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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`IPR2021-00054
`Patent No. 10,534,382
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET. SEQ
`
`
`
`
`
`
`
`

`

`Patent No. 10,534,382
`
`TABLE OF CONTENTS
`TABLE OF EXHIBITS ............................................................................................. 4
`NOTICE OF LEAD AND BACKUP COUNSEL ..................................................... 6
`NOTICE OF THE REAL-PARTIES-IN-INTEREST ............................................... 6
`NOTICE OF RELATED MATTERS ........................................................................ 6
`NOTICE OF SERVICE INFORMATION ................................................................ 7
`GROUNDS FOR STANDING .................................................................................. 7
`STATEMENT OF PRECISE RELIEF REQUESTED .............................................. 7
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ........................ 7
`I.
`INTRODUCTION ........................................................................................... 7
`A.
`The ’382 Patent Disclosure ................................................................... 7
`CLAIM CONSTRUCTION ............................................................................ 9
`II.
`III. THE ’382 PATENT IS SUBJECT TO THE AIA ........................................... 9
`IV. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY ........................................................................ 11
` Claims 1-20 are obvious over Geadelmann and Ehlers ’330. ............ 11
`Effective Prior Art Dates of Geadelmann and Ehlers ’330 ................. 11
`Relationship of Prior Art to Prior Examinations ................................. 11
`Overview of the Ground ...................................................................... 12
`1.
`Overview of Geadelmann ......................................................... 12
`2.
`Overview of Ehlers ’330 ........................................................... 15
`3.
`Overview of the Combination and Rationale (Motivation)
`Supporting Obviousness ........................................................... 18
`D. Graham Factors ................................................................................... 21
`
`A.
`B.
`C.
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`Patent No. 10,534,382
`
`E.
`Reasonable Expectation of Success .................................................... 21
`Analogous Art ..................................................................................... 22
`F.
`Claim Mapping .................................................................................... 22
`G.
`INSTITUTION UNDER 35 U.S.C. §314 ..................................................... 80
`V.
`VI. CONCLUSION .............................................................................................. 80
`CERTIFICATE OF SERVICE ................................................................................ 81
`CERTIFICATE OF WORD COUNT ...................................................................... 82
`
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`Patent No. 10,534,382
`
`TABLE OF EXHIBITS
`
`
`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.
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`1013
`
`1014
`
`1015
`
`4
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`Patent No. 10,534,382
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`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).
`
`
`
`
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`Patent No. 10,534,382
`
`Petitioner respectfully requests inter partes review under 35 U.S.C. § 311 of
`
`claims 1-20 of U.S. Pat. No. 10,534,382 (“the ’382 patent”).
`
`NOTICE OF LEAD AND BACKUP COUNSEL
`Lead Counsel
`Backup Counsel
`Matthew A. Smith
`Andrew S. Baluch
`Reg. No. 49,003
`Reg. No. 57,503
`SMITH BALUCH LLP
`SMITH BALUCH LLP
`1100 Alma St., Ste. 109
`700 Pennsylvania Ave. SE, Ste 2060
`Menlo Park, CA 94025
`Washington, DC 20003
`(202) 669-6207
`(202) 880-2397
`smith@smithbaluch.com
`baluch@smithbaluch.com
`
`
`NOTICE OF THE REAL-PARTIES-IN-INTEREST
`The real-party-in-interest for this petition is Google LLC (“Google”).
`
`NOTICE OF RELATED MATTERS
`The ’382 patent is currently asserted in the following litigations:
`
`
`
`• EcoFactor, Inc. v. Alarm.com Incorporated et al., 1-20-cv-11007 (D. Mass.
`May 26, 2020);
`
`• EcoFactor, Inc. v. Google LLC , 6-20-cv-00075 (W.D. Tex. Jan. 31, 2020);
`
`• EcoFactor, Inc. v. Alarm.com Inc. et al., 6-20-cv-00076 (W.D. Tex. Jan. 31,
`2020);
`
`• EcoFactor, Inc. v. Ecobee, Inc., 6-20-cv-00078 (W.D. Tex. Jan. 31, 2020);
`
`• EcoFactor, Inc. v. Vivint, Inc., 6-20-cv-00080 (W.D. Tex. Jan. 31, 2020).
