Case 4:21-cv-03220-HSG Document 17 Filed 07/13/21 Page 1 of 24
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`RUSS AUGUST & KABAT
`Marc A. Fenster, CA SBN 181067
`mfenster@raklaw.com
`Reza Mirzaie, CA SBN 246953
`rmirzaie@raklaw.com
`C. Jay Chung, CA SBN 252794
`cchung@raklaw.com
`James N. Pickens, CA SBN 307474
`jpickens@raklaw.com
`Minna Y. Chan, CA SBN 305941
`mchan@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Tele:
`310/826-7474
`Fax:
`310/826-6991
`
`Attorneys for Defendant/Counterclaim Plaintiff
`ECOFACTOR, INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`Case No. 5:21-cv-3220-TSH
`
`ANSWER
`DEMAND FOR JURY TRIAL
`
`GOOGLE LLC,
` Plaintiff/Counterclaim Defendant,
`v.
`ECOFACTOR, INC.,
` Defendant/Counterclaim Plaintiff.
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`ANSWER
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`GOOGLE 1018
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`001
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`ANSWER
`(“Defendant,”
`Inc., a Delaware corporation
`Defendant, EcoFactor,
`“Counterclaim Plaintiff,” or “EcoFactor”) through its undersigned counsel, hereby
`answers the Complaint for Declaratory Judgment filed by Plaintiff Google LLC
`(“Plaintiff,” “Counterclaim Defendant,” or “Google”) as follows:
`NATURE OF THE ACTION
`1. EcoFactor admits that the Complaint purports to set forth a claim for
`declaratory judgment of non-infringement of U.S. Patent Nos. 8,740,100 (“’100
`Patent”), 8,751,186 (“’186 Patent”), 9,194,597 (“’597 Patent”) and 10,584,890
`(“’890 Patent”) (collectively, the “Asserted Patents”) under Titles 28 and 35 of the
`United States Code, but otherwise denies the allegations of Paragraph 1 of the
`Complaint.
`2. EcoFactor admits that it has filed a complaint with the Western District of
`Texas (“W.D. Tex.”), Docket No. 6:21-cv-00428 (the “ecobee W.D. Tex. Action”),
`claiming that ecobee, Inc. infringed the Asserted Patents because ecobee designed,
`developed, manufactured, tested, used, offered for sale, sold, and/or imported “smart
`thermostats, smart HVAC systems, smart HVAC control systems, and components
`thereof,” but otherwise denies the allegations of Paragraph 2 of the Complaint.
`3. EcoFactor admits that the products accused in the ecobee W.D. Tex.
`Action are “smart thermostat systems, smart HVAC systems, smart HVAC control
`systems, and all components (including accessories) thereof.” EcoFactor similarly
`admits that it has accused Google’s Nest Thermostat and Nest Third Generation
`Learning thermostat of patent infringement in prior pending litigation, but otherwise
`denies the allegations of Paragraph 3 of the Complaint.
`4. EcoFactor admits that it has previously asserted various patents at various
`times in cases pending against ecobee, Google, and others accusing various smart
`thermostats and HVAC systems, but otherwise denies the allegations of Paragraph
`4 of the Complaint.
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`RUSS, AUGUST & KABAT
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`5. Denied.
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`THE PARTIES
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`6. Admitted.
`7. Admitted.
`8. EcoFactor admits that the Complaint purports to set forth a claim for
`remedy under Titles 28 and 35 of the United States Code, but otherwise denies the
`allegations of Paragraph 6 of the Complaint.
`9. Admitted.
`10. Admitted.
`11. Admitted.
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`INTRADISTRICT ASSIGNMENT
`
`12. Admitted.
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`FACTUAL BACKGROUND
`13. EcoFactor admits that Google is headquartered at 1600 Amphitheatre
`Parkway, Mountain view, California, 94043. EcoFactor is without sufficient
`knowledge or information so as to form a belief as to the truth of the allegations
`contained in Paragraph 13 of the Complaint and therefore denies the same.
