Varentec, Inc. v. GridCo, Inc. et al

Filing 153

MEMORANDUM OPINION providing claim construction for multiple terms in U.S. Patent Nos. 9,014,867, 9,293,922, and 9,104,184. Within five days the parties shall submit a proposed order consistent with this Memorandum Opinion. Signed by Judge Richard G. Andrews on 8/30/2017. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

V ARENTEC, INC.,
Plaintiff,
v.

Civil Action No. 16-217-RGA

GRIDCO, INC.,
Defendant.

MEMORANDUM OPINION

Philip A. Rovner, David E. Moore, Alan R. Silverstein, POTTER ANDERSON & CORROON
LLP, Wilmington, DE; Stephen S. Korniczky, Michael Murphy, SHEPPARD MULLIN
RICHTER & HAMPTON LLP, San Diego, CA; Bruce G. Chapman, SHEPPARD MULLIN
RICHTER & HAMPTON LLP, Los Angeles, CA, Michael W. Scarborough, SHEPPARD
MULLIN RICHTER & HAMPTON LLP, San Francisco, CA.
Attorneys for Plaintiff.
Steven J. Balick, Andrew C. Mayo, ASHBEY & GEDDES, Wilmington, DE; Christopher C.
Campbell, Erik B. Milch, Stephen C. Crenshaw, COOLEY LLP, Reston, VA; Jeffrey D. Talbert,
PRETI FLAHERTY BELIVEAU & PACHIOS LLP, Portland, ME.
Attorneys for Defendant.

August

Jo, 201 7

~~~~~E:
Presently before me is the issue of claim construction of multiple terms in U.S. Patent
No. 9,014,867 (the ""867 patent"), U.S. Patent No. 9,293,922 (the "'922 patent"), and U.S.
Patent No. 9,104,184 (the "'184 patent"). I have considered the parties' Joint Claim
Construction Brief. (D.I. 146). I held oral argument on August 1, 2017. ("Tr.").

I.

LEGAL STAND ARD
"It is a bedrock principle of patent law that the claims of a patent define the invention to

which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en bane). '"[T]here is no magic formula or catechism for conducting claim
construction.' Instead, the court is free to attach the appropriate weight to appropriate sources
'in light of the statutes and policies that inform patent law."' Soft View LLC v. Apple Inc., 2013
WL 4758195, at *1 (D. Del. Sept. 4, 2013) (quoting Phillips, 415 F.3d at 1324) (alteration in
original). When construing patent claims, a court considers the literal language of the claim, the
patent specification, and the prosecution history. Markman v. Westview Instruments, Inc., 52
F.3d 967, 977-80 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370 (1996). Of these sources, "the
specification is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term." Phillips, 415 F .3d at
1315.
"[T]he words of a claim are generally given their ordinary and customary meaning ....
[Which is] the meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the effective filing date of the patent application."
Id. at 1312-13 (citations omitted). "[T]he ordinary meaning of a claim term is its meaning to

[an] ordinary artisan after reading the entire patent." Id. at 1321. "In some cases, the ordinary

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meaning of claim language as understood by a person of skill in the art may be readily apparent
even to lay judges, and claim construction in such cases involves little more than the application
of the widely accepted meaning of commonly understood words." Id. at 1314.
When a court relies solely upon the intrinsic evidence-the patent claims, the
specification, and the prosecution history-the court's construction is a determination oflaw.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). The court may also

make factual findings based upon consideration of extrinsic evidence, which "consists of all
evidence external to the patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips, 415 F.3d at 1317-19. Extrinsic evidence may assist
the court in understanding the underlying technology, the meaning of terms to one skilled in the
art, and how the invention works. Id. Extrinsic evidence, however, is less reliable and less
useful in claim construction than the patent and its prosecution history. Id.
