UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`GOOGLE LLC,
`Petitioner
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`v.
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`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2021-00054
`Patent No. 10,534,382
`____________
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`PATENT OWNER’S RESPONSE
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`Table of Contents
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`INTRODUCTION ............................................................................................. 2
`I.
`II. BACKGROUND OF THE ‘382 PATENT ........................................................ 2
`III. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART (POSITA) ... 8
`IV. CLAIM CONSTRUCTION ............................................................................... 9
`V. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 14
`
`A. Introduction to Geadelmann Prior Art Reference ........................................ 14
`B. Introduction to Ehlers ‘330 Prior Art Reference .......................................... 15
`VI. PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘382
`PATENT ................................................................................................................. 16
`A. The Petitioner Fails to Identify the Specific Combination of Geadelmann
`and Ehlers That Allegedly Apply to Claims 1-20 ............................................... 17
`B. The Combination of Geadelmann and Ehlers Does Not Render Claims 1-20
`Unpatentable ........................................................................................................ 21
`1. No Processor in Geadelmann Performs All of the Functions Recited in
`Claims 1 and 17 ............................................................................................... 22
`2. The Memory is Not Located Remotely From the First Processor. ........... 24
`3. Petitioner Does Not Demonstrate that Claim Elements [1e] and [1m] Is
`Met ................................................................................................................... 30
`C. Claims 2-16 and 18-20 Are Also Not Unpatentable .................................... 35
`D. The Combination of Geadelmann and Ehlers Does Not Render Claim 12
`Unpatentable ........................................................................................................ 35
`VII. CONCLUSION ................................................................................................ 38
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`IPR2021-00054 POR
`Patent No. 10,534,382
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`Exhibits
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`Exhibit No.
`2001
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`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`2012
`2013
`2014
`
`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
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`Rough Transcript of the Deposition of Rajendra Shah (August
`11, 2021)
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`1
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`IPR2021-00054 POR
`Patent No. 10,534,382
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`I.
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`INTRODUCTION
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`The Petition provides a disjointed collection of citations to prior art that
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`improperly requires the Board and the Patent Owner to determine what combination
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`of the prior art is being relied upon for unpatentability. The asserts first that multiple
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`structures meet some claim elements, then turns around and without explanation,
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`asserts that only one structure meets further the limitations for those claim elements.
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`Petitioner is required to set clearly forth the basis for its claims of unpatentability,
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`not merely providing the puzzle pieces from which an position of unpatentablility
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`can be put together.
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`Futher, the Petition fails to demonstrate that numerous claim limitations are
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`met by the combination of the prior art. Petitioner does not identify any single “one
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`or more processors” that perform all of the required actions as recited in the
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`independent claims.
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`II. BACKGROUND OF THE ‘382 PATENT1
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`The inventor of the ‘382 patent is John Steinberg, and the ‘382 patent claims
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`priority to Provisional Application No. 61/134,714 filed on July 14, 2008. The ‘382
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`patent was filed on April 3, 2019 and issued January 14, 2020. The ‘382 patent is
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`entitled "System and method for using a wireless device as a sensor for an energy
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`1 See generally Ex. 1002, ¶¶ 11-17.
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`2
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`IPR2021-00054 POR
`Patent No. 10,534,382
`management system." The ‘382 patent was issued after the USPTO cited and
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`considered numerous prior art references. See, e.g., Pages 1-5 of the ‘382 patent.
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`The ‘382 patent recognized difficulties with the prior art systems, and
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`particularly that prior art thermostats “generally offer a very restrictive user
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`interface, limited by the cost of the devices, the limited real estate of the small wall-
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`mounted boxes, and the inability to take into account more than two variables: the
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`desired temperature set by the user, and the ambient temperature sensed by the
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`thermostat.” ‘382 patent at 1:41-46. The ‘382 patent further recognized that “[a]s
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`energy prices rise, more attention is being paid to ways of reducing energy
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`consumption.” Id. at 2:15-34. The patent proposes to reduce energy consumption by
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`adding “occupancy detection capability to residential HVAC systems [which] could
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`also add considerable value in the form of energy savings without significant
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`tradeoff in terms of comfort.” Id. 2:60-3:20. But prior art occupancy detection
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`systems required a motion sensor that was electrically connected to the HVAC
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`systems. Id. 2:51-56 (“Recently, systems have been introduced in which a motion
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`sensor is connected to the control circuitry for the HVAC system…[w]hen the
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`motion sensor detects motion (which is assumed to coincide with the return of the
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`guest), the HVAC system resets to the guest’s chosen setting.”). The patent observed
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`that such systems “used in hotels do not easily transfer to the single-family
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`residential context,” because a “single motion sensor in the average home today
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`Patent No. 10,534,382
`would have limited value because there are likely to be many places one or more
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`people could be home and active yet invisible to the motion sensor.” Id. 2:60-3:20.
