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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GOOGLE LLC, and ECOBEE TECHNOLOGIES ULC,
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`Petitioner,
`
`v.
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`ECOFACTOR, INC.
`
`(record) Patent Owner.
`
`IPR2022-005381
`Patent No. 9,194,597
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`PETITIONER’S REPLY
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`
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`1 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
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`proceeding.
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`A.
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`TABLE OF CONTENTS
`TABLE OF EXHIBITS ........................................................................................... 4
`I.
`BACKGROUND OF THE ’597 PATENT (POR, 1-4). .............................. 7
`II.
`LEVEL OF SKILL IN THE ART (POR, 4-7). ........................................... 7
`III. RELATIVE CREDIBILITY OF THE EXPERTS ..................................... 8
`IV. CLAIM CONSTRUCTION .......................................................................... 9
`V.
`Ehlers ’330 Teaches Rates of Change of Inside Temperature (POR, 10-
`19). ......................................................................................................... 9
`VI. Ground 1: The Combination of Ehlers ’330, The Knowledge of a
`POSITA, and Wruck Renders Obvious Claims 1-24 (POR, 19-34).
` ............................................................................................................. 15
`Claim element [1d] (“using the stored data to predict changes in
`temperature inside the structure in response to at least changes in
`outside temperatures”) (POR, 19-25). ................................................ 16
`1.
`Example 1 ................................................................................. 17
`2.
`Example 2 ................................................................................. 20
`3.
`Example 3 ................................................................................. 20
`Claim element [1e] (“calculating with at least one computer,
`scheduled programming of the thermostatic controller for one or more
`times to control the heating ventilation and air conditioning system,
`the scheduled programming comprising at least a first automated
`setpoint at a first time”) (POR, 25-27). ............................................... 24
`Claim element [1h] (“generating with the at least one computer, a
`difference value based on comparing at least one of the actual
`setpoints at the first time for the thermostatic controller to the first
`automated setpoint for the thermostatic controller; detecting a manual
`change to the first automated setpoint by determining whether the at
`least one of the actual setpoint and first automated setpoint are the
`same or different based on the difference value”) (POR, 28-40). ..... 27
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`B.
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`C.
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`D.
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`Claim element [9e] (“calculating scheduled programming of setpoints
`in the thermostatic controller based on the predicted rate of change,
`the scheduled programming comprising at least a first automated
`setpoint at a first time and a second automated setpoint at a second
`time to control the heating ventilation and air conditioning system”)
`(POR, 31-33). ...................................................................................... 30
`VII. CONCLUSION ............................................................................................ 31
`CERTIFICATE OF SERVICE ............................................................................ 33
`CERTIFICATE OF WORD COUNT .................................................................. 34
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`TABLE OF EXHIBITS
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`
`Description
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`Exhibit No.
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`1001
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`U.S. Patent No. 9,194,597 (“the 597 patent”).
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`1002
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`Declaration of Rajendra Shah.
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`1003
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`C.V. of Rajendra Shah.
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`U.S. Patent App. Pub. 2004/0117330 (“Ehlers ’330”).
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`U.S. Patent App. Pub. 2005/0040250 A1 (“Wruck”).
`
`Excerpt from The Industrial Electronics Handbook, Irwin, J.D.
`ed. CRC Press and IEEE Press, 1997, pp. 59-60.
`
`Horan, T, Control Systems and Applications for HVAC/R,
`Prentice-Hall, Inc., 1997.
`
`Levenhagen, J, HVAC Controls and Systems, McGraw-Hill,
`Inc., 1993.
`
`File History of Application No. 14/082,675.
`
`U.S. Patent No. 8,751,186 B2 (“the ’186 patent”).
`
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`Exhibit number not used.
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`U.S. Patent No. 6,789,739 (“Rosen”).
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`1013
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`1014
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`1015
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`1016
`1017
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`1018
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`1019
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`1020
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`1021
`1022
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`1023
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`1024
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`1025
`1026
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`1027
`1028
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`WO 2007/128783 A1 (“McNulty”).
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`U.S. Pat. App. Pub. 2005/0171645 (“Oswald”).
`
`U.S. Patent No. 5,943,554 (“Charles”).
