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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GOOGLE LLC
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`Petitioner
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`v.
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`ECOFACTOR, INC.
`
`(record) Patent Owner
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`IPR2021-00054
`Patent No. 10,534,382
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`UNOPPOSED MOTION TO STAY EX PARTE REEXAMINATION
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`Patent No. 10,534,382
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
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`1006
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`1007
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`1008
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`1009
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`1010
`1011
`1012
`1013
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`1014
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`1015
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`EXHIBIT LIST
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`Description
`U.S. Patent No. 10,534,382 (“the ’382 patent”).
`Declaration of Rajendra Shah.
`C.V. of Rajendra Shah.
`U.S. Pat. No. 8,196,185 (“Geadelmann”).
`File History of U.S. Appl. Ser. No. 16/374,085 (“the ’085
`application”).
`File History of U.S. Appl. Ser. No. 15/002,791 (“the ’791
`application”).
`File History of U.S. Appl. Ser. No. 13/470,074 (“the ’074
`application”).
`File History of U.S. Appl. Ser. No. 12/502,064 (“the ’064
`application”).
`File History of U.S. Provisional Appl. Ser. No. 61/134,714 (“the
`’714 provisional”).
`U.S. Pat. App. Pub. 2004/0117330 (“Ehlers ’330”).
`U.S. Pat. App. Pub. 2008/0099568 A1 (“Nicodem”).
`U.S. Pat. No. 8,498,753 (“the ’753 patent”).
`Redline comparison of the ’085 application over the ’791
`application.
`Redline comparison of the ’085 application over the ’074
`application.
`Redline comparison of the ’085 application over the ’064
`application.
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`ii
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`Patent No. 10,534,382
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`Redline comparison of the ’085 application over the ’714
`provisional.
`Defendants’ Opening Claim Construction Brief in EcoFactor,
`Inc. v. Google LLC, Case No. 6:20-cv-00075-ADA, EcoFactor,
`Inc. v. EcoBee, Inc., Case No. 6:20-cv-00078-ADA, and
`EcoFactor, Inc. v. Vivint, Inc., Case No. 6:20-cv-00080-ADA
`(W.D. Tex., filed October 6, 2020).
`Plaintiff EcoFactor, Inc.’s Opening Claim Construction Brief in
`EcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-00075-ADA,
`EcoFactor, Inc. v. EcoBee, Inc., Case No. 6:20-cv-00078-ADA,
`and EcoFactor, Inc. v. Vivint, Inc., Case No. 6:20-cv-00080-
`ADA (W.D. Tex., filed October 6, 2020).
`Scheduling Order in EcoFactor, Inc. v. Google LLC, Case No.
`6:20-cv-00075-ADA (W.D. Tex. 2020).
`Stay Order in EcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-
`00075-ADA (W.D. Tex. 2020).
`Letter of April 2, 2021 from non-party ecobee, Inc., concerning
`stipulation.
`Letter of April 2, 2021 from non-party Vivint, Inc., concerning
`stipulation.
`Portions of the file history of ex parte reexamination 90/014,679
`(including Determination and Request for Reexamination).
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`iii
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`Pursuant to the Board’s email authorization of May 27, 2021, Petitioner
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`Google LLC hereby moves under 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a) to
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`stay the co-pending ex parte reexamination having control number 90/014,679 (“the
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`’679 reexamination”), which addresses the same patent at-issue here, U.S. Pat. No.
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`10,534,382 (“the ’382 patent”). Petitioner respectfully requests a stay of the ’679
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`reexamination pending issuance of a Final Written Decision in this proceeding.
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`Petitioner has conferred with Patent Owner’s counsel regarding the motion to
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`stay. Patent Owner’s counsel has indicated that Patent Owner does not oppose a stay
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`of the ’679 reexamination, although Patent Owner reserved the right to dispute
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`arguments that might be made in this motion.
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`A. ANALYSIS
`In its May 27 email, the Board ordered that any Petitioner motion to stay “shall
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`address the factors set forth in the Notice Regarding Options for Amendments by
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`Patent Owner through Reissue or Reexamination During a Pending AIA Trial
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`Proceeding (April 2019), 84 FR 16654.” These factors are
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`[1.] Whether the claims challenged in the AIA proceeding are the
`same as or depend directly or indirectly from claims at issue in the
`concurrent parallel Office proceeding;
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`[2.] Whether the same grounds of unpatentability or the same prior
`art are at issue in both proceedings;
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`[3.] Whether the concurrent parallel Office proceeding will
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`Patent No. 10,534,382
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`duplicate efforts within the Office;
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`[4.] Whether the concurrent parallel Office proceeding could result
`in inconsistent results between proceedings (e.g., whether
`substantially similar issues are presented in the concurrent parallel
`Office proceeding);
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`[5.] Whether amending the claim scope in one proceeding would
`affect the claim scope in another proceeding;
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`[6.] The respective timeline and stage of each proceeding;
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`[7.] The statutory deadlines of the respective proceedings;
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`[8.] Whether a decision in one proceeding would likely simplify
`issues in the concurrent parallel Office proceeding or render it
`moot.
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`Notice Regarding Options for Amendments, 84 Fed. Reg. at 16657.
