Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 1 of 24
`
`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Case No. 6:20-cv-00075-ADA
`
`Case No. 6:20-cv-00078-ADA
`
`Case No. 6:20-cv-00080-ADA
`
`ECOFACTOR, INC.
`Plaintiff,
`
`v.
`GOOGLE LLC,
`Defendant.
`
`ECOFACTOR, INC.,
`Plaintiff,
`
`v.
`ECOBEE, INC.,
`Defendant.
`
`ECOFACTOR, INC.,
`Plaintiff,
`
`v.
`VIVINT, INC.,
`Defendant.
`
`Plaintiff EcoFactor, Inc.’s Opening Claim Construction Brief
`
` i
`
`ecobee, IPR2021-01052
`Ex.1018, Page 1 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 2 of 24
`
`TABLE OF CONTENTS
`
`Page(s)
`INTRODUCTION ............................................................................................................... 1
`I.
`II. BACKGROUND OF THE PATENTED TECHNOLOGIES ......................................... 1
`A. The ‘488 and ‘327 patents ................................................................................................... 1
`B.
`The ‘492 and ‘382 patents ................................................................................................... 4
`III. CLAIM CONSTRUCTION PRINCIPLES ....................................................................... 5
`IV. DISPUTED TERMS ............................................................................................................ 7
`A.
`“measurement[s]” (’488, ’327, ’382, all claims) .......................................................... 7
`B.
`“outside temperature” (’488, claims 1, 2, 9, 10; ’327, claims 1, 2, 11, 12) .................. 9
`C.
`’488 patent: the entirety of claims 1 and 9 ................................................................. 11
`D.
`“rate of change in inside temperature” / “rate of change in temperature inside the
`[said] structure” (’488, claims 1, 9; ’327, claims 1, 11 / ’488, claims 8, 16; ’327,
`claims 5, 15) ............................................................................................................... 14
`“programmable thermostat” (’327, claims 3, 13) ....................................................... 16
`“user interface actions intended to alter a state of one or more of said [networked]
`electronic devices” (’492, claims 1, 10) ..................................................................... 18
`“input from one or more users” / “[said one or more of] said user’s input” / “said
`input from said one or more users” / “said input from said one or more users” (’492,
`claims 1, 9, 10, 18) ..................................................................................................... 19
`V. CONCLUSION .................................................................................................................. 20
`
`E.
`F.
`
`G.
`
`ii
`
`ecobee, IPR2021-01052
`Ex.1018, Page 2 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 3 of 24
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2015)................................................................................................. 12
`Epistar Corp. v. ITC,
`566 F.3d 1321 (Fed. Cir. 2009).......................................................................................... passim
`In re Collier,
`397 F.2d 1003 (C.C.P.A. 1968) ................................................................................................ 12
`JVW Enterprises, Inc. v. Interact Accessories,
`424 F.3d 1324 (Fed. Cir. 2005)............................................................................................. 6, 11
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`572 U.S. 898 (2014) .................................................................................................................. 12
`O2 Micro Int’l v. Beyond Innovation Tech.,
`521 F.3d 1351 (Fed. Cir. 2008)............................................................................................... 6, 7
`Omega Engineering, Inc v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)................................................................................................... 6
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)..................................................................................... 5, 6, 8, 15
`Renishaw PLC v. Marposs Societa' per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)........................................................................................... 18, 19
`SRI Int’l v. Matsuhita Elec. Corp.,
`775 F.2d 1108 (Fed. Cir. 1995)................................................................................................. 13
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F.3d 1316 (Fed. Cir. 2008)................................................................................................. 12
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)................................................................................................... 5
`Thorner v. Sony Computer Ent. Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012).......................................................................................... passim
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)................................................................................................. 20
`Unwired Planet, LLC v. Apple Inc.,
`829 F.3d 1353 (Fed. Cir. 2016)................................................................................................. 17
`US Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997)............................................................................................... 6, 7
`Statutes
`35 U.S.C. § 282 ............................................................................................................................. 12
`
`
`
`
` ii
`
`ecobee, IPR2021-01052
`Ex.1018, Page 3 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 4 of 24
`
`I.