"A claim construction is persuasive, not because it follows a certain rule, but because it
defines terms in the context of the whole patent." Renishaw PLC v. Marposs Societa 'per
Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). It follows that "a claim interpretation that would

exclude the inventor's device is rarely the correct interpretation." Osram GMBHv. Int'! Trade
Comm 'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation omitted).

II.

BACKGROUND
The parties agree that the following claims are representative. (D.I. 147, JA26).

Claim 1 of the '867 Patent

1. A system comprising:
a distribution power network;
a plurality of loads at an edge of the distribution power network, each of the plurality of
loads configured to receive power from the distribution power network; and

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a plurality of shunt-connected, switch-controlled Volt-Ampere Reactive ("VAR") sources
at the edge of the distribution power network, each of the plurality of shunt-connected,
switch-controlled VAR sources configured to detect a proximate voltage at the edge of
the distribution power network, each of the plurality of shunt-connected, switchcontrolled VAR sources comprising a processor and a VAR compensation component,
the processor configured to:
enable the corresponding shunt-connected, switch-controlled VAR source to noncontinuously monitor the proximate voltage by waiting for a delay and then evaluating
the proximate voltage to determine, after the delay, whether to enable the corresponding
VAR compensation component based on the proximate voltage; and
adjust network VAR by controlling a switch to enable the corresponding VAR
compensation component based on the determination;
wherein the delay extends for a predetermined length of time;
wherein the delay of each of the plurality of shunt-connected, switch-controlled
VAR sources is not equal.
Claim 15 of the '867 Patent

15. The system of claim 1, wherein the processor is further configured to detect an overvoltage
condition and disable the switch based on the detected overvoltage condition.
Claim 1 of the '922 Patent

1. A system comprising:
a distribution power network;
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;

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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 ofVAR
sources.
Claim 15 of the '922 Patent
15. The system of claim 1, wherein the processor is further configured to detect an overvoltage
condition and disable the switch based on the detected overvoltage condition.
Claim 1 of the '184 Patent
1. A system comprising:
a distribution power network;
a first switch-controlled VAR source coupled to the distribution power network, the first
switch-controlled VAR source comprising a processor, a voltage compensation
component, and a switch, the first switch-controlled VAR source configured to
obtain a first delay value that is different from another delay value of another switchcontrolled VAR source coupled to the distribution power network,
monitor a first proximate voltage of the distribution power network, the first proximate
voltage being proximate to the first switch-controlled VAR source,
initiate a first delay duration based on the comparison of the first proximate voltage to at
least one set point, the first delay duration being based on the first delay value,
determine, with the processor, after the first delay duration, whether to connect the
voltage compensation component based on the monitored voltage, the monitored voltage
being possibly changed by the other switch-controlled VAR source, and
control, based on the determination, the switch to connect the voltage compensation
component to adjust a network voltage or a network voltage component associated with
the distribution power network.

III.

AGREED UPON CONSTRUCTIONS
The parties have agreed, and I adopt, the following constructions. "Network voltage" in

the '184 patent is construed as, "A voltage of all or part of a distribution power network."
"Infighting" in the '867 and '922 patents is construed as, "Devices working at cross-purposes by

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overcompensating and undercompensating while reacting to conditions caused, at least in part,
by other devices." (D.1. 146 at p. 7).

IV.

