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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 1 of 9
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`Bijal V. Vakil (CA State Bar No. 192878)
`bvakil@whitecase.com
`Shamita D. Etienne-Cummings (CA State Bar No. 202090)
`setienne@whitecase.com
`Henry Y. Huang (CA State Bar No. 252832)
`henry.huang@whitecase.com
`WHITE & CASE LLP
`3000 El Camino Real
`Two Palo Alto Square, Suite 900
`Palo Alto, CA 94306-2109
`Telephone: 650.213.0300
`Facsimile: 650.213.8158
`
`Attorneys for Plaintiff
`Google LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`GOOGLE LLC,
`
`Plaintiff,
`
`v.
`ECOFACTOR, INC.,
`Defendant.
`
`Case No. 5:21-cv-1468
`COMPLAINT FOR
`DECLARATORY JUDGMENT
`DEMAND FOR JURY TRIAL
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 2 of 9
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`Plaintiff Google LLC (“Google”), for its complaint against Defendant EcoFactor, Inc.
`(“EcoFactor”), alleges:
`
`NATURE OF THE ACTION
`1.
`This is an action for declaratory judgment of non-infringement of U.S. Patent Nos.
`8,019,567 (the “’567 patent”), 8,596,550 (the “’550 patent”), 8,886,488 (the “’488 patent”), and
`10,612,983 (the “’983 patent”) (collectively, the “Asserted Patents,” attached as Exhibits 1-4,
`respectively) against EcoFactor, pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-
`02, and the patent laws of the United States, 35 U.S.C. § 100 et seq., and for other relief the Court
`deems just and proper.
`2.
`Google requests this relief because EcoFactor has filed a complaint with the
`International Trade Commission (“ITC”), Docket No. 3535, claiming that Google (among other
`defendants) has
`infringed
`the Asserted Patents because Google designed, developed,
`manufactured, tested, used, offered for sale, sold, and/or imported “smart thermostats, smart
`HVAC systems, smart HVAC control systems, and components thereof.” A true and correct copy
`of EcoFactor’s public ITC complaint is attached as Exhibit 5. The products asserted in the ITC
`Investigation are the Nest Thermostat and the Nest Third Generation Learning Thermostat
`(“Accused Products”).
`3.
`An actual and justiciable controversy therefore exists under 28 U.S.C. §§ 2201-
`2202 between Google and EcoFactor as to whether Google is infringing or has infringed the
`Asserted Patents.
`
`THE PARTIES
`4.
`Plaintiff Google LLC is a subsidiary of Alphabet Inc. with its principal place of
`business located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
`5.
`Upon information and belief, Defendant EcoFactor, Inc. is a privately held
`company organized under Delaware's laws, with a principal place of business at 441 California
`Avenue, Number 2, Palo Alto, CA 94301.
`JURISDICTION AND VENUE
`Google files this complaint against EcoFactor pursuant to the patent laws of the
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`6.
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 3 of 9
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`United States, Title 35 of the United States Code, with a specific remedy sought based upon the
`laws authorizing actions for declaratory judgment in the federal courts of the United States, 28
`U.S.C. §§ 2201 and 2202, and under the patent laws of the United States, 35 U.S.C. §§ 1-390.
`7.
`This Court has subject matter jurisdiction over this action, which arises under the
`United States’ patent laws, pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201(a).
`8.
`This Court has personal jurisdiction over EcoFactor, which has its principal place
`of business in Palo Alto, California.
`9.
`Venue in this District is proper under 28 U.S.C. §§ 1391(b) because EcoFactor
`resides in this District, and also because EcoFactor is subject to personal jurisdiction in this
`District, and a substantial part of the events giving rise to Google’s declaratory judgment claim of
`non-infringement (such as the development of Nest thermostats) occurred in this District.
`INTRADISTRICT ASSIGNMENT
`10.
`Pursuant to Civil L.R. 3-2(c) and 3-5(b), this is an Intellectual Property Rights
`Action subject to assignment on a district-wide basis.
`FACTUAL BACKGROUND
`11.
`Google’s headquarters at 1600 Amphitheatre Parkway, Mountain View, CA 94043
`are located in this District. Google’s mission is to organize the world’s information and make it
`universally accessible and useful. Over the past two decades, in service of that mission, Google
`has become one of the world’s most innovative technology companies.
`12.
`EcoFactor’s identification of allegedly infringing products originated at Nest Labs
`that launched in 2010 in Palo Alto. The founders of Nest sought to save the planet while saving
`consumers money with their energy usage. After merging with the Google family of companies
`in 2014, the Nest product division has continued to operate primarily in the San Francisco Bay
`Area. The vast majority of technical and business activities related to Nest have occurred and
`continue to occur in this District.
`13.
`EcoFactor filed an earlier lawsuit against Google at the International Trade
`Commission asserting patents related to the Asserted Patents. See In the matter of Certain Smart
`Thermostats, Smart HVAC Systems and Components Thereof, Investigation No. 337-TA-1185
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 4 of 9
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`(ITC, filed Nov. 22, 2019) (the “1185 Investigation”). The 1185 Investigation confirmed that the
`venue at the center of the allegations is this District because EcoFactor’s witnesses, Google’s
`source code (and the review of such source code), and Google’s U.S. witnesses are all located in
`this District.
