UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`90/014,679
`
`02/ 12/2021
`
`10534382
`
`024115
`
`6590
`
`KNOBBE MARTENS OLSON & BEAR LLP
`
`2040 MAIN STREET
`FOURTEENTH FLOOR
`
`IRVINE, CA 92614
`
`HUGHES DEANDRA M
`
`3992
`
`MAE DATE
`
`03/09/2021
`
`PAPERNUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`001
`
`GOOGLE 1023
`GOOGLE 1023
`
`001
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER‘S CORRESPONDENCE ADDRESS)
`
`SUGHRUE MION, PLLC
`2000 PENNSYLVANIA AVENUE, N.W.
`SUITE 900
`
`WASHINGTON, DC 20006
`
`EXPAHTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,679.
`
`PATENT UNDER REEXAMINATION 10534382.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified expa/Te reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the expa/Te reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07-04)
`
`002
`
`002
`
`

`

`.
`Order Granting Request For
`EX Paffe Reexamination
`
`90/014,679
`
`10534382
`
`Patent Under Reexamination
`
`Examiner
`DEANDRA M HUGHES
`
`Art Unit
`3992
`
`AIA (FITF) Status
`No
`
`-- 7'he MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for expa/te reexamination filed 02/12/2021 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`
`
`Attachments: a).
`
`PTO-892,
`
`b)[:]
`
`PTO/SB/08,
`
`C)C] Other:
`
`1.
`
`The request for expan‘e reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). N0 EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`D.M.H/
`
`CHARLES R CRAVER/
`
`Reexamination Specialist, Art Unit 399 Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester )
`U.S. Patent and Trademark Office
`
`PTOL-471G(Rev. 01-13)
`
`Office Action in ExPalte Reexamination
`
`Part of Paper No. 20210222
`
`003
`
`003
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 2
`
`ORDER GRANTING REQUEST FOR EX PARTE REEXAMINATION
`
`Acknowledgements
`
`1.
`
`This is an order granting Ex Parte Reexamination of claims 1-20 of US. Patent
`
`No. 10,534,382,
`
`(“‘382 Patent”) issued January 14, 2020 and filed on April 3, 2019 as
`
`us. Application No. 16/374,085 (“085 Application”),
`
`titled “SYSTEM AND METHOD
`
`FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN ENERGY
`
`MANAGE MENT SYSTEM.”
`
`2.
`
`The ‘382 Patent issued with claims 1-20 (“Patented Claims”) and claims 1 and 17
`
`are independent claims. Thus, claims 1-20 are grouped as follows:
`
`— Claims 1-16; and
`
`— Claims 17-20.
`
`3.
`
`Examiners find the ‘382 Patent is a subject of a Request for Inter Partes Review
`
`in IPR2021-00054 filed on October 22, 2020.
`
`4.
`
`Examiners do not any previous EX parte reexaminations, supplemental
`
`examinations, or certificates of correction for the ‘382 Patent.
`
`5.
`
`The ‘382 Patent was filed on April 3, 2019 with the earliest possible effective
`
`filing date of July 14, 2008 because of the priority claim to Provisional Application No.
`
`61/134,714 filed on July 14, 2008.
`
`004
`
`004
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 3
`
`6.
`
`Examiners find the following notice of pending litigation (see Request, pg. 3).
`
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`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 4
`
`Patents/Printed Publications
`
`7.
`
`The following prior patents/printed publications are alleged to present an SNQ as
`
`to claims 1-20:
`
`— US 2009/0302994A1 to Rhee et al. published Jan. 15, 2004 and field on June
`10, 2008 (hereafter “Rhee”);
`
`— US 8,020,777 to Kates issued September 20, 2011 and filed on January 29,
`2007 (hereafter “Kates”);
`
`— US 8,239,922 to Sullivan et al. issued on August 7, 2012 and filed on August
`27, 2007 (hereafter “Su||ivan”).
`
`Proposed Substantial New Questions of Patentability (“SNQs”)
`
`8.
`
`The request proposed the following SNQs (see Request pg. 8);
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`Rhee anticipates or makes obvious claims 1-20;
`
`Rhee and Sullivan make obvious claims 7-9 and 15-16.
`
`Rhee and Kates make obvious claims 1-20;
`
`Rhee, Sullivan, and Kates make obvious claims 7-9 and 15-16.