TERMS FOR CONSTRUCTION

1. "edge of the distribution power network," "at an edge of the distribution power
network," and "at or near the edge of the distribution power network" (collectively, the
"edge terms") ('922 patent; '867 patent) 1
a. Plaintiff's proposed construction: The customer-facing side of the service transformer

b. Defendant's proposed construction:
For "edge of the distribution power network": 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 (e.g., 1,000 volts to 35,000 volts) portion or low voltage (e.g. up to 1,000
volts) portion of a distribution feeder
For "at an edge of the distribution power network": 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 (e.g., 1,000 volts to 35,000 volts) portion or a low voltage (e.g., up to
1,000 volts) portion of a distribution feeder
For "at or near the edge of the distribution power network": On that portion of the power
distribution network that is closer to the load that is to receive power than to the
substation serving that load, which portion may be on a medium voltage (e.g., 1,000 volts
to 35,000 volts) portion or a low voltage (e.g., up to 1,000 volts) portion of a distribution
feeder
c. Court's construction:
For "edge of the distribution power network": 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 (e.g., 1,000 volts to 35,000 volts) portion or low voltage (e.g., up to
1,000 volts) portion
For "at an edge of the distribution power network": 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 (e.g., 1,000 volts to 35,000 volts) portion or a low voltage (e.g., up to
1,000 volts) portion
F~r

"at or near the edge of the distribution power network": On that portion of the
distribution power network that is closer to the load that is to receive power than to the

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A joint list of the asserted claims associated with each term is found at D.I. 152.

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substation serving that load, which portion may be on a medium voltage (e.g., 1,000 volts
to 35,000 volts) portion or a low voltage (e.g., up to 1,000 volts) portion
I do not adopt Plaintiffs construction because it is too limiting. Nowhere in the patents
does the phrase "customer-facing side of the service transformer" appear. (See generally D.I.
135, JAl 2). The specification does not limit the edge to the customer side. A "power
distribution grid" is defined as "an electrical grid, such as an interconnected network, for
delivering electricity from suppliers to consumers." (D.I. 135, JAl, 8:33-35). The "edge of the
network" is defined as "the portion of a power distribution network that is proximate to the load
that is to receive power." (DJ. 135, JAl, 8:38-40). The term "load" is defined as "any
component, circuit, device, piece of equipment or system on the power distribution network
which consumes, dissipates, radiates or otherwise utilizes power." (D.I. 135, JAl, 8:30-33).
These are broad definitions of where the edge could be and what the load is. This language does
not limit the edge to the customer side. See Phillips, 415 F.3d at 1316 ("[O]ur cases recognize
that the specification may reveal a special definition given to a claim term by the patentee that
differs from the meaning it would otherwise possess. In such cases, the inventor's lexicography
governs.").
Plaintiff argues that every single embodiment in the specification places the VAR source
on the customer-facing side of the service transformer and thus the meaning of the edge and load
must be narrow. (D.I. 146 at p. 18). I have reviewed JAl at Figs. lb, le, and 3b, 2:61-64, 5:4648, 6:33-39, 8:38-44, 9:12-19, 9:59-10:1, 12:48-60, 16:13-17, 19:53-20:1, 22:43-44. I think
Plaintiffs argument is not enough to overcome the clear definitions of edge and load provided.

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("The specification
acts as a dictionary when it expressly defines terms used in the claims or when it defines terms

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Unless otherwise provided, the '922 patent does not differ from the '867 patent for the cited proposition.

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by implication."). Adopting Plaintiffs position would impermissibly confine the claims to the
embodiments. See Phillips, 415 F.3d at 1323 (Fed. Cir. 2005) ("[A]lthough the specification
often describes very specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments.").
The prosecution history indicates that the examiner initially cited D' Aquila (U.S. Patent
No. 5,402,057) as disclosing "a plurality of loads at an edge" and "a plurality of shunt connected,
switch-controlled VAR sources at the edge." (D.I. 135-2 at 349-51). D' Aquila discloses loads
on a medium voltage portion of the distribution power network. (JA24, Figs. 2 and 3, 4:1-7).
The applicant responded by arguing that "D' Aquila merely discloses a single VAR source
located at the 'power distribution substation' (i.e. near the transformer)-relatively far from the
distribution network edge." (D.I. 135-2 at 390 (emphasis in original)). The applicant also
argued that the "breaks" in D' Aquila "clearly indicate that D' Aquila did not contemplate, and
does not teach, that the VAR source operates at the edge of the network (e.g., at the load)." (D.I.