`
`INTRODUCTION
`EcoFactor, Inc. (“EcoFactor”) and Defendants1 offer not just competing claim
`construction proposals but completely different approaches to claim construction. EcoFactor’s
`proposals stay consistent with the terms’ plain meaning and clarify that meaning only when
`necessary under controlling law, or when helpful to narrow the disputes for the Court.
`EcoFactor’s proposals are also the only ones that are faithful to the full scope of the intrinsic
`record.
`Defendants’ proposals, on the other hand, ask this Court to recharacterize and burden
`clear terms by importing artificial and extraneous baggage, often from extrinsic evidence that
`they have cherry-picked to support their litigation-driven proposed constructions. But
`Defendants cannot identify any clear and unmistakable disclaimer or clear lexicography to
`support those importations. Accepting their constructions can only invite reversible error. For
`many of their proposals, Defendants’ arguments are inconsistent with the claim language itself,
`and in others, they are superfluous and/or confusing. In either event, such litigation-driven
`proposals are improper under controlling law and do nothing to help any factfinder. Defendants’
`proposals should be rejected.
`II.
`BACKGROUND OF THE PATENTED TECHNOLOGIES
`The four asserted patents are U.S. Patent Nos. 8,412,488 (“the ‘488 patent”; Ex. 2);
`8,738,327 (“the ‘327 patent”; Ex. 3); 8,180,492 (“the ‘492 patent”; Ex. 1); and 10,534,382 (“the
`‘382 patent”; Ex. 4); The ‘488 and ‘327 patents are related to each other and share substantially
`the same specification; and the ‘492 and ‘382 patent are related to each other and share
`substantially the same specification.
`A.
`The ‘488 and ‘327 patents
`The ‘488 and ‘327 patents are entitled “system and method for using a network of
`thermostats as tool to verify peak demand reduction,” and claim priority to a provisional patent
`application filed on August 3, 2007, another provisional patent application filed on September
`
`
`1 Google LLC, Ecobee, Inc., and Vivint, Inc.
`
`
`
` 1
`
`ecobee, IPR2021-01052
`Ex.1018, Page 4 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 5 of 24
`
`17, 2007, and a non-provisional application filed on July 31, 2008. The ‘488/’327 patents
`recognized that “the cost of energy and the demand for electricity have increased,” and that
`“residential air conditioning is the largest single component of peak demand” of energy. ‘488
`patent at 1:29-2:41. The ‘488/’327 patents also recognized that “[i]t would be desirable to have
`a system that could both implement and verify residential peak demand reduction with reduced
`expenses.” Id. at 3:19-21.
`The ‘488/’327 patents discloses a novel invention and describes number of embodiments
`to address the problems they recognized, including those that estimate the rate of change in
`temperature inside a structure. For example, the specification describes:
`At least one thermostat located is inside the structure and is used to control an climate
`control system in the structure. At least one remote processor is in communication with
`said thermostat and at least one database stores data reported by the thermostat. At least
`one processor compares the outside temperature at least one location and at least one
`point in time to information reported to the remote processor from the thermostat. The
`processor uses the relationship between the inside temperature and the outside
`temperature to determine whether the climate control system is “on” or “off”.
`‘488 patent at Abstract. The patents further describe embodiments that include a computer
`server that “logs the ambient temperature sensed by each thermostat vs. time and the signals
`sent by the thermostats to the HVAC systems to which they are attached. The server preferably
`also logs outside temperature and humidity data for the geographic locations for the buildings
`served by the connected HVAC systems.” ‘488 patent at 3:48-67. Patents further explain that:
`By using these multiple data streams to compare the performance of one system versus
`another, and one system versus the same system at other times, the server is able to
`estimate the effective thermal mass of the structure, and thereby predict the expected
`thermal performance of a given structure in response to changes in outside temperature.
`Thus, for example, if the air conditioning is shut off on a hot afternoon, given a known
`outside temperature, it will be possible to predict how quickly the temperature in the
`house should rise. If the actual temperature change is significantly different from the
`predicted rate of change, or does not change at all, it is possible to infer that the air
`conditioning has not, in fact been shut off.
