Defensive Invention

Fortnightly Magazine - October 2008

When the U.S. Patent Office published patent application number 11/626,810 in July 2008, few people noticed—at first. Soon, however, the metering-technology community was abuzz, mostly with outrage.

The patent, filed by a group of 21 employees of Southern California Edison, claimed ownership over some basic ideas for using advanced-metering infrastructure (AMI). For example, the Edison employees claimed they invented the methods of communicating via the Internet or meters to deliver such capabilities as outage detection, demand response and dynamic pricing.

If the Patent Office grants the patent and all its claims, other utilities would be legally forbidden from using any of the methods described, without first obtaining a license from the patent holders.

EES North America

“The audacity is just mind blowing,” said an industry executive who spoke to Fortnightly on condition of anonymity. “They say it’s a defensive patent—to prevent a patent troll from claiming he invented the smart grid and getting rich on licensing. But if that’s true, then why didn’t they assign the patent to EPRI? I don’t believe Edison is that altruistic.”

To get the inventors’ side of the story, we called Paul DiMartini, the primary inventor named in the patent application, and vice president of Southern California Edison’s SmartConnect program, which the California PUC approved in September.


Fortnightly: Why did you file this patent?

DiMartini: We’re not looking to make any money off this. The purpose is to ensure we’ll be able to use the system we’re deploying to the benefit of our customers, and so others will also be able to use their systems as they intend to do. It comes from a defensive standpoint.

Three and a half years ago, when we started defining what we wanted from a potential AMI system—in terms of being able to develop a positive business case and create value for our customers—we identified a number of uses that were new. We wanted to share that with the industry, and we did so, but we also recognized that it was important for us to document the fact that those uses were developed back in 2005, to establish the original date of the ideas.

We saw this was an emerging market, and as we moved forward with our proposal for the $1.7 billion SmartConnect program, we wanted to ensure our customers would benefit from the use of the system without having to worry about a third party saying we were infringing on their ideas about the uses of the system.

From the start, we intended and have made it available as open source. We’re working on a draft for a worldwide, royalty-free, non-exclusive license, to make these use cases available to everyone. We’re taking a light touch. If you want to use one of the use cases, you click an accept button, and you get a license that makes it available to you. A draft of that license already is circulating among vendors and utilities, to get their comments so we can have a very effective agreement. (See