www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`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
`
`MAIL DATE
`
`03/09/2021
`
`PAPER NUMBER
`
`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
`GOOGLE1023
`
`001
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`P.O. 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
`
`EX PARTE REEXAMINATION 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 aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`002
`
`002
`
`

`

`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`DEANDRA M HUGHES
`3992
`No
`
`90/014,679
`
`10534382
`
`Patent Under Reexamination
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The request for exgarfe 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)0
`
`PTO/SB/08,
`
`c)Q Other:
`
`1.
`
`The requestfor exgarfe 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 BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`CHARLES R CRAVER/
`D.M.H/
`Reexamination Specialist, Art Unit 399 |Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471 G(Rev. 01-13)
`
`Office Action in Ex Parte 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 U.S. Patent
`
`No. 10,534,382, (“382 Patent’) issued January 14, 2020 and filed on April 3, 2019 as
`
`U.S. Application No. 16/374,085 (“085 Application’),
`
`titled “SYSTEM AND METHOD
`
`FOR USING A WIRELESS DEVICE AS A SENSOR FOR AN ENERGY
`
`MANAGEMENT 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 asfollows:
`
`— Claims 1-16; and
`
`— Claims 17-20.
`
`3.
`
`Examiners find the ‘382 Patent is a subject of a Request for /nter 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 wasfiled 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
`
`

`

`Examiners find the following notice of pending litigation (see Request, pg. 3).
`
`s
`
`Application/Control Number: 90/014,679
`Art Unit: 3992
`
`6.
`
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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 Rheeet 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 “Sullivan’).
`
`Proposed Substantial New Questions of Patentability (“SNQs”)
`
`8.
`
`The request proposed the following SNQs (see Requestpg. 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 decidedin a final holding of invalidity (after all appeals) by a federal court
`
`in adecision on the merits involving the claim.
`
`In this case, Examinersfind 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 memorystoring historical values of the building temperature and the outdoor
`
`temperature is located remotely from the processors of the HVAC system’ for the
`
`following reasons.
`
`Examinersfind the ‘382 Patent is directed to a system and methodfor using a
`
`wireless device as sensor for an energy management system (seetitle).
`
`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 occupancyvia 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,
`
`— “g 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 commandsthrough 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 Internet...about the HVAC system,’
`
`— ‘controlling the HVAC system based on the determination the building is
`occupied/unoccupied,’
`
`— ‘amemory 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 US2005/0270151 (“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
`
`andis 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 Remarksfiled August 2, 2019).
`
`Examinersfind the ‘382 Patent describes thefirst 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 knownto oneofordinary skill in the art to control HVAC
`
`temperature set points as a function of occupancy where occupancyis 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
`
`respectto 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.
`
`©ASNQ over Rhee, alone or in combination, has been proposed as to claims 1-20
`
`(see Request, pg. 8).
`
`Examiners find Rhee wasfiled 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 a wireless 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 ¥[0040]), and historical energy data (see
`
`q[0057)).
`
`Examiners find Rhee discloses using a cellular phone network connected to a
`
`wireless controller (fig. 1B, #110) to manage energy devices (see §[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 occupancyand 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, Rheeis 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 processorsof 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.
`
`|Ashortened 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 notto
`
`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(c). 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 mustbefiled on or
`
`before the day on which action by the patent owner is due, and the merefiling of a
`
`requestwill 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 mustbe 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 mustbe filed on or before the day
`
`on which action by the patent owner is due, and the merefiling 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.
`
`Thefiling 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 MONTHSfrom the mailing date of the final action. See MPEP § 2265.
`
`13.|Correspondence
`
`All correspondence relating to this ex parte reexamination proceeding should be
`
`directed asfollows:
`
`to:
`By U.S. Postal Service Mail
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`(571) 273-9900
`Central Reexamination Unit
`
`By handto:
`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 TRADEMARKOFFICE
`
`) )
`
`) )
`
`) )
`
`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
`MANAGEMENT SYSTEM
`
`) ) ) ) )
`
`Filed:
`
`April 3, 2019
`
`Mail Stop “Ex Parte Reexam”’
`Attn: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REQUEST FOR REEXAMINATION OFU.S. PATENT 10,534,382
`
`013
`
`013
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`TABLE OF CONTENTS
`
`I.