`
`
`
`2
`
`ecobee, IPR2021-01052
`Ex.1018, Page 5 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 6 of 24
`
`‘488 patent at 4:1-14. Figure 6B is an exemplary graphical representation of the manner in
`which the invention may be used to verify that a demand reduction event has occurred, and
`Figures 7 and 8 shows flow chart illustrating exemplary steps involved addressing demand
`reduction.
`
` ‘488 patent Figs. 6B, 7, 8.
`
`
`
`3
`
`ecobee, IPR2021-01052
`Ex.1018, Page 6 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 7 of 24
`
`B.
`The ‘492 and ‘382 patents
`The ‘492 is entitled “system and method for using a networked electronic device as an
`occupancy sensor for an energy management system,” and the ‘382 patent is entitled “system
`and method for using a wireless device as a sensor for an energy management system.” The
`‘492/’382 patents claim priority to a provisional patent application filed on July 14, 2008. The
`‘492 patent was filed on July 13, 2009, and the ‘382 patent claims priority to the ‘492 patent.
`The ‘492/’382 patents recognized that prior art thermostats “generally offer a very restrictive
`user interface, limited by the cost of the devices, the limited real estate of the small wall-
`mounted boxes, and the inability to take into account more than two variables: the desired
`temperature set by the user, and the ambient temperature sensed by the thermostat.” ‘382 patent
`at 1:41-46. The patents further recognized that “[a]s energy prices rise, more attention is being
`paid to ways of reducing energy consumption.” Id. at 2:15-34. The patents further explained
`that it would be “desirable to provide a system that could detect occupancy without requiring
`the installation of additional hardware; that could accurately detect occupancy regardless of
`which room in the house is occupied, and could optimize energy consumption based upon
`dynamic and individually configurable heuristics.” Id. at 3:15-20.
`The ‘492/’382 patents disclose a novel invention and describe a number of embodiments
`to address the problems they recognized, including the use of networked consumer electronics
`devices as indications of occupancy of a structure for purposes of automatically adjusting the
`temperature setpoint on a thermostatic HVAC control. For example, the patents describe an
`embodiment that “comprises at least one said thermostat having at least one temperature setting
`associated with the presence of one or more occupants in said structure, and at least one
`temperature setting associated with the absence of occupants in said structure; one or more
`electronic devices having at least a user interface; where said electronic devices and said
`thermostat are connected to a network; where said setpoint on said thermostat is adjusted
`between said temperature setting associated with the presence of one or more occupants in said
`structure and said temperature setting associated with the absence of occupants in said structure
`
`
`
`4
`
`ecobee, IPR2021-01052
`Ex.1018, Page 7 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 8 of 24
`
`based upon the use of said user interface for said electronic device.” ‘382 patent at 3:50-62.
`Figures 7 and 8 show flowcharts with exemplary steps regarding the invention, including steps
`used to identify occupants, which are used to adjust HVAC settings.
`
`‘382 patent Figs. 7, 8.
`III. CLAIM CONSTRUCTION PRINCIPLES
`The “claim construction inquiry . . . begins and ends in all cases with the actual words of
`the claim.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). Indeed,
`“the claims themselves provide substantial guidance as to the meaning of [] terms.” Phillips v.
`AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005).
`
`
`
`5
`
`ecobee, IPR2021-01052
`Ex.1018, Page 8 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 9 of 24
`
`Thus, when conducting a claim construction inquiry, “district courts are not (and should
`not be) required to construe every limitation present in a patent’s asserted claims.” O2 Micro
`Int’l v. Beyond Innovation Tech., 521 F.3d 1351, 1362 (Fed. Cir. 2008). This is because claim
`construction is “not an obligatory exercise in redundancy.” US Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554, 1568 (Fed. Cir. 1997). Where a term is used in accordance with its plain
`meaning, the court should not replace it with different language. Thorner v. Sony Computer Ent.
`Am. LLC, 669 F.3d 1362, 1366-67 (Fed. Cir. 2012) (“we do not redefine words. Only the
`patentee can do that.”).