`14. EcoFactor is without sufficient knowledge or information so as to form a
`belief as to the truth of the allegations contained in Paragraph 14 of the Complaint
`and therefore denies the same.
`15. EcoFactor admits that it has filed other lawsuits against Google in the
`District of Massachusetts, the Western District of Texas, and the ITC asserting
`various patents, but otherwise denies the allegations of Paragraph 15 of the
`Complaint.
`16. EcoFactor admits that it filed suit on November 12, 2019, against Google
`in the District of Massachusetts asserting infringement of four of EcoFactor patents
`and that the case is currently stayed pending the ITC case below, but otherwise
`denies the allegations of Paragraph 16 of the Complaint.
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`17. EcoFactor admits that it filed suit against Google at the ITC on November
`22, 2019 (the “1185 Investigation”), asserting the same patents as those at issue in
`the Massachusetts action identified in Paragraph 16 of the Complaint. The 1185
`Investigation determined, for example, that the accused Google products infringed
`the asserted claims of U.S. Patent No. 10,018,371, that the patent is not patent-
`ineligible under 35 U.S.C. § 101, and that respondents did not show that the patent
`was invalid under 35 U.S.C. §§ 102 or 103. Parties to the 1185 Investigation have
`petitioned for Commission review of certain findings in the administrative law
`judge’s final initial determination. EcoFactor otherwise denies the allegations of
`Paragraph 17 of the Complaint.
`18. EcoFactor admits that it filed suit on January 31, 2020, against Google, in
`the Western District of Texas, asserting four of EcoFactor’s patents, and that the
`case is currently proceeding through discovery, with trial set for December 6, 2021,
`but otherwise denies the allegations of Paragraph 18 of the Complaint.
`19. EcoFactor admits that it filed suit on February 25, 2021, against Google,
`in the ITC, asserting four of EcoFactor’s patents, and that the case is currently
`proceeding through discovery, but otherwise denies the allegations of Paragraph 19
`of the Complaint.
`20. Admitted.
`21. EcoFactor admits that it has filed four cases against Google’s Nest line of
`smart thermostat products within the past 18 months asserting infringement of 12 of
`EcoFactor’s patents—some of which Google has been found to infringe. EcoFactor
`further admits that it is presently asserting or has previously asserted claims of patent
`infringement against ecobee, Vivint, Inc., Alarm.com Inc., Johnson Controls Inc.,
`Emerson Electric Co., Resideo Technologies, Inc., Honeywell International Inc.,
`Siemens Industry, Inc., Siemens AG, Daikin Industries, Ltd., Schneider Electric
`USA, Inc., and Carrier Global Corp. EcoFactor otherwise denies the allegations of
`Paragraph 21 of the Complaint.
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`22. EcoFactor admits that it is prepared and willing to enforce its patent rights.
`EcoFactor otherwise denies the allegations of Paragraph 22 of the Complaint.
`23. Denied.
`
`the foregoing
`
`COUNT I:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’100
`PATENT
`24. EcoFactor realleges and
`incorporates by reference
`paragraphs as if fully set forth herein.
`25. Admitted.
`26. EcoFactor admits that the ecobee W.D. Tex. Complaint alleges
`infringement by certain accused products, such as the ecobee3 lite and ecobee
`SmartThermostat with Voice Control, but otherwise denies the allegations of
`Paragraph 26 of the Complaint.
`27. Denied.
`28. Denied.
`29. EcoFactor admits that Google seeks the requested relief, but otherwise
`denies the allegations of Paragraph 29 of the Complaint.
` COUNT II:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’186
`PATENT
`30. EcoFactor realleges and
`incorporates by reference
`paragraphs as if fully set forth herein.
`31. Admitted.
`32. EcoFactor admits that the ecobee W.D. Tex. Complaint alleges
`infringement by certain accused products, such as the ecobee3 lite and ecobee
`SmartThermostat with Voice Control, but otherwise denies the allegations of
`Paragraph 32 of the Complaint.
`33. Denied.
`
`the foregoing
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`the foregoing
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`34. Denied.
`35. EcoFactor admits that Google seeks the requested relief, but otherwise
`denies the allegations of Paragraph 35 of the Complaint.
