UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2021-00054
`Patent No. 10,534,382
`____________
`
`DECLARATION OF JOHN A. PALMER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2021-00054
`Patent No. 10,534,382
`____________
`
`DECLARATION OF JOHN A. PALMER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 1
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`V.
`
`LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`
`VII. REBUTTAL TO ALLEGATIONS REGARDING
`
`A.
`
`B.
`
`A.
`
`The Combination of Geadelmann and Ehlers ‘330 Does Not
`
`BACKGROUND .................................................................... 2
`QUALIFICATIONS ............................................................... 2
`III. BACKGROUND OF THE ‘382 PATENT .................................... 5
`IV. LEGAL PRINCIPLES .......................................................... 11
`(POSITA) ............................................................................. 16
`VI. CLAIM CONSTRUCTION PRINCIPLES ................................. 18
`OBVIOUSNESS ................................................................... 23
`Introduction to Geadelmann Prior Art Reference ......................... 26
`Introduction to Ehlers ‘330 Prior Art Reference ........................... 28
`VIII. GROUND 1: ........................................................................ 29
`Render Claims 1-20 Unpatentable ................................................ 29
`Recited in Claims 1 and 17 ...................................................... 31
` .................................................................................................. 33
`[1m] Is Met ............................................................................... 39
`Claims 2-16 and 18-20 Are Also Not Unpatentable ..................... 43
`
`The Memory is Not Located Remotely From the First Processor
`
`1.
`
`2.
`
`3.
`
`B.
`
`No Processor in Geadelmann Performs All of the Functions
`
`Petitioner Does Not Demonstrate that Claim Elements [1e] and
`
`i
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 2
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`
`C.
`Render Claim 12 Unpatentable ..................................................... 43
`IX. DECLARATION ................................................................... 47
`
`The Combination of Geadelmann and Ehlers ‘330 Does Not
`
`
`
`ii
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 3
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`
`Exhibits
`
`Exhibit No.
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`
`2013
`2014
`2015
`
`
`
`
`
`
`
`Description
`Scheduling Order in EcoFactor, Inc. v. Google LLC, W.D. Tex.
`Case No. 20-cv-00075-ADA (July 16, 2020).
`Google’s W.D. Tex. Invalidity Contentions Ex. A-27
`Google’s W.D. Tex. Invalidity Contentions Ex. B-25
`Google’s W.D. Tex. Invalidity Contentions Ex. B-26
`Google’s W.D. Tex. Invalidity Contentions Ex. B-27
`Google’s W.D. Tex. Invalidity Contentions Ex. B-29
`Google’s W.D. Tex. Invalidity Contentions Ex. B-30
`Google’s W.D. Tex. Invalidity Contentions Ex. B-32
`Google’s W.D. Tex. Invalidity Contentions Ex. B-33
`Google’s W.D. Tex. Invalidity Contentions Ex. B-34
`Google’s W.D. Tex. Invalidity Contentions Ex. B-36
`Order Denying Google’s Motion to Transfer in EcoFactor, Inc.
`v. Google LLC, Case No. 6:20-cv-00075-ADA (W.D. Tex.
`2020).
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`Rough Transcript of the Deposition of Rajendra Shah (August
`11, 2021)
`
`
`
`1
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 4
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`I.
`
`BACKGROUND
`
`1.
`
`I have been retained as an expert in this case by EcoFactor, Inc. (“EcoFactor”).
`
`I have been asked to consider and opine on issues of validity regarding U.S. Patent
`
`No. 10,534,382 (“‘382 Patent”). More specifically, my opinions focus on the Peti-
`
`tion for Inter Partes Review (“IPR”) on the ‘382 Patent, along with the expert dec-
`
`laration of Rajendra Shah and all other materials referenced or cited in the IPR or
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`Mr. Shah’s declaration.
`
`2.
`
`In forming my opinions, I have reviewed, considered, and had access to the
`
`patent specifications and claims, their prosecution histories, the proposed claim con-
`
`structions, the Petition, the Shah declaration, and documents cited in the Petition and
`
`the Shah declaration. I have also relied on my professional and academic experience.