`
`U.S. Patent No. 6,029,092 (“Stein”).
`ITC Inv. No. 337-TA-1185, Public Version of April 20, 2021
`Initial Determination.
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Answer (July 13, 2021).
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Scheduling Order (August 11, 2021).
`Security People, Inc. v. Ojmar US, LLC, 14-cv-04968-HSG
`(N.D. Cal.), Order (May 29, 2015).
`Reply Declaration of Rajendra Shah.
`Excerpts from December 16, 2022 Deposition of Dr. John Palmer
`in EcoFactor, Inc. v. ecobee, Inc., Case No. 6:21-cv-00428 (W.D.
`Tex.).
`Transcript of January 6, 2023 Deposition of John A. Palmer in
`IPR2022-00473.
`Transcript of August 27, 2021 Deposition of Dr. John Palmer in
`IPR2020-01504.
`Email between Counsel for Petitioner and EcoFactor.
`Transcript of April 29, 2022 Deposition of Dr. John Palmer in
`IPR2021-00982.
`Transcript of January 10, 2023 Deposition of Dr John A. Palmer.
`U.S. Patent No. 8,131,497 (“the ’497 patent”).
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`1029
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`1030
`1031
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`
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`EcoFactor, Inc.’s Opening Markman Brief in Google LLC, v.
`Ecofactor, Inc., Case No. 4:21-Cv-03220-HSG (W.D. Tex. May
`3, 2022).
`U.S. Patent No. 6,216,956 (“Ehlers ’956”).
`Excerpts from Transcript of Markman Hearing in Google LLC, v.
`Ecofactor, Inc., Case No. 4:21-Cv-03220-HSG (W.D. Tex. July
`22, 2022).
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`Petitioner respectfully submits its Reply to EcoFactor’s Patent Owner
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`Response (“POR”).2
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`I. BACKGROUND OF THE ’597 PATENT (POR, 1-4).
`EcoFactor provides a background description of the ’597 patent that is largely
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`irrelevant. EcoFactor notably characterizes the ’597 patent as being directed to
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`detecting manual user changes to setpoints which the user has previously
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`programmed, despite later arguing that doing so is a relevantly “different”
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`“approach” than what is claimed. (See POR, 2-3, 29-30)(see also Ex. 1027, 19:21-
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`20:5, 35:1-39:3).
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`II. LEVEL OF SKILL IN THE ART (POR, 4-7).
`The Board should adopt Petitioner’s proposed level of skill in the art. (Pet.,
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`21)(Ex. 1002, ¶¶26-28). This level is consistent with that determined by the Board
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`for similar patents in Google v. EcoFactor, IPR2021-00054, FWD, Paper 35, pp.8-
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`10 (PTAB Apr. 18, 2022); Google v. EcoFactor, IPR2020-01504, FWD, Paper 46,
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`pp.12-14 (PTAB Mar. 3, 2022); Google v. EcoFactor, IPR2021-00982, FWD, Paper
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`31, pp.9-11 (PTAB Nov. 17, 2022). EcoFactor proposes the same level as in prior
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`cases, and for which Dr. Palmer claimed to have based his assessment on both
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`2 EcoFactor has confirmed that the inclusion Pages 34-38 beginning at §IV.J of the
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`POR was an error. (See Ex. 1025). Petitioner accordingly does not address them.
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`instructions from counsel and his interactions with HVAC service technicians in his
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`home. (Ex. 1024, 29:20-32:6). Furthermore, Dr. Palmer claims to base his opinion
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`on the ITC determination but his testimony contradicts that. (See POR, 5-6)(Ex.
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`1026, 21:18-23:5)(Ex. 1023, 27:8-25).
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`EcoFactor’s attempted distinction between the subject matter of the ’597
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`patent and “building energy management system[s]” also fails. (See POR, 6-7). As
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`Dr. Palmer admits, the claims of the ’597 patent encompass commercial and large-
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`scale structures with additional controls and components. (Ex. 1027, 9:3-10:13).