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`Patent No. 10,534,382
`
`NOTICE OF SERVICE INFORMATION
`Please address all correspondence to the lead counsel at the addresses shown
`
`above.
`
`Petitioners
`
`consent
`
`to
`
`electronic
`
`service
`
`by
`
`email
`
`at:
`
`smith@smithbaluch.com, baluch@smithbaluch.com.
`
`GROUNDS FOR STANDING
`Petitioner hereby certifies that the patent for which review is sought is
`
`available for inter partes review, and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review on the grounds identified in the petition.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Petitioner respectfully requests that claims 1-20 of the ’382 patent be canceled
`
`based on the following grounds:
`
`Ground 1: Claims 1-20 are obvious over Geadelmann in view of Ehlers
`
`’330.
`
`THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`As shown in the Ground, the petition demonstrates that “it is more likely than
`
`not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C.
`
`§ 314(a).
`
`I.
`
`INTRODUCTION
`A. The ’382 Patent Disclosure
`The ’382 patent relates generally to heating or cooling systems for buildings
`
`(“HVAC systems”). (Ex. 1001, Abstract, 1:17-25). In such systems, according to
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`Patent No. 10,534,382
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`the ’382 patent, energy savings have been achieved in the industry by turning off the
`
`HVAC system when the building is unoccupied. (Ex. 1001, 2:35-59)(Ex. 1002,
`
`¶31). For example, when a hotel room is unoccupied (as determined by the lack of
`
`a key card in a special slot), the ’382 patent states that it was well-known to power
`
`down the HVAC system. (Ex. 1001, 2:42-48)(Ex. 1002, ¶31). Alternatively, the
`
`’382 patent teaches using motion sensors to determine occupancy, and heat or cool
`
`accordingly. (Ex. 1001, 2:51-59)(Ex. 1002, ¶31).
`
`The ’382 patent states that there may be opportunities to improve the typical
`
`thermostat’s function, by using improved occupancy detection. (Ex. 1001, 2:60-
`
`63)(Ex. 1002, ¶32). As an example, the ’382 patent discusses detecting occupancy
`
`using activity on a user’s computer connected to a home network. (Ex. 1001, 3:24-
`
`41)(Ex. 1002, ¶32). If such activity is detected, it may indicate that the building is
`
`occupied and the temperature setpoint should be changed. (Ex. 1001, Fig. 7, 7:13-
`
`26, 8:7-10)(Ex. 1002, ¶32).
`
`This concept of employing user activity on a device, however, did not find its
`
`way into the claims of the ’382 patent. Independent claim 1 of the ’382 patent (which
`
`the Board may wish to review in parallel) is instead directed to a system for
`
`controlling an HVAC system at a user’s building, and has several distinct types of
`
`limitations: those directed to collecting and storing “first data” and “second data”,
`
`those directed to user-specific data and user-specific information, and those directed
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`Patent No. 10,534,382
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`to making a determination of whether a building is occupied or unoccupied.
`
`II. CLAIM CONSTRUCTION
`“In an inter partes review proceeding, a claim of a patent . . . shall be construed
`
`using the same claim construction standard that would be used to construe the claim
`
`in a civil action under 35 U.S.C. 282(b)….” 37 C.F.R. § 42.100(b).
`
`In this case, the claim terms as applied to the prior art do not require
`
`construction. In a co-pending litigation, various parties have proposed claim
`
`constructions for the district court. (Ex. 1017)(Ex. 1018). With respect to the ’382
`
`patent, the parties dispute the meaning of the term “measurement”, with EcoFactor
`
`asserting that a “measurement” of a temperature can include a forecasted
`
`temperature. (Ex. 1018, pp. 7-9)(Ex. 1017, pp. 7-8). Because the temperature
`
`measurements taught by the prior art in this proceeding are actual measurements,
`
`however, the Board does not need to resolve this dispute.