`
`I reserve the right to consider additional materials as I become aware of them and to
`
`revise my opinions accordingly.
`
`II. QUALIFICATIONS
`
`3. My qualifications for forming the opinions set forth in this Declaration are
`
`summarized here and explained in more detail in my curriculum vitae, which is at-
`
`tached as Exhibit 2014.
`
`4.
`
`As indicated therein, I have a Bachelor of Science degree in Electrical Engi-
`
`neering with a power option from Brigham Young University (1991), and Masters
`
`(1992) and Doctoral (1996) degrees in Electric Power Engineering from Rensselaer
`
`2
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 5
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`Polytechnic Institute. Electric Power Engineering is a discipline of engineering in
`
`which principles of physics and electrical science are applied to practical applica-
`
`tions pertaining to the production, transmission, distribution and utilization of elec-
`
`trical energy.
`
`5.
`
`Through the course of my education, I participated in multiple research pro-
`
`jects that included topics related to electric power transmission system efficiency
`
`and power transformer reliability. Practical applications of simulation, physical
`
`modeling, data acquisition and assimilation, and control were all included within the
`
`scope of my research projects. The research that I performed led to multiple technical
`
`publications, presentations and a patent, as set forth in the list of publications shown
`
`in Exhibit A. Furthermore, internships interspersed with my engineering education
`
`provided me with opportunities to work for the electric utility industry in several
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`different areas of interest.
`
`6.
`
`Upon completion of my doctorate in 1996, I was employed for 4 1/2 years as
`
`a member of the faculty at the Colorado School of Mines (CSM) Division of Engi-
`
`neering teaching and performing research in the general area of electric power engi-
`
`neering. I developed and taught courses in Electric Machinery, Electric Power
`
`Systems, High Power Electronics, and practical applications of design, control and
`
`instrumentation for electronic systems. A significant element of all of these courses
`
`was energy efficiency and management. My research efforts at CSM in association
`
`3
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 6
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`with the Center for Advanced Control of Electric Power Systems (ACEPS), included
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`energy efficiency projects and diagnostics and monitoring of electric power equip-
`
`ment.
`
`7.
`
`Overlapping with my employment at CSM, I consulted with NEI Electric
`
`Power Engineering, including participation in design and energy efficiency studies
`
`for industrial facilities. I also began working as an electrical forensic engineer at
`
`Knott Laboratory, LLC, which evolved into a full-time position in January 2000. In
`
`my various positions at Knott Laboratory, I investigated and became familiar with a
`
`wide range of electrical failures and accidents, including many control system fail-
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`ures related to industrial, commercial, and residential HVAC systems. Subsequent
`
`to my employment at CSM, I began teaching on a part-time basis at the Electrical
`
`Engineering Department of the University of Colorado, Denver (UCD). The courses
`
`I taught at UCD included Power Systems Analysis and Electrical Forensic Engineer-
`
`ing.
`
`8.
`
`In 2009, I established Palmer Engineering and Forensics, LLC, and I continue
`
`to lead that company as its president and principal engineer at the present time. In
`
`addition to my administrative responsibilities, I provide consulting engineering ser-
`
`vices to insurance companies, attorneys, utilities, and other companies, related to
`
`electrical equipment and system failures and accidents, fires, and system improve-
`
`ments. I also serve currently as an associate professor (lecturer) in the Department
`
`4
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 7
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`of Electrical and Computer Engineering at the University of Utah teaching a variety
`
`of topics including Power System Analysis, Power System Protection, Power Elec-
`
`tronics, and Electrical Forensic Engineering and Failure Analysis. As a faculty mem-
`
`ber at the University of Utah, I also consult with students in their various research
`
`and design projects and serve on various graduate thesis committees.
`
`9.
`
`I am a registered professional engineer in seven states namely: Utah, Arizona,
`
`Colorado, Alabama, Florida, Wyoming and Idaho.