`COUNT III:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’597
`PATENT
`36. EcoFactor realleges and
`incorporates by reference
`paragraphs as if fully set forth herein.
`37. Admitted.
`38. EcoFactor admits that the ecobee W.D. Tex. Complaint alleges
`infringement by certain accused products, such as the ecobee3 lite and ecobee
`SmartThermostat with Voice Control, but otherwise denies the allegations of
`Paragraph 38 of the Complaint.
`39. Denied.
`40. Denied.
`41. EcoFactor admits that Google seeks the requested relief, but otherwise
`denies the allegations of Paragraph 41 of the Complaint.
`COUNT IV:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’890
`PATENT
`42. EcoFactor realleges and
`incorporates by reference
`paragraphs as if fully set forth herein.
`43. Admitted.
`44. EcoFactor admits that the ecobee W.D. Tex. Complaint alleges
`infringement by certain accused products, such as the ecobee3 lite and ecobee
`SmartThermostat with Voice Control, but otherwise denies the allegations of
`Paragraph 44 of the Complaint.
`45. Denied.
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`the foregoing
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`46. Denied.
`47. EcoFactor admits that Google seeks the requested relief, but otherwise
`denies the allegations of Paragraph 47 of the Complaint.
`PLAINTIFF’S PRAYER FOR RELIEF
`48. EcoFactor denies the allegations and prayer for relief sought by Plaintiff.
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`ECOFACTOR’S COUNTERCLAIMS FOR PATENT INFRINGEMENT
`49. Counterclaim Plaintiff, EcoFactor, Inc., a Delaware corporation
`(“EcoFactor” or “Counterclaim Plaintiff”) through its undersigned counsel, for its
`counterclaims against Counterclaim Defendant ecobee, Inc. (“Counterclaim
`Defendant”), alleges as follows:
`INTRODUCTION
`50. These counterclaims arise from Counterclaim Defendant’s unlawful
`infringement of the following United States patents owned by EcoFactor: U.S.
`Patent Nos. 8,740,100 (“’100 Patent”), 8,751,186 (“’186 Patent”), 9,194,597 (“’597
`Patent”) and 10,584,890 (“’890 Patent”) (collectively, the “Asserted Patents”).
`EcoFactor owns all right, title, and interest in each of the Asserted Patents.
`51. EcoFactor is a privately held company, having its principal place of
`business at 441 California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was
`founded in 2006 and is headquartered in Palo Alto, California. EcoFactor is a leader
`in smart home energy management services. EcoFactor delivers smart home energy
`management services that improve energy efficiency, reduce energy bills, and vastly
`increase demand response efficacy – all while maintaining consumer comfort.
`EcoFactor’s patented big-data analytics and machine learning algorithms collect and
`process massive amounts of residential data – including home thermodynamics,
`family comfort preferences and schedules, plus external data such as weather – to
`continually monitor, adapt and learn for optimum energy savings. The company
`provides homeowners significant cost savings and energy usage benefits.
`EcoFactor’s award-winning service has been offered through channel partners such
`as utilities, energy retailers, broadband service providers, and HVAC companies.
`52. EcoFactor transformed how homes use energy by applying advanced
`analytics to connected devices in the home. EcoFactor developed a suite of software
`known as the “EcoFactor Platform” that incorporates EcoFactor’s patented data
`analytics and machine learning algorithms, as well as EcoFactor’s award-winning
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`smart HVAC control technologies. The EcoFactor Platform is software that runs on
`servers, including cloud servers, in the United States, and provides service to
`customers in the United States. The source code of the EcoFactor Platform, including
`for example the platform, quant, and mobile application source code, that comprises
`the EcoFactor Platform was designed by, created by, and is continuously maintained
`and improved by EcoFactor employees working in the United States. The EcoFactor
`Platform actively manages thermostats on occupants’ behalf in intelligent ways that
`improve comfort while helping them save time, energy and money. Utilities, home
`service providers, and homeowners rely on EcoFactor for demand response, energy
`efficiency, and HVAC performance monitoring services. The EcoFactor Platform
`includes the software that practices EcoFactor’s patents on these features. For
`example, the EcoFactor Platform includes EcoFactor’s patented techniques for
`monitoring the health and performance of HVAC systems over time, smart
`thermostat scheduling to improve energy savings and optimize comfort for
`occupants, and thermodynamic modeling of the user’s home and HVAC system to
`enable dynamic pre-cooling and pre-heating to further improve comfort, save
`energy, or both, by creating comfortable schedules that also shift energy usage out
`of periods of peak energy demand.