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`III. RELATIVE CREDIBILITY OF THE EXPERTS
`Throughout the POR, EcoFactor expresses various disagreements with
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`opinions offered by Petitioner’s expert Mr. Shah. However, Mr. Shah’s testimony
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`is far more qualified than that of EcoFactor’s expert Dr. Palmer. Mr. Shah’s
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`testimony is based on twenty-five years of experience designing and developing
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`HVAC control systems for Carrier Corporation—including during the relevant
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`timeframe. (Ex. 1002, ¶¶4, 2-10)(Ex. 1003, p. 001). He is a named inventor on
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`approximately 50 patents and applications relating to HVAC systems. (Ex. 1003, p.
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`001)(Ex. 1002, ¶9).
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`Dr. Palmer’s testimony, by contrast, is less credible. His experience with
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`HVAC systems comes through failure analysis performed for insurance subrogation
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`lawsuits. (Ex. 1024, 10:20-13:21). Dr. Palmer estimates that he has performed 40-
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`50 such analyses at 10-20 hours per engagement (with some longer engagements)
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`(Ex. 1026, 14:16-16:10, 19:2-5), suggesting that, even viewed charitably, he has
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`spent no more than a year of his life analyzing HVAC system failures. He has no
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`experience building or designing HVAC control systems. (Ex. 1024, 13:22-14:5).
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`He has no relevant publications or patents. (Ex. 2008, pp. 3-4)(Ex. 1024, 15:8-11).
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`And his studies relate to electrical power engineering generally, not HVAC systems
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`in particular. (Ex. 1024, 10:9-12:8).
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`While Petitioner does not seek exclusion of Dr. Palmer’s testimony, the Board
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`should assess the experts’ relative experience when assessing their credibility. See,
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`e.g., Tr. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015).
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`EcoFactor’s specific criticisms of Mr. Shah’s opinions are addressed below.
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`IV. CLAIM CONSTRUCTION
`EcoFactor argues that “[t]he claim terms of the ’597 patent should be given
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`their plain and ordinary meaning.” (POR, 8). Nonetheless, EcoFactor at times seeks
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`to impose requirements on the challenged claims which are not found in the claim
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`language. Petitioner addresses these arguments as appropriate below.
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`V. EHLERS ’330 TEACHES RATES OF CHANGE OF INSIDE
`TEMPERATURE (POR, 10-19).
`EcoFactor and Dr. Palmer argue that Ehlers ’330 does not measure rates of
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`change of inside temperature, and specifically that Ehlers ’330’s “thermal gain rate”
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`is not a rate of change of inside temperature. (POR, 10-19). Their position is based
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`on a distortion of Ehlers ’330’s teachings. As explained in the attached reply
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`declaration of Mr. Shah and as summarized below, Ehlers ’330 measures rates of
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`change of inside temperature. (Ex. 1021, ¶¶3-25)(See also Ex. 1002, ¶¶92-100).
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`Ehlers ’330 teaches calculating the rate at which temperature inside a structure
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`changes over time at different outside temperatures when the HVAC system is
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`“OFF,” as illustrated in Figure 3D. (Ex. 1004, Fig. 3D, ¶0253)(Ex. 1002, ¶¶92-
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`100)(Ex. 1021, ¶¶3-9).3 The “thermal gain rate[s]” in Figure 3D are the slopes of
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`the various lines depicted. (Ex. 1021, ¶¶3, 8, 14)(Ex. 1002, ¶93). Ehlers ’330
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`clearly and unequivocally uses the term “thermal gain rate” (or “rate of thermal gain”
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`or variations thereof) to refer to the rate of change of inside temperature over time
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`in the structure. (See, e.g., Ex. 1004, Fig. 3D, ¶0253)(Ex. 1021, ¶7)(Ex. 1002, ¶¶92-
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`100)(See also, e.g., Ex. 1004, ¶0255)(“the rate of thermal gain per hour would be set
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`at 3 degrees F. per hour”)(See also Ex. 1022, 175:7-176:9).
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`Dr. Palmer in fact recognizes that “information presented in Fig. 3D of Ehlers
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`’330 . . . relates to changes in temperature when the HVAC system is OFF,” that
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`“the ‘thermal gain rates’ qualitatively illustrated in Fig. 3D are . . . for a building
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`3 (Cf. Ex. 1001, Fig. 6B, 5:17-21)(graph of inside temperature “which assumes that
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`the air conditioning is turned off from noon to 7 PM”))(emphasis added)(Ex.