135-2 at 418). In the Reasons for Allowance, the examiner again stated that D'Aquila taught a
"plurality of loads at an edge of the distribution power network" and a "plurality of shuntconnected, switch-controlled VAR sources at the edge of the distribution power network." (D.I.
135-2 at 437). Plaintiffs briefing does not dispute that the applicant did not further contest this
statement by the examiner. (D.I. 146 at p. 23).
The prosecution history separately indicates that applicant argued that "the VAR source
disclosed in Folts is contemplated to be close to the transformer and/or substation, as opposed to
the edge load." (D.I. 135-2 at 420-21). Defendant's briefing does not dispute that Folts'
transformer is described to be on a medium voltage bus. (See generally D.I. 146). The
prosecution history further indicates that "significant benefit is achieved by moving the VAR

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source(s) to the edge of the network and closer/adjacent to their corresponding loads." (D.I. 1352 at 391).
The prosecution history as a whole does not show clear disclaimer of the edge being on
the utility-facing side of the service transformer. While the prosecution history with respect to
Folts and D' Aquila suggests that the applicant understood the edge/load to be on the customerfacing side of the service transformer, the examiner did not share that view, at least with respect
to D' Aquila. The applicants' failure to further contest the examiner's interpretation in relation to
D' Aquila, leaves the prosecution history unclear as to whether there is disclaimer. See
TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003) ("Accordingly, in

ascertaining the scope of an issued patent, the public is entitled to equate an inventor's
acquiescence to the examiner's narrow view of patentable subject matter with abandonment of
the rest. Such acquiescence may be found where the patentee narrows his or her claims by
amendment, or lets stand an examiner's restrictive interpretation of a claim.") (internal citations
omitted); 37 C.F.R. § l.104(e) ("The applicant or patent owner may file a statement commenting
on the reasons for allowance within such time as may be specified by the examiner.").
Considering the specification and the prosecution history as whole, the patent does not
draw a bright-line between the utility and customer side of a service transformer. I therefore
reject Plaintiffs proposed construction. Instead, I am adopting Defendant's construction with
modifications. Plaintiff concedes that Defendant's voltage ranges for the medium and low
voltage portion of the distribution power network are generally correct. (Tr. 14:5-18). Plaintiff
concedes that the edge terms include the medium voltage portion of the distribution power
network. (Tr. 19:24-20:10). I am modifying Defendant's construction by eliminating the
distribution feeder language because the language misleadingly implies to a jury that the edge

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cannot be on the customer-facing side. (See also Tr. 28: 1-24 ("[W]e're not hung up on the
particular language .... ")).

2. "load" and "loads" ('922 patent; '867 patent)
a. Plaintiff's proposed construction: A customer device that consumes or dissipates power
b. Defendant's proposed construction: Any component(s), circuit(s), device(s), piece(s) of
equipment or system(s) on the power distribution network which consume(s),
dissipate( s), radiate( s) or otherwise utilize( s) power
c. Court's construction: Any component(s), circuit(s), device(s), piece(s) of equipment or
system(s) on the power distribution network which consume(s), dissipate(s), radiate(s) or
otherwise utilize( s) power.
Again, the term "load" is defined as "any component, circuit, device, piece of equipment
or system on the power distribution network which consumes, dissipates, radiates or otherwise
utilizes power." (D.I. 135-2 at 33, 8:30-33). There is no limiting language that restricts a load
to a customer device that consumes or dissipates power. See Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) ("[O]ur cases recognize that the specification may reveal a special
definition given to a claim term by the patentee that differs from the meaning it would otherwise
possess. In such cases, the inventor's lexicography governs.").
Plaintiff again argues that all descriptions in the intrinsic evidence limit loads to customer
loads. (D.I. 146 at pp. 28-30). I disagree. There is language that suggests that the patentee
understood how to distinguish between the broader term "load" and the narrower term "customer
load." (D.I. 135-2 at 33, 8:40--41). Plaintiffs argument is not enough to overcome the clear
definitions of edge and load provided. See Vitronics, 90 F.3d at 1582. Plaintiffs position
impermissibly confines the claims to the embodiments. See Phillips, 415 F.3d at 1323.
