UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Patent No. 10,534,382
`
`DECLARATION OF RAJENDRA SHAH
`
`ecobee, IPR2021-01052
`Ex.1002, Page 1 of 97
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`

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`TABLE OF CONTENTS
`ENGAGEMENT AND COMPENSATION ................................................... 4
`I.
`QUALIFICATIONS ........................................................................................ 4
`II.
`SUMMARY OF OPINIONS ........................................................................... 6
`III.
`IV. MATERIALS REVIEWED ............................................................................ 7
`V. UNDERSTANDING OF THE RELEVANT LAW ........................................ 8
`A. Anticipation ........................................................................................... 8
`B.
`Obviousness ........................................................................................... 9
`C. Written Description Support ............................................................... 12
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 13
`VII. RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS ....... 13
`VIII. TECHNICAL INTRODUCTION ................................................................. 14
`A.
`The ‘382 Patent Disclosure ................................................................. 14
`IX. DISCLOSURE OF CLAIMS 19 AND 20..................................................... 17
`X.
`CLAIM INTERPRETATION ....................................................................... 19
`XI. GROUND 1: Claims 1-20 are obvious over Geadelmann in view of
`Ehlers ’330. ......................................................................................... 20
`Effective Prior Art Dates of Geadelmann and Ehlers ’330 ................. 21
`Overview of the Ground ...................................................................... 21
`1.
`Overview of Geadelmann ......................................................... 22
`2.
`Overview of Ehlers ’330 ........................................................... 25
`3.
`Overview of the Combination and Rationale (Motivation)
`Supporting Obviousness ........................................................... 27
`Reasonable Expectation of Success .................................................... 30
`
`A.
`B.
`
`C.
`
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`D. Analogous Art ..................................................................................... 32
`E.
`Claim Mapping .................................................................................... 32
`XII. OATH
` ................................................................................................... 97
`
`
`
`
`
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`
`
`I.
`
`ENGAGEMENT AND COMPENSATION
` My name is Rajendra Shah. (Ex. 1003). I have been retained by Google
`
`LLC for the purpose of providing my opinion with respect to the unpatentability of
`
`U.S. Pat. No. 10,534,382 (“the ’382 patent”). I am being compensated for my time
`
`in preparing this declaration at my standard hourly rate, and my compensation is not
`
`dependent upon my opinions or the outcome of the proceedings. My curriculum
`
`vitae is attached as Ex. 1003.
`
`II. QUALIFICATIONS
`I am currently the Principal at AnalyzRS LLC, a company providing,
`
`
`among other things, consulting services for the HVAC industry. I have been
`
`employed in this position since 2016.
`
`
`
`I consider myself to have significant knowledge and experience in
`
`Heating, Ventilating and Air Conditioning (“HVAC”) systems, with particular
`
`knowledge relating to associated technology integration, control algorithms,
`
`modeling and simulation, and data analytics. I have significant knowledge and
`
`experience relating to the optimization of the operational efficiency of HVAC
`
`systems. My current Curriculum Vitae is attached as Exhibit 1003, and summarizes
`
`my qualifications.
`
`
`
`Prior to my work for AnalyzRS LLC, I was employed at United
`
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`Technologies Carrier Corporation in Indianapolis, Indiana from 1991 to 2016.
`
`During my career at Carrier, my work focused on the design and development of
`
`HVAC systems and associated technologies. From 1991 to 2000, I was employed
`
`as a Senior Program Manager for Advanced Systems at Carrier. While in that
`
`position, I had responsibility for the launch of new product categories, including two
`
`stage air conditioners and heat pumps, variable speed fan coils, digital thermostats,
`
`multi zone controls, expandable filters, and fresh air ventilators.
`
`
`
`From 2000 to 2008 I was employed as an Engineering Manager for
`
`Systems Development. In that role I designed and managed the design of premium
`
`air conditioners, heat pumps, indoor fan coils, advanced thermostats, multi-zone
`
`controls and indoor air quality products. In particular, my team developed Carrier’s
`
`Infinity® HVAC system, which was originally launched in 2004, and which went
`
`on to be a highly successful product.
`
`
`
`From 2008 to 2016 I held the title of Engineering Fellow, Systems and
`
`Controls. I was one of the first eight Fellows selected to what was Carrier’s top
`
`engineering position out of thousands of engineers worldwide. While in this
`
`position, I worked to develop Carrier’s Infinity® Touch Control system with internet
`
`connectivity, which was first launched in 2012. This product received the Dealer
`
`Design Gold award from industry magazine ACHR News in 2013 and has continued
`
`to be a top-selling product for Carrier.