`To the contrary, there is a “heavy presumption” that claim terms carry their “full
`ordinary and customary meaning, unless [the accused infringer] can show the patentee expressly
`relinquished claim scope.” Epistar Corp. v. ITC, 566 F.3d 1321, 1334 (Fed. Cir. 2009). Because
`that plain meaning “is the meaning that the term would have to a [POSITA] in question at the
`time of the invention,” construing claims often “involves little more than the application of the
`widely accepted meaning of commonly understood words.” Phillips, 415 F.3d at 1313-14.
`“There are only two exceptions” in which claim terms are not given their full ordinary
`and customary meaning: “1) when a patentee sets out a definition and acts as his own
`lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the
`specification or during prosecution.” Thorner, 669 F.3d at 1365. Without clear and
`unambiguous disclaimer or lexicography, courts “do not import limitations into claims from
`examples or embodiments appearing only in a patent’s written description, even when a
`specification describes very specific embodiments of the invention or even describes only a
`single
`embodiment.”
`See
`JVW
`Enterprises,
`Inc.
`v.
`Interact
`Accessories,
`424 F.3d 1324 (Fed. Cir. 2005). Similarly, a statement during patent prosecution does not limit
`the claims unless the statement is a “clear and unambiguous disavowal of claim scope.” Omega
`Engineering, Inc v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003).
`
`
`
`
`
`6
`
`ecobee, IPR2021-01052
`Ex.1018, Page 9 of 24
`
`

`

`Case 6:20-cv-00075—ADA Document 35 Filed 10/06/20 Page 10 of 24
`
`IV.
`
`DISPUTED TERMS
`
`A.
`
`“measurement[s]” (’488, ’327, ’382, all claims)
`
`EcoFactor’s Pro u osed Construction
`
`Defendants’ Pro I used Construction Plain and ordinary meaning; no construction
`
`necessary.
`
`“determination [of the claimed property] by an
`instrument by using standardized units”
`
`Claim construction is “not an obligatory exercise in redundancy.” US Surgical Corp,
`
`103 F.3d at 1568. Thus, when conducting a claim construction inquiry, “district courts are not
`
`(and should not be) required to construe every limitation present in a patent’s asserted claims.”
`
`02 Micro 1111’], 521 F.3d at 1362.
`
`The first dispute, concerning the term “measurement,” is a textbook example of one
`
`which needs no further construction. It is a term that has a widely understood and clear plain
`
`and ordinary meaning within the scientific and engineering community and, more specifically,
`
`to a POSITA. Zeidman Decl. 1[ 16. It even has a widely understood meaning to a lay person.
`
`The patents use this term in a manner that is consistent with this ordinary meaning. It needs no
`
`further construction. Id. Defendants’ construction should be rejected for this reason alone.
`
`Hiomer, 669 F.3d at 1366-67 (“we do not redefine words. Only the patentee can do that”).
`
`Defendants’ proposed construction replaces this single plain and ordinary word used in
`
`the patent claim with twelve other words of their choosing, most of which are notfound in the
`
`patent at all. But that is contrary to Federal Circuit guidance on how courts should conduct
`
`claim construction, which makes clear that district courts are not (and should not be) required to
`
`construe every limitation present in a patent’s asserted claims. 02 Micro Int ’1, 521 F.3d at 1362-
`
`To the contrary, there is a “heavy presumption” that claim terms carry their “full ordinary and
`
`customary meaning, unless [the accused infiinger] can show the patentee expressly relinquished
`
`claim scope.” Epistar Corp, 566 F.3d at 1334.
`
`Rather than maintain that fill] ordinary meaning, Defendants appear to skip that meaning
`
`and look past the intrinsic record—to construct their proposed construction directly from
`
`extrinsic evidence. Specifically, Defendants appear to cherry-pick a single textbook entry from
`
`ecobee, |PR2021-01052
`
`Ex.1018, Page 10 of 24
`
`ecobee, IPR2021-01052
`Ex.1018, Page 10 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 11 of 24
`
`the Fourth Edition of Mechanical Measurements, which refers to a determination of properties
`that fall within the scope of typical “mechanical measurements.” Ex. 9 (Mechanical
`Measurements, Thomas G. Beckwith et al.). But undue “reliance on extrinsic evidence poses the
`risk that it will be used to change the meaning of claims[.]” Phillips, 415 F.3d at 1318-19.