Plaintiff argues that the Defendant's definition is so broad as to be meaningless because it
would render feeders themselves to become loads because power is dissipated to a certain extent

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as it is transmitted. Defendant responds that there is no support for limiting "load" to a "device."
(D.I. 146 at p. 30). Generally, I think Defendant's construction is acceptably broad because that
is how the specification defines the term. I am open to further briefing before trial only on the
specific issue of whether Defendant's construction should be modified to exclude a "feeder."
3. "a plurality of shunt connected, switch controlled Volt-Ampere Reactive ('VAR')
sources" ('922 patent; '867 patent)
a. Plaintiff's proposed construction: More than one shunt connected, switch controlled
VAR source but may be less than all of such VAR sources on the network
b. Defendant's proposed construction: Plain and ordinary meaning
c. Court's construction: More than one shunt connected, switch controlled VAR source but
may be less than all of such VAR sources on the network
I adopt Plaintiffs proposed construction because it comports with the natural meaning of
the word "plurality." Dayco Prod., Inc. v. Total Containment, Inc., 258 F .3d 1317, 1327-28
(Fed. Cir. 2001) ("In accordance with standard dictionary definitions, we have held that
'plurality,' when used in a claim, refers to two or more items, absent some indication to the
contrary.").
By its opposition to Plaintiffs proposal, Defendant implicitly seeks to impose a
requirement that each VAR source must have a delay not equal to any other VAR source.
Defendant's argument requires looking beyond the proposed term "a plurality of shunt
connected, switch controlled Volt-Ampere Reactive ('VAR') sources" and into how the term is
used in the context of the various claims. I only address how the proposed term is applied in the
context of the three claim terms cited by the Defendant. (D.I. 146 at p. 32). For claim 1 of the
'867 patent, Defendant seeks to construe "each of the plurality of shunt-connected, switchcontrolled VAR sources is not equal." Applying my construction to this phrase, it means that

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each VAR source has a different delay from every other VAR source. This is consistent with my
preliminary injunction opinion. (See D.I. 137, JA30 at 14).
For claim 1 of the '922 patent, Defendant seeks to construe the phrase, "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." (D.1. 146 at p. 32). As
with claim 1 of the '867 patent, I construe this phrase to mean each VAR source has a different
delay from every other VAR source.
For claim 3 of the '867 patent, Defendant seeks to construe "wherein the delay of at least
two of the plurality of shunt-connected, switch-controlled VAR sources is equal but the delay of
a third of the plurality of shunt-connected, switch-controlled VAR sources is not equal." This
phrase means at least two VAR sources have the same delay and there is another VAR source
with a different delay. Defendant argues that all VAR sources must have different delays to
avoid infighting. The plain language of claim 3 does not impose such a limit. It clearly
contemplates some of the VAR sources having the same delay. The specification also suggests
that some of the VAR sources may have the same delay. (See D.I. 135-2, JAl at 2:42--45, 6:47). The patent teaches that some infighting may occur. (See D.I. 135-2, JAl at 6:4-7). Thus,
each VAR source does not have to have the same delay as every other VAR source. Defendant
cites to Apple v. Samsung, 695 F.3d 1370 (Fed. Cir. 2012), but that case is distinguishable
because it involves an unrelated technology and significantly different claim language. 3 Here,
the patent teaches that some infighting may occur and the claim language clearly permits some
VAR sources to have the same delay.

3

Apple addressed the limitation "a plurality of modules ... wherein ... each heuristic module corresponds to a
respective area of search and employs a different, predetermined heuristic algorithm." Apple, 695 F.3d at 1377. The
court held that to satisfy the claim, each module in the system needed a different predetermined heuristic algorithm.
Id. at 1379.

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4.

