`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`GOOGLE, LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.
`Patent Owner.
`
`
`
`
`
` Case IPR2021-00054
`Patent 10,534,382
`
`
`
`
`
`ECOFACTOR, INC.’S ORAL HEARING DEMONSTRATIVES
`
`
`
`
`
`
`
`Case IPR2021-00054
`Patent 10,534,382
`
`In accordance with the Board’s Order – Order Setting Oral Argument (Paper
`
`
`
`
`29), Patent Owner EcoFactor, Inc., hereby files its oral hearing demonstratives.
`
`
`
`Date: February 3, 2022
`
`
`
`
`
`
`
` Respectfully submitted,
`
` / Philip X. Wang /
`
`Philip X. Wang (Reg. No. 74,621)
`Reza Mirzaie (Reg. No. 69,138)
`Kristopher Davis (Reg. No. 62,063)
`Jonathan Link (Reg. No. 41,548)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`jlink@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Google, LLC
`v.
`EcoFactor, Inc.
`U.S. Patent No. 10,534,382
`IPR2021-00054
`
`EcoFactor’s Hearing Demonstratives
`February 8, 2022
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 0
`
`ECOFACTOR, INC.
`
`
`
`Instituted Grounds
`
`• Ground 1: Claims 1-20
`Obviousness over Geadelmann in view of Ehlers ‘330
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 1
`
`
`
`Overview of Argument
`
`All Instituted Grounds:
`Petition Fails to Identify the Specific Combination of
`Geadelmann and Ehlers
`Geadelmann and Ehlers:
`• Do Not Disclose One Processor That Performs All of the Claimed Functions
`• Do Not Disclose a First Processor Located Remotely from the Memory
`(Claim [1l])
`• Do Not Disclose Storing Weather Data in the Memory (Claim [1m])
`• Do Not Disclose Occupancy Determination Performed by Programmable
`Thermostats (Claim 12)
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 2
`
`
`
`‘382 Patent
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 3
`
`
`
`’382 Patent
`
`U.S. Patent No. 10,534,382
`(“’382 Patent”)
`Date of Patent: January 14, 2020
`
`SYSTEM AND METHOD FOR USING A
`WIRELESS DEVICE AS A SENSOR FOR AN
`ENERGY MANAGEMENT SYSTEM
`
`Ex. 1001
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 4
`
`
`
`Challenged Independent Claim 1
`
`* * *
`
`Ex. 1001
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 5
`
`
`
`Challenged Independent Claim 17
`
`* * *
`
`Ex. 1001
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 6
`
`
`
`Claim Construction
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 7
`
`
`
`“One Or More Processors …”
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 8
`
`
`
`Challenged Independent Claim 1
`
`[1a]
`[1b]
`[1c]
`[1d]
`
`[1e]
`
`[1f]
`
`[1g]
`
`[1h]
`
`[1i]
`
`[1j]
`
`[1k]
`
`[1l]
`
`[1m]
`
`* * *
`
`Ex. 1001, col. 8:11-67
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 9
`
`
`
`Claim Requires All The
`“One Or More Processors” Perform All The Functions
`
`• Claim element [1c] recites “one or more processors with circuitry and code”
`Ex. 1001, 8:15-16
`• Claim elements [1d], [1e], [1f], [1g], [1k] and [1l] each recite
`“the one or more processors with circuitry and code”
`• Claim [1c] provides antecedent basis for Claims [1d], [1e], [1f], [1g], [1k] and [1l]
`• All of the ‘one or more processors’ must be able to perform the functions
`recited in claim elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]
`• There needs to be at least a single processor that meets all of the
`limitations of claim elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l].
`• For example, if a processor only met the limitations of
`claim elements [1d] and [1f], it would not meet claim 1.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 10
`
`
`
`Dependent Claims are Not Superfluous
`
`• Claims require the “one or more processors” to perform all of the
`functions (except for those performed by the first processor).
`• Language clarifies that two processors can each perform all of
`the functions.
`• Dependent claims cover different claimed embodiments
`• Where functions performed by “first server” are a larger set
`• Different claims have different scopes
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 11
`
`
`
`Specification Does Not Prohibit EcoFactor’s Construction
`
`• ‘382 patent describes the thermostat
`108 and computer 104 connected to a
`server 106 via the Internet 102. Ex.
`1001, 4:26-37.
`
`• ‘382 patent does not prevent the server
`performing the recited functions from
`accessing the database at a different,
`remote server.
`
`Ex. 1004.007
`
`12
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 12
`
`
`
`“Located Remotely From The
`Memory…”
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 13
`
`
`
`Challenged Claims [1l] and [1m]
`
`wherein the one or more processors comprises a first
`processor with circuitry and code designed to execute
`instructions, which
`is
`located
`remotely
`from the
`memory and is not
`electrically connected to the
`memory;
`the first processor with circuitry and code designed
`execute
`instructions
`to
`communicate with
`memory;
`wherein the memory is configured to store historical
`values of the first data and second data.