`
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`
`Beginning in 1984, I was employed as Project Manager for
`
`Electronically Commutated (Brushless DC) Motors at General Electric (GE)
`
`Motors. While employed in this role, I developed and launched GE’s new line of
`
`brushless DC variable speed motors targeted at residential heating and air
`
`conditioning applications.
`
`
`
`Beginning in 1977, I was employed by United Technologies Electronic
`
`Controls as a Project Engineer for Control Design. In this position, I designed high
`
`volume electronic controls, including electronic circuit design and microprocessor
`
`software, for appliances and heating and air conditioning systems.
`
`
`
`I am a named inventor on at least 50 patents, with applications still
`
`pending. My patents primarily relate to the field of HVAC technology.
`
`
`
`I hold a Bachelor’s degree in Electrical Engineering from the Indian
`
`Institute of Technology, Bombay, India, which I obtained in 1975. I also obtained a
`
`Master’s degree in Electrical Engineering, Ohio State University, Columbus, Ohio
`
`in 1977 and a Master’s degree in Business Administration from the University of St
`
`Francis, Fort Wayne, Indiana in 1983.
`
`III. SUMMARY OF OPINIONS
`In my opinion, claims 1-20 are obvious over the Geadelmann patent in
`
`
`view of the Ehlers ’330 publication.
`
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`IV. MATERIALS REVIEWED
`In forming my opinions, I have relied on my knowledge of the field and
`
`
`my experience, and have specifically reviewed the following exhibits:
`
`Exhibit No.
`1001
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`1013
`
`1014
`
`1015
`
`Description
`U.S. Patent No. 10,534,382 (“the ’382 patent”).
`U.S. Pat. No. 8,196,185 (“Geadelmann”).
`File History of U.S. Appl. Ser. No. 16/374,085 (“the ’085
`application”).
`File History of U.S. Appl. Ser. No. 15/002,791 (“the ’791
`application”).
`File History of U.S. Appl. Ser. No. 13/470,074 (“the ’074
`application”).
`File History of U.S. Appl. Ser. No. 12/502,064 (“the ’064
`application”).
`File History of U.S. Provisional Appl. Ser. No. 61/134,714 (“the
`’714 provisional”).
`U.S. Pat. App. Pub. 2004/0117330 (“Ehlers ’330”).
`U.S. Pat. App. Pub. 2008/0099568 A1 (“Nicodem”).
`U.S. Pat. No. 8,498,753 (“the ’753 patent”).
`Redline comparison of the ’085 application over the ’791
`application.
`Redline comparison of the ’085 application over the ’074
`application.
`Redline comparison of the ’085 application over the ’064
`application.
`
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`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).
`
`
`
`V. UNDERSTANDING OF THE RELEVANT LAW
`I have the following understanding of the applicable law:
`
`
`A. Anticipation
`I understand that a claim in an issued patent can be unpatentable if it is
`
`
`anticipated. I understand that “anticipation” means that there is a single prior art
`
`reference that discloses every element of the claim, arranged in the way required by
`
`the claim.
`
`
`
`I understand that an anticipating prior art reference must disclose each
`
`of the claim elements expressly or inherently. I understand that “inherent”
`
`disclosure means that the claim element, although not expressly described by the
`
`prior art reference, must necessarily be present based on the disclosure. I understand
`
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`that a mere probability that the element is present is not sufficient to qualify as
`
`“inherent disclosure.”
`
`B. Obviousness
`I understand that a claim in an issued patent can be unpatentable if it is
`
`
`obvious. Unlike anticipation, obviousness does not require that every element of the
`
`claim be in a single prior art reference. Instead, it is possible for claim elements to
`
`be described in different prior art references, so long as there is motivation or
`
`sufficient reasoning to combine the references, and a reasonable expectation of
`
`success in achieving what is set forth in the claims.
`
`
`
`I understand that a claim is unpatentable for obviousness if the
`
`differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the alleged invention
`
`was made to a person having ordinary skill in the art to which said subject matter
`
`pertains.