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`1027, 10:14-11:1, 12:11-22).
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`with an HVAC system turned OFF,” and that “the data in Fig 3D discloses the
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`changes in inside temperature from a specific starting temperature and for a single,
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`specific outside temperature when the HVAC system is OFF.” (See Ex. 2008, ¶¶54,
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`59)(See also Ex. 1022, 185:18-22). Dr. Palmer also appears to recognize that the
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`slopes of the lines depicted in Figure 3D represent rates of change of
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`temperature. (Ex. 2008, ¶38)(“The lines appear to reflect temperatures rather than
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`rates of energy increase.”)(See also Ex. 1022, 173:14-20). Ehlers ’330 specifically
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`states that these lines “plot the thermal rate of gain” and “illustrate the rate of thermal
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`gain.” (See also Ex. 1004, ¶0253)(Ex. 1021, ¶¶3-8).
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`Dr. Palmer nonetheless asserts that “the phrase ‘thermal gain rate’ is well
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`understood by a POSITA to be the rate at which energy is absorbed.” (Ex. 2008,
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`¶37). Dr. Palmer cites nothing in support. Ehlers ’330 clearly uses the term to refer
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`to the rate of change of inside temperature over time, as Dr. Palmer appears to
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`recognize. Ehlers ’330’s terminology is in fact similar to the ’597 patent itself,
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`which uses the term “thermal mass” to refer to the rate of change of inside
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`temperature. (Ex. 1001, 5:17-33)(See Ex. 1027, 16:24-17:19)(Ex. 1021, ¶¶12-
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`13).4 Dr. Palmer’s contrary interpretation appears to be the result of an effort to limit
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`Ehlers ’330, rather than faithfully interpret its teachings from the perspective of a
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`POSITA.
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`Notably, Ehlers ’330 measures and quantifies the “thermal gain rate” at
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`various points. (See, e.g., Ex. 1004, ¶¶0253-0256, Figs. 3D-3G). While doing so,
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`Ehlers ’330 does not describe “thermal gain rates” as an amount or rate at which
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`“energy is absorbed” by a structure, nor does Dr. Palmer identify any such teachings
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`separate and apart from its instruction to measure the temperature in a structure and
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`determine the rate at which that inside temperature changes over time, as the Petition
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`contends. (Ex. 1021, ¶¶12-13). Indeed, Dr. Palmer has admitted Ehlers ’330
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`discloses tracking the thermal gain by tracking the inside temperature and the
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`time. (Ex. 1022, 175:7-11).
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`EcoFactor and Dr. Palmer thus recognize that Ehlers ’330’s Figure 3D
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`illustrates that Ehlers the ’330 system measures rates of change of inside temperature
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`over time. The crux of their objection appears to be their contention that Ehlers
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`’330’s Figures 3E and 3G are purportedly inconsistent with Ehlers ’330’s Figure
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`4 The ’597 patent also discloses no equations or calculations for calculating what it
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`refers to as “thermal mass for [a] structure.” (Ex. 1001, 5:5-34)(Ex. 1027, 16:24-
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`17:19).
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`3D’s teaching of “thermal gain rate” as a rate of change of inside temperature, and
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`therefore, a “thermal gain rate” must be something else (though what exactly, they
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`do not specify, nor do they explain how it could be measured). In fact, Ehlers ’330’s
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`Figures 3E and 3G are entirely consistent with Petitioner’s and Mr. Shah’s
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`understanding. (Ex. 1021, ¶¶11, 16-25).
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`The “thermal gain rates” specifically graphed in Figure 3E and Figure 3G
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`represent rates of change of inside temperature during the portion(s) of the HVAC
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`cycle when the HVAC system is OFF. (Ex. 1021, ¶¶16-21). Ehlers ’330 does not
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`specifically depict the “thermal gain rates” during the portions of the cycle when the
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`HVAC system is “ON” in these Figures because during those times, the “thermal
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`gain rates” would be “negative” due to the cooling of the system over time. (Id.).