`
`III. THE ’382 PATENT IS SUBJECT TO THE AIA
`The ’382 patent is subject to the America Invents Act (“AIA”). To be subject
`
`to the AIA, the patent must meet the requirements of § 3(n)(1) of the AIA. Pub. L.
`
`112–29, § 3(n)(1). The ’382 patent meets these requirements if at least one claim of
`
`the ’382 patent has an effective filing date on or after March 16, 2013. See Pub. L.
`
`112–29, § 3(n)(1)(A).
`
`Petitioner contends that the ’382 patent is an AIA patent because no
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`Patent No. 10,534,382
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`application leading to the ’382 patent—and certainly not any application filed prior
`
`to March 16, 2013— provides written description support for claims 19 or 20.
`
`(Ex. 1002, ¶¶34-37)(Ex. 1007, pp. 0407-0431)(Ex. 1008, pp. 0256-0279)(Ex. 1009,
`
`pp. 0011-0033)(Ex. 1013)(Ex. 1014)(Ex. 1015)(Ex. 1016). More specifically, there
`
`is no teaching anywhere in the application that issued as the ’382 patent (No.
`
`16/374,085, Ex. 1005, pp. 0247-0263), nor in its incorporated applications, that
`
`historical values of first data (temperature of the building) and second data (outdoor
`
`temperature) could be used to control the HVAC system. (Ex. 1002, ¶¶34-37).
`
`Instead, claims 19 and 20 were added by amendment in 2019, more than four months
`
`after the ’085 application was filed. (Ex. 1005, pp. 0259-0262 (showing the as-filed
`
`claims) and 0049-0067 (showing the addition of new claims on August 2, 2019).
`
`(Id.). Moreover, there is no disclosure of historical values of second data “collected
`
`from a source external to the building” and “received via the Internet”, nor for storing
`
`those data in a memory with first data. (Id.). The priority applications (including
`
`their claims) provide no further relevant support for either claim 19 or claim 20.
`
`(Id.)(Ex. 1007, pp. 0407-0431)(Ex. 1008, pp. 0256-0279)(Ex. 1009, pp. 0011-
`
`0033)(Ex. 1012)(Ex. 1013)(Ex. 1014)(Ex. 1015). As a result, the ’382 patent as a
`
`whole is subject to the AIA. See Pub. L. 112–29, §3(n)(1)(A).
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`Patent No. 10,534,382
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`IV. DETAILED EXPLANATION OF THE REASONS FOR
`UNPATENTABILITY
`
` Claims 1-20 are obvious over Geadelmann and Ehlers ’330.
`Claims 1-20 are obvious under post-AIA 35 U.S.C. §103(a) over U.S. Pat.
`
`No. 8,196,185 (“Geadelmann”)(Ex. 1004) and U.S. Pat. Pub. 2004/0117330
`
`(“Ehlers ’330”)(Ex. 1010).
`
`A. Effective Prior Art Dates of Geadelmann and Ehlers ’330
`Claims 1-18 of the ’382 patent have an earliest-possible effective filing date
`
`of July 14, 2008.
`
`Geadelmann is a U.S. patent that was filed on August 27, 2007 and issued on
`
`June 5, 2012. Geadelmann is thus at least prior art to all claims under post-AIA 35
`
`U.S.C. § 102(a) (and would be prior art under pre-AIA 35 U.S.C. § 102(e)(2), if the
`
`AIA is not applicable).
`
`Ehlers ’330 is a U.S. patent application that was filed on July 28, 2003 and
`
`published on June 17, 2004. Thus, Ehlers ’330 is prior art under post-AIA 35 U.S.C.
`
`§ 102(a) (and would be prior art under pre-AIA 35 U.S.C. § 102(b)).
`
`B. Relationship of Prior Art to Prior Examinations
`Geadelmann was not of record during the prosecution of any application
`
`leading to the ’382 patent.
`
`While Ehlers ’330 was of record in the ’085 application, it was one of 385
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`Patent No. 10,534,382
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`references of record, and was never discussed on the record by the Examiner. (Ex.
`
`1005).
