UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC, and ECOBEE TECHNOLOGIES ULC,
`
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner.
`
`IPR2022-005381
`Patent No. 9,194,597
`
`PETITIONER’S REPLY
`
`1 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
`
`proceeding.
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`1
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`A. 
`
`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 
`
`B. 
`
`C. 
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`2
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`D. 
`
`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
`
`
`Description
`
`Exhibit No.
`
`1001
`
`U.S. Patent No. 9,194,597 (“the 597 patent”).
`
`1002
`
`Declaration of Rajendra Shah.
`
`1003
`
`C.V. of Rajendra Shah.
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`U.S. Patent App. Pub. 2004/0117330 (“Ehlers ’330”).
`
`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”).
`
`
`Exhibit number not used.
`
`U.S. Patent No. 6,789,739 (“Rosen”).
`
`4
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`1013
`
`1014
`
`1015
`
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`
`1024
`
`1025
`1026
`
`1027
`1028
`
`WO 2007/128783 A1 (“McNulty”).
`
`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”).
`
`5
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`1029
`
`1030
`1031
`
`
`
`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
`
`Response (“POR”).2
`
`I. BACKGROUND OF THE ’597 PATENT (POR, 1-4).
`EcoFactor provides a background description of the ’597 patent that is largely
`
`irrelevant. EcoFactor notably characterizes the ’597 patent as being directed to
`
`detecting manual user changes to setpoints which the user has previously
`
`programmed, despite later arguing that doing so is a relevantly “different”
`
`“approach” than what is claimed. (See POR, 2-3, 29-30)(see also Ex. 1027, 19:21-
`
`20:5, 35:1-39:3).
`
`II. LEVEL OF SKILL IN THE ART (POR, 4-7).
`The Board should adopt Petitioner’s proposed level of skill in the art. (Pet.,
`
`21)(Ex. 1002, ¶¶26-28). This level is consistent with that determined by the Board
`
`for similar patents in Google v. EcoFactor, IPR2021-00054, FWD, Paper 35, pp.8-
`
`10 (PTAB Apr. 18, 2022); Google v. EcoFactor, IPR2020-01504, FWD, Paper 46,
`
`pp.12-14 (PTAB Mar. 3, 2022); Google v. EcoFactor, IPR2021-00982, FWD, Paper
`
`31, pp.9-11 (PTAB Nov. 17, 2022). EcoFactor proposes the same level as in prior
`
`cases, and for which Dr. Palmer claimed to have based his assessment on both
`
`
`2 EcoFactor has confirmed that the inclusion Pages 34-38 beginning at §IV.J of the
`
`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
`
`home. (Ex. 1024, 29:20-32:6). Furthermore, Dr. Palmer claims to base his opinion
`
`on the ITC determination but his testimony contradicts that. (See POR, 5-6)(Ex.
`
`1026, 21:18-23:5)(Ex. 1023, 27:8-25).
`
`EcoFactor’s attempted distinction between the subject matter of the ’597
`
`patent and “building energy management system[s]” also fails. (See POR, 6-7). As
`
`Dr. Palmer admits, the claims of the ’597 patent encompass commercial and large-
`
`scale structures with additional controls and components. (Ex. 1027, 9:3-10:13).
`
`III. RELATIVE CREDIBILITY OF THE EXPERTS
`Throughout the POR, EcoFactor expresses various disagreements with
`
`opinions offered by Petitioner’s expert Mr. Shah. However, Mr. Shah’s testimony
`
`is far more qualified than that of EcoFactor’s expert Dr. Palmer. Mr. Shah’s
`
`testimony is based on twenty-five years of experience designing and developing
`
`HVAC control systems for Carrier Corporation—including during the relevant
`
`timeframe. (Ex. 1002, ¶¶4, 2-10)(Ex. 1003, p. 001). He is a named inventor on
`
`approximately 50 patents and applications relating to HVAC systems. (Ex. 1003, p.
`
`001)(Ex. 1002, ¶9).
`
`Dr. Palmer’s testimony, by contrast, is less credible. His experience with
`
`HVAC systems comes through failure analysis performed for insurance subrogation
`
`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)
`
`(Ex. 1026, 14:16-16:10, 19:2-5), suggesting that, even viewed charitably, he has
`
`spent no more than a year of his life analyzing HVAC system failures. He has no
`
`experience building or designing HVAC control systems. (Ex. 1024, 13:22-14:5).
`
`He has no relevant publications or patents. (Ex. 2008, pp. 3-4)(Ex. 1024, 15:8-11).
`
`And his studies relate to electrical power engineering generally, not HVAC systems
`
`in particular. (Ex. 1024, 10:9-12:8).
`
`While Petitioner does not seek exclusion of Dr. Palmer’s testimony, the Board
`
`should assess the experts’ relative experience when assessing their credibility. See,
`
`e.g., Tr. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015).
`
`EcoFactor’s specific criticisms of Mr. Shah’s opinions are addressed below.
`
`IV. CLAIM CONSTRUCTION
`EcoFactor argues that “[t]he claim terms of the ’597 patent should be given
`
`their plain and ordinary meaning.” (POR, 8). Nonetheless, EcoFactor at times seeks
`
`to impose requirements on the challenged claims which are not found in the claim
`
`language. Petitioner addresses these arguments as appropriate below.
`
`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
`
`change of inside temperature, and specifically that Ehlers ’330’s “thermal gain rate”
`
`is not a rate of change of inside temperature. (POR, 10-19). Their position is based
`
`9
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`on a distortion of Ehlers ’330’s teachings. As explained in the attached reply
`
`declaration of Mr. Shah and as summarized below, Ehlers ’330 measures rates of
`
`change of inside temperature. (Ex. 1021, ¶¶3-25)(See also Ex. 1002, ¶¶92-100).