`
`Basis of the Substantial New Question of Patentability
`
`9.
`
`Under MPEP §2242, for a substantial new question (“SNQ”) of patentability to be
`
`present, it is only necessary that: (A) the prior art patents and/or printed publications
`
`raise a substantial question of patentability regarding at least one claim, i.e., the
`
`teaching of the (prior art) patents and printed publications is such that a reasonable
`
`examiner would consider the teaching to be important in deciding whether or not the
`
`claim is patentable; and (B) the same question of patentability as to the claim has not
`
`been decided by the Office in an earlier concluded examination or review of the patent,
`
`raised to or by the Office in a pending reexamination or supplemental examination of
`
`006
`
`006
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 5
`
`the patent, or decided in a final holding of invalidity (after all appeals) by a federal court
`
`in a decision on the merits involving the claim.
`
`In this case, Examiners find the basis of the SNQ is ‘a HVAC system where: (1)
`
`temperature set points corresponding to building occupancy are set via the Internet; and
`
`(2) the memory storing historical values of the building temperature and the outdoor
`
`temperature is located remotely from the processors of the HVAC system’ for the
`
`following reasons.
`
`Examiners find the ‘382 Patent is directed to a system and method for using a
`
`wireless device as sensor for an energy management system (see title).
`
`Examiners find the ‘382 Patent specification describes the prior art as including
`
`programmable thermostats with restrictive user interfaces that allows the thermostat to
`
`drift in a temperature range dependent upon a relationship between the inside and
`
`outside temperatures (see background of the invention; col.1:40-42 and col.2:1-25).
`
`Examiners find the ‘382 Patent specification describes the prior art as including
`
`managing HVAC systems as function of occupancy via the use of keycard controls
`
`and/or motion sensor controls (see col.5:35-59).
`
`Examiners find the independent claims of the ‘382 Patent are directed to, inter
`
`alia,
`
`— “a first data... includes a measurement of at least one characteristic of the
`
`building,”
`
`— “a second data...received via the Internet,”
`
`— “a first temperature set point...when the building is occupied,”
`
`— “a second temperature set point...when the building is unoccupied,”
`
`— “receive commands through the Internet by way of a remote interface on a
`mobile...to adjust the set points,”
`
`007
`
`007
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 6
`
`—
`
`—
`
`‘send user-specific data through the lnternet...about the HVAC system,’
`
`‘Controlling the HVAC system based on the determination the building is
`
`occupied/unoccupied,’
`
`—
`
`‘a memory that is located remotely from the processors of the HVAC system,’
`
`— “the memory is configured to store historical values of the first data and the
`second data.”
`
`Examiners find the original claims of the ‘382 Patent were rejected over
`
`US2008/0281472 (“Podgorny”) and USZOO5/0270151 (“Winick”) in the prosecution of
`
`the ‘085 Application.
`
`Examiners find the claims were put into allowance with amendments that recite
`
`that the one or more processors include a processor “ located remotely from the memory
`
`and is not electrically connected to the memory” and that the memory “ is configured to
`
`store historical values of the first data and the second data” (see the ‘085 Application,
`
`Claim Amendment and Remarks filed August 2, 2019).
`
`Examiners find the ‘382 Patent describes the first data is the current temperature
`
`of the building and the second data is the outdoor temperature of the building (see ‘382
`
`Patent claim 17).
`
`Because (1) it was known to one of ordinary skill in the art to control HVAC
`
`temperature set points as a function of occupancy where occupancy is determined via
`
`the use of keycard or a motion sensor and (2) the ‘382 Patent claims were placed in
`
`condition for allowance by adding limitations pertaining to the location of the memory
`
`(i.e., the memory that stores the historical building and outside temperatures) with
`
`respect to the location of the processors of the HVAC system, Examiners find these
`
`teachings important in determining the patentability of the ‘382 Patent claims.
`
`008
`
`008
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 7
`
`Thus, Examiners find a reasonable Examiner would find a prior art teaching of ‘a
`
`HVAC system where: (1) temperature set points corresponding to building occupancy
`
`are set via the Internet and (2) the memory storing historical values of the building
`
`temperature and the outdoor temperature is located remotely from the processors of the
`
`HVAC system’ to be important in deciding whether the claims of the ‘382 Patent are
`
`patentable.
`
`Order for Ex Parte Reexamination
`
`10.