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`The balance of the factors weighs in favor of granting a stay. Unlike certain
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`cases contemplated in the Notice Regarding Options for Amendments, the co-
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`pending ’679 reexamination was not voluntarily initiated by the Patent Owner for
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`the purpose of amending the claims. Rather, the ’679 reexamination was initiated
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`by a third party seeking to present its own, separate challenge to the same claims at-
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`issue here. Under the present circumstances, where the co-pending reexamination
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`is in its infancy, challenges the same claims, and was not voluntarily initiated by the
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`2
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`Patent No. 10,534,382
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`Patent Owner, a stay of the reexamination is warranted, as the following analysis of
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`the factors listed in the Notice Regarding Options for Amendments demonstrates.
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`Factors 1-5 and 8
`Factors 1-5 and 8 address different aspects of a common concern: that an
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`overlap in the subject matter of the two proceedings might lead to duplication of
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`efforts, mutual interference, or conflicting results.
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`On balance, that concern is warranted here. While the prior art in the two
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`proceedings is different (Factor 2), there is a complete overlap of the claims
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`challenged (Factor 1): both proceedings challenge all claims (1-20) of the ’382
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`patent. (Ex. 1023, pp. 006, 010). There is thus a significant likelihood of duplication
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`of efforts (Factor 3) and inconsistent results (Factor 4), because the Examiners and
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`Board in the ’679 reexamination and the Board in the present inter partes review
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`(“IPR”) will need to consider the identical set of claim elements.
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`Furthermore, amendments to any of those claims (Factor 5), in either
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`proceeding, would have a complex impact on the other proceeding. For example, if
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`claims are added or changed in reexamination, and a reexamination certificate issues
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`prior to the completion of proceedings in the IPR, it could set back proceedings in
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`the IPR, requiring the Board to fashion ad hoc procedures and extend the one-year
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`deadline for reaching a Final Written Decision. See 35 U.S.C. § 316(a)(11).
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`In contrast, staying the ’679 reexamination would allow the IPR to proceed to
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`3
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`Patent No. 10,534,382
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`conclusion, potentially simplifying the issues (Factor 8). If claims 1-20 are found
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`unpatentable in the present proceeding, for example, the ’679 reexamination would
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`not be authorized, because no substantial new question of patentability would be
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`present. See Notice Regarding Options for Amendments, 84 Fed. Reg. 16656.
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`Conversely, if the Board in the inter partes review sustains the patentability of any
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`claim, the Examiners in the ’679 reexamination would have the benefit of the
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`Board’s claim construction and patentability analysis, potentially simplifying issues
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`for the Examiners.
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`Factors 6 and 7 (respective timelines and statutory deadlines)
`The ’679 reexamination is still at an early stage: reexamination has been
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`ordered, but no office action has issued. (Ex. 1023, p. 003). Even after issuance of
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`a first action, the Patent Owner might be required to file a response, upon which the
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`Examiners can issue a Final Action, to which the Patent Owner may respond. See
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`MPEP §§ 2260, 2271-2272. After any advisory action, the Patent Owner may file
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`an appeal to the Board, which might result in re-opening of prosecution, or an appeal
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`to the Court of Appeals for the Federal Circuit. See MPEP §§ 2273, 2278. The
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`Office’s times to issue first and final office actions, to file appeal briefs, and to render
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`appeal decisions are not constrained by statute. Ex parte reexaminations have an
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`Patent No. 10,534,382
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`average pendency of more than two years.1
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`In contrast, the present IPR was filed earlier and is likely to be faster. The
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`IPR has already been instituted, and the Patent Owner has presumably begun work
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`on a Patent Owner Response. The Board, moreover, has a one-year deadline to
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`issue Final Written Decision. See 35 U.S.C. § 316(a)(11). The timing considerations
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`thus weigh in favor of staying the likely slower ’679 reexamination.
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`II. CONCLUSION
`The Board should stay the co-pending ’679 reexamination. The Patent Owner
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`did not request the ’679 reexamination, and does not oppose the stay. The ’679
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`reexamination is in its early stages, while the present IPR was filed earlier, is likely
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`to be faster, is already subject to the one-year deadline of 35 U.S.C. § 316(a)(11),
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`and is part-way into the Patent Owner’s response period. Because the two
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`proceedings address the same claims, there is a significant risk of duplication of
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`efforts, inconsistent results, or complex procedural interactions stemming from
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`amended claims in one proceeding. Petitioner therefore respectfully requests a stay
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`of the ’679 reexamination pending issuance of a Final Written Decision in the
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`1 See Ex Parte Reexamination Filing Data ‐ September 30, 2020, available at
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`https://www.uspto.gov/sites/default/files/documents/ex_parte_historical
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`_stats_roll_up_21Q1.pdf
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`5
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`Patent No. 10,534,382
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`present IPR.
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`Date: June 2, 2021
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`
`
`/Matthew A. Smith/ (RN 49,003)
`Matthew A. Smith
`SMITH BALUCH LLP
`22 Woodstock Pl.
`Redwood City, CA 94062
`(202) 669-6207
`smith@smithbaluch.com
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`Counsel for Petitioner Google LLC
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`6
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`Patent No. 10,534,382
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing unopposed motion to stay
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`ex parte reexamination, together with all exhibits and other documents filed
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`therewith, was served on all counsel of record via email.
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` Date: June 2, 2021
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`/Matthew A. Smith/ (RN 49,003)
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`7
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