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`The patent proposed to replace the prior art system for occupancy detection with a
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`better system that would provide occupancy detection in a more accurate and cost
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`effective manner. Id. The patent further explained that it would be “desirable to
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`provide a system that could detect occupancy without requiring the installation of
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`additional hardware; that could accurately detect occupancy regardless of which
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`room in the house is occupied, and could optimize energy consumption based upon
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`dynamic and individually configurable heuristics.” Id. at 3:15-20.
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`The ‘382 patent discloses a novel invention and describe a number of
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`embodiments to address the problems they recognized, including the use of
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`networked consumer electronics devices as indications of occupancy of a structure
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`for purposes of automatically adjusting the temperature setpoint on a thermostatic
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`HVAC control. For example, the ‘382 patent describes an embodiment that
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`“comprises at least one said thermostat having at least one temperature setting
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`associated with the presence of one or more occupants in said structure, and at least
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`one temperature setting associated with the absence of occupants in said structure;
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`one or more electronic devices having at least a user interface; where said electronic
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`devices and said thermostat are connected to a network; where said setpoint on said
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`thermostat is adjusted between said temperature setting associated with the presence
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`Patent No. 10,534,382
`of one or more occupants in said structure and said temperature setting associated
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`with the absence of occupants in said structure based upon the use of said user
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`interface for said electronic device.” ‘382 patent at 3:50-62.
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`The ‘382 patent describes the thermostat 108 and computer 104 connected to
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`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
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`3:29-41; 6:7-15. Based on this information, “the server instructs the thermostats to
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`change the temperature settings between those optimized for occupied and
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`unoccupied states. Id. at 3:39-41. This is done for a particular structure having an
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`HVAC system. Id. at 3:42-49. As disclosed, the memory, i.e., the databases 300 in
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`servers 106, are remote from and not located in the same building as the thermostats
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`108 and computers 104.
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`The ’382 patent describes servers 106 as those that both (i) receive data
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`indicating user activity and (ii) that directly allow for users to control temperature
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`settings. 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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`6:7-15. The website 300 enabled by server 106 “will permit thermostat users to
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`6
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`Patent No. 10,534,382
`perform through the web browser substantially all of the programming functions
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`traditionally performed at the physical thermostat, such as temperature setpoints, the
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`time at which the thermostat should be at each set point, etc. Preferably the website
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`will also allow users to accomplish more advanced tasks such as allow users to
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`program in vacation settings for times when the HVAC system may be turned off or
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`run at more economical settings…” Id. 6:26-37.
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`Figure 6 and the accompanying text disclose the “screen of a computer or
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`other device 104 using a graphical user interface connected to the Internet,” which
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`is connected to the remotely located server 106. ‘382 patent, 6:37-57. The
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`application running on computer or other device 104 is disclosed to “detect activity
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`by the user” and then to “signal the application running on server 106 that activity
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`has been detected.” Id.
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`Figures 7 and 8 show flowcharts with exemplary steps regarding the
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`invention, including steps used to identify occupants, which are used to adjust
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`HVAC settings.
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`Patent No. 10,534,382
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`‘382 patent Figs. 7, 8.
`III. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSITA)
`Petitioner and its expert, Mr. Shah, assert that a person of ordinary skill in the
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`art (“POSITA”) for the ‘382 patent is someone having “a (1) Bachelor’s degree in
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`engineering, computer science, or a comparable field of study, and (2) at least five
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`years of (i) professional experience in building energy management and controls, or
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`(ii) relevant industry experience. Additional relevant industry experience may
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`8
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`Patent No. 10,534,382
`compensate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002,
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`¶¶27-28).