`
`A SNQ over Rhee, alone or in combination, has been proposed as to claims 1-20
`
`(see Request, pg. 8).
`
`Examiners find Rhee was filed on June 10, 2008, which is before the earliest
`
`possible effective filing date of the ‘382 Patent, which is July 14, 2008.
`
`Examiners find Rhee was not previously considered because the art considered
`
`in the ‘085 Application was Podgorny and Winick.
`
`Examiners find Rhee discloses an HVAC system with different temperature set
`
`points for when the building is occupied/unoccupied (see e.g., Table 1).
`
`Examiners find Rhee discloses an energy management system (fig. 1A, #50) that
`
`includes the Internet (#52) and awireless gateway (#53) and wireless controller (fig. 1B,
`
`#110) for managing the HVAC system as function of energy data comprising the
`
`building temperature, outside temperature (see 1l[0040]), and historical energy data (see
`
`1l[0057]).
`
`Examiners find Rhee discloses using a cellular phone network connected to a
`
`wireless controller (fig. 1B, #110) to manage energy devices (see 1l[0047]).
`
`009
`
`009
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 8
`
`Because Rhee discloses using the Internet
`
`to manage temperature set points of
`
`an HVAC system as a function of building occupancy and historical energy data (e.g.,
`
`building and outside temperatures), a reasonable Examiner would consider the
`
`disclosures of Rhee, alone or in combination with either Sullivan or Kate, to be
`
`important in deciding whether or not the ‘382 Patent claims are patentable irrespective
`
`of Rhee’s specific disclosure of where the memory storing the historical temperature
`
`values is located.
`
`Thus, Rhee is a prior art teaching that meets the basis of the SNQ, which is ‘a
`
`HVAC system where: (1) temperature set points corresponding to building occupancy
`
`are set via the Internet and (2) the memory storing historical values of the building
`
`temperature and the outdoor temperature is located remotely from the processors of the
`
`HVAC system.’
`
`Order
`
`11.
`
`For the above reasons, the request for EX Parte Reexamination of claims 1-20
`
`over Rhee, alone or in combination with another prior art reference of record, is
`
`GRANTED.
`
`Conclusion
`
`12.
`
`A shortened statutory period for response to this action is set to expire 2 months
`
`from the mailing date of this action.
`
`Extensions of time under 37 CFR 1.136(a) do not apply in reexamination
`
`proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to
`
`parties in a reexamination proceeding. Further,
`
`in 35 U.S.C. 305 and in 37 CFR
`
`010
`
`010
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 9
`
`1.550(a),
`
`it is required that reexamination proceedings “will be conducted with special
`
`dispatch within the Office.”
`
`Extensions of time in reexamination proceedings are provided for in 37 CFR
`
`1.550(0). A request for extension of time must specify the requested period of extension
`
`and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g). Any request
`
`for an extension in a third party requested ex parte reexamination must be filed on or
`
`before the day on which action by the patent owner is due, and the mere filing of a
`
`request will not effect any extension of time. A request for an extension of time in a third
`
`party requested ex parte reexamination will be granted only for sufficient cause, and for
`
`a reasonable time specified. Any request for extension in a patent owner requested ex
`
`parte reexamination (including reexamination ordered under 35 U.S.C. 257) for up to
`
`two months from the time period set in the Office action must be filed no later than two
`
`months from the expiration of the time period set in the Office action. A request for an
`
`extension in a patent owner requested ex parte reexamination for more than two
`
`months from the time period set in the Office action must be filed on or before the day
`
`on which action by the patent owner is due, and the mere filing of a request for an
`
`extension for more than two months will not effect the extension. The time for taking
`
`action in a patent owner requested ex parte reexamination will not be extended for more
`
`than two months from the time period set in the Office action in the absence of sufficient
`
`cause or for more than a reasonable time.
`
`The filing of a timely first response to this final rejection will be construed as
`
`including a request to extend the shortened statutory period for an additional two
`
`011
`
`011
`
`

`

`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`Page 10
`
`months. In no event, however, will the statutory period for response expire later than
`
`SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
`
`13.
`
`Correspondence
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed as follows:
`
`By US. Postal Service Mail
`
`to:
`
`Mail Stop EX Parte Reexam
`ATTN: Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`By FAX to:
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`Customer Service Window
`
`Randolph Building
`
`401 Dulany St.