`
`10. Through my considerable education and experience, I have developed a strong
`
`understanding of the practices and terminology of the electric power industry, energy
`
`efficiency objectives and implementation, energy control systems, load management
`
`technologies and procedures, HVAC operation and control, etc.
`
`III. BACKGROUND OF THE ‘382 PATENT
`
`11. The inventor of the ‘382 patent is John Steinberg, and the ‘382 patent claims
`
`priority to Provisional Application No. 61/134,714 filed on July 14, 2008. The ‘382
`
`patent was filed on April 3, 2019 and issued January 14, 2020. The ‘382 patent is
`
`entitled "System and method for using a wireless device as a sensor for an energy
`
`management system." The ‘382 patent was issued after the USPTO cited and con-
`
`sidered numerous prior art references. See, e.g., Pages 1-5 of the ‘382 patent.
`
`5
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 8
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`12. The ‘382 patent recognized difficulties with the prior art systems, and partic-
`
`ularly that prior art thermostats “generally offer a very restrictive user interface, lim-
`
`ited by the cost of the devices, the limited real estate of the small wall-mounted
`
`boxes, and the inability to take into account more than two variables: the desired
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`temperature set by the user, and the ambient temperature sensed by the thermostat.”
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`‘382 patent at 1:41-46. The ‘382 patent further recognized that “[a]s energy prices
`
`rise, more attention is being paid to ways of reducing energy consumption.” Id. at
`
`2:15-34. The patent proposes to reduce energy consumption by adding “occupancy
`
`detection capability to residential HVAC systems [which] could also add consider-
`
`able value in the form of energy savings without significant tradeoff in terms of
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`comfort.” Id. 2:60-3:20. But prior art occupancy detection systems required a motion
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`sensor that was electrically connected to the HVAC systems. Id. 2:51-56 (“Recently,
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`systems have been introduced in which a motion sensor is connected to the control
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`circuitry for the HVAC system…[w]hen the motion sensor detects motion (which is
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`assumed to coincide with the return of the guest), the HVAC system resets to the
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`guest’s chosen setting.”). The patent observed that such systems “used in hotels do
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`not easily transfer to the single-family residential context,” because a “single motion
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`sensor in the average home today would have limited value because there are likely
`
`to be many places one or more people could be home and active yet invisible to the
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`motion sensor.” Id. 2:60-3:20. The patent proposed to replace the prior art system
`
`6
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 9
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`for occupancy detection with a better system that would provide occupancy detec-
`
`tion in a more accurate and cost effective manner. Id. The patent further explained
`
`that it would be “desirable to provide a system that could detect occupancy without
`
`requiring the installation of additional hardware; that could accurately detect occu-
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`pancy regardless of which room in the house is occupied, and could optimize energy
`
`consumption based upon dynamic and individually configurable heuristics.” Id. at
`
`3:15-20.
`
`13. The ‘382 patent discloses a novel invention and describe a number of embod-
`
`iments to address the problems they recognized, including the use of networked con-
`
`sumer electronics devices as indications of occupancy of a structure for purposes of
`
`automatically adjusting the temperature setpoint on a thermostatic HVAC control.
`
`For example, the ‘382 patent describes an embodiment that “comprises at least one
`
`said thermostat having at least one temperature setting associated with the presence
`
`of one or more occupants in said structure, and at least one temperature setting as-
`
`sociated with the absence of occupants in said structure; one or more electronic de-
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`vices having at least a user interface; where said electronic devices and said
`
`thermostat are connected to a network; where said setpoint on said thermostat is
`
`adjusted between said temperature setting associated with the presence of one or
`
`more occupants in said structure and said temperature setting associated with the
`
`7
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 10
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`Case Nos. IPR2021-00054
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`absence of occupants in said structure based upon the use of said user interface for
`
`said electronic device.” ‘382 patent at 3:50-62.
