`571-272-7822
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`Paper 7
`Entered: January 6, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2022-01461
`Patent 9,194,597 B2
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`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
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`IPR2022-01461
`Patent 9,194,597 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`Petitioner, ecobee Technologies ULC, requests that we institute an
`inter partes review to challenge the patentability of claims 1–24 (the
`“challenged claims”) of U.S. Patent 9,194,597 B2 (Ex. 1001, “the ’597
`patent”). Paper 1 (“Petition” or “Pet.”). Concurrently with its Petition,
`Petitioner filed a Motion for Joinder with Google LLC v. EcoFactor, Inc.,
`Case IPR2022-00538 (“the Google IPR”). Paper 3 (“Mot.”). Petitioner
`represents that the petitioner in the Google IPR— Google LLC—does not
`oppose the Motion for Joinder. Mot. 2. Patent Owner, EcoFactor, Inc., did
`not file a response to the Petition or an opposition to the Motion.
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`demonstration of a reasonable likelihood that Petitioner would prevail with
`respect to at least one challenged claim, we institute an inter partes review. 1
`Further, for the reasons set forth below, we grant the Motion for Joinder.
`B. Related Matters
`The parties identify these related matters: Google, LLC f/k/a Google
`Inc. v. EcoFactor, Inc., No. 4:21-cv-03220 (N.D. Cal.); EcoFactor, Inc. v.
`ecobee, Inc., No. 6:21-cv-00428 (W.D. Tex.); and the Google IPR. Pet. vi;
`Paper 4, 1.
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`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
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`2
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`IPR2022-01461
`Patent 9,194,597 B2
`In the Google IPR, we instituted an inter partes review of claims 1–24
`of the ’597 patent as unpatentable on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–24
`103(a)2
`Ehlers, 3 Wruck4
`See Google IPR, Paper 7, 9 (PTAB Aug. 3, 2022) (“Google Dec.”).
`
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`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Google IPR.
`Compare Pet. 8, with Google Dec. 9. Indeed, Petitioner contends that “the
`present Petition and the Google IPR Petition are substantively identical with
`respect to the asserted ground, based on the same prior art combination and
`supporting evidence, and asserted against the same claims.” Mot. 1; see also
`id. at 4–5. This includes relying on the same expert declaration as the
`Google IPR. Id. at 5.
`Patent Owner did not file a Preliminary Response.
`For the same reasons set forth in our institution decision in the Google
`IPR, we determine that Petitioner has shown a reasonable likelihood that at
`least one claim is unpatentable. We therefore institute trial as to all
`challenged claims on all grounds stated in the Petition.
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`
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`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`We refer to the pre-AIA version of § 103.
`3 U.S. Patent Pub. 2004/0117330 A1, June 17, 2004 (Ex. 1004, “Ehlers”).
`4 U.S. Patent Pub. 2005/0040250 A1, Feb. 24, 2005 (Ex. 1005, “Wruck”).
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`IPR2022-01461
`Patent 9,194,597 B2
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`III. MOTION FOR JOINDER
`The statutory provision governing joinder in inter partes review
`proceedings (35 U.S.C. § 315(c)) reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: set forth the reasons joinder is appropriate; identify any new grounds
`of unpatentability asserted in the petition; and explain what impact (if any)
`joinder would have on the trial schedule for the existing review. See Kyocera
`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24,
`2013).
`Petitioner timely filed the Motion no later than one month after
`institution of the Google IPR. See 37 C.F.R. § 42.122(b). As noted, the
`Petition in this case asserts the same unpatentability grounds on which we
`instituted review in the Google IPR. See Mot. 1. Petitioner also relies on the
`same prior art analysis and expert testimony submitted by the Google
`petitioner. See id. at 5. Indeed, the Petition is nearly identical to the petition
`filed by the Google petitioner. See id. Thus, this inter partes review does not
`present any ground or matter not already at issue in the Google IPR. Id.
`If joinder is granted, Petitioner agrees to assume an “‘understudy’
`role” and agrees that this role shall apply “unless Google ceases to
`participate in the instituted IPR.” Id. at 1; see also id. at 6–7. Petitioner
`further represents that it will not advance any arguments separate from those
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`IPR2022-01461
`Patent 9,194,597 B2
`advanced by Google in the consolidated filings. Id. Because Petitioner
`expects to participate only in a limited capacity, Petitioner submits that
`joinder will not impact the trial schedule for the Google IPR. Id. at 5–6.
`Patent Owner did not file an Opposition to the Motion for Joinder.
`Based on the above, we determine that joinder with the Google IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
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`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, inter partes review of claims 1–24 of U.S. Patent
`9,194,597 B2 is instituted on all grounds in the Petition;
`FURTHER ORDERED that the Motion for Joinder with IPR2022-
`00538 is granted;
`FURTHER ORDERED that IPR2022-01461 is joined with IPR2022-
`00538, pursuant to 37 C.F.R. §§ 42.72, 42.122, wherein Petitioner will
`maintain a secondary role in the proceeding, unless and until the current
`IPR2022-00538 petitioners cease to participate as a petitioner in the inter
`partes review;
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2022-00538;
`FURTHER ORDERED that the case caption in IPR2022-00538 shall
`be changed to reflect joinder of ecobee Technologies ULC as a petitioner in
`accordance with the below example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2022-00538.
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`IPR2022-01461
`Patent 9,194,597 B2
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`Example Caption
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`GOOGLE LLC, and ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`_______________
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`IPR2022-005385
`Patent 9,194,597 B2
`_______________
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`5 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
`proceeding.
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`6
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`IPR2022-01461
`Patent 9,194,597 B2
`For PETITIONER:
`Justin Oliver
`Stephen Yam
`VENABLE LLP
`joliver@venable.com
`syam@venable.com
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`
`
`For PATENT OWNER:
`
`Philip Wang
`Jonathan Link
`Reza Mirzaie
`Kristopher Davis
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jlink@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
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