"non-continuously monitor the proximate voltage" and "non-continuously monitor
[and detect a/the] proximate voltage by waiting for a delay and then evaluating the
proximate voltage" ('922 patent; '867 patent)
a. Plaintiff's proposed construction: Waiting 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
b. Defendant's proposed construction: Plain and ordinary meaning
c. Court's construction: Waiting 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.
The parties agreed to my construction. (Tr. 71 :22-76:5).

5. "predetermined length of time" and "the [first I second] delay [associated with each
VAR source] extends for a [first I second] predetermined length of time" ('922 patent;
'867 patent)
a. Plaintiff's proposed construction: A length oftime that has its end determined in advance
of that end
b. Defendant's proposed construction: A fixed length of time that must be determined
before it begins
c. Court's construction: A length oftime that is determined before it begins
Having had the benefit of a Markman hearing and a fuller understanding of the claimed
invention, I am modifying my interpretation of this term from that in my preliminary injunction
opinion. I think that so long as the length of time is "determined" before the beginning of the
delay, that is enough to satisfy this claim limitation. What is essential for a length of time to be
"determined" is that how long the time of the delay will be is provided before the initiation of the
delay. If"how long" can only be acquired after the delay has begun, then that would not meet

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the claim limitation because it would clash with what I think is the plain meaning of
"predetermined. " 4
For example, ifbefore beginning the delay, the VAR source receives an instruction to
delay for a specified length of time, then that is enough to meet the claim limitation. The length
of time can be randomly generated and still meet the claim limitation, so long as the length of
time is generated before the beginning of the delay and provides for how long the length of the

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delay will actually be. (See '867 patent, 12:2-3). The length of time may be subsequently

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modified, for example, to accommodate for voltage "changing at a substantial rate" such that

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"the delay time may be accelerated," so long as the original length of time provided for how long

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the length of the delay would actually be. (See '867 patent, 16:66-17:4, 16:3-8). The
construction I adopt avoids reading out certain embodiments (like the ones described at 16:6617:4 and 16:3-8 of the '867 patent) of the '867 and '922 claims. See Kaneka Corp. v. Xiamen
Kingdomway Grp. Co., 790 F.3d 1298, 1304 (Fed. Cir. 2015) ("A claim construction that

excludes a preferred embodiment is 'rarely, if ever, correct.'"). This construction is also

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consistent with the prosecution history.

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Thus, I am rejecting Plaintiffs proposed construction because I think that the natural
meaning of "predetermined" requires that whatever is going to be "determined" must be done so

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before it begins. I am rejecting Defendant's proposed construction because it requires that the
length of time cannot be changed once it has begun. The length of time may be subsequently
modified. Merely removing the word "fixed" from Defendant's proposal is not enough because
the language "must be" also implies that the length of time must remain fixed.

4

See MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/predetermine (last visited Aug. I 0, 2017)
(defining predetermine as: "foreordain, predestine"; "to determine beforehand"; "to impose a direction or tendency
on beforehand).

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6. "an overvoltage condition" and "detect an overvoltage condition and disable the switch
based on the detected overvoltage condition" ('922 patent; '867 patent)
a. Plaintiff's proposed construction: A high voltage that could damage a VAR source
b. Defendant's proposed construction:
For "an overvoltage condition": A voltage in excess of a predefined threshold voltage
For "detect an overvoltage condition and disable the switch based on the detected
overvoltage condition": Plain and ordinary meaning
c. Court's construction:

For "an overvoltage condition": A voltage in excess of a predefined threshold voltage
For "detect an overvoltage condition and disable the switch based on the detected
overvoltage condition": Plain and ordinary meaning
Plaintiffs construction is not the plain and ordinary meaning of "overvoltage." The
ordinary meaning of overvoltage is: "A voltage above the normal rated voltage or the maximum
operating voltage of a device or circuit"; "Abnormal voltage higher than the normal service
voltage, such as might be caused from switching or lightning surges"; "Abnormal voltage
between two points of a system that is greater than the highest value appearing between the same
two points under normal service conditions"; or "A voltage above the normal rated voltage or the
maximum operating voltage of a device or circuit." (See D.I. 137, JA34, New IEEE Standard
Dictionary of Electrical and Electronic Terms (1993) at p. 909). Nowhere in these definitions
does the word "damage" appear. While some instances of overvoltage could result in damage to
a VAR source, not all instances of overvoltage necessarily result in damage. While 3 :24-26 and
11 :49-52 of the '867 patent teach that in some embodiments, disabling the switch may be
necessary based on detection of an overvoltage condition, the specification falls short oflimiting
overvoltage to scenarios where the VAR source is damaged. (D.I. 146 at p. 50). Defendant's
construction more accurately captures the meaning of "overvoltage."