`
`to
`the
`
`Ex. 1001, col. 8:58-67
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 14
`
`
`
`“Located Remotely from the Memory”
`
`In the context of the specification and claims of the
`‘382 patent, a POSITA would understand “located
`remotely from the memory” to mean not in the same
`building.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 15
`
`
`
`“Located Remotely from the Memory”
`
`“Located Remotely” means
`not in the same building.
`
`• ‘382 patent describes the thermostat
`108 and computer 104 connected to
`a server 106 via the Internet 102. Ex.
`1001, 4:30-37.
`• The databases 300 in servers 106a
`and 106b, are remote from and not
`located in the same building as the
`thermostats 108 and computers 104.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 16
`
`Ex. 1004.007
`
`
`
`“Located Remotely” Is Not In Same Device
`
`Deposition
`Testimony of
`Google’s Expert,
`Mr. Rajendra Shah.
`
`Ex. 2016, 28:20-29:4
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 17
`
`
`
`“Located Remotely” Is Separated
`
`Deposition
`Testimony of
`Google’s Expert,
`Mr. Rajendra Shah.
`
`Ex. 2016, 23:24-24:10
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 18
`
`
`
`Geadelmann
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 19
`
`
`
`Geadelmann
`
`U.S. Patent No. 8,196,185
`(“Geadelmann”)
`Date: June 5, 2012
`
`REMOTE HVAC CONTROL WITH A
`CUSTOMIZABLE OVERVIEW
`DISPLAY
`
`Ex. 1004
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 20
`
`
`
`Ehlers
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 21
`
`
`
`Ehlers
`
`U.S. Publication No. US 2004/0117330
`(“Ehlers”)
`Date: June 17, 2004
`
`SYSTEM AND METHOD FOR
`CONTROLLING USAGE
`OF A COMMODITY
`
`Ex. 1010
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 22
`
`
`
`Petitioner Fails to Identify the Specific
`Combination of Geadelmann and Ehlers
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 23
`
`
`
`No Specific Combination Identified
`
`• Google identifies over 200
`hundred potential
`combinations
`
`• Google’s job to identify which
`combination is being relied
`upon, not Board’s or
`EcoFactor’s
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 24
`
`POR at 20; Ex. 2013, ¶ 46.
`
`
`
`Geadelmann and Ehlers Do Not
`Render Obvious Claims 1-20
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 25
`
`
`
`Geadelmann Does Not Disclose
`Automatically Determining Occupancy
`
`• Geadelmann discloses designation of occupied/unoccupied
`status based on pre-programmed schedule.
`• A pre-programmed schedule is not a processor that makes a
`determination whether a building is occupied or unoccupied.
`
`POR at 21-22; Ex. 1012 at ¶ 59
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 26
`
`
`
`Geadelmann Does Not Disclose
`Automatically Determining Occupancy
`
`• In any event Geadelmann teaches away from the patented
`automatic occupancy determination by a processor remote from
`the memory.
`• The petition alleges that Geadelmann merely has a local
`thermostat with an occupancy sensor – not a processor that
`makes a determination – and indeed that local thermostat is in
`the same building as the memory.
`
`POR at 21-22; Ex. 1012 at ¶ 59
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 27
`
`
`
`Geadelmann Does Not Disclose
`Automatically Determining Occupancy
`
`• Mr. Shah admits that “Geadelmann does not expressly state that
`the occupancy sensor is used to determine occupancy.”
`Ex. 1002, ¶ 103.
`• Even if it did, an occupancy sensor is not a processor that
`makes a determination.
`
`POR at 37; Ex. 1012 at ¶ 94
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 28
`
`
`
`First Processor Not “Located Remotely”
`From The Memory In Geadelmann
`
`• Google claims BCA 12 or
`Programmable Thermostats meet
`claim [1k]
`• But BCA 12 does not meet claim [1l]
`• Only alleges PC 34 or Programmable
`Thermostats 26-32 for Claim [1l]
`
`• But Google also argues that
`memory of claim [1b] is either BCA
`12 or Programmable Thermostats.
`Pet. at 24.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 29
`
`POR at 23; Ex. 2013, ¶ 61.
`
`
`
`First Processor Not “Located Remotely”
`From The Memory In Geadelmann
`
`• First Processor of Claim
`[1l] Must Be Remote
`from Memory
`
`• Programmable
`Thermostat Cannot Be
`Both Memory and First
`Processor
`
`wherein the one or more processors comprises a first
`processor with circuitry and code designed to execute
`instructions, which is located remotely from the
`memory and is not electrically connected to the
`memory;
`the first processor with circuitry and code designed to
`execute instructions
`to communicate with the
`memory;
`wherein the memory is configured to store historical
`values of the first data and second data.
`
`Ex. 1001, col. 8:58-67
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 30
`
`
`
`Thermostats Not ”Located Remotely” From BCA 12
`BCA 12 And Programmable Thermostats Are Located In The Same Building.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 31
`
`Ex. 1004, Fig. 1
`
`
`
`User Device 34 Cannot Be “First Processor”
`User Device 34 Does Not Meet Claims [1d], [1e], [1f], Or [1k].
