 55 above shows a voltage-time profile of a voltage regulator,
`
`including the effect of a regulator time delay. Ex. 1004, 294. Petitioner
`
`asserts this figure shows when the voltage either exceeds the upper threshold
`
`or falls below the lower threshold, the voltage regulator operation does not
`
`immediately begin, but instead delays operation for a period of time before it
`
`
`
`8
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`takes corrective action after determining the voltage remains outside the
`
`respective threshold. Pet. 28–29 (citing Ex. 1002 ¶ 83).
`
`
`
`Petitioner’s evidence supports a finding that the Green Book discloses
`
`configuring a voltage regulator to have a time delay between an initial
`
`determination of an out-of-threshold-voltage condition and a subsequent out-
`
`of-threshold-voltage condition before taking corrective action. This fact,
`
`however, begs the question at hand: namely, whether it was known to
`
`configure a voltage regulator to not evaluate the proximate voltage during
`
`the time delay.
`
`As explained above regarding the interpretation of the non-continuous
`
`monitoring limitation, the parties agree that during the period of delay, the
`
`claimed VAR source must “wait[]”—i.e., there is no processing of the
`
`proximate voltage for the purpose of determining whether to enable the
`
`compensation component. See supra Section I.E. Only after “waiting”
`
`during the delay period does the claimed processor return to evaluating the
`
`proximate voltage to determine whether to enable a VAR compensation
`
`component. Although the Green Book clearly shows a regulator delaying
`
`corrective action after the initial out-of-threshold-voltage condition occurs,
`
`Petitioner fails to identify any evidence that suggests the voltage regulator,
`
`during the delay, also stops monitoring the proximate voltage to determine
`
`whether to enable the voltage regulator. As a result, we find Petitioner has
`
`not carried its burden of showing that the Green Book, alone or in
`
`combination with D’Aquila, discloses a switch-controlled VAR source
`
`configured to “non-continuously monitor and detect a proximate voltage,” as
`
`recited in independent claim 1.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`Obviousness Grounds Based on the Green Book and NoMAX
`B.
`(Claims 1, 2, 8–10, 15, and 16) and the Green Book, NoMAX, and IEEE
`SVC (Claim 3)
`
`Petitioner asserts that claims 1, 2, 8–10, 15, and 16 are unpatentable
`
`over the Green Book and NoMAX, and dependent claim 3 is unpatentable
`
`over the Green Book, NoMAX, and IEEE SVC, under 35 U.S.C. § 103(a),
`
`again citing the testimony of Dr. Brown. Pet. 36–61 (citing Ex. 1002). With
`
`respect to these grounds, Petitioner repeats its argument that the Green Book
`
`discloses a VAR source configured to “non-continuously monitor and detect
`
`a proximate voltage.” Pet. 43 (citing Ex. 1002 ¶¶ 130–36). For the reasons
`
`discussed above, we are unpersuaded Petitioner has carried its burden of
`
`showing that the Green Book discloses a switch-controlled VAR source
`
`configured to “non-continuously monitor and detect a proximate voltage,” as
`
`recited in independent claim 1.
`
`
`
`
`
`C. Obviousness Grounds Based on D’Aquila and NoMAX
`(Claims 1, 2, 8–10, 15, and 16) and D’Aquila, NoMAX, and IEEE SVC
`(Claim 3)
`
`Petitioner asserts that claims 1, 2, 8–10, 15, and 16 are unpatentable
`
`over D’Aquila and NoMAX, and claim 3 is unpatentable over D’Aquila,
`
`NoMAX, and IEEE SVC, under 35 U.S.C. § 103(a), again citing the
`
`testimony of Dr. Brown. Pet. 61–72 (citing Ex. 1002). With respect to these
`
`grounds, Petitioner makes the argument that NoMAX discloses a VAR
`
`source configured to “non-continuously monitor and detect a proximate
`
`voltage.” Id. at 62–63 (citing Ex. 1002 ¶ 176; Ex. 1006, 4, 14, 15). To
`
`support this conclusion, Petitioner describes the operation of the NoMAX
`
`processor as follows:
`
`NoMAX . . . teaches waiting for a delay and then evaluating the
`proximate voltage to determine, after the delay, whether to
`
`
`
`10
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`the
`enable a VAR compensation component based on
`proximate voltage. . . . The NoMAX processor provides a time
`delay between first sensing a voltage condition and evaluating
`and determining, after the delay, whether to enable or disable
`the capacitor bank that it controls. . . . In voltage operation,
`NoMAX has two set points, open volts and close volts, for
`disengaging and engaging the capacitor bank, respectively, after
`a preset delay.
`
`Id. at 63 (citing Ex. 1002 ¶ 176; Ex. 1006, 14, 15). Here again, however,
`
`Petitioner fails to identify any evidence indicating the NoMAX processor,
`
`during the delay, stops monitoring the proximate voltage to determine
`
`whether to enable the voltage regulator. To the contrary, Patent Owner
`
`identifies persuasive evidence suggesting the NoMAX processor
`
`continuously monitors the proximate voltage during the time delay. Prelim.
`
`Resp. 43–44 (citing Ex. 1006, 15). In particular, NoMAX teaches the
`
`processor will “automatically abort” switching on a capacitor bank if the
`
`voltage returns within the threshold limits for a predetermined amount of
`
`time and before the set time delay. Ex. 1006, 15.
`
`As a result, we find Petitioner also has not carried its burden of
`
`showing that NoMAX discloses a switch-controlled VAR source configured
`
`to “non-continuously monitor and detect a proximate voltage,” as recited in
`
`independent claim 1.
`
`
`
`III. CONCLUSION
`
`In view of the foregoing and because Petitioner has not shown
`
`sufficiently that the asserted prior art teaches a shunt-connected,
`
`switch-controlled VAR source configured to “non-continuously monitor and
`
`detect a proximate voltage,” as recited in independent claim 1, we conclude
`
`that Petitioner has not demonstrated a reasonable likelihood of prevailing
`
`
`
`11
`
`
`
`IPR2017-01134
`Patent 9,293,922 B2
`
`with respect to at least one claim of the ’922 patent challenged in the
`
`Petition. Therefore, we do not institute an inter partes review on any of the
`
`asserted grounds as to any of the challenged claims.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that the Petition is denied as to all challenged claims of
`
`the ’922 patent.
`
`
`PETITIONER:
`William G. Jenks
`JENKS IP LAW
`wjenks@jenksiplaw.com
`
`Victor B. Lebovici
`PRETY FLAHERTY
`vlebovici@preti.com
`
`
`PATENT OWNER:
`David E. Heisey
`Jesse A. Salen
`SHEPPARD MULLIN RICHTER &
`HAMPTON LLP
`dheisey@sheppardmullin.com
`jsalen@sheppardmullin.com
`
`
`
`12
`
`
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