`
`14. The ‘382 patent describes the thermostat 108 and computer 104 connected to
`
`a server 106 via the Internet 102. Ex. 1001, Fig. 2, 4:30-37. The server 106 stores
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`various information received from the thermostats, a user, and other sources. Id. at
`
`3:29-41; 6:7-15. Based on this information, “the server instructs the thermostats to
`
`change the temperature settings between those optimized for occupied and unoccu-
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`pied states. Id. at 3:39-41. This is done for a particular structure having an HVAC
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`system. Id. at 3:42-49. As disclosed, the memory, i.e., the databases 300 in servers
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`106, are remote from and not located in the same building as the thermostats 108
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`and computers 104.
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`8
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 11
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`
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`15. The ’382 patent describes servers 106 as those that both (i) receive data indi-
`
`cating user activity and (ii) that directly allow for users to control temperature set-
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`tings. As depicted in Figure 2, servers 106 connect to “network 102” and
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`“thermostats 108” and “computers 104 of various users.” Id. 5:25-41. A preferred
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`embodiment requires “data used to generate the content delivered in the form of the
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`website [to be] stored on one or more servers 106 within one or more databases.” Id.
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`9
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 12
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`6:7-15. The website 300 enabled by server 106 “will permit thermostat users to per-
`
`form through the web browser substantially all of the programming functions tradi-
`
`tionally performed at the physical thermostat, such as temperature setpoints, the time
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`at which the thermostat should be at each set point, etc. Preferably the website will
`
`also allow users to accomplish more advanced tasks such as allow users to program
`
`in vacation settings for times when the HVAC system may be turned off or run at
`
`more economical settings…” Id. 6:26-37.
`
`16. Figure 6 and the accompanying text disclose the “screen of a computer or
`
`other device 104 using a graphical user interface connected to the Internet,” which
`
`is connected to the remotely located server 106. ‘382 patent, 6:37-57. The applica-
`
`tion running on computer or other device 104 is disclosed to “detect activity by the
`
`user” and then to “signal the application running on server 106 that activity has been
`
`detected.” Id.
`
`17. Figures 7 and 8 show flowcharts with exemplary steps regarding the inven-
`
`tion, including steps used to identify occupants, which are used to adjust HVAC
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`settings.
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`10
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 13
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`
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`Case Nos. IPR2021-00054
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`‘382 patent Figs. 7, 8.
`
`IV. LEGAL PRINCIPLES
`
`18.
`
`It is my understanding that the claims of an issued patent are presumed to be
`
`valid. I further understand that the basis for this presumption of validity is that the
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`issued claims went through a rigorous examination process at the U.S. Patent Office.
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`11
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 14
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`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
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`19.
`
`I further understand that when a specific prior art reference was before the
`
`examiner during prosecution (e.g., as noted on the face of the patent), the burden of
`
`proving invalidity is “especially difficult.” Sanofi-Synthelabo v. Apotex, Inc., 470
`
`F.3d 1368, 1375 (Fed. Cir. 2006) (“[W]e note that the ‘596 patent was before the
`
`Examiner during prosecution, which makes [Defendant’s] burden of proving inva-
`
`lidity at trial ‘especially difficult.’”). I understand courts recognize this as an addi-
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`tional burden beyond the standard presumption of validity applicable to all patents,
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`which I understand stems from patent examiners being assumed to have expertise in
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`interpreting relevant prior art references. E.g., Shire LLC v. Amneal Pharms., LLC,
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`802 F.3d 1301, 1307 (Fed. Cir. 2015) (“AU ‘168 is listed on the face of the patents-
`
`in-suit and therefore the examiner is presumed to have considered it. Defendants
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`therefore ha[ve] the added burden of overcoming the deference that is due to a qual-
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`ified government agency presumed to have properly done its job, which includes one
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`or more examiners who are assumed to have some expertise in interpreting the ref-
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`erences and to be familiar from their work with the level of skill in the art and whose
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`duty it is to issue only valid patents.”).
