Google LLC, et al. v. EcoFactor, Inc.
`IPR2021-00054
`U.S. Pat. No. 10,534,382
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`Petitioner Google’s Oral Hearing Demonstratives
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`February 8, 2022
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`SMITH BALUCH LLP
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`IPR2021-00054
`U.S. Pat. No. 10,534,382
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`Petitioner Google’s Oral Hearing Demonstratives
`
`February 8, 2022
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`SMITH BALUCH LLP
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`1
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`1[a]
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`[1b]
`[1c]
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`[1d]
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`[1e]
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`[1f]
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`[1g]
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`Claim 1 with limitations labeled – for the Board’s reference
`[1h]
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`[1i]
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`[1j]
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`[1k]
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`[1l]
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`[1m]
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`SMITH BALUCH LLP
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`2
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`Three Main Arguments from the Patent Owner Response:
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`1. Claim construction: “one or more processors”
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`2. Claim limitations [1e] and [1m] (“second data”)
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`3. Claim 12
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`SMITH BALUCH LLP
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Three Main Arguments from the Patent Owner Response:
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`1. Claim construction: “one or more processors”
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`2. Claim limitations [1e] and [1m] (“second data”)
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`3. Claim 12
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`EcoFactor’s Patent Owner Response
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`Patent Owner Response (“POR”), p. 13 (highlighting added)
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`Language of the Claims
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`• EcoFactor’s only argument to narrow “one or more processors” is based on the fact that the same “one or
`more processors” is recited in each of limitations [1d], [1e], [1f], [1g], [1i], [1k], and [1l].
`
`• However, the fact that the same group of “one or more processors” is recited in each limitation does not
`dictate how each processor within in the group works to accomplish the stated functions.
`
`• Under Federal Circuit case law, the language “one or more processors / computers [configured to perform
`a function]” allows multiple processors / computers to cooperate to perform a function.
`
`• Unwired Planet LLC v. Google, Inc., 660 Fed. App’x. 974 (Fed. Cir. 2016)(unpublished)
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`• Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313 (Fed. Cir. 2016)
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`•
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`In each case, the question was whether a singular claim term preceded by the article “a” (specifically
`“a server” and “a processor”) could be re-written as “one or more” (“one or more computers” and
`“one or more processors”). Once the CAFC determined that “a” meant “one or more”, it was clear to
`the court that several processors / computers could cooperate to carry out the functional portions of
`the claims.
`(Reply, pp. 9-12)
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`Federal Circuit:
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`“The claim requires the server node to perform receiving, accessing,
`processing, and transmitting services. It does not specify that the node must be
`one or more computers with each performing every one of the computers’
`functions. Nor does the claim rule out multiple computers or programs
`working in concert to operate as the claimed server node.”
`
`Unwired Planet LLC v. Google, Inc., 660 Fed. App’x. 974, 980 (Fed. Cir. 2016)(unpublished)(Emphasis
`added)
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`SMITH BALUCH LLP
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`(Reply, p. 11)
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`EcoFactor’s Expert’s Testimony
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`. . .
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`(Palmer Depo., Ex. 1025, 31:4-32:2)
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`SMITH BALUCH LLP
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`(Reply, pp. 12-13)
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`8
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`EcoFactor’s Patent Owner Response
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`• EcoFactor’s position conflicts with the dependent claims. Specifically, the Patent Owner Response argues
`that claim 1 requires each of the “one or more processors” to carry out limitations including [1k] and [1l].
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`POR, p. 13 (highlighting added)
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`SMITH BALUCH LLP
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`(Reply, pp. 13-14)
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`9
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`EcoFactor’s Patent Owner Response
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`• Limitation [1l] is drawn to a “first processor”, which is expressly one of the “one or more
`processors”
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`• EcoFactor’s logic dictates that the “first processor” must perform each of [1d], [1e], [1f], [1g],
`[1i], [1k], and [1l]. This is because the “first processor” is one of the “one or more processors”,
`and because EcoFactor argues that “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].” (POR, p. 13).
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`SMITH BALUCH LLP
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`(Reply, pp. 13-14)
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`10
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`EcoFactor’s Patent Owner Response
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`• However, dependent claims 12 and 13 specifically require the “first processor” to perform parts
`of element [1k]
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`•
`
`If EcoFactor were correct that claim 1 already required each of the one or more processors to
`carry out each of the “elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]”, then claims 12 and 13
`would be rendered superfluous.
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`(Reply, pp. 13-14)
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`EcoFactor’s Sur-Reply
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`Sur-Reply, p. 4 (highlighting added)
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`12
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`Specification
`• The Specification of the ‘382 patent does not describe any single processor that performs each of
`limitations [1d], [1e], [1f], [1g], [1i], [1k], and [1l], much less two processors that each perform limitations
`[1d], [1e], [1f], [1g], [1i], [1k], and [1l] in parallel.
`
`• The Patent Owner Response seems to indicate that a single processor that performs all functions of the
`claims is found in server 106.
`
`•
`
`If the server 106 is the (single) example of a processor that carries out each of limitations [1d], [1e], [1f],
`[1g], [1i], [1k], and [1l], then it must be the “first processor” of the claims.