`
`
`
`I understand, therefore, that when evaluating obviousness, one must
`
`consider obviousness of the claim “as a whole”. This consideration must be from
`
`the perspective of the person of ordinary skill in the relevant art, and that such
`
`perspective must be considered as of the “time the invention was made.”
`
` The level of ordinary skill in the art is discussed in ¶¶26-27 below.
`
` The relevant time frame for obviousness, the “time the invention was
`
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`made”, is discussed in ¶¶28-29, below.
`
`
`
`I understand that in considering the obviousness of a claim, one must
`
`consider four things. These include the scope and content of the prior art, the level
`
`of ordinary skill in the art at the relevant time, the differences between the prior art
`
`and the claim, and any “secondary considerations.”
`
`
`
`I understand that “secondary considerations” include real-world
`
`evidence that can tend to make a conclusion of obviousness either more probable or
`
`less probable. For example, the commercial success of a product embodying a claim
`
`of the patent could provide evidence tending to show that the claimed invention is
`
`not obvious. In order to understand the strength of the evidence, one would want to
`
`know whether the commercial success is traceable to a certain aspect of the claim
`
`not disclosed in a single prior art reference (i.e., whether there is a causal “nexus” to
`
`the claim language). One would also want to know how the market reacted to
`
`disclosure of the invention, and whether commercial success might be traceable to
`
`things other than innovation, for example the market power of the seller, an
`
`advertising campaign, or the existence of a complex system having many features
`
`beyond the claims that might be desirable to a consumer. One would also want to
`
`know how the product compared to similar products not embodying the claim. I
`
`understand that commercial success evidence should be reasonably commensurate
`
`with the scope of the claim, but that it is not necessary for a commercial product to
`
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`embody the full scope of the claim.
`
` Other kinds of secondary considerations are possible. For example,
`
`evidence that the relevant field had a long-established, unsolved problem or need
`
`that was later provided by the claimed invention could be indicative of non-
`
`obviousness. Evidence that others had tried, but failed to make an aspect of the
`
`claim might indicate that the art lacked the requisite skill to do so. Evidence of
`
`copying of the patent owner’s products before the patent was published might also
`
`indicate that its approach to solving a particular problem was not obvious. Evidence
`
`that the art recognized the value of products embodying a claim, for example, by
`
`praising the named inventors’ work, might tend to show that the claim was non-
`
`obvious.
`
`
`
`I further understand that prior art references can be combined where
`
`there is an express or implied rationale to do so. Such a rationale might include an
`
`expected advantage to be obtained, or might be implied under the circumstances.
`
`For example, a claim is likely obvious if design needs or market pressures existing
`
`in the prior art make it natural for one or more known components to be combined,
`
`where each component continues to function in the expected manner when combined
`
`(i.e., when there are no unpredictable results). A claim is also likely unpatentable
`
`where it is the combination of a known base system with a known technique that can
`
`be applied to the base system without an unpredictable result. In these cases, the
`
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`combination must be within the capabilities of a person of ordinary skill in the art.
`
`
`
`I understand that when considering obviousness, one must not refer to
`
`teachings in the specification of the patent itself. One can, however, refer to portions
`
`of the specification admitted to being prior art, including the “BACKGROUND”
`
`section. Furthermore, a lack of discussion in the patent specification concerning
`
`how to implement a disclosed technique can support an inference that the ability to
`
`implement the technique was within the ordinary skill in the prior art.
`
`C. Written Description
`I understand that a patent claim needs to be described in the application
`
`
`for patent that was filed with the United States Patent and Trademark Office. I
`
`understand to “describe” a claim, the patent application needs to provide sufficient
`
`written description to reasonably convey to those skilled in the art that the inventor
`
`had ‘possession’ of the claimed subject matter as of the filing date. This involves an
`
`objective inquiry into the four corners of the specification from the perspective of a
`
`person of ordinary skill in the art. Based on that inquiry, the specification must
`
`describe an invention understandable to that skilled artisan and show that the
`
`inventor actually invented the invention claimed. I further understand that while a
`
`patent specification can support a claim even if it does not need to use exactly the
`
`same words as the claim, this does not extend into the realm of “obviousness”. That
`
`is, a patent specification that merely renders a claim obvious does not provide written
`
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`description support for that claim.