`
`20. Obviousness: I also understand that a patent may be rendered “obvious”
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`based on an alleged prior art reference or a combination of such references plus what
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`a person of ordinary skill in the art would understand based on his or her knowledge
`
`and the references. I understand that a patent cannot be properly granted for subject
`
`12
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 15
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`Case Nos. IPR2021-00054
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`matter that would have been obvious to a person of ordinary skill in the art at the
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`time of the alleged invention, and that a patent claim directed to such obvious subject
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`matter is invalid under 35 U.S.C. § 103. It is also my understanding that in assessing
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`the obviousness of claimed subject matter one should evaluate obviousness over the
`
`prior art from the perspective of one of ordinary skill in the art at the time the inven-
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`tion was made, and not from the perspective of either a layman or a genius in that
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`art. The existence of each and every element of the claimed invention in multiple
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`prior art references/systems does not necessarily prove obviousness. Most, if not
`
`all, inventions rely on building blocks of prior art. Obviousness may be found where
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`there is clear and convincing evidence that the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious at the time the invention was made to a person having
`
`ordinary skill in the art to which said subject matter pertains. I further understand
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`that an obviousness assertion cannot be based on hindsight reasoning and must be
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`supported by more than conclusory expert testimony.
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`21.
`
`It is my understanding that in determining whether any of the claims is obvi-
`
`ous, I should consider whether there was a reason that would have prompted a person
`
`having ordinary skill in the art to combine the known elements in a way the claimed
`
`invention does, taking into account such factors as (1) whether the claimed invention
`
`was merely the predictable result of using prior art elements according to their
`
`13
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`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
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`Case Nos. IPR2021-00054
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`known function(s); (2) whether the claimed invention provides an obvious solution
`
`to a known problem in the relevant field; (3) whether the prior art teaches or suggests
`
`the desirability of combining elements claimed in the invention; (4) whether the prior
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`art teaches away from combining elements in the claimed invention; (5) whether it
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`would have been obvious to try the combinations of elements, such as when there is
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`a design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions; and (6) whether the change resulted more from de-
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`sign incentives or other market forces. To render a claim obvious, the prior art must
`
`have provided a reasonable expectation of success
`
`22.
`
`It is my further understanding that the question of obviousness is to be deter-
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`mined based on:
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`• The scope and content of the prior art;
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`• The difference or differences between the subject matter of the claim and the
`
`prior art (whereby in assessing the possibility of obviousness one should con-
`
`sider the manner in which a patentee and/or a court has construed the scope
`
`of a claim);
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`• The level of ordinary skill in the art at the time of the alleged invention of the
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`subject matter of the claim; and,
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`• Any relevant objective factors (“secondary indicia”) indicating non-obvious-
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`ness. It is my understanding that to determine whether it would have been
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`14
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`Exhibit 2013
`Page 17
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`Case Nos. IPR2021-00054
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`obvious to combine known elements in the manner claimed in a patent, one
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`may consider such things as the interrelated teachings of multiple patents, the
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`effects of demands known to the design community or present in the market-
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`place, and the background knowledge of one with ordinary skill in the art.
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`23.
`
`It is my understanding that I should also consider any objective factors / evi-
`
`dence (sometimes called “secondary considerations” or “secondary indicia”) that
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`may have existed at the time of the invention and afterwards that may shed light on
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`the obviousness of the claims, such as:
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`• Whether the invention was commercially successful as a result of the merits
`
`of the claimed invention (rather than the result of design needs or market-
`
`pressure advertising or similar activities);
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`• Whether the invention satisfied a long-felt but unmet need;
`
`• Whether others had tried and failed to make the invention;
`
`• Whether others invented the invention at roughly the same time;
`
`• Whether others copied the invention;
`
`• Whether there were changes or related technologies or market needs contem-
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`poraneous with the invention;
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`• Whether the invention achieved unexpected results;
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`• Whether others in the field praised the invention;
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`15
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`IPR2021-00054
`Exhibit 2013
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`Case Nos. IPR2021-00054
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`• Whether persons having ordinary skill in the art of the invention expressed
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`surprise or disbelief regarding the invention;
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`• Whether others sought or obtained rights to the patent from the patent holder;
`
`and
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`• Whether the inventor proceeded contrary to accepted wisdom in the field.