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`As an HVAC system cycles “ON” and “OFF,” its percentage run time (the portion
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`of the cycle in which it is “ON”) increases or decreases to balance the thermal gain
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`rate of the structure. (Id.) The net effect is to keep the inside temperature essentially
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`unchanged at or near the setpoint. (Ex. 1004, ¶0254)(Ex. 1021, ¶¶16-17). In other
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`words, the HVAC system cycles ON and OFF to effectively balance out the overall
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`full cycle average rate of change of inside temperature at or near zero. The HVAC
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`run time percentage graphed in Figures 3E and 3G is the percentage of the cycle that
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`the system needs to run in order to balance or counteract those thermal gain
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`rates. (Ex. 1021, ¶¶16-21).5
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`EcoFactor and Dr. Palmer also suggest that Ehlers ’330 does not measure the
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`“thermal gain rates” for a building when the HVAC system is “ON.” (POR, 19).
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`The claims of the ’597 patent, however, do not require this. (Ex. 1021, ¶¶22-25)(Ex.
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`1001).6 Nonetheless, Ehlers ’330 teaches it. This is because the “thermal gain” as
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`5 A contrary interpretation is in fact, nonsensical, as EcoFactor and Dr. Palmer
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`recognize. (See POR, 24-25). For example, Ehlers ’330 teaches with reference to
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`Figure 3E that the system is cycling “ON” and “OFF” to maintain the temperature
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`at or near the setpoint. (Ex. 1004, ¶0254, Fig. 3E). The thermal gain rates
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`depicted in Figures 3E and 3G thus do not specifically illustrate the (negative) rates
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`of change of inside temperature when the system is ON and cooling. (Ex. 1021,
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`¶¶16, 21).
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`6 Any suggestion that the claims require calculating predicted rates when the
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`HVAC system is “ON” finds no support in the claim language. EcoFactor knows
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`how to separately claim determining rates of change when the system is both “OFF
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`and “ON” and has in fact done so in other patents. (See, e.g., Ex. 1028, claims 1,
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`7).
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`well as the “HVAC cycle rate” are both being measured “on a continuous basis”,
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`and thus the system is also measuring the thermal gain rate during periods when the
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`status of the HVAC system is “ON”. (Ex. 1004, ¶0256)(Emphasis added)(Ex. 1021,
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`¶¶22-25). Ehlers ’330 also computes and stores a “[c]omputed thermal recovery
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`time for heating and cooling adjusted to compensate for the external temperature”
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`and stores “[t]he average thermal recovery time per degree when heating and cooling
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`systems are operational” (Ex. 1004, ¶¶0295, 0285)(Ex. 1021, ¶¶22-25)(Ex. 1002,
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`¶¶94, 55, 89, 98). A POSITA would also understand from these disclosures that
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`Ehlers ’330 computes rates of change of inside temperature when the system is
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`“ON.” (Ex. 1021, ¶¶22-25).
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`VI. GROUND 1: THE COMBINATION OF EHLERS ’330, THE
`KNOWLEDGE OF A POSITA, AND WRUCK RENDERS OBVIOUS
`CLAIMS 1-24 (POR, 19-34).
`EcoFactor challenges certain of the claim elements found in independent
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`claims 1, 9, and 17.7 EcoFactor presents no arguments specific to any of the
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`7 EcoFactor presents its arguments in the context of independent claims 1 and 9
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`and then asserts that “for substantially the same reasons . . . the combination . . .
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`does not render obvious claim 17. (POR, 34). Petitioner’s arguments with respect
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`to claims 1 and 9 apply equally to independent claim 17 as well. Petitioner
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`however notes that to the extent that EcoFactor’s arguments presented under claim
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`challenged dependent claims. (POR, 30, 33-34). EcoFactor’s arguments lack merit,
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`as explained below.
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`A. Claim element [1d] (“using the stored data to predict changes in
`temperature inside the structure in response to at least changes in
`outside temperatures”) (POR, 19-25).
`EcoFactor first argues that Ehlers ’330 does not disclose rates of change of
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`inside temperature. (POR, 19-21). As the Petition explains, and is explained above
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`under §V, Ehlers ’330 calculates rates of change of inside temperature in a building
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`given different outside temperature conditions. (See Pet., 34-43).8
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`EcoFactor also argues that “Ehlers ’330 is not predicting changes in inside
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`temperature in response to changes in outside temperature.” (POR, 21). However,
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`the very reason that Ehlers ’330 “tracks and learns about the thermal gain
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`characteristics of the home” (Ex. 1004, ¶0253) is to be able to use that data to make
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`predictions about the future behavior of the inside temperature in the home. (Ex.