`
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`In my opinion, the relevant art was that of heating, ventilation, and air
`
`
`conditioning (“HVAC”) control and building automation. I note that the ’382 patent
`
`teaches that “[t]his invention relates to the use of thermostatic HVAC and other
`
`energy management controls that are connected to a computer network.” (Ex. 1001,
`
`1:16-19). Furthermore, the claims of the ’382 patent are directed to “[a] system for
`
`controlling an HVAC system at a user’s building” (claim 1). In my opinion, the
`
`level of ordinary skill encompassed a person with at least 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. In my opinion, additional relevant industry
`
`experience may compensate for lack of formal education or vice versa.
`
`
`
`I believe I would meet this definition, and would have met this
`
`definition in the relevant timeframe. My testimony is offered from this perspective,
`
`even if it does not specifically refer to the perspective of a person of ordinary skill
`
`in the art in every instance.
`
`VII. RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS
`I understand that obviousness must be evaluated “at the time of the
`
`
`invention.” From the cover pages of the ’382 patent, I can see that the first
`
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`provisional application for a patent was filed in the United States on July 14, 2008.
`
` For the purpose of this declaration, I will analyze obviousness in the
`
`time frame immediately prior to this date, although my testimony is usually
`
`applicable to a longer period of time before July 14, 2008. My testimony is directed
`
`to this timeframe, even if I do not always use a past tense.
`
`VIII. TECHNICAL 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 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). 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). Alternatively, the ’382 patent teaches
`
`that motion sensors have been used to control an HVAC system, depending on
`
`whether the room is believed to be occupied or unoccupied. (Ex. 1001, 2:51-53). If
`
`no motion is detected after a predetermined period of time, the setpoint is altered to
`
`an energy-saving level; but as soon as motion is detected, the setpoint is returned to
`
`the guest’s chosen setting. (Ex. 1001, 2:53-59).
`
` The ’382 patent states that there may be opportunities to improve the
`
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`typical thermostat’s function within a single-family home, by using improved
`
`occupancy detection. (Ex. 1001, 2:60-63). As an example, the ’382 patent discusses
`
`detecting occupancy by activity on a user’s computer connected to a home network.
`
`(Ex. 1001, 3:24-41). 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). This concept from the patent, however, did not find its way into the
`
`claims of this patent.
`
`
`
`Independent claim 1 of the ’382 patent reads as follows:
`
`“1. A system for controlling an HVAC system at a user’s building,
`the system comprising:
`a memory; and
`one or more processors with circuitry and code designed to execute
`instructions;
`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;
`the one or more processors with circuitry and code designed to
`execute instructions to receive a second data from a network
`connection, wherein the second data from the network connection
`is collected from a source external to the building, wherein the
`second data from the network connection is received via the
`Internet;
`the one or more processors with circuitry and code designed to
`
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`execute instructions to receive a first temperature setpoint for the
`building corresponding to a desired temperature setting when the
`building is occupied, and a second temperature setpoint for the
`building corresponding to a desired temperature setting when the
`building is unoccupied;
`the one or more processors with circuitry and code designed to
`execute instructions to receive commands through the Internet by
`way of a remote interface on a mobile, wireless device running
`software application code; wherein the interface is configured to
`allow the user to adjust temperature setpoints for the HVAC
`system;
`the one or more processors with circuitry and code designed to
`execute instructions to send user-specific data through the Internet,
`wherein user-specific information about the building and HVAC
`system is generated based at least in part on the user-specific data,
`wherein the user-specific information is configured to be presented
`on a user interface on a mobile, wireless device running software
`application code via the Internet;
`the one or more processors with circuitry and code designed to
`execute instructions to determine whether the building is occupied
`or unoccupied, and based on that determination, to control the
`HVAC system to provide heating or cooling to the building at an
`operational temperature;
`wherein the one or more processors comprises a first processor with
`circuitry and code designed to execute instructions, which is
`located remotely from the memory and is not electrically connected
`to the memory;
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`the first processor with circuitry and code designed to execute
`instructions to communicate with the memory; wherein the memory
`is configured to store historical values of the first data and second
`data.”
`
`The claim is 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 to making a determination of whether
`
`a building is occupied or unoccupied.
`
`IX. DISCLOSURE OF CLAIMS 19 AND 20
`I have reviewed the original application specification (Ex. 1005, pp.