`
`C. Overview of the Ground
`The combination of Geadelmann in view of Ehlers ’330 renders the
`
`challenged claims obvious. In brief, Geadelmann teaches a system similar to that of
`
`the ’382 patent, while Ehlers ’330 teaches certain aspects of the occupancy
`
`determination and claims 19 and 20.
`
`1. Overview of Geadelmann
`Geadelmann teaches a “Remote HVAC Control with a Customizable
`
`Overview Display”. (Ex. 1004, Title)(Ex. 1002, ¶48). The system is shown
`
`generally in Fig. 1, reproduced here:
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`Patent No. 10,534,382
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`(Ex. 1004, Fig. 1, 3:35-4:46)(Ex. 1002, ¶48). As shown above, a series of
`
`thermostats (left side) communicate via network 20 with a Building Control
`
`Appliance (“BCA”) 12. (Ex. 1004, 3:62-4:8)(Ex. 1002, ¶48). The BCA collects
`
`information from the thermostats and can provide instructions to them. (Ex. 1004,
`
`4:22-37, 4:47-59, 5:13-18)(Ex. 1002, ¶48). In addition, the BCA can contain a Web
`
`server (Fig. 2) providing Web pages. (Ex. 1004, Fig. 2, 4:47-5:18)(Ex. 1002, ¶48).
`
`The Web pages can be accessed by a user, employing a device 34. (Ex. 1004,
`
`4:38-46)(Ex. 1002, ¶49). Device 34 is shown in Fig. 1 as a PC, but can be a mobile
`
`device such as a laptop, cellphone, or PDA. (Id.). With such a device, the user can
`
`log in with user-specific credentials, receive user-specific summary information, and
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`Patent No. 10,534,382
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`manage the configuration of associated thermostats and HVAC systems. (Ex. 1004,
`
`9:17-65, 5:3-34, Figs. 3D, 9C, 9I, 11:61-12:30)(Ex. 1002, ¶49). For example, the
`
`user of the device 34, if she has sufficient permissions, can turn the HVAC system
`
`ON and OFF, and enter temperature setpoints for occupied and unoccupied modes.
`
`(Ex. 1004, Figs. 3C-3D, 9C, 9I, 11:61-12:30, 9:28-37)(Ex. 1002, ¶49). By entering
`
`less-energy-intensive setpoints for the unoccupied mode, the user can save energy.
`
`(Ex. 1002, ¶49). An example of the ability to enter setpoints according to occupied
`
`and unoccupied states is shown in Fig. 3D, reproduced below:
`
`
`(Ex. 1004, Fig. 3D, 11:61-12:31)(Ex. 1002, ¶49). In the Figure, the user is allowed
`
`to click arrow buttons (e.g.. up and down arrows 342 and 344) that set cooling and
`
`heating setpoints for a particular thermostat (which cause the HVAC system to cool
`
`or heat to those setpoints (Ex. 1002, ¶49)), as well as turn the associated HVAC
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`Patent No. 10,534,382
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`system ON or OFF using menu 348. (Ex. 1004, 11:61-12:31)(Ex. 1002, ¶49).
`
`Geadelmann further teaches storing historical inside and outside temperature
`
`data, as shown, for example, in Fig. 7A, reproduced below, where an inside
`
`temperature and outside temperature are graphed for the user over a period of three
`
`days:
`
`
`(Ex. 1004, Fig. 7A-7B, 17:31-18:7)(Ex. 1002, ¶50). In the Figure, the user can select
`
`the temperature sensor readings that the user would like to view over time. (Id.).
`
`2. Overview of Ehlers ’330
`Ehlers ’330 teaches “[a] system and method [to] manage delivery of energy
`
`from a distribution network to one or more sites.” (Ex. 1010, Abstract)(Ex. 1002,
`
`¶51). The management of the delivery of energy in Ehlers ’330 includes the ability
`
`to reduce energy consumption by an HVAC system in a building by changing the
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`Patent No. 10,534,382
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`temperature setpoint depending on whether the building is occupied or unoccupied,
`
`or when there is a spike in demand caused by, for example, extreme weather. (Ex.
`
`1010, ¶¶0017, 0204, 0254, 0266, 0319-0324)(Ex. 1002, ¶51).