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`A POSITA would be someone having a (1) Bachelor’s degree in engineering,
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`computer science, or a comparable field of study, and (2) at least two years of (i)
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`professional experience in temperature control systems, embedded systems, or
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`building energy management and controls, or (ii) relevant industry experience. Ex.
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`2012, ¶ 27. However, a POSITA would not require a full five years of professional
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`experience that Mr. Shah states. Id.
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`IV. CLAIM CONSTRUCTION
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`Petitioner does not offer any construction for any of the claim terms and in
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`fact states that “the claim terms as applied to the prior art do not require
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`construction.” Pet. at 9. Mr. Shah appears to implicitly agree with this, as the section
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`of his declaration regarding claim construction does not provide any opinions on the
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`construction of any claim elements. Ex. 1002, ¶ 38-41. Patent Owner agrees.
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`However, based on Mr. Shah’s declaration and his deposition testimony, a
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`discussion of how a POSITA would have understood certain claim terms is
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`necessary.
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`In his deposition, Mr. Shah testified that in the context of the claim limitation
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`“a first processor … located remotely from the memory” of claim 1, the customary
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`and ordinary meaning of the term “located remotely” is “not next to each other.
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`They're separated by some -- some amount of space.” Ex. 2014, Rough Transcript
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`of August 11, 2021, Deposition of Rajendra Shah, at 21:2-13. He does clarify that a
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`processor and a memory located in the same device, such as in the same laptop
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`enclosure, are not “located remotely” from each other. Id. at 26:2-24. Patent Owner
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`agrees that two components in the same device are not “located remotely” from each
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`other. Ex. 2012, ¶ 32. However, a POSITA would not understand this term to merely
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`mean “separated by some amount of space.” Id. In the context of the specification
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`and claim 1 of the ‘382 patent, a POSITA would have understood “remotely located”
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`to mean not in the same building. Id.
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`The ‘382 patent describes the thermostat 108 and computer 104 connected to
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`a server 106 via the Internet 102. Ex. 1001, Fig. 2, 4:30-37. The server stores various
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`information received from the thermostats, a user, and other sources. Id. at 3:29-41;
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`6:7-15. Based on this information, “the server instructs the thermostats to change the
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`temperature settings between those optimized for occupied and unoccupied states.
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`Id. at 3:39-41. This is done for a particular structure having an HVAC system. Id. at
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`3:42-49. As disclosed, the memory, i.e., the databases 300 in servers 106, are remote
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`from and not located in the same building as the thermostats 108 and computers 104.
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`Ex. 2012, ¶ 33.
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`Moreover, the ‘382 patent describes prior art systems, such as those found in
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`hotels, where individually controlled HVAC systems operate in each room. Ex.
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`Patent No. 10,534,382
`1001, 2:35-59. This is similar to the mall scenario described in Geadelmann that both
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`Petitioner and Mr. Shah identify. Pet. at 46, Ex. 1002, ¶ 111. Both of these situations
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`are part of what the ‘382 patent seeks to improve upon. Ex. 2012, ¶ 34.
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`Mr. Shah also testified regarding his opinion of how a POSITA would
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`understand the various claim elements that begin with “one or more processors with
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`circuitry and code designed to execute instructions …” Ex. 2012, ¶ 35. He opines
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`for the first time that this phrase “simply describes the processors, and repeatedly
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`describes them as opposed to saying the instructions to determine.” Ex. 2014 at
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`14:16-15:9. That is, Mr. Shah believes the phrase is a description of the processors.
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`Id. at 16:8-13. Thus, under his interpretation, the one or processors must have
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`circuitry and code designed to execute instructions, and the one or more processors
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`must make various determinations, but the determinations are not necessarily
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`performed using the circuitry and code designed to execute the instruction. Id. at
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`17:20-18:4.
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`This distinction is found nowhere in Mr. Shah’s declaration. Ex. 2012, ¶ 36.
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`Further, this characterization of how a POSITA would understand this claim
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`language is incorrect. Id.