`
`
`0247-0271, filed in 2019) that led to the issuance of the ’382 patent (“the ’085
`
`application”), and I have found no disclosure that supports claims 19 and 20 of the
`
`issued patents. Claim 19 reads:
`
`“19. The system of claim 1, wherein the one or more processors with
`circuitry and code designed to execute instructions controls the
`HVAC system to provide heating or cooling to the building at an
`operational temperature based at least in part on the historical values
`of the first and second data.”
`
`(Ex. 1001, claim 19). Claim 20 is similar, but depends from claim 17, rather than
`
`claim 1.
`
`
`
`In both claims 19 and 20, the “first data” and “second data” are values
`
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`further defined in the respective independent claims. Specifically, the “first data” in
`
`claim 19 is data that (based on claim 1) originated “from at least one sensor”, and
`
`that “includes a measurement of at least one characteristic of the building”. The
`
`“second data”, in turn, is data that is “collected from a source external to the
`
`building” and is received “via the Internet”. In claim 20, the “first data” is further
`
`limited (by claim 17) to “a measurement of the current temperature of the building
`
`by the sensor”, whereas the “second data” is further limited to “outdoor
`
`temperature”.
`
`
`
`I also understand that the application leading to the ’382 patent
`
`incorporates by reference several prior applications. (Ex. 1005, p. 0247)(Ex. 1006,
`
`pp. 0454-0477) (Ex. 1007, pp. 0407-0431)(Ex. 1008, pp. 0256-0279)(Ex. 1009, pp.
`
`0011-0033). Redline comparisons of the text of the ’085 application to the text of
`
`these earlier applications (showing changes that would have to be made to the earlier
`
`applications to be the same as the ’085 application text) are provided as Exs. 1013,
`
`1014, 1015 and 1016. As these exhibits show, the text of the various applications
`
`have not changed much (except in the claims). These earlier applications likewise
`
`do not support claims 19 and 20 of the ’382 patent. More specifically, there is no
`
`teaching anywhere in the specification of the ’085 application or its incorporated
`
`applications that historical values of first data (temperature of the building) and
`
`second data (outside temperature) could be used to control the HVAC system.
`
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`Instead, claims 19 and 20 were added by amendment in 2019, more than four months
`
`after the final application in the chain, 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), 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. In
`
`particular, the “weather database 800”, shown in Fig. 5 (Ex. 1001, Fig. 1, 6:11-12)
`
`is not described as having historical values, nor as being received over the Internet.
`
`The earlier, incorporated applications (including their claims) provide no further
`
`relevant support for either claim 19 or claim 20. (Ex. 1007, pp. 0407-0431)(Ex.
`
`1008, pp. 0256-0279)(Ex. 1009, pp. 0011-0033)(Ex. 1012)(Ex. 1013)(Ex. 1014)(Ex.
`
`1015).
`
` Thus, I am of the opinion that there is no written description support for
`
`claims 19 and 20 in any application of the chain of applications leading to the ’382
`
`patent.
`
`X. CLAIM INTERPRETATION
`I understand that it is sometimes necessary or useful for claim terms in
`
`
`a patent to be further explained or interpreted (“construed”). I understand that in the
`
`present proceeding, the Board applies the same claim construction standard used by
`
`District Courts in actions involving the validity or infringement of a patent. This
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`involves construing claim terms in accordance with the ordinary and customary
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`meaning of such terms, as understood by one of ordinary skill in the art, in light of
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`the claim language, the technical disclosure of the patent (i.e. the specification) and
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`the prosecution history or “file history” of correspondence with the United States
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`Patent and Trademark Office (USPTO) pertaining to the patent.
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`
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`I further understand that the file history of a parent patent application
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`can be relevant to the claim construction of claim terms appearing in patents that
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`have descended from that parent application.
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`
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`I understand that certain “extrinsic” evidence, such as dictionaries or
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`other prior art, can sometimes be useful to understand the meaning of a claim term.
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`However I understand that where there is a conflict between any such extrinsic
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`evidence and the patent and patent’s prosecution history, the latter control.
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`I am informed that in several co-pending litigations various parties have
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`taken claim construction positions. (Ex. 1017)(Ex. 1018).
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`XI. GROUND 1: CLAIMS 1-20 ARE OBVIOUS OVER GEADELMANN
`IN VIEW OF EHLERS ’330.
`In my opinion, claims 1-20 are obvious under post-AIA 35 U.S.C.
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`§ 103(a) over U.S. Pat. No. 8,196,185 (“Geadelmann”)(Ex. 1004) in view of U.S.