`
`TI.
`
`CLAIMS FOR WHICH REEXAMINATION IS REQUESTED ........ 1
`
`REQUIRED CERTIFICATIONS. .......0.ccccccccccccccscetseeteceseeteeneeeeeney 2
`
`WI. NOTICE OF PENDINGLITIGATION|... cece ett eneeees 3
`
`TV.
`
`SUMMARYOF THE 7382 PATENT 0.0.00... cccccccecceccccteeeeeceteeeteeees 4
`
`A.—Brief Description of the ’382 Patent .......0.000occ cee 4
`B.
`Summaryof the Prosecution History of the ’382 Patent........... 5
`
`V.
`
`VI.
`
`CITATION OF PRIOR ART oo... ceeeceteeteeeseeteenseenseessenseens 6
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS OF
`PATENTABILITY (“SNQP”) ooo. .cccccccccccccsceescesceteetsessseensensecsseeseenseees 8
`A.
`Summary of Proposed Rejections 0.0.0.0... ccc cccecceeeeeeeeees 8
`B.
` SNQP 1: Claims 1-20 are anticipated by or rendered obvious by
`RCC. eee ccc ccccceeceeeceeeceeseecseeeseecaseeseeeeeesseenseesseesseseeneeeses 9
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Overview Of Rhee. oo... cece ccc cececeteceneeetseetseeeseeneeenes 9
`
`Rhee disclosed all elements of independent claims 1 and 17.
`bees ceseeseeseeeseessesseesecssecsseeseeseeaeeseecsecsseesesseeseesseesesteetsenseenees 9
`
`Rhee disclosed the dependent limitations of claim 2 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 50
`Rhee disclosed the dependent limitations of claim 3 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 52
`Rhee disclosed the dependent limitations of claim 4 (which
`dependsfrom claims | and 2)... ccc eet c eres 54
`Rhee disclosed the dependent limitations of claim 5 (which
`depends from claims 1, 2, and 4)...eee 55
`Rhee disclosed the dependent limitations of claim 6 (which
`depends from claims 1, 2, and 4)...eee 57
`Rhee disclosed the dependent limitations of claim 7 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 61
`Rhee disclosed the dependent limitations of claim 8 (which
`dependsfrom claims | and 7). .....0.ccccceccccteeeecetees 66
`
`i
`
`014
`
`014
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`10.
`
`11.
`
`Rhee disclosed all elements of dependent claim 9 (which
`dependsfrom claims | and 7). .....0.ccccceccccteeeecetees 68
`Rhee disclosed the dependentlimitations of claim 10 (which
`depends from claims 1, 2 and 4)... cece 71
`Rhee discloses all elements of dependent claim 11 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 75
`Rhee disclosed all elements of dependent claim 12 (which
`dependsfrom claim 1.0.0.0... cece cece cece ceceeeeeeeenseees 77
`Rhee disclosed all elements of dependent claim 13 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 78
`Rhee disclosed all elements of dependent claim 14 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 79
`Rhee disclosed all elements of claim 15 (which depends from
`Claims 1 and 7). oo... ccc eccccccececceeseceesseceseeessseesseeeneeens 81
`Rhee disclosed all elements of claim 16 (which depends from
`Claims 1 and 7). oo... ccc eccccccececceeseceesseceseeessseesseeeneeens 83
`Rhee disclosed the dependentlimitations of claim 18 (which
`dependsfrom claim 17). oo... ccccceceesteeeeteeensees 87
`Rhee disclosed all elements of dependent claim 19 (which
`depends from claim 1) and dependent claim 20 (which depends
`from Claim 17)... cece ccccectececseeesseeeeeesenseenesesensees 88
` SNQP 2: Claims 7-9 and 15-16 are rendered obvious by Rhee in view
`Of Sullivan. 2... eee ec ce cceeeeeeneeneecseeenseeeeeeseeeseesneeensesseeenas 94
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`C.