`
`The Ehlers ’330 system is broadly similar to that of Geadelmann, in that it has
`
`thermostats which interact with a server, the server further providing an interface to
`
`a user device. (Ex. 1010, Fig. 1B, ¶¶0072-0079, 0099)(Ex. 1002, ¶52). One
`
`arrangement is shown in Fig. 1B, reproduced here:
`
`
`(Ex. 1010, Fig. 1B, ¶¶0072-0079)(Ex. 1002, ¶52). In Fig. 1B, there are a series of
`
`devices in a building (shown at the bottom), such as the thermostat 1.30D. (Ex.
`
`1010, ¶0076)(Ex. 1002, ¶52). These devices are connected by a network to a back-
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`Patent No. 10,534,382
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`end server 1.22 (Ex. 1010, ¶0072), which collects information about the devices and
`
`can send the devices instructions. (Ex. 1010, ¶¶0268-0309)(Ex. 1002, ¶52). The
`
`back end server also provides a user interface, which a customer can access using a
`
`Web browser (“customer GUI” 1.14, upper right). (Ex. 1010, ¶0099)(Ex. 1002,
`
`¶52). Using the web-based customer GUI, a customer can set temperature setpoints
`
`for occupied and unoccupied modes, as shown, for example, in Fig. 4D, reproduced
`
`here:
`
`
`
`(Ex. 1010, Fig. 4D, ¶¶0319-0324)(Ex. 1002, ¶52).
`
`Ehlers ’330 also teaches using stored historical inside and outside temperature
`
`data to control the HVAC system (corresponding to claims 19 and 20 of the ’382
`
`patent). (Ex. 1010, ¶0253, 0268, 0295)(Ex. 1002, ¶53). For example, Ehlers ’330
`
`teaches calculating the rate at which inside temperature changes at any given outside
`
`temperature (“thermal gain”), in order to predict how long it will take for the HVAC
`
`system to heat or cool the building from an “unoccupied” setpoint to an “occupied”
`
`setpoint. (Ex. 1010, ¶¶0244, 0253, 0268, 0295)(Ex. 1002, ¶53).
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`Patent No. 10,534,382
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`3. Overview of the Combination and Rationale (Motivation)
`Supporting Obviousness
`The combination posits that claims 1-20 would have been obvious mainly
`
`over Geadelmann alone, but that the obviousness (in particular of claims 1 and 19-
`
`20) would have been reinforced by the teachings of Ehlers ’330.
`
`As noted above, Geadelmann expressly teaches a system that provides the
`
`main components of the claims of the ’382 patent: user-specific data and
`
`information (via user-specific login credentials and user-tailored interface), the
`
`ability to set temperature setpoints based on occupancy via a remote interface, and
`
`the storage of historical inside and outside temperature data.
`
`This ground is presented as one of obviousness, however, for several reasons.
`
`Initially, the claims of the ’382 patent often claim generic components of computer
`
`systems such as “memory” and “circuitry”, or general communications methods
`
`(using the Internet) that would have been obvious based on Geadelmann’s
`
`disclosures of computers generally and the World Wide Web. Such instances of
`
`obviousness will be noted and explained in the claim mapping section.
`
`This ground is moreover presented as a combination with Ehlers ’330 for three
`
`reasons. Note that while this section provides an overview, a fuller discussion of the
`
`motivation to combine will be found in the claim mapping section under each claim
`
`element where the assertion of obviousness occurs.
`
`First, while Geadelmann teaches using an occupancy sensor (as required by
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`Patent No. 10,534,382
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`certain claims of the ’382 patent), Geadelmann does not expressly link the
`
`occupancy sensor to a determination of occupancy. (Ex. 1004, Fig. 9E, 8:31-43)(Ex.
`
`1002, ¶58). Ehlers ’330, however, explains that an occupancy sensor can be used to
`
`determine occupancy, and then to switch occupancy modes, and explains that the
`
`occupancy sensor can be a motion sensor (per ’382 claim 10). (Ex. 1010, ¶0266,
`
`0245)(Ex. 1002, ¶58). It would have been obvious to use Geadelmann’s occupancy
`
`sensor for its primary purpose, to detect occupancy, and to switch between
`
`Geadelmann’s occupancy modes, as explained in Ehlers ’330. (Ex. 1002, ¶58).