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 32
`
`POR at 23; Ex. 2013, ¶ 61.
`
`
`
`Claims [1e] and [1m] Are Not Met by Geadelmann
`
`Element [1e]:
`
`Element [1m]:
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 33
`
`
`
`Claims [1e] and [1m] Are Not Met by Geadelmann
`
`• Google identifies a
`navigation bar that includes
`“Local Weather and
`Outdoor Air Temperature.”
`
`• Ignores that this is an
`external link to click to
`access the weather
`
`• This data is at the server
`hosting the link, not the
`system in Geadelmann
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 34
`
`Ex. 1004, Fig. 10A
`
`
`
`Claims [1e] and [1m] Are Not Met by Geadelmann
`
`• Google argues that “measurements of
`outside temperature would most
`obviously have been made by exposing
`temperature sensor to outside air,
`which can only be found external to the
`building.” Ex. 1002, ¶ 79.
`
`• But there is no teaching in Geadelmann
`of where the temperature sensors are
`located or that they would send data to
`BCA 12 via the Internet
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 35
`
`Ex. 1004, Fig. 1
`
`
`
`No Teaching That Geadelmann Stores Outside Temperature
`Data
`
`• Fig. 7A Refers to an
`external website at
`Webstathoneywell.com.
`
`• No teaching in Geadelmann
`that weather data is stored
`anywhere other than this
`website.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 36
`
`Ex. 1004, Fig. 7A
`
`
`
`Geadelmann and Ehlers Do Not
`Render Obvious Claim 12
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 37
`
`
`
`Geadelmann and Ehlers Do Not Invalidate Claim 12
`
`Claim [1k]:
`
`Claim [12]:
`
`Google argues that BCA 12 or Thermostats 26-32 meet Claim 12 (Pet. at 64)
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 38
`
`
`
`Geadelmann and Ehlers Do Not Invalidate Claim 12
`
`• Claim [1l] requires the first processor to
`be “located remotely from the memory”
`
`• For Claim [1m], Google only relies on
`BCA 12 for memory that stores
`“historical values of the first and second
`data.”
`
`• Thus, the BCA 12 cannot be the First
`Processor for Claim 12
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 39
`
`Ex. 2016, 77:2-14
`
`
`
`Geadelmann and Ehlers Do Not Invalidate Claim 12
`
`• Programmable Thermostats
`26-32 do not meet Claim 12
`
`• As noted previously, the
`Programmable Thermostats
`26-32 are located in the same
`building as BCA 12
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 40
`
`Ex. 1004, Fig. 1
`
`
`
`Geadelmann and Ehlers Do Not Invalidate Claim 12
`No Teaching in Geadelmann that Programmable Thermostats 26-32 Determine
`Whether Building is Occupied or Unoccupied
`
`Ex. 1004, 8:31-43
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 41
`
`Ex. 1004, Fig. 9E
`
`
`
`Geadelmann and Ehlers Do Not Invalidate Claim 12
`
`• No other description in Geadelmann of occupancy
`• No discussion about occupancy sensors, how they function, or where
`occupancy determination is made
`• Google’s own Expert admits that “Geadelmann does not expressly state
`that the occupancy sensor is used to determine occupancy.”
`Ex. 1002, ¶ 103.
`• Nothing inherent as to where the occupancy determination occurs.
`• Just as likely to be performed at BCA 12, or even elsewhere, as at
`thermostats 26-32.
`• Ehlers does not remedy this deficiency
`• No teachings in Ehlers of occupancy sensor used to determine
`occupancy.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 42
`
`
`
`No Motivation to Modify Geadelmann and Ehlers
`
`• Sole Motivation
`Provided Is Insufficient:
`• Conclusory.
`• Merely repeats the claimed
`elements.
`• Geadelmann does not
`disclose thermostats that
`contain occupancy sensors.
`
`Ex. 1004, 8:31-43
`
`Pet. at 64.
`
`ECOFACTOR, INC.
`
`DEMONSTRATIVE EXHIBIT—NOT EVIDENCE
`
`IPR2021-00054 | SLIDE 43
`
`
`
`
`
`Case IPR2021-00054
`Patent 10,534,382
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on
`
`February 3, 2022 by filing this document through the Patent Review E2E system as
`
`well as delivering a copy via electronic mail upon the following attorneys of record
`
`for the Petitioner:
`
`Matthew A. Smith, Reg. No. 49,0003
`Andrew S. Baluch, Reg. No. 57,503
`Elizabeth Laughton, Reg. No. 70,484
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`laughton@smithbaluch.com
`
`
`
`Date: February 3, 2022
`
`
`
`
`
`
`
`
`
`2
`
`
`
` / Philip X. Wang /
`Philip X. Wang
`Reg. No. 74,621
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`
`Attorney for Patent Owner
`
`
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