`53. The patented innovations at issue in this action were invented by
`EcoFactor engineers and researchers. EcoFactor has played a significant role in the
`development and advancement of such improvements to energy management
`technology—and the domestic market for them. EcoFactor has expended tens of
`millions of dollars of research and development and technical services and support
`in the United States. In recent years, an explosion of imported products that infringe
`EcoFactor’s innovative Asserted Patents has significantly eroded EcoFactor’s
`market standing. This infringement action is about several patented improvements
`to smart thermostat systems, smart HVAC systems, and smart HVAC control
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`systems—which took years of research and millions of dollars in U.S. investments
`to develop, and which are infringed by Defendant’s accused products.
`PARTIES
`54. Counterclaim Plaintiff EcoFactor is a privately held company, having its
`principal place of business at 441 California Avenue, Number 2, Palo Alto, CA
`94301. EcoFactor was founded in 2006 and is headquartered in Palo Alto, California.
`EcoFactor is the sole owner of all right, title, and interest in each Asserted Patent.
`55. Counterclaim Defendant Google LLC is a subsidiary of Alphabet Inc.
`with its principal place of business located at 1600 Amphitheatre Parkway, Mountain
`View, California 94043.
`JURISDICTION AND VENUE
`56. This court has original jurisdiction over EcoFactor's counterclaims
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because they arise under the patent laws
`of the United States, Title 35 of the United States Code, and supplemental
`jurisdiction over EcoFactor’s counterclaims pursuant to 28 U.S.C. § 1367(a) because
`the counterclaims are so related to the Counterclaim Defendant’s claims that they
`form part of the same case or controversy under Article III of the United States
`Constitution.
`57. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1400(b)
`because Google resides in this District, and also because Google is subject to
`personal jurisdiction in this District, and a substantial part of the events giving rise
`to EcoFactor’s claims of infringement (such as the development and sale of Nest
`thermostats) occurred in this District.
`THE TECHNOLOGY AND PRODUCTS AT ISSUE
`58. The products accused of infringing (“Accused Products”) one or more of
`the Asserted Patents are smart thermostat systems, smart HVAC systems, smart
`HVAC control systems, and all components (including accessories) thereof offered
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`for sale by the Counterclaim Defendant, including the Google Nest Thermostat and
`Nest Third Generation Learning thermostat.
`59. The Accused Products include thermostat systems that connect to and
`control an HVAC system, they include smart HVAC systems, and they include
`components of such systems such as, for example, hubs, panels, and remote sensors.
`These thermostat devices communicate over a network with other devices and
`systems offered by the Counterclaim Defendant. The Accused Products connect to
`the network managed by the Counterclaim Defendant via the Internet. For example,
`the Accused Products connect to Counterclaim Defendant’s networked servers and
`data centers, online interfaces, and related accessories.
`60. When connected as designed, the Accused Products form a smart
`thermostat system, smart HVAC system, and/or smart HVAC control system.
`Counterclaim Defendant’s smart thermostat systems are “smart” because they are
`designed to connect to Counterclaim Defendant’s servers and data centers
`(including, e.g., cloud-based servers and backend support), related online interfaces
`(including, e.g., mobile apps and web portals), and related accessories (e.g., remote
`temperature sensors), upon importation. Further, Counterclaim Defendant’s smart
`thermostat systems are “smart” because they support and are marketed as providing
`features to end users that analyze thermostat and HVAC system data gathered by the
`smart thermostat systems.