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7. "adjust network volt-ampere reactive" and "adjust network VAR" ('922 patent; '867
patent)
a. Plaintiff's proposed construction: Adjust VAR to affect network voltage
b. Defendant's proposed construction: Plain and ordinary meaning
c. Court's construction: Plain and ordinary meaning
Plaintiffs proposal seeks to clarify this term for the jury. I think that the proposed
clarification would not be helpful as it is inaccurate. While the terms "adjust network voltampere reactive" and "adjust network VAR" are unlikely to be transparent to a jury, Plaintiffs
proposal does not aid in understanding them, and it is inaccurate because it does not include
power factor correction. (D.I. 146 at p. 57). The '867 and '922 patents disclose adjustment of
network VAR for voltage regulation and power factor correction. ('867 patent, 19: 17-32).
Because there is no argument that the term does not have its plain and ordinary meaning and
because Plaintiffs proposal is inaccurate, I adopt Defendant's proposal.
8.

"delay value" ('184 patent)
a. Plaintiff's proposed construction: A value related to a delay
b. Defendant's proposed construction: This term should be construed in the context of the
"obtain/obtaining" elements of the '184 patent. In the alternative, it should be construed
as a value that corresponds to a length oftime that defines the delay.
c. Court's construction: A value related to a delay. The delay duration is dependent on this
value.

9. "obtain [/obtaining] by a first switch-controlled VAR source [coupled to a distribution
power network], a first delay value that is different from another delay value of another
switch-controlled VAR source [coupled to the distribution power network]" ('184
patent)
a. Plaintiff's proposed construction: Plain and ordinary meaning I no construction necessary
except as it contains otherwise construed terms

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b. Defendant's proposed construction: A first value that corresponds to a first fixed length
of time that defines a first delay that is different from another value that corresponds to
another fixed length of time that defines the other delay
c. Court's construction: Plain and ordinary meaning I no construction necessary except as it
contains otherwise construed terms
10. "based on" ('184 patent)
a. Plaintiff's proposed construction: Dependent on
b. Defendant's proposed construction: Plain and ordinary meaning
c. Court's construction: Dependent on
11. "initiate [/initiating] a first delay duration [based on the comparison of the first
proximate voltage to at least one set point], the first delay duration being based on the
first delay value" ('184 patent)
a. Plaintiff's proposed construction: Plain and ordinary meaning I no construction necessary
except as it contains otherwise construed terms
b. Defendant's proposed construction:
This term should be construed in conjunction with the "obtain/obtaining" step.
The first delay duration is a predetermined delay duration that is based on the first value,
wherein the first delay duration must be determined before it begins.
c. Court's construction: Plain and ordinary meaning I no construction necessary except as it
contains otherwise construed terms
The last four terms are all interrelated and will be construed together. Claim 1 of the
'184 patent requires: "obtain a first delay value that is different from another delay value of
another switch-controlled VAR source coupled to the distribution power network" and "initiate a
first delay duration based on the comparison of the first proximate voltage to at least one set
point, the first delay duration being based on the first delay value." (D.I. 135-2, JA3 ("'184
patent"), claim 1). This language makes clear that the "delay value" is distinct from the "delay
duration." The length of the delay duration is "based on" the first delay value. Whether the

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delay duration is "initiated" is "based on" the results of a comparison of the first proximate
voltage to at least one set point. (See, e.g., '184 patent, Fig. 6 at 606, 608; 19:47-20:26).