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`24. Rebutting Assertions of Invalidity: Unlike proving infringement, to rebut
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`an assertion of invalidity it is my understanding that it is only necessary to show that
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`at least one of the limitations of an allowed claim is not found in the prior art, and
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`that is what I have done for each asserted claim and for each item of allegedly inval-
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`idating prior art. In other words, in rebutting the allegations of invalidity, it has not
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`been necessary for me to demonstrate that each and every limitation of an asserted
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`claim is missing from the art and/or combinations of art. I note, however, that my
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`decision not to address certain elements of the asserted claims should not be consid-
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`ered an admission that such elements are found in the art.
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`V. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSITA)
`
`25.
`
`I understand that in evaluating the validity of the ‘382 patent claims, the con-
`
`tent of a patent or printed publication prior art should be interpreted the way a person
`
`of ordinary skill in the art (“POSITA”) would have interpreted the prior art as of the
`
`effective filing date of the challenged patent.
`
`16
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 19
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`26.
`
`I understand that factors that may be considered in determining the level of
`
`ordinary skill in the art at the time of the effective filing date of the challenged pa-
`
`tents include: (1) the educational level of the inventor; (2) type of problems encoun-
`
`tered in the art; (3) prior art solutions to those problems; (4) rapidity with which
`
`innovations are made; (5) sophistication of the technology; and (6) educational level
`
`of active workers in the field.
`
`27. Petitioner and its expert, Mr. Shah, assert that a person of ordinary skill in the
`
`art (“POSITA”) for the ‘382 patent is someone having “a (1) Bachelor’s degree in
`
`engineering, computer science, or a comparable field of study, and (2) at least five
`
`years of (i) professional experience in building energy management and controls, or
`
`(ii) relevant industry experience. Additional relevant industry experience may com-
`
`pensate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002, ¶¶27-
`
`28). In my opinion, a POSITA would be someone having a (1) Bachelor’s degree in
`
`engineering, computer science, or a comparable field of study, and (2) at least two
`
`years of (i) professional experience in temperature control systems, embedded sys-
`
`tems, or building energy management and controls, or (ii) relevant industry experi-
`
`ence. I disagree with Mr. Shah that a full five years of professional experience would
`
`be required.
`
`17
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 20
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`28.
`
`I would have met the requirements of a POSITA under either set of qualifica-
`
`tions. I have used the perspective of a POSITA, as I have defined that individual, at
`
`that time to form my opinions in reply to the Petition and Mr. Shah’s opinions.
`
`VI. CLAIM CONSTRUCTION PRINCIPLES
`
`29.
`
`I understand that “claim construction” is the process of determining a patent
`
`claim’s meaning. I also have been informed and understand that the proper construc-
`
`tion of a claim term is the plain and ordinary meaning that a person of ordinary skill
`
`in the art would have given to that term in light of the specification. In performing
`
`my analyses set forth in this declaration, I have interpreted all claim terms based
`
`upon their plain and ordinary meaning, as they would have been understood by a
`
`POSITA, as of the effective filing date, in the context of the ‘382 patent.
`
`30.
`
`I understand that the Board does not construe claim terms unnecessary to re-
`
`solving the controversy. Petitioner does not offer any construction for any of the
`
`claim terms and in fact states that “the claim terms as applied to the prior art do not
`
`require construction.” Pet. at 9. Mr. Shah appears to implicitly agree with this, as
`
`the section of his declaration regarding claim construction does not provide any
`
`opinions on the construction of any claim elements. Ex. 1002, ¶ 38-41.
`
`31. However, based on Mr. Shah’s declaration and his deposition testimony, I be-
`
`lieve a discussion of how a POSITA would have understood certain claim terms is
`
`necessary.
`
`18
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 21
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`32.
`
`In his deposition, Mr. Shah testified that in the context of the claim limitation
`
`“a first processor … located remotely from the memory” of claim 1, the customary
`
`and ordinary meaning of the term “located remotely” is “not next to each other.