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`limitation [9e] are specific to the specific claim language therein, the language in
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`claim 17 differs.
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`8 EcoFactor does not dispute that it would be obvious to store inside and outside
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`temperature measurements. (See, e.g., Ex. 1004, ¶0124, Fig. 4L)(Ex. 1022, 164:8-
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`13, 165:22-167:22, 160:25-161:4).
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`1021, ¶26)(Ex. 1002, ¶¶92-100). This information is then used in controlling the
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`system to “manage costs and comfort.” (Ex. 1004, ¶¶0252-0253)(Ex. 1021, ¶26).
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`The Petition presented three examples of how Ehlers ’330’s thermal gain rates
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`are used to predict changes in inside temperature (Pet., 38-42), and EcoFactor’s
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`arguments concerning these examples are addressed in §§1-3 below.
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`1. Example 1
`In a first example, as explained in the Petition, one way in which Ehlers ’330
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`uses predicted rates of change is when it uses the thermal gain rate to determine a
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`new offset temperature. (Pet., 38). Ehlers ’330 uses the “computed thermal gain
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`rate” to “compute[] the required effective set point offset needed to keep the HVAC
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`cycle run time at [a] specified trigger level.” (Ex. 1004, ¶0256). To do so, Ehlers
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`’330 predicts that the thermal gain rate it computed in the past represents a speed at
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`which temperatures inside the first location will change in response to changes in
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`outside temperature, at the current time or at a time in the future. (Ex. 1021, ¶¶27-
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`36).
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`The thermal gain rate is used to predict changes in inside temperature in
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`the context of the example described in paragraph 256 of Ehlers ’330. (Ex. 1021,
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`¶¶27-36)(Ex. 1002, ¶¶96-97). Ehlers ’330 describes a specific example of how it
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`“uses the thermal gain rate of the home 2.18” “to manage the demand and
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`consumption rate at either a flat level or at some reduced level by varying the indoor
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`air temperature within the allowable range.” (Ex. 1004, ¶0256). In this example, to
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`reduce energy consumption, the customer has specified that the HVAC system is
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`only permitted to be “ON” for a maximum of 33% of an HVAC cycle (i.e., a 33%
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`HVAC run time). (Ex. 1004, ¶0256). However, at some point, in this example, due
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`to the increase in outside temperature in the middle of the day, the HVAC system
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`will need to operate more than 33% of the time to cool the home to the setpoint of
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`72 degrees. In order to maintain the maximum HVAC run time % at 33%, the
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`system uses the thermal gain rate to compute a new setpoint somewhere between
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`72 and 76 degrees, which will require no more than 33% cycling time to
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`maintain. (Ex. 1004, ¶0256)(See also, e.g., Ex, 1004, ¶0141, Fig. 3F). Figure 3G
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`specifically “illustrates this scenario, assuming that the thermal gain of the site 1.04
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`does not exhaust the allowed temperature variant for the site 1.04.” (Ex. 1004,
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`¶0256, Fig. 3G)(Ex. 1021, ¶¶27-36).
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`When Ehlers ’330 computes its thermal gain rate, it is stored as a predicted
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`thermal gain rate for a given setpoint and a given outside temperature, which may
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`re-occur in the future. (Ex. 1004, ¶¶0252-0256, Figs. 3E, 3D, 3G)(Ex. 1021, ¶¶27-
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`36)(Ex. 1002, ¶97)(Ex. 2008, ¶57). For example, with reference to Figure 3D, given
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`an initial setpoint starting temperature of 72 degrees F, it can be predicted that when
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`the HVAC system is OFF and not actively working to cool the structure, the inside
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`temperature of the structure will change at about 1 degree F per hour when the
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`outside temperature is 77 degrees F. However, if the outside temperature changes,
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`by 22 degrees F for example, to 99 degrees F, it can be predicted that the inside
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`temperature will change at a speed of about 3.9 degrees F per hour. (Ex. 1021, ¶¶27-
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`36).