`61. The Accused Products constitute the “frontend” of the smart thermostat
`system, smart HVAC system, and/or smart HVAC control system. Such smart
`thermostat devices can be programmed using the servers and the network maintained
`by Counterclaim Defendant and which form the “backend” for the smart thermostat.
`Such smart thermostat systems can be programmed remotely with a web or mobile
`application offered by Counterclaim Defendant. The web or mobile application
`communicates with the smart thermostat via computer servers or data centers
`managed by the Counterclaim Defendant, who sells and imports the smart
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`thermostat. Counterclaim Defendant allows an end user to use a web or mobile
`application on a mobile phone, tablet, laptop, or other computing device to control
`the smart thermostat systems, such as by adjusting temperature settings.
`62. These smart thermostat systems also communicate data using the
`network. For example, Counterclaim Defendant’s smart thermostat systems send
`and receive temperature data and/or temperature settings using the network.
`63. Counterclaim Defendant’s Accused Products are designed and specially
`made and adapted to infringe claims of the Asserted Patents and to embody a
`material part of the claimed inventions. The Accused Products are installed and used
`in the United States according to Counterclaim Defendant’s design and instructions.
`Counterclaim Defendant has knowledge as well as notice of its infringement of each
`asserted patent at least as of the date of the ITC Complaint. Counterclaim Defendant
`knowingly induces and encourages the use of the Accused Products in the United
`States in a manner that infringes the asserted claims of the Asserted Patents.
`Counterclaim Defendant infringes the Asserted Patents directly, through making,
`using, selling, and/or offering for sale the Accused Products. Counterclaim
`Defendant also infringes the Asserted Patents indirectly, both for example through
`contributory infringement as well as through induced infringement.
` The
`infringement of the Asserted Patents is also attributable to Counterclaim Defendant.
`Counterclaim Defendant and/or users of the Accused Products direct and control use
`of the Accused Products to perform acts that result in infringement the Asserted
`Patents, conditioning benefits on participation in the infringement and establishing
`the timing and manner of the infringement.
`COUNT I:
`INFRINGEMENT OF U.S. PATENT NO. 8,740,100
`64. EcoFactor realleges and incorporates by reference the foregoing
`paragraphs as if fully set forth herein.
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`65. The ’100 patent, titled “System, Method and Apparatus for Dynamically
`Variable Compressor Delay in Thermostat to Reduce Energy Consumption,” issued
`on June 3, 2014. Ex. 1 (’100 Patent). The inventor of the ’100 Patent is John Douglas
`Steinberg. The ’100 Patent is based on U.S. Pat. App. No. 12/774,580, filed on May
`5, 2010, which claims priority to U.S. Provisional App. No. 61/215,816, filed on
`May 11, 2009. A true and correct copy of the ’100 Patent is attached as Exhibit 1.
`66. On information and belief, Counterclaim Defendant makes, uses, offers
`for sale, sells, and/or imports certain products (“Accused Products”), such as the
`Nest Thermostat and Nest Third Generation Learning Thermostat, including device-
`side and cloud-based features thereof, and related accessories, that directly infringe,
`literally and/or under the doctrine of equivalents, claims of the ’100 Patent.
`67. The infringement of the ’100 Patent is also attributable to Counterclaim
`Defendant. Counterclaim Defendant and/or users of the Accused Products direct and
`control use of the Accused Products to perform acts that result in infringement of the
`patent, conditioning benefits on participation in the infringement and establishing
`the timing and manner of the infringement.
`68. Counterclaim Defendant also knowingly and intentionally induces
`infringement of claims of the ’100 Patent in violation of 35 U.S.C. § 271(b).
`Through at least the filing and service of the Complaint, Counterclaim Defendant
`has had knowledge of the ’100 Patent and the infringing nature of the Accused
`Products. Despite this knowledge of the ’100 Patent, Counterclaim Defendant
`continues to actively encourage and instruct its customers and end users (for
`example, through user manuals and online instruction materials on its website) to
`use the Accused Products in ways that directly infringe the ‘100 Patent.
