Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: January 6, 2023
`
`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
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: January 6, 2023
`
`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
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-01461
`Patent 9,194,597 B2
`
`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.
`
`
`
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
`
`2
`
`
`
`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.”).
`
`
`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.
`
`
`
`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”).
`
`3
`
`
`
`IPR2022-01461
`Patent 9,194,597 B2
`
`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
`
`4
`
`
`
`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.
`
`
`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.
`
`
`
`5
`
`
`
`IPR2022-01461
`Patent 9,194,597 B2
`
`Example Caption
`
`
`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.
`_______________
`
`IPR2022-005385
`Patent 9,194,597 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`5 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
`proceeding.
`
`6
`
`
`
`IPR2022-01461
`Patent 9,194,597 B2
`For PETITIONER:
`Justin Oliver
`Stephen Yam
`VENABLE LLP
`joliver@venable.com
`syam@venable.com
`
`
`
`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
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