`
`Signed:
`
`/DEANDRA M HUGHES/
`
`Reexamination Specialist, Art Unit 3992
`
`Conferees:
`
`/CHARLES R CRAVER/
`
`Primary Examiner, Art Unit 3992
`/M.F/
`
`Supervisory Patent Examiner, Art Unit 3992
`
`012
`
`012
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`) )
`
`) )
`
`) )
`
`Inventors:
`
`John Douglas Steinberg
`
`Patent No:
`
`10,534,382
`
`Date of Patent:
`
`January 14, 2020
`
`Title:
`
`)
`SYSTEM AND METHOD
`)
`FOR USING A WIRELESS
`DEVICE AS A SENSOR FOR )
`AN ENERGY
`MANAGElVIENT SYSTEM
`
`) ) ) ) )
`
`Filed:
`
`April 3, 2019
`
`Mail Stop “Ex Part6 Reexam”
`Attn: Central Reexamination Unit
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`RES QUEST FOR REEXAMINATION OF US. PATENT 10,534,382
`
`013
`
`013
`
`

`

`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`TABLE OF CONTENTS
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED ........ l
`
`II.
`
`REQUIRED CERTIFICATIONS ......................................................... 2
`
`III.
`
`NOTICE OF PENDING LITIGATION ............................................... 3
`
`IV.
`
`SUIVIMARY OF THE ’382 PATENT .................................................. 4
`
`A.
`
`B.
`
`Brief Description of the ’382 Patent .......................................... 4
`
`Summary of the Prosecution History of the ’382 Patent ........... 5
`
`CITATION OF PRIOR ART ............................................................... 6
`
`VI.
`
`STATEMENT POINTING OUT SUB STANTIAL NEW QUESTIONS OF
`PATENTABILITY (“SNQP”) ............................................................. 8
`
`A.
`
`B.
`
`Summary of Proposed Rejections .............................................. 8
`
`SNQP 1: Claims 1-20 are anticipated by or rendered obvious by
`Rhee. ........................................................................................... 9
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Overview of Rhee. ........................................................... 9
`
`Rhee disclosed all elements of independent claims 1 and 17.
`.......................................................................................... 9
`
`Rhee disclosed the dependent limitations of claim 2 (which
`depends from claim 1). .................................................. 50
`
`Rhee disclosed the dependent limitations of claim 3 (which
`depends from claim 1). .................................................. 52
`
`Rhee disclosed the dependent limitations of claim 4 (which
`depends from claims 1 and 2). ....................................... 54
`
`Rhee disclosed the dependent limitations of claim 5 (which
`depends from claims 1, 2, and 4). .................................. 55
`
`Rhee disclosed the dependent limitations of claim 6 (which
`depends from claims 1, 2, and 4). .................................. 57
`
`Rhee disclosed the dependent limitations of claim 7 (which
`depends from claim 1). .................................................. 61
`
`Rhee disclosed the dependent limitations of claim 8 (which
`depends from claims 1 and 7). ....................................... 66
`
`i
`
`O14
`
`014
`
`

`

`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`Rhee disclosed all elements of dependent claim 9 (which
`depends from claims 1 and 7). ....................................... 68
`
`Rhee disclosed the dependent limitations of claim 10 (which
`depends from claims 1, 2 and 4). ................................... 71
`
`Rhee discloses all elements of dependent claim 11 (which
`depends from claim 1). .................................................. 75
`
`Rhee disclosed all elements of dependent claim 12 (which
`depends from claim 1 ..................................................... 77
`
`Rhee disclosed all elements of dependent claim 13 (which
`depends from claim 1). .................................................. 78
`
`Rhee disclosed all elements of dependent claim 14 (which
`depends from claim 1). .................................................. 79
`
`Rhee disclosed all elements of claim 15 (which depends from
`claims 1 and 7). .............................................................. 81
`
`Rhee disclosed all elements of claim 16 (which depends from
`claims 1 and 7). .............................................................. 83
`
`Rhee disclosed the dependent limitations of claim 18 (which
`depends from claim 17). ................................................ 87
`
`Rhee disclosed all elements of dependent claim 19 (which
`depends from claim 1) and dependent claim 20 (which depends
`from claim 17) ................................................................ 88
`
`C.