`
`Second, while Geadelmann teaches that a user can access graphs of inside and
`
`outside temperature versus time over the Web pages provided by the BCA (see, e.g.,
`
`Fig. 9A-9B), Geadelmann does not expressly state that these data could be used to
`
`help control the HVAC system (as required by ’382 patent claims 19 and 20). Ehlers
`
`’330, however, teaches monitoring inside and outside temperature, and calculating
`
`a building’s thermal gain. (Ex. 1010, ¶¶0246 0253, 0256, 0268, 0295, Fig. 3D, Fig.
`
`3E)(Ex. 1002, ¶59). The thermal gain is the rate of change of inside temperature
`
`with respect to time, and is normalized by the outside temperature (which affects the
`
`rate of change). (Ex. 1002, ¶59). Ehlers ’330 teaches using the thermal gain to
`
`predict how long it will take to switch between setpoint temperatures, for example,
`
`when switching from an unoccupied to an occupied mode. (Ex. 1010, ¶0246)(Ex.
`
`1002, ¶59). Because Geadelmann already has occupied and unoccupied modes and
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`Patent No. 10,534,382
`
`stores the relevant temperature data, it would have been obvious to use the
`
`enhancement taught by Ehlers ’330 to help predict the time required by an HVAC
`
`system to recover to an occupied temperature. (Ex. 1002, ¶59).
`
`Third, claim 1 of the ’382 patent requires that a “memory” storing historical
`
`data be located remotely from a “first processor”. In certain scenarios, the “memory”
`
`is with Geadelmann’s BCA, and the “first processor” is in a thermostat. In
`
`Geadelmann, the BCA can be located, for example, in the utility room or
`
`administrative office of a multi-tenant building, whereas the thermostats are located
`
`in tenant areas (like individual apartments). (Ex. 1004, 1:19-35, 4:60-67, 5:19-
`
`26)(Ex. 1002, ¶60). The BCA and thermostats communicate with each other over a
`
`network. (Ex. 1004, 4:4-8)(Ex. 1002, ¶60). Petitioner contends that this
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`arrangement meets the claim requirement of being “located remotely”. To the extent
`
`the Patent Owner argues otherwise, however, Ehlers ’330 teaches that a server in
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`communication with thermostats can essentially be located anywhere, because it is
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`able to communicate with those thermostats over a network. (Ex. 1010, ¶0238)(Ex.
`
`1002, ¶60). Because network communications allow communication over a great
`
`distance,
`
`it would have been obvious
`
`that
`
`the communication between
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`Geadelmann’s BCA and associated thermostats could also have been at great
`
`distances. (Ex. 1002, ¶60).
`
`Each instance of obviousness, and the rationale for each instance, will be
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`Patent No. 10,534,382
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`further explained in the claim mapping section under the claim element where it
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`occurs.
`
`D. Graham Factors
`The level of ordinary skill encompassed 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
`
`compensate for lack of formal education or vice versa. (Ex. 1002, ¶¶27-28).
`
`The scope and content of the prior art are discussed throughout the Ground.
`
`The differences between the prior art and the claims are discussed in the
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`“Overview of the Ground”, above, and in the Claim Mapping, below.
`
`Petitioner is not aware of any secondary considerations that would make an
`
`inference of non-obviousness more likely.
`
`E. Reasonable Expectation of Success
`A person of ordinary skill in the art (“POSA”) in the relevant timeframe would
`
`have had a reasonable expectation of success in using Geadelmann and Ehlers ’330
`
`in the manner discussed in the Overview section. (Ex. 1002, ¶¶62-64). As Mr. Shah
`
`explains, the art was relatively predictable in the relevant timeframe (2008). (Id.).
`
`A POSA would have been able to make any necessary modifications to implement
`
`this Ground. (Id.).