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`• The “first processor” of the claims, according to claim limitation [1l], must be “located remotely from the
`memory”.
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`• However, server 106 also contains the “memory” required by claim element [1b]. As EcoFactor explained
`in the POR, “As disclosed, the memory, i.e., the databases 300 in servers 106…”. (POR, pp. 5 and 10).
`EcoFactor’s expert testified similarly. (Ex. 1025, 18:10-13).
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`• The server and its memory cannot be remote from itself, and thus the server 106 cannot be a “first
`processor” that carries out each of limitations [1d], [1e], [1f], [1g], [1i], [1k], and [1l].
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`(Reply, pp. 14-17)
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`• EcoFactor’s sur-reply:
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`Specification
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`Sur-reply, p. 6.
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`Specification
`• The server 106 does not carry out each element of the claims. For example, the server 106 does not carry
`out limitation [1i].
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`• EcoFactor’s sur-reply:
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`Sur-reply, p. 6
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`(Reply, pp. 14-17)
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`15
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`Specification
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`• EcoFactor’s sur-reply:
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`Sur-reply, p. 6
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`(Reply, pp. 14-17)
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`Three Main Arguments from the Patent Owner Response:
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`1. Claim construction: “one or more processors”
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`2. Claim limitations [1e] and [1m] (“second data”)
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`3. Claim 12
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`SMITH BALUCH LLP
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`Claim limitations [1e] and [1m]
`• EcoFactor contends that the obviousness combination lacks claim elements [1e] and [1m]. For reference,
`these elements read:
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`• The Petition contended that the “second data” was weather data, and specifically outside temperature
`data, that it is received via the Internet and stored in the memory of the BCA. (Petition, pp. 27-30, 49-52).
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`Claim limitations [1e] and [1m]
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`• Geadelmann teaches a Building Control Appliance (“BCA”) 12, as shown in Figs. 1 and 2:
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`(Petition, pp. 13, 24)(Reply, pp. 30-31)
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`Claim limitations [1e] and [1m]
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`• As shown in Fig. 2, the BCA has a web server 38. The web server 38 serves all the web pages shown in Figs.
`3A-10D of Geadelmann.
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`Geadelmann, Ex. 1004, 9:11-16.
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`(Petition, pp. 13, 24)(Reply, pp. 30-31)
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`Claim limitations [1e] and [1m]
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`• One of these web pages is Fig. 7A. As shown in Fig. 7A, the web server in the BCA can graph historical
`outside temperatures, indicating that it has both received and stored those temperatures:
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`(Petition, pp. 51-52)(Reply, pp. 27-28)
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`21
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`Claim limitations [1e] and [1m]
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`• Almost every web page 3A-10D includes outside temperature information. For example, Fig. 10A shows
`and outside temperature of 76 degrees F, as well as its source (highlighting added):
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`(Petition, p. 29)(Reply, pp. 28-29)
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`• Fig. 9E shows (highlighting added):
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`Claim limitations [1e] and [1m]
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`(Reply, pp. 29-30)(Petition, pp. 29, 43)
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`23
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`Claim limitations [1e] and [1m]
`• EcoFactor argues that the BCA does not receive the outside temperature, but rather, the user device
`retrieves the temperature (POR, p. 32)(“a user is taken to another website to view the second data….”). Dr.
`Palmer explained as follows:
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`. . .
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`24
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`(Palmer Depo, Ex. 1025, 42:10-43:8)(Reply, p. 27)
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`Claim limitations [1e] and [1m]
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`• Even if accurate, EcoFactor’s alternate scenario would still meet the claim language. Specifically, the user’s
`PC or PDA 34 is also one of the “one or more processors” of claim 1. (Petition, p. 24).
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`• Thus, even if Dr. Palmer is correct that “weather.com would send the information back to the user device
`such that the user processor gets it but not the processor in the BCA” (Ex. 1025, 43:2-8), claim limitation
`[1e] is still met, because one of the “one or more processors” is receiving “second data” (outside
`temperature) via the Internet (from weather.com).
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`SMITH BALUCH LLP
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`(Reply, p. 27)
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`25
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`
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`Three Main Arguments from the Patent Owner Response:
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`1. Claim construction: “one or more processors”
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`2. Claim limitations [1e] and [1m] (“second data”)
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`3. Claim 12
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`SMITH BALUCH LLP
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`26
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`• EcoFactor argues that the Petition did not demonstrate the obviousness of claim 12. Claim 12 reads:
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`Claim 12
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`• The Petition contended that it would be obvious to have the determination made by the
`thermostat or the BCA. (Petition, pp. 64 and 42). Specifically with regard to claim 12, the
`Petition identified the thermostat, because the thermostat was a “first processor”. (Petition, p.
`64).
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`• EcoFactor argues that the thermostat is not remote from the BCA, but ignores the Petition’s
`argument that it was obvious to have BCA located remotely from the thermostats. (Petition, pp.
`48-49).
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`(Reply, pp. 30-34)
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`27
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