`
`SNQP 2: Claims 7-9 and 15 -16 are rendered obvious by Rhee in view
`of Sullivan. ............................................................................... 94
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Sullivan. .................................................... 94
`
`Sullivan disclosed the dependent limitations of claim 7 (which
`depends from claim 1). .................................................. 95
`
`Sullivan disclosed the dependent limitations of claim 8 (which
`depends from claims 1 and 7). ..................................... 101
`
`Sullivan disclosed all elements of dependent claim 9 (which
`depends from claims 1 and 7). ..................................... 106
`
`Sullivan disclosed all elements of claim 15 (which depends
`from claims 1 and 7). ................................................... 109
`
`Sullivan disclosed all elements of claim 16 (which depends
`from claims 1 and 7). ................................................... 114
`
`ii
`
`015
`
`015
`
`

`

`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`7.
`
`Motivation to combine Rhee and Sullivan .................. 116
`
`D.
`
`SNQP 3: Claims 1-20 are rendered obvious by Rhee in view of Kates.
`................................................................................................ 1 17
`
`1.
`
`2.
`
`Overview of Kates. ...................................................... 117
`
`Kates disclosed processors that determined “whether the
`building is occupied or unoccupied” based at least in part on
`“third data from a motion sensor” and controlled the HVAC
`
`system to heat or cool the building at an operation temperature
`based on the determination. ......................................... 119
`
`3.
`
`Motivation to combine Rhee and Kates ....................... 132
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`E.
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`SNQP 4: Claims 7-9 and 15 -16 are rendered obvious by Rhee in view
`of Kates and Sullivan. ............................................................ 133
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`VII. CONCLUSION ................................................................................. 133
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`EXHIBITS
`
`
`Exhibit Description
`D>
`US. Patent No. 10,534,382 {the “’382 Patent”)
`File History of the ’382 Patent
`
`US. Patent Pub. No. 2009/0302994 (“Rhee”)
`
`US. Patent No. 8,020,777 (“Kates”)
`US. Patent No. 8,239,922 (“Sullivan”)
`Western District of Texas Preliminary Claim Constructions (Dec. 9,
`2020}
`Declaration of Tajana Simunic’ Rosing, PhD.
`
`File History of US. Appl. No. 15/002,791
`
`File History of US. Appl. No. 13/470,074
`
`File History of US. Appl. No. 12/502,064
`File History of US. Provisional Appl. No. 61/134,714
`Terminal Disclaimer for the ’382 Patent
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` mmcow
`WW‘HEQ
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`iV
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`Pursuant to 35 U.S.C. §§ 302-307 and 37 C.F.R. § 1.510, Alarmcom
`
`Incorporated (“Alarmcom”) respectfully requests ex parte reexamination of claims
`
`1-20 of US. Patent No. 10,534,382 (Exhibit A, the “’382 Patent”), which was filed
`
`on April 3, 2019, issued on January 14, 2020 to EcoFactor, Inc. (“EcoFactor” or
`
`“Patent Owner”), and is currently assigned to EcoFactor according to the United
`
`States Patent and Trademark Office (the “Office”) assignment records.
`
`As set forth in detail below, US. Patent Pub. No. 2009/0302994 (“Rhee”),
`
`alone or in combination with other references, raises substantial new questions of
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`patentability of claims 1-20 of the ’382 Patent.
`
`1.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED
`
`Pursuant to 35 U.S.C. § 303 and 37 C.F.R. § 1.510, the following prior art
`
`references raise substantial new questions of patentability (“SNQP”) concerning
`
`claims 1-20 of the ’382 Patent:
`
`US. Patent Pub. No. 2009/0302994 (“Rhee”)
`
`US. Patent No. 8,020,777 (“Kates”)
`
`US. Patent No. 8,239,922 (“Sullivan”)
`
`Pursuant to 37 C.F.R. § 1.510(b)(3), copies of Rhee, Kates and Sullivan are
`
`attached hereto as Exhibits C—E, respectively.
`
`In particular, pursuant to 37 U.S.C. § 1.510(b)(1), Alarmcom identifies the
`
`following references that raise a SNQP concerning claims 1-20 of the ’382 Patent.
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`018
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`018
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`
`Anticipated by Rhee and/or obvious in view of
`Rhee and the knowledge of a POSITA
`
`
`
`
`knowledge of a POSITA
`Obvious in view of Rhee, Kates and the
`knowledge of a POSITA
`7-9, 15-16 Obvious in view of Rhee, Sullivan, Kates and
`the knowledge of a POSITA
`
`II.