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`Patent No. 10,534,382
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`F. Analogous Art
`Geadelmann and Ehlers ’330 are analogous art because they are both in the
`
`same field as the ’382 patent (building energy management and controls). (Ex. 1001,
`
`1:16-18)(“This invention relates to the use of thermostatic HVAC and other energy
`
`management controls that are connected to a computer network.”)(Ex. 1004,
`
`Abstract)(Ex. 1010, ¶¶0015-0017)(Ex. 1002, ¶65). Furthermore, their methods
`
`would also have been reasonably pertinent to a problem facing the named inventors,
`
`for example, the problem of determining the “occupancy of a structure for purposes
`
`of automatically adjusting the temperature setpoint on a thermostatic HVAC
`
`control.” (Ex. 1001, Abstract)(compare Ex. 1004, Figs. 3D, 9C, 9I, 11:61-12:30,
`
`21:40-45, 11:4-17)(Ex. 1010, Figs. 4D-4F, ¶¶0121, 0204, 0244-0246, 0266)(Ex.
`
`1002, ¶65). See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
`
`2010)(“The Supreme Court’s decision in KSR [cite omitted], directs us to construe
`
`the scope of analogous art broadly….”).
`
`G. Claim Mapping
`This section maps the challenged claims to the relevant disclosures of
`
`Geadelmann and Ehlers ’330, where the claim text appears in bold-italics, and the
`
`relevant mapping follows the claim text. The Petitioner has added numbering and
`
`lettering in brackets (e.g. 1[a], [1b]) to certain claim elements, to facilitate the
`
`discussion.
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`Patent No. 10,534,382
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`CLAIM 1
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`“1[a] A system for controlling an HVAC system at a user’s building,
`the system comprising:”
`
`Geadelmann teaches a system for controlling an HVAC system at a user’s
`
`building. (Ex. 1004, Title; Ex. 1004, 3:35-40, 5:4-34)(Ex. 1002, ¶67).
`
`This element is also demonstrated by the analysis presented under the
`
`remaining claim limitations, below, which show how the HVAC system of the user’s
`
`building is managed. (Ex. 1002, ¶68).
`
` “[1b] a memory; and”
`
`Geadelmann renders obvious a memory by teaching various computers. (Ex.
`
`1004, 3:12-34, 4:38-46, 9:17-27, 13:1-8, 14:34-41, 16:22-29, 17:23-30, 18:8-16,
`
`21:4-11, 24:10-18, 26:8-17)(Ex. 1002, ¶69). As was obvious in the relevant
`
`timeframe (2008), computers had memory. (Ex. 1002, ¶69).
`
`For example, Geadelmann teaches that its algorithms can be carried out by
`
`computers that “store” programs, which indicates that the computers have memories:
`
`“The present invention also relates to an apparatus for performing
`the operations. This apparatus may be specially constructed for the
`required purposes or it may include a general purpose computer as
`selectively activated or reconfigured by a computer program stored
`in the computer.”
`
`(Ex. 1004, 3:12-27)(Emphasis added)(Ex. 1002, ¶70).
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`Patent No. 10,534,382
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`Geadelmann specifically teaches a BCA (a computer) that incorporates a Web
`
`server, a PC or PDA on which a user can view Web pages, and a programmable
`
`thermostat. (Ex. 1004, Figs. 1 and 2, 4:47-55, 4:38-46, and 4:22-37)(Ex. 1002, ¶71).
`
`Each of these devices is programmable. (Ex. 1004, 3:12-23, 4:22-37, 5:15-18, 8:44-
`
`63, 9:17-27, 11:8-17, 30:42-46, cl. 4)(Ex. 1002, ¶71). Each would thus obviously
`
`contain memory to store the programs it executes, because otherwise it would not be
`
`able to execute programs. (Ex. 1002, ¶71)(Ex. 1010, ¶¶0171, 0179, 0198).