`Counterclaim Defendant does so knowing and intending that its customers and end
`users will commit these infringing acts. Counterclaim Defendant also continues to
`make, use, offer for sale, sell, and/or import the Accused Products, despite its
`knowledge of the ’100 Patent, thereby specifically intending for and inducing its
`12
`ANSWER
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`5:21-cv-3220-TSH
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`013
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`Case 4:21-cv-03220-HSG Document 17 Filed 07/13/21 Page 14 of 24
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`customers to infringe the ’100 Patent through the customers’ normal and customary
`use of the Accused Products.
`69. Counterclaim Defendant has also infringed, and continue to infringe,
`claims of the ’100 Patent by offering to commercially distribute, commercially
`distributing, making, and/or importing the Accused Products, which are used in
`practicing the process, or using the systems, of the patent, and constitute a material
`part of the invention. Counterclaim Defendant knows the components in the Accused
`Products to be especially made or especially adapted for use in infringement of the
`patent, not a staple article, and not a commodity of commerce suitable for substantial
`noninfringing use. Accordingly, Counterclaim Defendant has been, and currently is,
`contributorily infringing the ’100 Patent, in violation of 35 U.S.C. § 271(c).
`70. The Accused Products satisfy all claim limitations of claims of the ‘100
`Patent. A claim chart comparing claim elements of the ’100 Patent to representative
`Accused Products, is attached as Exhibit 2.
`71. By making, using, offering for sale, selling and/or importing into the
`United States the Accused Products, Counterclaim Defendant has injured EcoFactor
`and is liable for infringement of the ’100 Patent pursuant to 35 U.S.C. § 271.
`72. As a result of Counterclaim Defendant’s infringement of the ’100 Patent,
`EcoFactor is entitled to monetary damages in an amount adequate to compensate for
`Counterclaim Defendant’s infringement, but in no event less than a reasonable
`royalty for the use made of the invention by Counterclaim Defendant, together with
`interest and costs as fixed by the Court.
`73. Counterclaim Defendant’s infringing activities have injured and will
`continue to injure EcoFactor, unless and until this Court enters an injunction
`prohibiting further infringement of the ’100 Patent, and, specifically, enjoining
`further manufacture, use, sale, importation, and/or offers for sale that come within
`the scope of the patent claims.
`74. EcoFactor’s ’100 patent is valid and enforceable.
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`014
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`Case 4:21-cv-03220-HSG Document 17 Filed 07/13/21 Page 15 of 24
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`75. EcoFacto has complied with 35 U.S.C. ¶ 287.
`COUNT II:
`INFRINGEMENT OF U.S. PATENT NO. 8,751,186
`76. EcoFactor realleges and incorporates by reference the foregoing
`paragraphs as if fully set forth herein.
`77. The ’186 patent, titled “System and Method for Calculating the Thermal
`Mass of a Building,” issued on June 10, 2014. Ex. 3 (’186 Patent). The inventors of
`the ’186 Patent are John Douglas Steinberg and Scott Douglas Hublou. The ’186
`Patent is based on U.S. Pat. App. No. 13/858,710, filed on April 8, 2013, which is a
`continuation of U.S. Pat. App. No. 13/409,729, filed on Mar. 1, 2012, which is a
`continuation of U.S. Pat. App. No. 12/959,225, filed on Dec. 2, 2010, which is a
`continuation of U.S. Pat. App. No. 12/211,733, filed on Sept. 16, 2008. The ’186
`Patent also claims priority to U.S. Provisional App. No. 60/994,011, filed on Sept.
`17, 2007. A true and correct copy of the ’186 Patent is attached as Exhibit 3.
`78. On information and belief, Counterclaim Defendant makes, uses, offers
`for sale, sells, and/or imports certain products (“Accused Products”), such as the
`Nest Thermostat and Nest Third Generation Learning Thermostat, including device-
`side and cloud-based features thereof, and related accessories, that directly infringe,
`literally and/or under the doctrine of equivalents, claims of the ’186 Patent.
`79. The infringement of the ’186 Patent is also attributable to Counterclaim
`Defendant. Counterclaim Defendant and/or users of the Accused Products direct and
`control use of the Accused Products to perform acts that result in infringement of the
`patent, conditioning benefits on participation in the infringement and establishing
`the timing and manner of the infringement.