`
`REQUIRED CERTIFICATIONS
`
`Submitted herewith is the fee set forth in 37 CPR. § 1.510 and 37 CPR. §
`
`120(c)(1).
`
`Pursuant to 37 CPR. § 1.510(b)(5), the attached Certificate of Service
`
`indicates that a copy of this Request has been served on Patent Owner at the
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`following address of the attorney of record for Patent Owner, in accordance with
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`37 CPR. § 1.33(c):
`
`EcoFactor, Inc.
`Knobbe Martens Olson & Bear LLP
`
`2040 Main Street, 14th Floor
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`Irvine, CA 92614
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`As required by 37 CPR. § 1.510(b)(6), Alarmcom certifies that the
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`statutory estoppel provisions of 35 U.S.C. § 315(e)(1) and 35 U.S.C. § 325(e)(1)
`
`do not prohibit Alarm.com from filing this ex parte reexamination request.
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
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`III. NOTICE OF PENDING LITIGATION
`
`The ’382 Patent is the subject of four patent infringement lawsuits by the
`
`assignee of record, EcoFactor, which may affect, or be affected by, a decision in
`
`this proceeding: EcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-00075-ADA
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`(WD. TeX., filed Jan. 31, 2020); EcoFactor, Inc. v. Ecobee, Inc., Case No. 6:20-
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`cv-00078-ADA (WD. TeX., filed Jan. 31, 2020); EcoFactor, Inc. v. Vivint, Inc.,
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`Case No. 6:20-cv-00080-ADA (WD. TeX., filed Jan. 31, 2020); EcoFactor, Inc. v.
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`Alarmcom Inc., 1:20-cv-11007-LTS (D. Mass, filed May 26, 2020).1
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`EcoFactor has asserted four patents against Petitioner in the Massachusetts
`
`litigation: US. Patent Nos. 8,738,327, 8,412,488, 8,180,492 and the ’382 Patent.
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`The ’382 Patent is also the subject of a Request for Inter Partes Review in
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`IPR2021-00054, which was filed by Google LLC on October 22, 2020.
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`1 On December 9, 2020, the Court issued preliminary claim constructions in the
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`Western District of Texas actions. In relevant part, the Court construed the term
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`“measurement” in the claims of the ’382 Patent to have its plain and ordinary
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`meaning. EX. F at 3. No other terms from the ’382 Patent claims were construed
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`by the Court.
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
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`IV.
`
`SUMMARY OF THE ’382 PATENT
`
`A.
`
`Brief Description of the ’382 Patent
`
`The ’382 Patent is directed to systems and methods for “thermostatic HVAC
`
`and other energy management controls that are connected to a computer network”.
`
`Ex. A at 1:16-19. Specifically, the ’382 Patent relates to the use of user
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`interactions with an interface such as a personal computer as a signal related to
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`occupancy to inform an energy management system. Id. at 1:16-23.
`
`The ’382 Patent states that energy consumption by an HVAC system is
`
`directly proportional to the setpoint (116., the desired temperature set on a
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`thermostat). Id. at 2: 15-24. Therefore, allowing the setpoint to rise by several
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`degrees in the summer during periods when the home is unoccupied can result in
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`reduced energy consumption and greater cost savings. Id. at 2:24-34. The ’382
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`Patent explains that it would be desirable to provide a system that could accurately
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`detect occupancy and control the HVAC system accordingly. Id. at 3 :15-20. For
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`example, the ’382 Patent contemplates detecting occupancy based on a user’s
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`activity patterns on certain “computers or other consumer electronic devices”. Id.
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`at 3:24-41.
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`Claim 1 of the ’382 Patent is directed to a system for controlling an HVAC
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`system at a user’s building comprising one more processors with circuitry and code
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`designed to execute instructions that, among other things, receives data, commands
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
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`and user-specific information, and controls an HVAC system based on a
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`determination as to whether the building is occupied or unoccupied. Id. at cl. 1.
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`B.
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`Summary of the Prosecution History of the ’382 Patent
`
`The ’382 Patent issued from US. Pat. App. No. 16/374,085 (the “’085
`
`Application”), which also claimed the benefit of US. Pat. App. Nos. 15/002,791
`
`(filed Jan. 21, 2016), 13/470,074 (filed May 11, 2012), 12/502,064 (filed July 13,
`
`2009) and 61/134,714 (filed July 14, 2008). Ex. B at B210.