`Moreover, Defendants’ proposed construction arguably would not cover other usages of
`measurement that fall within the ordinary meanings of the term. E.g., Ex. 5 (American Heritage
`Dictionary) (“measurement … 1. The act of measuring … 2. A system of measuring … 3. The
`dimension, quantity, or capacity determined by measuring”); Ex. 6 (Merriam-Webster)
`(“measure … the dimension, capacity, or amount of something ascertained”); Ex. 7 (Oxford
`Dictionary) (“measurement … The size, length, or amount of something, as established by
`measuring”); Ex. 8 (Cambridge English Dictionary) (“measurement … a value, discovered by
`measuring, that corresponds to the size, shape, quality, etc. of something”); Zeidman Decl. ¶ 17.
`Defendants’ approach to anchor their construction of this simple term in extrinsic
`evidence
`is especially problematic here, because
`the specification makes clear
`that
`“measurement” is not necessarily limited to a mechanically obtained determination that would
`make some rigid definition from a “mechanical measurements” textbook all that applicable.
`Instead, a POSITA in the field of connected HVAC control systems would understand that the
`patent Background contrasts older, more mechanical means of temperature measurement with
`measurements by digital means, such as using electronic digital thermostats with solid-state
`device, such as thermistors or thermal diodes:
`
`
`
`8
`
`
`
`ecobee, IPR2021-01052
`Ex.1018, Page 11 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 12 of 24
`
`‘488 patent at 1:36-45. Still fin’ther, the patent describes regularly receiving and sending those
`
`digital measurements through bi-directional communication with a server:
`
`no
`
`In addition to using the system to allow better signaling and
`control of the HVAC system. which relies primarily on com-
`
`munication runnim front the server to the thermostat.
`
`nd send to the server infonnation
`(:5 about the temperature in the building. By comparing outside
`
`‘488 patent at 6:60—65. Indeed, in some embodiments, the patent even describes configuring
`
`processors to receive those digital measurements from sources “other than the HVAC system,”
`
`as demonstrated by the patent specification and the dependent claims. ‘488 patent cl. 2, 10.
`
`These disclosures—and all others—make no mention of making a “determination” of a
`
`temperature property “by an instrument by using standardized units”—and a POSITA would
`
`have understood that using standardized units, such as Fahrenheit or Celsius, would be only one
`
`way convey a temperature measurement. Zeidman Dec]. 1[ 18. But the proper construction of the
`
`term should encompass the full ordinary meaning of the term to a POSITA, not just one of those
`
`meanings. Epistar Corp, 566 F.3d at 1334. And here, Defendants can show no unambiguous
`
`disclaimer or lexicography to obtain any narrower meaning—because there is none in the
`
`intrinsic record. Id. Thus, their construction should be rejected and doing so would resolve this
`
`first dispute.
`
`B.
`
`“outside temperature” (’488, claims 1, 2, 9, 10; ’327, claims 1, 2, 11, 12)
`
`EcoFactor’s Pro I osed Construction
`
`Defendants’ Pro I used Construction
`
`external to the structure ”
`
`“the temperature at a location outside (or
`external to the structure ”
`
`“the actual temperature at a location outside (or
`
`On the next “dispute,” Defendants took the words of the claim term at issue, “outside
`
`temperature,” and used those same words in their proposed construction, as shown in the table
`
`above. But this only shows why none of the clear words of the claim require any further
`
`construction or qualification.
`
`ecobee, |PR2021-01052
`
`Ex.1018, Page 12 of 24
`
`ecobee, IPR2021-01052
`Ex.1018, Page 12 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 13 of 24
`
`Nevertheless, EcoFactor was, and still is, willing to compromise to the majority of
`Defendants’ construction with a proposal that adopts all of the words further describing the
`ordinary meaning of the claim term at issue in the context of the claims. But this leaves a
`dispute as to one word imported by Defendants: the qualifier “actual” before the term
`“temperature.”