`
`1.
`
`2.
`
`3.
`
`4,
`
`5.
`
`6.
`
`Overview of Sullivan. ......00cc cece ececcceeeceteeeteeeteeeteees 94
`
`Sullivan disclosed the dependentlimitations of claim 7 (which
`dependsfrom claim 1). oo... cece cccccceecseesteeeeeeeensees 95
`Sullivan disclosed the dependentlimitations of claim 8 (which
`dependsfrom claims | and 7)... cc ecceccteeeseeees 101
`Sullivan disclosed all elements of dependent claim 9 (which
`dependsfrom claims | and 7)... cc ecceccteeeseeees 106
`Sullivan disclosed all elements of claim 15 (which depends
`from claims | and 7)... ccc ceeeeteeteeteeeteeeeens 109
`Sullivan disclosed all elements of claim 16 (which depends
`from claims 1 and 7). ......cc ccc ecccceteeeseeeteeeeteeenteeens 114
`
`ii
`
`015
`
`015
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`7.
`
`Motivation to combine Rheeand Sullivan .................. 116
`
`D.
`
` SNQP 3: Claims 1-20 are rendered obvious by Rhee in view of Kates.
`ees cebu ee su eee eeeseessascsaeessessaessesesesesesessecsaesssesisessseeseeesasenieesieesieees 117
`
`Overview Of Kates. 0.00. cccccccccccccsseceesseeeenteeesensees 117
`
`2.
`
`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. 2.0.0.0... ccccecceeeeeeeees 119
`
`3.
`
`Motivation to combine Rhee and Kates...............000.... 132
`
`E.
`
`SNQP 4: Claims 7-9 and 15-16 are rendered obvious by Rhee in view
`of Kates and Sullivan. .....0000 ccc ccc cece ceeeseeeeseeeenaeeees 133
`
`VIDE. CONCLUSION .(.0.. ooo ccc cece ccccecesesecseesessetessteensteeetieennneens 133
`
`ill
`
`016
`
`016
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
` TTOQ)
`
`EXHIBITS
`
`Exhibit|Description
`U.S. Patent No. 10,534,382 (the “’382 Patent’)
`>
`File History of the ’382 Patent
`U.S. Patent Pub. No. 2009/0302994 (“Rhee’’)
`
`U.S. Patent No. 8,020,777 (“Kates”)
`
`U.S. Patent No. 8,239,922 (“Sullivan’’)
`Western District of Texas Preliminary Claim Constructions (Dec. 9,
`2020
`Declaration of Tajana Simuni¢ Rosing, Ph.D.
`File History of U.S. Appl. No. 15/002,791
`
`File History of U.S. Appl. No. 13/470,074
`
`File History of U.S. Appl. No. 12/502,064
`
`File History of U.S. Provisional Appl. No. 61/134,714
`Terminal Disclaimer for the 382 Patent
`
`
`
` TAFTIO
`
`
`
`1V
`
`017
`
`017
`
`

`

`Pursuant to 35 U.S.C. §8 302-307 and 37 C.F.R. § 1.510, Alarm.com
`
`Incorporated (“Alarm.com”’) respectfully requests ex parte reexamination of claims
`
`1-20 of U.S. Patent No. 10,534,382 (Exhibit A, the “’382 Patent”), which wasfiled
`
`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.
`
`Asset forth in detail below, U.S. Patent Pub. No. 2009/0302994 (“Rhee”),
`
`alone or in combination with other references, raises substantial new questions of
`
`patentability of claims 1-20 of the ’382 Patent.
`
`I.
`
`CLAIMS FOR WHICH REEXAMINATIONIS REQUESTED
`
`Pursuant to 35 U.S.C. § 303 and 37 C.F.R. § 1.510, the followingpriorart
`
`references raise substantial new questions of patentability (“SNQP”) concerning
`
`claims 1-20 of the ’382 Patent:
`
`U.S. Patent Pub. No. 2009/0302994 (“Rhee”)
`
`U.S. Patent No. 8,020,777 (“Kates”)
`
`U.S. 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), Alarm.com identifies the
`
`following references that raise a SNQP concerning claims 1-20 of the ?382 Patent.