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`In the example in paragraph 256, Ehlers ’330 teaches that it uses such
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`predictions to calculate a setpoint. (Ex. 1021, ¶¶27-36). For example, as Mr. Shah
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`explains, Ehlers ’330 uses the learned thermal gain rates to predict that a 33% run
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`time will be maintained if the setpoint is allowed to change to 74 degrees F. This is
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`because if the inside temperature changes by, for example, 2.7 degrees F/hour while
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`the system is OFF, then the system need only run for 33% of the time to recover the
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`indoor temperature to the original setpoint. (Ex. 1021, ¶¶27-36). Based on the
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`teachings in Ehlers ’330, as Mr. Shah explains, a POSITA would understand how to
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`use Ehlers ’330’s thermal gain rates as well as other system data to calculate an
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`appropriate setpoint offset. (Ex. 1021, ¶¶27-36). Specifically, based on the
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`teachings in Ehlers ’330 and using past performance data such as that illustrated in
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`Figures 3D and 3E, a POSITA would understand how to calculate the setpoint that
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`would maintain a particular HVAC runtime percentage given certain predicted
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`indoor and outdoor temperature conditions by treating the setpoint as a
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`variable. (Ex. 1021, ¶¶27-36).
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`EcoFactor and Dr. Palmer’s bare assertion that “calculating a setpoint is not a
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`prediction” is not responsive to the Petition’s arguments. (See POR, 21)(See also
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`Ex. 1023, 42:18-43:9). Ehlers ’330 clearly teaches that it uses the predicted rates of
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`change to calculate a new temperature offset, thereby calculating a new setpoint for
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`the HVAC system. (Ex. 1021, ¶¶27-36)(Ex. 1004, ¶0256, Figs. 3E, 3D, 3G)(Ex.
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`1002, ¶¶96-97).
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`2. Example 2
`With respect to the second example presented in the Petition, EcoFactor does
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`not directly dispute that Ehlers ’330 teaches that predicted thermal gain rates can be
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`used to set and predict recovery times. (See Pet., 40-41). As Mr. Shah explains,
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`Ehlers ’330 teaches that the thermal gain rates can be used to predict recovery time.
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`Specifically, the system can use the thermal gain rates to calculate a first time at
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`which a certain setpoint should be implemented in order to program the system to
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`control the inside temperature to (i.e., recover to) that setpoint by a second time.
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`(Ex. 1021, ¶37)(Ex. 1002, ¶98)(Ex. 1004, ¶¶0246, 0268, 0285, 0295, 0119, 0319,
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`0324-0325)(see also Ex. 1001, 5:35-40)(explaining that a predicted rate of change
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`can be used to “determine when the HVAC system must be turned on in order to
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`reach the desired temperature at the desired time”).
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`3. Example 3
`With respect to the third example highlighted in the Petition (Pet., 41-42),
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`EcoFactor and Dr. Palmer appear to suggest that thermal gain rates are not used to
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`predict changes in inside temperatures because “the user select[s] the set point as
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`well as providing ‘the number of degrees from the set point that the customer would
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`make available to the system 3.08.’” (POR, 21)(citing Ex. 1004, ¶0255)(See Pet.,
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`41). Ehlers ’330 teaches that the system can use the “thermal gain rate in the site”
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`to control the “ramping rate at which the system 3.08 would permit the temperature
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`to rise within the site 1.04 as it moved from one set point to a higher or lower one to
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`achieve economic benefit.” (Ex. 1004, ¶0255, Fig. 3F)(See also Ex. 1004, ¶0241).
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`As Mr. Shah explains, Ehlers ’330 teaches that the system can predict that the indoor
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`temperature will rise at a certain rate and control the behavior of the system
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`accordingly. (Ex. 1002, ¶99). It also teaches that the system can control the rate at
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`which it permits the temperature to recover to a more comfortable setpoint after a
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`restricted period. (Ex. 1021, ¶38). In doing so, the system can use the thermal gain
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`rates to slow down the recovery by computing a later time at which to achieve the
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`new, more comfortable setpoint. (Id.). Here too, Ehlers ’330 teaches that the thermal
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`gain rates can be used to predict changes in inside temperature to control the
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`recovery process.