`14.
`Google’s Accused Products do not directly or indirectly infringe any asserted
`claim of the Asserted Patents, either literally or under the doctrine of equivalents. Google has not
`caused, directed, requested, or facilitated any such infringement, and it did not have any specific
`intent to do so.
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`COUNT I:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’567 PATENT
`15.
`Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
`16.
`EcoFactor claims to own all right, title, and interest in the ’567 patent by
`assignment.
`17.
`In its ITC complaint, EcoFactor alleges that Google directly and indirectly
`infringes the ’567 patent. See, e.g., Ex. 5 ¶ 100.
`18.
`The Accused Products do not include or practice multiple claim limitations of the
`claims of the ’567 patent, including, but not limited to: “evaluating changes in the operational
`efficiency of an HVAC system over time,” “at least one HVAC control system,” “receiv[ing]
`temperature measurements from at least a first structure,” “receiv[ing] status of [an] HVAC
`system,” “receiv[ing] measurements of outside temperatures,” “compar[ing] said temperature
`measurements from said first structure,” “compar[ing[ the inside temperature of said first
`structure and the outside temperature over time to derive an estimation for the rate of change in
`inside temperature of said first structure,” “compar[ing] an inside temperature recorded inside the
`first structure with said estimation for the rate of change in inside temperature of said first
`structure to determine whether the operational efficiency of the HVAC system has decreased over
`time,” “analyz[ing[ the changes in the operational efficiency over time to suggest a cause of
`degradation,” “compar[ing] [] temperature measurements from [a] first HVAC system and [a]
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 5 of 9
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`second HVAC system and said outside temperature measurements over time to determine the
`relative efficiency of the first HVAC system and the second HVAC system,” “comparing with
`one or more processors said temperature measurements from said first structure with outside
`temperature measurements over time to derive expected temperature measurements of a rate of
`change in inside temperature,” and “compar[ing] an inside temperature recorded inside the first
`structure with said expected temperature measurements to determine whether the operational
`efficiency of the HVAC system has decreased.”
`19.
`An actual and justiciable controversy therefore exists between Google and
`EcoFactor regarding whether any of the accused devices have infringed any of the asserted claims
`of the ’567 patent. A judicial declaration is necessary to determine the parties’ respective rights
`regarding the ’567 patent.
`20.
`Google seeks a judgment declaring that Google does not directly or indirectly
`infringe any asserted claims of the ’567 patent, either literally or under the doctrine of
`equivalents.
`
`COUNT II:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’550 PATENT
`21.
`Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
`22.
`EcoFactor claims to own all right, title, and interest in the ’550 patent by
`assignment.
`23.
`In its ITC complaint, EcoFactor alleges that Google directly and indirectly
`infringes the ’550 patent. See, e.g., Ex. 5 ¶ 102.
`24.
`The Accused Products do not include or practice multiple claim limitations of the
`claims of the ’550 patent, including, but not limited to: “detecting manual changes to the setpoint
`for a thermostatic controller,” “using the stored data to predict a rate of change of temperatures
`inside the structure in response to at least changes in outside temperatures,” “calculating []
`scheduled programming of setpoints in the thermostatic controller based on the predicted rate of
`change,” “generating with one or more computer processors, a difference value based on
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 6 of 9
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`comparing an actual setpoint at the first time for said thermostatic controller to the first automated
`setpoint for said thermostatic controller,” “detecting a manual change to the first automated
`setpoint by determining whether said actual setpoint and said first automated setpoint are the
`same or different based on said difference value,” “[a] method for incorporating manual changes
`to the setpoint for a thermostatic controller into long-term programming of said thermostatic
`controller,” “compar[ing] the actual setpoint at the first time for said thermostatic controller to the
`first automated setpoint for said thermostatic controller,” and “detecting a manual change to the
`first automated setpoint by determining whether said actual setpoint and said automated setpoint
`are the same or different.”
`25.
`An actual and justiciable controversy therefore exists between Google and
`EcoFactor regarding whether any of the accused devices have infringed any of the asserted claims
`of the ’550 patent. A judicial declaration is necessary to determine the parties’ respective rights
`regarding the ’550 patent.
`26.
`Google seeks a judgment declaring that Google does not directly or indirectly
`infringe any asserted claims of the ’550 patent, either literally or under the doctrine of
`equivalents.
`
`COUNT III:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’488 PATENT
`27.
`Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
`28.
`EcoFactor claims to own all right, title, and interest in the ’488 patent by
`assignment.
`29.
`In its ITC complaint, EcoFactor alleges that Google directly and indirectly
`infringes the ’488 patent. See, e.g., Ex. 5 ¶ 103.
`30.