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`A POSITA looking at this language would understand that the claim language
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`of “one or more processors with circuitry and code designed to execute instructions”
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`describes the instructions executed to make the various determinations. Ex. 2012, ¶
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`Patent No. 10,534,382
`37. For example, claim [1i] requires that “the one or more processors with circuitry
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`and code designed to execute instructions to send user-specific data through the
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`Internet.” Ex. 1001, 8:43-45. A POSITA would understand that executing the
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`instructions results in sending user-specific data through the Internet. This is because
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`a POSITA would recognize that the processors execute instructions to perform
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`different tasks. Ex. 2012, ¶ 37. This is done by with the circuitry and code in the
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`processor. Requiring a processor to have circuitry and code to execute instructions,
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`and then including limitations for tasks that are unrelated to those instructions would
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`not make sense. Id.
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`Further, the language of claims 1 and 17 supports a POSITA’s understanding
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`that the claim language of “one or more processors with circuitry and code designed
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`to execute instructions” describes the instructions executed to make the various
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`determinations. Ex. 2012, ¶ 38. Claim element [1l] recites “wherein the one or more
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`processors comprises a first processor with circuitry and code designed to execute
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`instructions, which is located remotely from the memory and is not electrically
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`connected to the memory.” Ex. 1001 at 8:58-62. This indicates that the applicant did
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`not consider the “circuitry and code” to be modifying the “one or more processors”
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`and instead the “circuitry and code designed to execute instructions” were utilized
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`to initiate the tasks being performed. Ex. 2012, ¶ 38. Thus, the “circuitry and code
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`Patent No. 10,534,382
`designed to execute instructions” is not descriptive of the “one or more processors”
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`but rather indicates how the recited actions are performed. Id.
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`Finally, claim element [1c] recites “one or more processors with circuitry and
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`code designed to execute instructions.” Ex. 1001 at 8:15-16. Claim elements [1d],
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`[1e], [1f], [1g], [1i], [1k], and [1l] each recite “the one or more processors with
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`circuitry and code designed to execute instructions.” Id. at 8:17-62 (emphasis
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`added); Ex. 2012, ¶ 39. Thus, claim element [1c] provides antecedent basis for claim
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`elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]. The Petition and Mr. Shah’s
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`declaration indicate that clarification about how a POSITA would understand these
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`terms is necessary. Ex. 2012, ¶ 39. Because each one of those elements refers back
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`to the original “one or more processors,” a POSITA would understand that all of the
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`“one or more processors” must be able to perform the functions recited in claim
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`elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]. That is, there needs to be at least
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`a single processor that meets all of the limitations of claim elements [1d], [1e], [1f],
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`[1g], [1i], [1k], and [1l]. Put another way, if a processor only met the limitations of
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`claim elements [1d] and [1f], it would not meet the full limitaitons of claim 1. Ex.
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`2012, ¶ 39.
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`Other than clarifying how a POSITA would understand the claim terms above,
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`Patent Owner agrees that no constructions are necessary for any claims of the ‘382
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`patent. Ex. 2012, ¶ 40.
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`Patent No. 10,534,382
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`V. OVERVIEW OF THE ASSERTED PRIOR ART2
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`A.
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`Introduction to Geadelmann Prior Art Reference
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`U.S. Patent 8,196,185, entitled “Remote HVAC Control with a Customizable
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`Overview Display,” is listed with Levi H. Geadelmann, Kevin B. Moore, Daniel J.
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`Sullivan, and Geoffrey Ho as Inventors. The Geadelmann patent was filed on August
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`27, 2007 and issued on June 5, 2012.
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`The focus and substance of Geadelmann is a web-based interface for
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`controlling an HVAC system. Indeed all 55 of the illustrative examples of the
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`interface (Figs. 3A-10D) disclosed in Geadelmann are shown as screen captures of
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`a browser window in a personal computer (PC) type application. See Geadelmann
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`Figure 3A as an example (see also Geadelmann 2:3-30):
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`2 See generally Ex. 2012, ¶ 48-55.
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`Patent No. 10,534,382
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`The specification generally illustrates how the use of networks, and the
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`internet in particular, may be used to provide an accessible interface to an advanced
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`HVAC control system such as one that would be used in a large commercial
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`structure.
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`B.
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`Introduction to Ehlers ‘330 Prior Art Reference
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`U.S. Patent Application Publication 2004/0117330, entitled “System and
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`Method for Controlling Usage of a Commodity,” is listed with Gregory A. Ehlers,
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`James H. Turner, Joseph Beaudet, Ronald Strich, and George Loughmiller as
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`Inventors.
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`Ehlers ‘330 was filed on July 28, 2003, but never issued as a patent.