The specification describes many different ways of obtaining a delay value. It may be
generated with a random number generator. (' 184 patent, 4:64-65). It may be generated with an
"N-cycle delay module." ('184 patent, 30:23-24). These values could be received from a
"communications interface" outside the switch. (' 184 patent, 30:25-28). These values could be
preconfigured in the switch at time of fabrication. (' 184 patent, 30:28-31 ). This suggests that a
delay value is simply a value related to a delay.
The term "based on" is used twice in the "initiate" limitation. I think, read in the context
of the patent, both uses of "based on" means "dependent on." The delay duration depends on the
delay value. This means that whatever the delay value is, that value plays a role on the length of
the delay duration. I interpret the specification to permit the possibility that the same delay value
plays a role in generating different delay durations. It is possible that different delay values play
a role in generating the same delay duration.
As to the first use of "based on," again, whether the delay duration is initiated depends on
the results when comparing the first proximate voltage with at least one set point. Whatever the
results of that comparison, those results play a role on whether the delay duration is initiated. I
think it is helpful to clarify to the jury that "based on" means "dependent on."
Defendant argues that in order for the goal of preventing infighting to be achieved, the
delay values must correspond to (i.e., define) delay durations. Defendant argues that the
correspondence of the delay durations to the delay values ensures that delay durations are unique
so that infighting is avoided. Nothing in the specification says that the delay value
"corresponds" or "defines" the delay duration. I think this interpretation is an overly narrow

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reading of "based on." I think the goal of preventing infighting can still be achieved if the delay
duration depends on the delay value. Furthermore, the invention does not contemplate
necessarily eliminating all infighting. (See, e.g., '184 patent, 2:46-55, 8:55-58). Defendant also
argues that the n-cycle delay module embodiment and the randomizer embodiment suggest that
the delay value must "define" the delay duration. (D.I. 146 at pp. 60-61). Even if this is true,
this would improperly limit the invention to the embodiments. See Phillips, 415 F.3d at 1323.
The parties again raise a "predetermined length oftime"-type of issue here. (D.1. 146 at
p. 61, 66-67). Similar to my discussion above in Part IV.5, when the delay duration is initiated,
it takes on a length of time that depends on the delay value, but there is nothing in the claim
language that prohibits the modification of the delay duration after it is initiated, so long as the
delay duration provides a length of time. My reading takes into account the differences in claim
language between the '184, '867 and '922 patents. This reading accounts for the fact that delay
durations could be updated based on "conditions of the power network". (' 184 patent, 23 :6224:5).
I include the language, "the delay duration is dependent on this value," in construing
delay value because I think it is useful clarification for the jury. In doing so, I am rejecting
Defendant's alternative construction of delay value because (1) "dependent on" is more accurate
than "correspond" and (2) Defendant's use of the phrase "length of time that defines the delay" is
more concisely expressed as delay duration.
Defendant also raises a "plurality"-type issue. (D.1. 146 at pp. 64-65). Because claim 1
of the '184 patent is a "comprising" claim, even though the claim talks about "a first" VAR
source and "another" VAR source, there could be other VAR sources within the system. Unlike
claim 1 of the '867 and '922 patents, claim 1 of the '184 patent contains no comparable language

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requiring that each VAR source has a delay duration that is different from "every other" or "any
other" VAR source. (' 184 patent, claim 1). Instead, claim 1 of the '184 patent is analogous to
claim 3 of the '867 patent. (See D.I. 135-2, JAl, claim 3).

V.

CONCLUSION
Within five days the parties shall submit a proposed order consistent with this

Memorandum Opinion.

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