`80. Counterclaim Defendant also knowingly and intentionally induces
`infringement of claims of the ’186 Patent in violation of 35 U.S.C. § 271(b).
`Through at least the filing and service of the Complaint, Counterclaim Defendant
`has had knowledge of the ’186 Patent and the infringing nature of the Accused
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`ANSWER
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`RUSS, AUGUST & KABAT
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`015
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`Case 4:21-cv-03220-HSG Document 17 Filed 07/13/21 Page 16 of 24
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`Products. Despite this knowledge of the ’186 Patent, Counterclaim Defendant
`continues to actively encourage and instruct its customers and end users (for
`example, through user manuals and online instruction materials on its website) to
`use the Accused Products in ways that directly infringe the ’186 Patent.
`Counterclaim Defendant does so knowing and intending that its customers and end
`users will commit these infringing acts. Counterclaim Defendant also continues to
`make, use, offer for sale, sell, and/or import the Accused Products, despite its
`knowledge of the ’186 Patent, thereby specifically intending for and inducing its
`customers to infringe the ’186 Patent through the customers’ normal and customary
`use of the Accused Products.
`81. Counterclaim Defendant has also infringed, and continue to infringe,
`claims of the ’186 Patent by offering to commercially distribute, commercially
`distributing, making, and/or importing the Accused Products, which are used in
`practicing the process, or using the systems, of the patent, and constitute a material
`part of the invention. Counterclaim Defendant knows the components in the Accused
`Products to be especially made or especially adapted for use in infringement of the
`patent, not a staple article, and not a commodity of commerce suitable for substantial
`noninfringing use. Accordingly, Counterclaim Defendant has been, and currently is,
`contributorily infringing the ’186 Patent, in violation of 35 U.S.C. § 271(c).
`82. The Accused Products satisfy all claim limitations of claims of the ‘186
`Patent. A claim chart comparing claim elements of the ’186 Patent to representative
`Accused Products, is attached as Exhibit 4.
`83. By making, using, offering for sale, selling and/or importing into the
`United States the Accused Products, Counterclaim Defendant has injured EcoFactor
`and is liable for infringement of the ’186 Patent pursuant to 35 U.S.C. § 271.
`84. As a result of Counterclaim Defendant’s infringement of the ’186 Patent,
`EcoFactor is entitled to monetary damages in an amount adequate to compensate for
`Counterclaim Defendant’s infringement, but in no event less than a reasonable
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`ANSWER
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`RUSS, AUGUST & KABAT
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`016
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`Case 4:21-cv-03220-HSG Document 17 Filed 07/13/21 Page 17 of 24
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`royalty for the use made of the invention by Counterclaim Defendant, together with
`interest and costs as fixed by the Court.
`85. Counterclaim Defendant’s infringing activities have injured and will
`continue to injure EcoFactor, unless and until this Court enters an injunction
`prohibiting further infringement of the ’186 Patent, and, specifically, enjoining
`further manufacture, use, sale, importation, and/or offers for sale that come within
`the scope of the patent claims.
`86. EcoFactor’s ’186 patent is valid and enforceable.
`87. EcoFacto has complied with 35 U.S.C. ¶ 287.
`COUNT III:
`INFRINGEMENT OF U.S. PATENT NO. 9,194,597
`88. EcoFactor realleges and incorporates by reference the foregoing
`paragraphs as if fully set forth herein.
`89. The ’597 patent, titled “System, Method and Apparatus for Identifying
`Manual Inputs to and Adaptive Programming of a Thermostat,” issued on Nov. 24,
`2015. Ex. 5 (’597 Patent). The inventors of the ’597 Patent are John Douglas
`Steinberg, Scott Douglas Hublou, and Leo Cheung. The ’597 Patent is based on U.S.
`Pat. App. No. 14/082,675, filed on Nov. 18, 2013, which is a continuation of U.S.
`Pat. App. No. 12/778,052, filed on May 11, 2010. The ’597 Patent