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`Patent No. 10,534,382
`The focus and substance of Ehlers ‘330 is the management of energy delivery
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`from a distribution network such as the interconnected power grid or a natural gas
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`distribution system. Specifically, it contemplates energy cost savings in applications
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`where energy costs vary with time according to utility specified constraints, with
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`specific tools to quantify and/or graphically illustrate the savings that were or could
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`be achieved relative to a baseline condition. The application of Ehlers ‘330 is
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`illustrated, for example, in Figure 1B:
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`The Ehlers ‘330 system includes a customer graphical user interface that
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`connects to the server through the internet.
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`VI. PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘382
`PATENT
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`IPR2021-00054 POR
`Patent No. 10,534,382
`A. The Petitioner Fails to Identify the Specific Combination of
`Geadelmann and Ehlers That Allegedly Apply to Claims 1-20
`The Petition alleges one ground of unpatentability of the ‘382 patent rely on
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`a combination of two patents: U.S. patent 8,196,185 (Geadelmann) and U.S. patent
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`application 2004/0117330 (Ehlers ‘330). See, e.g., Pet. at 11; Ex. 1002 at ¶ 42.
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`In the context of Petitioner and Mr. Shah’s obviousness analysis, they fail to
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`observe “the forest for the trees.” Ex. 1012 at ¶ 42. That is to say, as both go through
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`the claims in the ‘382 patent, they makes note of specific elements of the claims as
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`some of those elements may be found, in one form or another, in prior art references.
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`In doing so, they fail to determine whether the selected prior art structures in fact go
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`together, or whether that structure meets all of the elements of the claims. Id.
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`For example, the Petition and Mr. Shah apply different memory and
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`processors to meet the various claim limitations of the ‘382 patent without noting
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`the connections and capabilities of the memory and processors and how they relate
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`to other claim elements. Ex. 1012 at ¶ 43. More troublesome is that the Petition
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`provides no mapping of the specific “embodiment” of memory and processors in
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`Geadelmann and Ehlers that meets the claim limitations of the ‘382 patent. Instead,
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`It mixes and matches different processors, often asserting that two or three
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`processors meet a particular claim limitation. Id. The Petition then claims, with no
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`further substantive guidance, that it would have been obvious to use some
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`Patent No. 10,534,382
`combination of these memories and processors to meet the claims of the ‘382 patent.
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`Id.
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`For example, Mr. Shah’s obviousness theories for claim element [1b], claim
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`element [1k], and claim element [1l] mix and match different processors and
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`memories in a manner that is incompatible with the claim language. Ex. 1012 at ¶
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`44. These theories fail because Mr. Shah’s mapping for claim [1l] of the “first
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`processor” which is “located remotely from the memory and is not electrically
`
`connected to the memory” is incompatible with his theories for other claim
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`limitations, and none of the available elements in the prior art render this aspect of
`
`the claims obvious. Id.
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`By way of example, Mr. Shah alleges that the “memory” in claim element
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`[1b] could be met by any of the Building Control Appliance (“BCA”) 12, the PC 34,
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`and the programmable thermostats 26-32, because all are programmable, and thus
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`contain memory. Ex. 1002, at ¶ 71. Further, claim [1l] recites “a first processor ….
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`which is locate remotely from the memory and is not electrically connected to the
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`memory.” Ex. 1012 at ¶ 45. This is the same memory as recited in claim [1b], and,
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`thus, it is incumbent on Petitioner to explain what the “first processor” of claim [1l]
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`is, and why this first processor is “located remotely from the memory and is not
`
`electrically connected to the memory” relied upon for claim [1b]. However, Mr.