`
`“[1c] one or more processors with circuitry and code designed to
`execute instructions;”
`
`Geadelmann further renders obvious one or more processors with circuitry
`
`and code designed to execute instructions. These one or more processors can be
`
`found within (1) the BCA, (2) the PC or PDA used by the user, and (3) processors
`
`within programmable thermostats. (Ex. 1004, Figs. 1 and 2, 4:47-55, 4:38-46, and
`
`4:22-37)(Ex. 1002, ¶72). Because each of these devices is a form of programmable
`
`computer, as discussed above under element [1b], it would have been obvious that
`
`each contained a processor with circuitry and code designed to execute
`
`instructions. (Ex. 1002, ¶72). Specifically, the BCA has a “Controller 36”, and
`
`executed at least a Web server (a form of program) and control algorithms for the
`
`building HVAC systems. (Ex. 1004, 4:47-59)(Ex. 1002, ¶72). The user’s PC or
`
`PDA executed an operating system and at least a Web browser. (Ex. 1004, 4:38-46,
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`Patent No. 10,534,382
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`9:17-27)(Ex. 1002, ¶72). The programmable thermostats executed program logic
`
`for changing temperature based on schedules, or for executing instructions received
`
`from the BCA. (Ex. 1004, 4:22-37, 9:4-10)(Ex. 1002, ¶72). Each of these
`
`programmed functions would obviously have required program instructions and
`
`circuitry in a processor to carry out those instructions. (Ex. 1004, 29:42-54, 2:49-
`
`3:34)(Ex. 1002, ¶72). Geadelmann expresses that its methods, including those
`
`implied by screenshots, are intended to be carried out using computers that execute
`
`instructions. (Ex. 1004, 2:49-3:34)(Ex. 1002, ¶72).
`
`A person of ordinary skill would further have found it obvious to carry out or
`
`facilitate all functions of the BCA, the user’s PC or PDA, and the programmable
`
`thermostats via respective instructions executed by respective processors. (Ex. 1004,
`
`2:49-3:34)(Ex. 1002, ¶73). It would have been obvious that the processors of each
`
`respective device controls and directs all activity of that device, and does so through
`
`the use of code and circuitry. (Ex. 1002, ¶73).
`
`“[1d] the one or more processors with circuitry and code designed to
`execute instructions to receive a first data from at least one sensor,
`wherein the first data from the at least one sensor includes a
`measurement of at least one characteristic of the building;”
`
`Geadelmann teaches that the BCA (which obviously contained a processor
`
`referred to under element [1c], immediately above) receive[s] a first data from at
`
`least one sensor, wherein the first data from the at least one sensor includes a
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`Patent No. 10,534,382
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`measurement of at least one characteristic of the building. Specifically, the BCA
`
`(and its processor) receive the temperature of the building from sensors within
`
`thermostats. Geadelmann explains:
`
`“Controller 36 may be adapted to receive sensor information from
`the thermostats via second network 20.”
`
`(Ex. 1004, 5:13-15)(Ex. 1002, ¶74). Each thermostat, in turn, has at least one
`
`temperature sensor. (Ex. 1004, 5:13-15, 10:46-49, Figs. 3B-3C (“Current Temp”),
`
`Fig. 9E, 7:51-53, 17:31-67, Figs. 7A-7B)(Ex. 1002, ¶74). This sensor is necessary
`
`to control thermostat operation, by comparing the current temperature against
`
`setpoints. (Ex. 1002, ¶74)(Ex. 1010, ¶¶0011-0013)(Ex. 1001, 1:24-40). Because
`
`the thermostat is inside the building, the thermostat’s temperature sensor senses
`
`inside temperature, which is a measurement of at least one characteristic of the
`
`building. (Ex. 1001, claim 4)(Ex. 1002, ¶74).
`
`It was further obvious that the BCA receives and stores inside temperature,
`
`because the BCA can display the current inside temperature at a thermostat on Web
`
`pages provided by the BCA. Geadelmann explains:
`
`“A variety of information may be displayed on the summary web
`page. Examples of information include but are not limited to one or
`more of a thermostat identifier for one or more of the thermostats, a
`current inside temperature reported by one or more of the
`thermostats, a current outside temperature….”
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`Patent No. 10,534,382
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`(Ex. 1004, 5:35-39)(Emphasis added)(Ex. 1002, ¶75). This is shown, for example,
`
`in Fig. 3B of Geadelmann, reproduced below, in which each thermostat reports its
`
`current inside temperature meas