Paul Donahue and Jeff Dankworth are trying to solve a problem few people knew we had: an over-abundance of renewable energy.

With so many rooftop solar panels and wind turbines adding extra power to California's energy grid, the state is generating so much electricity at unpredictable times that it has occasionally been forced to pay Arizona to take some off its hands. Otherwise, California would have risked damage to its grid.

“This overgeneration surprised everyone in California because it came so much earlier than everyone expected,” said Dankworth, who is general counsel to startup company MelRok. The boom shows no sign of slowing down, as the state just ordered every new home built after 2020 be solar-equipped.

MelRok chairman Donahue and Dankworth were ready. They've created an internet of things platform for measuring energy production and consumption in homes and businesses, enabling it to be distributed more efficiently. The company has adopted an aggressive intellectual property strategy, tapping Knobbe Martens partners Perry Oldham and Karen Lenker to construct its patent portfolio.

“We need a way to consolidate this information, organize it and make productive use of it,” Oldham said.

When over-generation occurred in the past, grid operators simply contacted major power plants and told them to ramp down production, said Donahue and Dankworth, who founded MelRok in 2011 with scientist Michael Kamel. But that model no longer works with 40,000 solar rooftops independently adding and subtracting power each day depending on the location of the sun, weather conditions and battery storage capacity.

“The question is, how do you orchestrate all that activity?” Donahue said. MelRok says it can monitor power generation and consumption in real time, and help homeowners, businesses and government entities determine when it's most efficient to charge electric vehicles, heat swimming pools, cool buildings or run desalination plants, for examples.

With funding from California Public Utilities Commission and San Diego Gas & Electric Co., the startup will begin installations in June at the San Diego Food Bank and various commercial locations in San Diego County.

“You need to have all these different devices configured with each other so they know when they should be firing up or firing down,” said Knobbe's Oldham.

Oldham and partner Lenker have worked with MelRok from the company's founding, helping obtain four patents with 12 more applications pending. The latest patent, “Systems and methods to manage and control renewable distributed energy resources,” was issued March 6.

Clearly demarcated IP is critical when negotiating partnerships with big companies, says Dankworth, a former attorney at Mitchell Silberberg & Knupp. “The very first thing” big companies say is “they want to own your IP,” he said. If it isn't clearly defined it will get absorbed by the larger company, he said. But if the boundaries are clear, they're more likely to say, “We'll just license what you have.”

The executives have relied on Oldham and Lenker to define their inventions in ways that can be useful and protectable, and to negotiate the claims with PTO examiners, all with an eye toward future enforcement if necessary.

The Knobbe lawyers have also advised on what not to patent. One example was MelRok's method for preventing hacking into energy systems. “Perry suggested we hold back on that as a trade secret, rather than publish it for everybody else to see,” Donahue said.

“Even if you're not pursuing patents,” Oldham said, ”you need to understand why you're not pursuing patents.”

Though the latest patent is focused on measuring and analyzing data, Oldham said he's confident it will pass Section 101 muster. Or at least as confident as any patent lawyer can be until more clarity comes from the courts or the PTO.

“101 is something you always have to be thinking about,” he said. “There are patents today that are being invalidated under 101 that no one would have questioned 10 or 15 years ago.”

Lenker said she enjoys working with the MelRok team, who bring the typical pride of ownership of startup inventors. “This is their baby,” she said, “and they're very excited and that enthusiasm is great to work with.”

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