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`Shah alleges only that user device [PC] 34 and the programmable thermostats both
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`Patent No. 10,534,382
`meet claim [1l] as both have processors. Ex. 1002, ¶¶ 109-110. But this cannot be
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`correct, as the memory must be “located remotely” from the first processor. If the
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`memory is in user device 34, then it is not located remotely from a processor in user
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`device 34. Ex. 1012 at ¶ 45. Likewise, if the memory is in programmable thermostats
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`26-32, then it is not located remotely from a processor in programmable thermostats
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`26-32. Even Mr. Shah agrees that a memory and a processor in the same devices are
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`not located remotely from each other. Ex. 2014 at 26:2-24. Therefore, the
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`programmable thermostat cannot meet both the memory limitation of claim [1b] and
`
`the first processor limitation of claim [1l]. Ex. 1012 at ¶ 45. The user device 34 also
`
`cannot meet both the memory limitation of claim [1b] and the first processor
`
`limitation of claim [1l]. And, even Mr. Shah acknowledges that the BCA cannot
`
`meet both the memory limitation of claim [1b] and the first processor limitation of
`
`claim [1l], as he never argues that the BCA corresponds to the “first processor” for
`
`claim [1l]. Moreover, neither Petitioner nor Mr. Shah ever acknowledge these
`
`inconsistencies or explain which of the user device PC 34 or the programmable
`
`thermostats are being relied upon for each of limitations [1b] and [1l]. Instead, the
`
`task is left to the Patent Owner. Ex. 1012 at ¶ 45.
`
`The Petition and Mr. Shah offer alternative structures as allegedly meeting the
`
`processor limitations in each of the following claim limitations:
`
`
`
`19
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`IPR2021-00054 POR
`Patent No. 10,534,382
`Petition/Shah Decl.
`Support
`Pet. at 24; Ex. 1002 at ¶ 71.
`
`Pet. at 25; Ex. 1002 at ¶ 72.
`
`Pet. at 35; Ex. 1002 at ¶ 88.
`
`Pet. at 39; Ex. 1002 at ¶ 71.
`
`Pet. at 45; Ex. 1002 at ¶ 107.
`
`Pet. at 45; Ex. 1002 at ¶ 108.
`
`Pet. at 50; Ex. 1002 at ¶ 113.
`
`Alternative Structures from
`Geadelmann
`Building Control Appliance
`(“BCA”) 12, the PC 34, or the
`programmable thermostats 26-32
`Building Control Appliance
`(“BCA”) 12, the PC 34, or the
`programmable thermostats 26-32
`Building Control Appliance
`(“BCA”) 12 or the PC 34
`Building Control Appliance
`(“BCA”) 12 or the PC 34
`Building Control Appliance
`(“BCA”) 12 or the programmable
`thermostats 26-32
`PC 34, or the programmable
`thermostats 26-32
`PC 34, or the programmable
`thermostats 26-32
`
`Claim
`Limitation
`Claim [1b]
`
`Claim [1c]
`
`Claim [1g]
`
`Claim [1i]
`
`Claim [1k]
`
`Claim [1l]
`
`Claim [1m]
`(first
`processor)
`
`
`
`Ex. 1012 at ¶ 46.
`
`The initial positions in the Petition and Mr. Shah’s declaration essentially
`
`provided hundreds of different potential alternative structures with little or no
`
`guidance as to what specific structure(s) they contend meet all the limitations of
`
`claim 1. Ex. 1012 at ¶ 47. Rather, they appear to require the Patent Owner to infer
`
`their intent absent any specific position. Therefore, it is unclear on its face what is
`
`the basis for Mr. Shah’s opinions that claim 1 is unpatentable over the combination
`
`of Geadelmann and Ehlers ‘330.
`
`
`
`20
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`

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`IPR2021-00054 POR
`Patent No. 10,534,382
`The Combination of Geadelmann and Ehlers Does Not Render
`Claims 1-20 Unpatentable
`Petitioner alleges that Geadelmann in view of Ehlers renders obvious claims
`
`B.
`
`1-20 of the ‘382 patent. See, e.g., Pet. at 11; Ex. 1002 at ¶ 42. Petitioner is wrong.
`
`Ex. 1012 at ¶ 56.
`
`Claim 1 of the ’382 patent requires the same “the one or more processors” to
`
`control the HVAC system based on the determination that the building is occupied,
`
`as required by claim element [1k], and to include a first processor that is located
`
`remotely from and that is not electrically connected to the memory, as required by
`
`claim element [1l]. Ex. 1001, 52-62; Ex. 1012 at ¶ 57. This is consistent with a
`
`preferred embodiment, which includes a server that determines occupancy by
`
`detecting user activity on a device that is located remotely from server 106, where
`
`the server also connects to remote databases that store temperature, thermostat
`
`settings, and weather data. Ex. 1001, 6:7-15, 6:38-45.