`
`They're separated by some -- some amount of space.” Ex. 2015, Rough Transcript
`
`of August 11, 2021, Deposition of Rajendra Shah, at 21:2-13. He does clarify that a
`
`processor and a memory located in the same device, such as in the same laptop en-
`
`closure, are not “located remotely” from each other. Id. at 26:2-24. While I agree
`
`that two components in the same device are not “located remotely” from each other,
`
`I disagree that a POSITA would understand this term to mean “separated by some
`
`amount of space.” In the context of the specification and claim 1 of the ‘382 patent,
`
`a POSITA would have understood “remotely located” to mean not in the same build-
`
`ing.
`
`33. The ‘382 patent describes the thermostat 108 and computer 104 connected to
`
`a server 106 via the Internet 102. Ex. 1001, Fig. 2, 4:30-37. The server stores various
`
`information received from the thermostats, a user, and other sources. Id. at 3:29-41;
`
`6:7-15. Based on this information, “the server instructs the thermostats to change the
`
`temperature settings between those optimized for occupied and unoccupied states.
`
`Id. at 3:39-41. This is done for a particular structure having an HVAC system. Id. at
`
`3:42-49. As disclosed, the memory, i.e., the databases 300 in servers 106, are remote
`
`from and not located in the same building as the thermostats 108 and computers 104.
`
`19
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 22
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`34. Moreover, the ‘382 patent describes prior art systems, such as those found in
`
`hotels, where individually controlled HVAC systems operate in each room. Ex.
`
`1001, 2:35-59. This is similar to the mall scenario described in Geadelmann that both
`
`Petitioner and Mr. Shah identify. Pet. at 46, Ex. 1002, ¶ 111. Both of these situations
`
`are part of what the ‘382 patent seeks to improve upon.
`
`35. Mr. Shah also testified regarding his opinion of how a POSITA would under-
`
`stand the various claim elements that begin with “one or more processors with cir-
`
`cuitry and code designed to execute instructions …” He opines for the first time that
`
`this phrase “simply describes the processors, and repeatedly describes them as op-
`
`posed to saying the instructions to determine.” Ex. 2015 at 14:16-15:9. That is, Mr.
`
`Shah believes the phrase is a description of the processors. Id. at 16:8-13. Thus,
`
`under his interpretation, the one or more processors must have circuitry and code
`
`designed to execute instructions, and the one or more processors must make various
`
`determinations, but the determinations are not necessarily performed using the cir-
`
`cuitry and code designed to execute the instruction. Id. at 17:20-18:4.
`
`36. This distinction is found nowhere in Mr. Shah’s declaration. Further, I disa-
`
`gree with this characterization of how a POSITA would understand this claim lan-
`
`guage.
`
`37. A POSITA looking at this language would understand that the claim language
`
`of “one or more processors with circuitry and code designed to execute instructions”
`
`20
`
`GOOGLE V. ECOFACTOR
`IPR2021-00054
`Exhibit 2013
`Page 23
`
`
`
`Case Nos. IPR2021-00054
`U.S. Patent No. 10,534,382
`
`describes the instructions executed to make the various determinations. For example,
`
`claim [1i] requires that “the one or more processors with circuitry and code designed
`
`to execute instructions to send user-specific data through the Internet.” Ex. 1001,
`
`8:43-45. A POSITA would understand that executing the instructions results in send-
`
`ing user-specific data through the Internet. This is because a POSITA would recog-
`
`nize that the processors execute instructions to perform different tasks. This is done
`
`by the circuitry and code in the processor. Requiring a processor to have circuitry
`
`and code to execute instructions, and then including limitations for tasks that are
`
`unrelated to those instructions would not make sense.
`
`38. Further, the language of claims 1 and 17 supports a POSITA’s understanding
`
`that the claim language of “one or more processors with circuitry and code designed
`
`to execute instructions” describes the instructions executed to make the various de-
`
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