`
`In an office action dated May 8, 2019, the Examiner rejected all pending
`
`claims under 35 U.S.C. § 103 on the basis of US. Patent Pub. Nos. 2008/0281472
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`(“Podgomy”) and 2010/0308119 (“Steinberg”). Id. at B.167-79. In that same
`
`office action, the Examiner also rejected claims 1-19 on the ground of non-
`
`statutory double patenting over US. Patent Nos. 10,289,131, 9,244,470 and
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`8,180,492, and rejected claims 19-20 under 35 U.S.C. § 112 11 2. Id. at B.160-67.
`
`In response, Applicants submitted a terminal disclaimer and requested that the
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`double patenting rejection be withdrawn. Id. at B.126. Applicants also amended
`
`claim 19 to address the § 112 rejection, and argued that the § 103 rejection should
`
`be withdrawn because Steinberg was not prior art. Id. at B.127-28.
`
`In an office action dated July 17, 2019, the Examiner again rejected all
`
`pending claims under § 103 on the basis of Podgomy and US. Patent Pub. No.
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`2005/0270151 (“Winick”). Id. at B.84-96. In that same office action, the
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`Examiner also rejected claims 13, 16 and 20 under § 112 11 2. Id. at 3083. In
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`response, on April 3, 2019, Applicant amended the claims to all recite (or depend
`
`from a claim that recites) that the one or more processors include a processor
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`“located remotely from the memory and is not electrically connected to the
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`memory” and that the memory “is configured to store historical values of the first
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`data and second data”. Id. at B.049-54. On September 4, 2019, the Examiner
`
`allowed the claims as amended, finding that those limitations were not disclosed in
`
`the prior art. Id. at B.013-21.
`
`The terminal disclaimer for the ’382 Patent is attached as Exhibit L.
`
`V.
`
`CITATION OF PRIOR ART
`
`Reexamination is requested in light of the following prior art references:
`
`1.
`
`US. Patent Pub. No. 2009/0302994 (“Rhee”). The application for
`
`Rhee was filed on June 10, 2008 and it was published on December 10, 2009.
`
`Rhee was not cited as a reference in the prosecution of the ’382 Patent. A copy of
`
`Rhee is attached as Exhibit C.
`
`2.
`
`US. Patent No. 8,020,777 (“Kates”). The application for Kates was
`
`filed on January 29, 2007 and the patent was issued on September 20, 2011. Kates
`
`was not cited as a reference in the prosecution of the ’382 Patent. A copy of Kates
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`is attached as Exhibit D.
`
`3.
`
`US. Patent No. 8,239,922 (“Sullivan”). The application for Sullivan
`
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`was filed on August 27, 2007 and the patent was issued on August 7, 2012.
`
`Sullivan was not cited as a reference in the prosecution of the ’382 Patent, although
`
`a similar reference, US. Patent Pub. No. 2009/0057426, was cited. Ex. B at
`
`B201. A copy of Sullivan is attached as Exhibit E.
`
`The ’382 Patent is subject to the prior art requirements of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011) (“AIA”).2 Each of the
`
`above references is prior art to the ’382 Patent under the AIA, 35 U.S.C. §
`
`2 To be subject to the AIA, the patent must meet the requirements of Section
`
`3(n)(1) of the AIA. The ’382 Patent meets these requirements at least because
`
`claims 19 and 20 have an effective filing date after March 16, 2013. Claims 19
`
`and 20 the ’382 Patent were added by amendment in 2019 (after March 16, 2013)
`
`without any written description support in the application. Ex. B at B054. Nor
`
`does any application to which the ’382 Patent claims priority provide written
`
`description for claims 19 or 20. For example, claim 20 requires that the processors
`
`control the HVAC system based at least in part on historical values of
`
`measurements of the temperature of the building (first data) and outdoor
`
`temperatures received from the Internet (second data). Neither the application that
`
`resulted in the ’382 Patent nor any of the earlier applications incorporated therein
`
`contain any teaching of this limitation. See Exs. B, H-K.
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`024
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`Request for Ex Part6 Reexamination
`US. Patent No. 10,534,382
`
`102(a)(2) (2018),