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`Turning to EcoFactor’s other arguments, EcoFactor and Dr. Palmer also
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`contend generally that “a thermal gain rate is not a change in inside temperature
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`based on changes in outside temperature.” (POR, 22).9 EcoFactor’s argument lacks
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`any basis. As EcoFactor and Dr. Palmer recognize, in Figure 3D, Ehlers ’330 tracks
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`thermal gain rates for “different outdoor temperatures,” such that “the thermal gain
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`rate is indexed by [the] outside temperature,” and “different outdoor temperatures
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`. . . result in different thermal gain rates.” (POR, 20-22)(emphases added). Ehlers
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`’330 also uses data such as that depicted in Figure 3D to compute, for example, the
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`information depicted in Figures 3E and 3G. (Ex. 1004, Figs. 3E, 3G). The dashed
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`lines in Figures 3E and 3G directly illustrate how the thermal gain rate for a structure
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`changes over time in response to changes in outside temperature throughout the
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`day. (Ex. 1021, ¶¶11, 18)(see Ex. 1004, ¶0254)(“Since the outside temperature
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`varies continuously during a typical day, the rate of thermal gain and the HVAC run
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`times also vary in accordance with these changes.”)(Ex. 1004, ¶0256)(“As the
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`9 If EcoFactor has some specific interpretation of the claim language “in response
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`at least to changes in outside temperature” in mind, it does not state what it is. The
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`’597 patent certainly shines no light. For example, the ’597 patent nowhere
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`actually computes a “predicted speed a temperature inside the first location will
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`change in response to changes in outside temperature.” (See Ex. 1001, 5:17-
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`40)(providing a general description only).
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`outside temperature rises, the thermal gain on the home 2.18 is monitored . . . on a
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`continuous basis.”). Ehlers ’330’s thermal gain rates are calculated and monitored
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`with changes and therefore meet this limitation. (Ex. 1002, ¶¶92-100)(Ex. 1021,
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`¶¶3, 10, 18, 24)(See Ex. 1023, 44:9-45:15)(Ex. 1004, ¶¶0285, 0295).
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` Finally, EcoFactor and Dr. Palmer criticize Ehlers ’330 for not saying more
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`regarding how to calculate thermal gain rates. (POR, 22-23). Yet Ehlers ’330
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`provides more information than the ’597 patent, which as explained above (§V)
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`discloses no equations or calculations for calculating the “thermal mass” of a
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`structure and does not explain how to calculate or predict a speed an inside
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`temperature will change in response to changes in outside temperature. See In re
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`Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)(“[T]he Board’s observation that [patent
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`owner] did not provide the type of detail in his specification that he now argues is
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`necessary in prior art references supports the Board’s finding that one skilled in the
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`art would have known how to implement the features of the references . . . .”). As
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`Mr. Shah explains and as Ehlers ’330 assumes, a POSITA would understand how to
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`measure and use Ehlers ’330’s thermal gain rates given Ehlers ’330’s disclosures.
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`(Ex. 1021, ¶¶10-22, 36-38)(see also Ex. 1022, 137:13-15, 173:14-20)(Ex. 1023,
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`21:19-22:14)(Ex. 2013, 21:9-22:4).
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`B. Claim element [1e] (“calculating with at least one computer,
`scheduled programming of the thermostatic controller for one or
`more times to control the heating ventilation and air conditioning
`system, the scheduled programming comprising at least a first
`automated setpoint at a first time”) (POR, 25-27).
`EcoFactor and Dr. Palmer argue that this claim element is not met by the
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`combination because “the various computations identified are not setpoints.” (POR,
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`25). EcoFactor and Dr. Palmer’s half-formed arguments do not rebut the Petition’s
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`obviousness theories.
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`The Petition identified three different examples of how Ehlers ’330 calculates
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`automated setpoints. (Pet., 43-45). With respect to the first example, as described
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`above under claim element [1d], the system “computes the required effective set
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`point offset needed to keep the HVAC cycle run time at the specified trigger level
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`of 33%.” (Ex. 1004, ¶0256)(See also id.)(“By adjusting the effective set point
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`up