`The Accused Products do not include or practice multiple claim limitations of the
`claims of the ’488 patent, including, but not limited to: “calculating a value for the operational
`efficiency of [an HVAC] system,” “at least one HVAC control system,” “receiv[ing] inside
`temperature measurements,” “computer hardware that is configured to receive outside
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 7 of 9
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`temperature measurements,” “calculat[ing] [] one or more predicted rates of change in said inside
`temperature measurements at said first location based on the status of the HVAC system,”
`“relat[ing] said one or more predicted rates of change to said outside temperature measurements,”
`“compar[ing] [] at least one predicted temperature based on the one or more predicted rates of
`change with an actual inside temperature measurement,” and “said programmable thermostat is a
`source for current data regarding temperature inside said location.”
`31.
`An actual and justiciable controversy therefore exists between Google and
`EcoFactor regarding whether any of the accused devices have infringed any of the asserted claims
`of the ’488 patent. A judicial declaration is necessary to determine the parties’ respective rights
`regarding the ’488 patent.
`32.
`Google seeks a judgment declaring that Google does not directly or indirectly
`infringe any asserted claims of the ’488 patent, either literally or under the doctrine of
`equivalents.
`
`COUNT IV:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’983 PATENT
`33.
`Google hereby restates and incorporates by reference the allegations set forth in
`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
`34.
`EcoFactor claims to own all right, title, and interest in the ’983 patent by
`assignment.
`35.
`In its ITC complaint, EcoFactor alleges that Google directly and indirectly
`infringes the ’983 patent. See, e.g., Ex. 5 ¶ 101.
`36.
`The Accused Products do not include or practice multiple claim limitations of the
`claims of the ’983 patent, including, but not limited to: “receiv[ing] a first data from at least one
`sensor, wherein the first data from the at least one sensor includes a measurement of at least one
`characteristic of the user’s building,” “predict[ing], based at least in on the first data from the
`sensor, the second data from the network connection, and the first temperature setpoint, the time
`necessary for the HVAC system to operate in order to reach the temperature value by the time
`value,” “a measurement of the current temperature and humidity of the building by the sensor,” “a
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`SILICON VALLEY
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`ATTORNEYS AT LAW
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`WHITE & CASE LLP
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`

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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 8 of 9
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`measurement of the current outdoor temperature,” “analyzing the stored historical values of the
`first data and second data,” and “calculat[ing] a performance characteristic of the HVAC system
`based at least on the historical values of the first data and second data.”
`37.
`An actual and justiciable controversy therefore exists between Google and
`EcoFactor regarding whether any of the accused devices have infringed any of the asserted claims
`of the ’983 patent. A judicial declaration is necessary to determine the parties’ respective rights
`regarding the ’983 patent.
`38.
`Google seeks a judgment declaring that Google does not directly or indirectly
`infringe any asserted claims of the ’983 patent, either literally or under the doctrine of
`equivalents.
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`PRAYER FOR RELIEF
`WHEREFORE, Google prays for judgment as follows:
`A.
`Declaring that Google Accused Products do not directly or indirectly infringe any
`asserted claims of the ’567 patent, either literally or under the doctrine of equivalents;
`B.
`Declaring that Google Accused Products do not directly or indirectly infringe any
`asserted claims of the ’550 patent, either literally or under the doctrine of equivalents;
`C.
`Declaring that Google Accused Products do not directly or indirectly infringe any
`asserted claims of the ’488 patent, either literally or under the doctrine of equivalents;
`D.
`Declaring that Google Accused Products do not directly or indirectly infringe any
`asserted claims of the ’983 patent, either literally or under the doctrine of equivalents;
`E.
`Declaring that judgment be entered in favor of Google and against EcoFactor on
`Google’s claims;
`F.
`Finding that this is an exceptional case under 35 U.S.C. § 285;
`G.
`Awarding Google its costs and attorneys’ fees in connection with this action; and
`H.
`Awarding Google such other and further relief as the Court deems just and proper.
`JURY DEMAND
`Pursuant to Federal Rule of Civil Procedure 38 and Civil Local Rule 3-6, Google demands
`a jury trial on all issues and claims so triable.
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`Case 5:21-cv-01468 Document 1 Filed 03/01/21 Page 9 of 9
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`Respectfully submitted,
`
`By: /s/Bijal V. Vakil ____________________
`
`Bijal V. Vakil
`
`Bijal V. Vakil (CA State Bar No. 192878)
`bvakil@whitecase.com
`Shamita D. Etienne-Cummings
`(CA State Bar No. 202090)
`setienne@whitecase.com
`Henry Y. Huang (CA State Bar No. 252832)
`henry.huang@whitecase.com
`WHITE & CASE LLP
`3000 El Camino Real
`Two Palo Alto Square, Suite 900
`Palo Alto, CA 94306-2109
`Telephone: 650.213.0300
`Facsimile: 650.213.8158
`
`Attorneys for Plaintiff
`Google LLC
`
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`COMPLAINT FOR DECLARATORY JUDGMENT
`CASE NO. 5:21-cv-1468
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`Dated: March 1, 2021
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