`
`018
`
`018
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`
`SNOP No.|Claim(s Basis for Rejection
`1-20
`Anticipated by Rhee and/or obvious in view of
`Rhee and the knowledge of a POSITA
`2 7-9, 15-16|Obvious in view of Rhee, Sullivan and the
`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
`
`1-20
`
`
`
`Il.
`
`REQUIRED CERTIFICATIONS
`
`Submitted herewith is the fee set forth in 37 C.F.R. § 1.510 and 37 C.F.R.§
`
`1.20(c)(1).
`
`Pursuant to 37 C.F.R. § 1.510(b)(5), the attached Certificate of Service
`
`indicates that a copy of this Request has been served on Patent Ownerat the
`
`following address of the attorney of record for Patent Owner, in accordance with
`
`37 C.F.R. § 1.33(c):
`
`EcoFactor, Inc.
`Knobbe Martens Olson & Bear LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`Asrequired by 37 C.F.R. § 1.510(b)(6), Alarm.com certifies that the
`
`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.
`
`019
`
`019
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`Il. NOTICE OF PENDING LITIGATION
`
`The °382 Patent is the subject of four patent infringement lawsuits by the
`
`assignee of record, EcoFactor, which mayaffect, or be affected by, a decision in
`
`this proceeding: LcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-00075-ADA
`
`(W.D. Tex., filed Jan. 31, 2020); EcoFactor, Inc. v. Ecobee, Inc., Case No. 6:20-
`
`cv-00078-ADA (W.D. Tex., filed Jan. 31, 2020); EcoFactor, Inc. v. Vivint, Inc.,
`
`Case No. 6:20-cv-00080-ADA (W.D. Tex., filed Jan. 31, 2020); EcoFactor, Inc. v.
`
`Alarm.com Inc., 1:20-cv-11007-LTS(D. Mass., filed May 26, 2020).'
`
`EcoFactor has asserted four patents against Petitioner in the Massachusetts
`
`litigation: U.S. Patent Nos. 8,738,327, 8,412,488, 8,180,492 and the °382 Patent.
`
`The ’382 Patentis also the subject of a Request for /nter Partes Review in
`
`IPR2021-00054, which wasfiled by Google LLC on October 22, 2020.
`
`' On December 9, 2020, the Court issued preliminary claim constructions in the
`
`Western District of Texas actions. In relevant part, the Court construed the term
`
`“measurement”in the claims of the °382 Patent to have its plain and ordinary
`
`meaning. Ex. F at 3. No other terms from the ’382 Patent claims were construed
`
`by the Court.
`
`020
`
`020
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`IV.
`
`SUMMARYOF 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
`
`interactions with an interface such as a personal computeras a signal related to
`
`occupancy to inform an energy managementsystem. /d. at 1:16-23.
`
`The °382 Patent states that energy consumption by an HVACsystem is
`
`directly proportional to the setpoint (7.e., the desired temperature set on a
`
`thermostat). /d. at 2:15-24. Therefore, allowing the setpoint to rise by several
`
`degrees in the summerduring periods when the home is unoccupied can result in
`
`reduced energy consumption and greater cost savings. /d. at 2:24-34. The 382
`
`Patent explains that it would be desirable to provide a system that could accurately
`
`detect occupancy and control the HVAC system accordingly. /d. at 3:15-20. For
`
`example, the °382 Patent contemplates detecting occupancy based on a user’s
`
`activity patterns on certain “computers or other consumer electronic devices”. /d.
`
`at 3:24-41.
`
`Claim | 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
`
`designed to execute instructions that, among other things, receives data, commands
`
`021
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`021
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`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`and user-specific information, and controls an HVAC system based on a
`
`determination as to whether the building is occupied or unoccupied. /d. at cl. 1.
`
`B.
`
`Summary of the Prosecution History of the ’382 Patent
`
`The ’382 Patent issued from U.S. Pat. App. No. 16/374,085 (the “085
`
`Application’’), which also claimed the benefit of U.S. 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 B.210.