`Because “actual” qualifies the word “temperature” in the claim, it plainly appears to
`qualify that word beyond its plain meaning. But that violates Federal Circuit law, which makes
`clear there is a “heavy presumption” that claim terms carry their “full ordinary and customary
`meaning, unless [the accused infringer] can show the patentee expressly relinquished claim
`scope.” Epistar Corp., 566 F.3d at 1334. As the Federal Circuit has repeatedly made clear,
`“[t]here are only two exceptions” in which claim terms are not given their full ordinary and
`customary meaning: “1) when a patentee sets out a definition and acts as his own lexicographer,
`or 2) when the patentee disavows the full scope of a claim term either in the specification or
`during prosecution.” Thorner, 669 F.3d at 1365. Defendants have not pointed to any
`lexicography or disclaimer of the term “temperature” that would require only some apparent
`species of temperatures, i.e., those that are “actual temperatures,” as Defendants construction
`requires. Nor could they, because there is none. Zeidman Decl. ¶ 20.
`This brings us to another problem with Defendants’ proposal: it raises more questions
`than it resolves. It is hard to imagine how the patentee could have used a word that is simpler or
`clearer to a POSITA than the claimed word “temperature.” Zeidman Decl. ¶ 19. But
`Defendants’ proposal would now inject questions and other baggage into those clear claim
`terms. For example, what do Defendants mean by the term “actual” temperatures? Are there
`non-actual temperatures, such as imaginary temperatures, that a POSITA would contrast with
`the claim term? Id.
`Though the phrase “actual temperature” does appear in the patent, such as in the patent
`“Background,” the patent does not use the term in any way that would limit the claim terms
`
`
`
`10
`
`ecobee, IPR2021-01052
`Ex.1018, Page 13 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 14 of 24
`
`here. Zeidman Decl. 1[ 20. If anything, the patentee uses the term to describe what appears to be
`
`prior art thermostats and other HVAC controls from “the most basic” systems:
`
`2. Background
`(‘limate control systems such as heating and cooling sys-
`tems for buildings (heating. ventilation and cooling. or HVAt ‘
`systems) have been controlled for decades by thermostats. At
`the most basic level. a thermostat includes a means to allow a
`
`user to set a desired temperature. a means to sense actual
`temperature. and a means to signal the heating and/or cooling
`devices to turn on or off in order to try to change the actual
`temperature to equal the desired temperature. The most basic
`versions of thermostats use com nents such as a coiled
`
`to
`
`as
`
`ad a mer-
`hi-metullic spring to
`cur)r switch that opens or completes a circuit when the s rin
`coils or uncoils with tcm 'mture Chan es.
`
`
`
`and microprocessor-
`based circuitry to control the switch and to store and operate
`based upon user-detennined protocols for temperature vs. 45
`time.
`
`‘327 patent at 1:28-45; Zeidman Decl. 1[ 20. But this does not amount to lexicography or
`
`disclaimer to add qualifiers to the claim language. Indeed, without clear and unambiguous
`
`disclaimer or clear lexicography, courts “do not import limitations into claims from examples or
`
`embodiments appearing only in a patent’s written description, even when a specification
`
`describes very specific embodiments of the invention or even describes only a single
`
`embodiment.” JVW Enters, 424 F.3d at 1335. Defendants’ attempt to import qualifiers into the
`
`clear claim language fails.
`
`C.
`
`’488 patent: the entirety of claims 1 and 9
`
`EcoFactor’s Pro I
`
`n sed Construction
`
`Plain and ordinary meaning; no construction
`necessary.
`
`connections under In re Collier, 397 F.2d 1003
`
`Defendants’ Pro I osed Construction
`
`Indefinite due to lack of essential structural
`
`“[A] patent is invalid for indefiniteness if its claims, read in light of the specification
`
`delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,
`
`those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments,
`
`11
`
`ecobee, |PR2021-01052
`
`Ex.1018, Page 14 of 24
`
`ecobee, IPR2021-01052
`Ex.1018, Page 14 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 15 of 24
`
`Inc., 572 U.S. 898, 901 (2014). A patent is presumed valid under 35 U.S.C. § 282 and, thus,
`indefiniteness has to be proven “by clear and convincing evidence.” Biosig Instruments, Inc. v.