`
`However, Petitioner’s theory regarding Geadelmann in view of Ehlers ‘330
`
`fails to render this arrangement of elements obvious. Ex. 1012 at ¶ 58. The
`
`Geadelmann system does not render obvious “the one or more processors”
`
`configured to determine occupancy (element [1k]), which are further configured to
`
`include a first processor that is located remotely from and that is not electrically
`
`connected to the memory (element [1l]). Id.
`
`
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`21
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`

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`IPR2021-00054 POR
`Patent No. 10,534,382
`On the one hand, the ’382 patent contemplates occupancy-based HVAC
`
`control using a first processor that is located remotely from a memory that stores
`
`temperature data. Ex. 1012 at ¶ 59. By contrast, the Petition acknowledges that the
`
`Geadelmann system teaches away from this arrangement, as the Geadelmann system
`
`is only alleged to disclose processors that are electrically connected to and located
`
`locally to the memory. See, e.g., Ex. 1004, Fig. 1. It would not have been obvious to
`
`a POSITA to use processors located remotely from the memory to perform
`
`occupancy detection, particularly because Geadelmann only expressly discloses
`
`designation of a occupied/unoccupied status based on a preprogrammed schedule
`
`rather than detection. Ex. 1012 at ¶ 59. Rather, a POSITA would instead be
`
`motivated to follow the approach that the Petition alleges was practiced by
`
`Geadelmann system, which relied on processors located locally (not remotely) to the
`
`memory to specify occupancy status.
`
`1.
`
`No Processor in Geadelmann Performs All of the
`Functions Recited in Claims 1 and 17
`
`
`
`As noted previously, a POSITA reading claim 1 would understand that all of
`
`the “one or more processors” must be able to perform the functions recited in claim
`
`elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]. Ex. 1012 at ¶ 31. However, neither
`
`the Petition nor Mr. Shah identify such a processor in Geadelmann. Id. at ¶ 60.
`
`
`
`22
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`

`

`IPR2021-00054 POR
`Patent No. 10,534,382
`For each recitation of the “one or more processors,” Petitioner and Mr. Shah
`
`point the following processors in Geadelmann:
`
`Claim
`Limitation
`Claim [1c]
`
`Claim [1d]
`
`Claim [1e]
`
`Claim [1f]
`
`Claim [1g]
`
`Alternative Structures from
`Geadelmann
`Building Control Appliance
`(“BCA”) 12, the PC 34, or the
`programmable thermostats 26-32
`Building Control Appliance
`(“BCA”) 12
`Building Control Appliance
`(“BCA”) 12
`Building Control Appliance
`(“BCA”) 12
`Building Control Appliance
`(“BCA”) 12 or the PC 34
`Building Control Appliance
`(“BCA”) 12 or the PC 34
`Building Control Appliance
`(“BCA”) 12 or the programmable
`thermostats 26-32
`PC 34, or the programmable
`thermostats 26-32
`Ex. 1012 at ¶ 61.
`
`Claim [1i]
`
`Claim [1k]
`
`Claim [1l]
`
`Petition/Shah Decl.
`Support
`Pet. at 25; Ex. 1002 at ¶ 72.
`
`Pet. at 27; Ex. 1002 at ¶ 76.
`
`Pet. at 30; Ex. 1002 at ¶ 80.
`
`Pet. at 32; Ex. 1002 at ¶ 83.
`
`Pet. at 35; Ex. 1002 at ¶ 88.
`
`Pet. at 39; Ex. 1002 at ¶ 71.
`
`Pet. at 45; Ex. 1002 at ¶ 107.
`
`Pet. at 45; Ex. 1002 at ¶ 108.
`
`As can be seen, there is no processor that Petitioner or Mr. Shah claim meets
`
`all the requirements of claim elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l]. Ex.
`
`1012 at ¶ 62. At best, Mr. Shah only asserts that the BCA 12 meets the requirements
`
`of five of the claim elements ([1d], [1e], [1f], [1g], and [1i]). Further, Mr. Shah only
`
`claims that the PC 34 can meet the requirements of claim elements [1g], [1i], [1k],
`
`and [1l], and that the programmable thermostats 26-32 can meet the requirements of
`
`claims elements [1k] and [1l]. Id. Therefore, there is no “one or more processors”
`
`
`
`23
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`

`

`IPR2021-00054 POR
`Patent No. 10,534,382
`that meet all the req