`
`In an office action dated May8, 2019, the Examinerrejected all pending
`
`claims under 35 U.S.C. § 103 on the basis of U.S. Patent Pub. Nos. 2008/0281472
`
`(“Podgorny”’) and 2010/0308119 (“Steinberg”).
`
`/d. at B.167-79. In that same
`
`office action, the Examineralso rejected claims 1-19 on the ground of non-
`
`statutory double patenting over U.S. Patent Nos. 10,289,131, 9,244,470 and
`
`8,180,492, and rejected claims 19-20 under 35 U.S.C. § 112 4 2. /d. at B.160-67.
`
`In response, Applicants submitted a terminal disclaimer and requested that the
`
`double patenting rejection be withdrawn.
`
`/d. at B.126. Applicants also amended
`
`claim 19 to address the § 112 rejection, and argued that the § 103 rejection should
`
`be withdrawn because Steinberg wasnotprior art. /d. at B.127-28.
`
`In an office action dated July 17, 2019, the Examiner again rejectedall
`
`pending claims under § 103 on the basis of Podgorny and U.S. Patent Pub. No.
`
`2005/0270151 (“Winick”). /d. at B.84-96. In that sameoffice action, the
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`022
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`022
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`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`Examineralso rejected claims 13, 16 and 20 under § 112 92.
`
`/d. at B.083. In
`
`response, on April 3, 2019, Applicant amendedthe claimstoall recite (or depend
`
`from a claim that recites) that the one or more processors include a processor
`
`“located remotely from the memory andis not electrically connected to the
`
`memory”and that the memory “is configured to store historical values of the first
`
`data and second data”.
`
`/d. 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.
`
`/d. 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 wasfiled on June 10, 2008 and it was published on December 10, 2009.
`
`Rhee wasnotcited as a reference in the prosecution of the ’382 Patent. A copy of
`
`Rheeis 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
`
`wasnot cited as a reference in the prosecution of the ’382 Patent. A copy of Kates
`
`is attached as Exhibit D.
`
`3.
`
`U:S. Patent No. 8,239,922 (“Sullivan”). The application for Sullivan
`
`023
`
`023
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`wasfiled on August 27, 2007 and the patent was issued on August 7, 2012.
`
`Sullivan wasnot cited as a reference in the prosecution of the ’382 Patent, although
`
`a similar reference, U.S. Patent Pub. No. 2009/0057426, was cited. Ex. B at
`
`B.201. 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”).? Each of the
`
`above referencesis 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 requirementsat 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 amendmentin 2019 (after March 16, 2013)
`
`without any written description support in the application. Ex. B at B.054. Nor
`
`does any application to which the ’382 Patent claimspriority provide written
`
`description for claims 19 or 20. For example, claim 20 requires that the processors
`
`control the HVAC system basedatleast 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 ofthis limitation. See Exs. B, H-K.
`
`024
`
`024
`
`

`

`Request for /x Parte Reexamination
`USS. Patent No. 10,534,382
`
`102(a)(2) (2018), because they werefiled before the earliest possible effective
`
`filing date for the claims of the 382 Patent, July 14, 2008. They would also be
`
`prior art to the 382 Patent under pre-AIA 35 U.S.C. § 102(e)(1) (2006) (for Rhee)
`
`and 35 U.S.C. § 102(e)(2) (2006) (for Kates and Sullivan).
`
`VI.
`
`STATEMENT POINTING OUT SUBSTANTIAL NEW QUESTIONS
`OF PATENTABILITY (“SNQP”)
`
`A.
`
`Summary of Proposed Rejections
`
`Pursuant to 37 C.F.R. § 1510(b)(1), Alarm.com sets forth a statement raising
`
`an SNQPregardingall claims of the °382 Patent based on Rhee or based on Rhee
`
`in combination with Kates and/or Sullivan.
`
`SNQP 1 sets forth a proposed rejection of claims 1-20 under 35 U.S.C. § 102
`
`and/or 35 U.S.C. § 103 in view of Rhee.
`
`SNQP2 sets forth a proposed rejection of claim