`Nautilus, Inc., 783 F.3d 1374, 1377 (Fed. Cir. 2015). This burden falls on the accused infringer.
`See Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008). Defendants
`cannot come close to meeting their burden of proving that this term is invalid.
`As best as they could be understood, Defendants do not contend that any specific terms
`in the independent claims fail to inform, with reasonable certainty, those skilled in the art about
`the scope of the invention. Nevertheless, they contend that the entirety of the claim is indefinite
`anyway. To make this meritless contention, Defendants dig to the depths of fifty-year old CCPA
`caselaw regarding an examiner’s rejection of a draft claim during examination. But beyond the
`obvious difference in setting, that case is inapposite for other reasons.
`In Collier2, the CCPA construed the applicant’s claim as reciting “nothing more than a
`bare combination of a crimpable perforated ferrule and a ground wire, regardless of particular
`relationships.” In re Collier, 397 F.2d 1003, 1005 (C.C.P.A. 1968) . The problem was: despite
`the breadth of the claim and lack of any recited elements with structural relationships of any
`sorts, during examination, the applicant argued patentability based on unrecited structural
`relationships between the recited elements. Id. The reviewing court agreed with the Patent
`Office that the applicant's arguments demonstrated that the claim did not recite the subject
`matter which the applicant regarded as the invention. Id. In this case, we have an examined and
`issued patent claim—and EcoFactor is not arguing for unrecited structural relationships.
`Defendants’ contention that the claims are invalid for indefiniteness for failure to recite
`“essential structural connections” also contradicts logic and the facts of this case. For example,
`Defendants make this failure to recite “essential structural connections” argument as to method
`claims in the patent, such as claim 9. But they fail to recite any law that suggests structural
`
`
`2 Though Defendants refer to the “progeny” of In re Collier, it appears that the Federal Circuit
`has never discussed the case in any meaningful way—and has never even cited it in any appeal
`from a district court ruling on indefiniteness. That should be telling.
`
`
`
`12
`
`ecobee, IPR2021-01052
`Ex.1018, Page 15 of 24
`
`

`

`Case 6:20-cv-00075-ADA Document 35 Filed 10/06/20 Page 16 of 24
`
`connections are necessary in method claims. And even as to the system claims, a POSITA
`would have no problem understanding the scope of the claim, especially in light of the extensive
`patent teachings, which show numerous embodiments and configurations. Zeidman Decl. ¶ 23.
`There is no requirement for all the structural relationships taught in these various embodiments
`to appear in the claims—and any contrary suggestion would contradict hornbook law on the role
`of patent claims. SRI Int’l v. Matsuhita Elec. Corp., 775 F.2d 1108, 1121 n. 14. (Fed. Cir. 1995)
`(“[s]pecifications teach. Claims claim.”).
`Moreover, one look at the emphasized portions of the claim below reveals that a
`POSITA would understand it has sufficient connections anyway, which Defendants overlook:
`
`9. A method for monitoring the operation of an HVAC system comprising:
`
`receiving temperature measurements from at least one HVAC control system
`associated with a first structure conditioned by at least one HVAC system;
`
`receiving at one or more processors, measurements of outside temperatures from
`at least one source other than said HVAC system;
`
`comparing with said one or more processors the inside temperature of said first
`structure and the outside temperature over time to derive an estimation for the
`rate of change in inside temperature of said first structure in response to outside
`temperature, and
`
`comparing with said one or more processors, an inside temperature recorded
`inside the first structure with said estimation for the rate of change in inside
`temperature of said first structure to determine whether the first HVAC system is
`on or off.
`‘488 patent claim 9; Zeidman Decl. ¶ 23. These claim terms—and similar ones in independent
`claim 1—provide more than reasonable clarity to a POSITA as to all the structural relationships.
`Zeidman Decl. ¶ 23-24. T