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`Pat. App. Pub. 2004/0117330 (“Ehlers ’330”)(Ex. 1010).
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`A. Effective Prior Art Dates of Geadelmann and Ehlers ’330
` The ’382 patent has an earliest-possible effective filing date of July 14,
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`2008.
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`
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`I can see from the front page of Geadelmann that it is a U.S. patent that
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`was filed on August 27, 2007 and issued on June 5, 2012. I understand that
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`Geadelmann is thus prior art.
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`I can also see from the face of Ehlers ’330 that it is a U.S. patent
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`application that was filed on July 28, 2003 and published on June 17, 2004. I
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`understand that Ehlers ’330 is thus also prior art.
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`B. Overview of the Ground
`In my opinion, the combination of Geadelmann in view of Ehlers ’330
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`renders the challenged claims obvious. In brief, Geadelmann teaches a system
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`similar to that of the ’382 patent. In particular, Geadelmann teaches allowing a
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`specifically-identified user to control an HVAC system using a remote device. Via
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`the device, a user can set occupancy or non-occupancy temperature setpoints. The
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`system also stores historical inside and outside temperatures. Ehlers ’330, in turn,
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`more specifically teaches making a determination of occupancy, and specifically
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`describes using indoor and outdoor temperature measurements to control the HVAC
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`system (relevant to claims 19 and 20 of the ’382 patent).
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`
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`In my opinion, it would have been obvious to use Geadelmann’s system
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`in the manner recited in the claims of the ’382 patent, and that this obviousness is
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`supported by the teachings of Ehlers ’330.
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`1. Overview of Geadelmann
` Geadelmann teaches a “Remote HVAC Control with a Customizable
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`Overview Display”. (Ex. 1004, Title). The system is shown generally in Fig. 1,
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`reproduced here:
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`(Ex. 1004, Fig. 1, 3:35-4:46). As shown in Fig. 1, a series of thermostats 26, 28, 30,
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`and 32 are in communication over a network 20 with a Building Control Appliance
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`12. (Ex. 1004, 3:62-4:8). The Building Control Appliance 12 collects information
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`from the thermostats and can provide instructions to them. (Ex. 1004, 4:22-37,
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`4:47-59, 5:13-18). In addition, the Building Control Appliance can contain a Web
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`server (shown in Fig. 2) that serves Web pages. (Ex. 1004, Fig. 2, 4:47-5:18).
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` The Web pages can be accessed by a user, employing a device 34. (Ex.
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`1004, 4:38-46). Device 34 is shown in Fig. 1 as a PC, but can be a mobile device
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`such as a laptop, cellphone, or PDA. (Id.). Using such a device, the user can log in
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`with a user-specific password, receive user-specific summary information, and
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`manage the configuration of the associated thermostats and their HVAC systems.
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`(Ex. 1004, 9:17-65, 5:3-34, Figs. 3D, 9C, 9I, 11:61-12:30). For example, the user
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`of the device 34, if she has sufficient permissions, can turn the HVAC system ON
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`and OFF, and enter temperature setpoints for occupied and unoccupied modes. (Ex.
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`1004, Figs. 3C-3D, 9C, 9I, 11:61-12:30, 9:28-37). By entering less-energy-intensive
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`setpoints for the unoccupied mode, the user can save energy. An example of the
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`ability to enter setpoints according to occupied and unoccupied states is shown in
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`Fig. 3D, reproduced below:
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`
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`(Ex. 1004, Fig. 3D, 11:61-12:31). In the Figure, the user is allowed to click arrow
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`buttons (e.g.. up and down arrows 342 and 344) that set cooling and heating setpoints
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`for a particular thermostat (which cause the HVAC system to cool or heat to those
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`setpoints ), as well as turn the associated HVAC system ON or OFF using menu 348.
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`(Ex. 1004, 11:61-12:31).
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` Geadelmann further teaches storing historical inside and outside
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`temperature data, as shown, for example, in Fig. 7A, reproduced below, where an
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`inside temperature and outside temperature are graphed for the user over a period of
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`three days:
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`(Ex. 1004, Fig. 7A-7B, 17:31-18:7). In the Figure, the user can select the
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`temperature sensor readings that the user would like to view over time. (Id.).
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`2. Overview of Ehlers ’330
` Ehlers ’330 teaches “[a] system and method [to] manage delivery of
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`energy from a distribution network to one or more sites.” (E