`
`Ehlers ’330 teaches calculating the rate at which temperature inside a structure
`
`changes over time at different outside temperatures when the HVAC system is
`
`“OFF,” as illustrated in Figure 3D. (Ex. 1004, Fig. 3D, ¶0253)(Ex. 1002, ¶¶92-
`
`100)(Ex. 1021, ¶¶3-9).3 The “thermal gain rate[s]” in Figure 3D are the slopes of
`
`the various lines depicted. (Ex. 1021, ¶¶3, 8, 14)(Ex. 1002, ¶93). Ehlers ’330
`
`clearly and unequivocally uses the term “thermal gain rate” (or “rate of thermal gain”
`
`or variations thereof) to refer to the rate of change of inside temperature over time
`
`in the structure. (See, e.g., Ex. 1004, Fig. 3D, ¶0253)(Ex. 1021, ¶7)(Ex. 1002, ¶¶92-
`
`100)(See also, e.g., Ex. 1004, ¶0255)(“the rate of thermal gain per hour would be set
`
`at 3 degrees F. per hour”)(See also Ex. 1022, 175:7-176:9).
`
`Dr. Palmer in fact recognizes that “information presented in Fig. 3D of Ehlers
`
`’330 . . . relates to changes in temperature when the HVAC system is OFF,” that
`
`“the ‘thermal gain rates’ qualitatively illustrated in Fig. 3D are . . . for a building
`
`
`3 (Cf. Ex. 1001, Fig. 6B, 5:17-21)(graph of inside temperature “which assumes that
`
`the air conditioning is turned off from noon to 7 PM”))(emphasis added)(Ex.
`
`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
`
`changes in inside temperature from a specific starting temperature and for a single,
`
`specific outside temperature when the HVAC system is OFF.” (See Ex. 2008, ¶¶54,
`
`59)(See also Ex. 1022, 185:18-22). Dr. Palmer also appears to recognize that the
`
`slopes of the lines depicted in Figure 3D represent rates of change of
`
`temperature. (Ex. 2008, ¶38)(“The lines appear to reflect temperatures rather than
`
`rates of energy increase.”)(See also Ex. 1022, 173:14-20). Ehlers ’330 specifically
`
`states that these lines “plot the thermal rate of gain” and “illustrate the rate of thermal
`
`gain.” (See also Ex. 1004, ¶0253)(Ex. 1021, ¶¶3-8).
`
`Dr. Palmer nonetheless asserts that “the phrase ‘thermal gain rate’ is well
`
`understood by a POSITA to be the rate at which energy is absorbed.” (Ex. 2008,
`
`¶37). Dr. Palmer cites nothing in support. Ehlers ’330 clearly uses the term to refer
`
`to the rate of change of inside temperature over time, as Dr. Palmer appears to
`
`recognize. Ehlers ’330’s terminology is in fact similar to the ’597 patent itself,
`
`which uses the term “thermal mass” to refer to the rate of change of inside
`
`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
`
`Ehlers ’330, rather than faithfully interpret its teachings from the perspective of a
`
`POSITA.
`
`Notably, Ehlers ’330 measures and quantifies the “thermal gain rate” at
`
`various points. (See, e.g., Ex. 1004, ¶¶0253-0256, Figs. 3D-3G). While doing so,
`
`Ehlers ’330 does not describe “thermal gain rates” as an amount or rate at which
`
`“energy is absorbed” by a structure, nor does Dr. Palmer identify any such teachings
`
`separate and apart from its instruction to measure the temperature in a structure and
`
`determine the rate at which that inside temperature changes over time, as the Petition
`
`contends. (Ex. 1021, ¶¶12-13). Indeed, Dr. Palmer has admitted Ehlers ’330
`
`discloses tracking the thermal gain by tracking the inside temperature and the
`
`time. (Ex. 1022, 175:7-11).
`
`EcoFactor and Dr. Palmer thus recognize that Ehlers ’330’s Figure 3D
`
`illustrates that Ehlers the ’330 system measures rates of change of inside temperature
`
`over time. The crux of their objection appears to be their contention that Ehlers
`
`’330’s Figures 3E and 3G are purportedly inconsistent with Ehlers ’330’s Figure
`
`
`4 The ’597 patent also discloses no equations or calculations for calculating what it
`
`refers to as “thermal mass for [a] structure.” (Ex. 1001, 5:5-34)(Ex. 1027, 16:24-
`
`17:19).
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`3D’s teaching of “thermal gain rate” as a rate of change of inside temperature, and
`
`therefore, a “thermal gain rate” must be something else (though what exactly, they
`
`do not specify, nor do they explain how it could be measured). In fact, Ehlers ’330’s
`
`Figures 3E and 3G are entirely consistent with Petitioner’s and Mr. Shah’s
`
`understanding. (Ex. 1021, ¶¶11, 16-25).
`
`The “thermal gain rates” specifically graphed in Figure 3E and Figure 3G
`
`represent rates of change of inside temperature during the portion(s) of the HVAC
`
`cycle when the HVAC system is OFF. (Ex. 1021, ¶¶16-21). Ehlers ’330 does not
`
`specifically depict the “thermal gain rates” during the portions of the cycle when the
`
`HVAC system is “ON” in these Figures because during those times, the “thermal
`
`gain rates” would be “negative” due to the cooling of the system over time. (Id.).
`
`As an HVAC system cycles “ON” and “OFF,” its percentage run time (the portion
`
`of the cycle in which it is “ON”) increases or decreases to balance the thermal gain
`
`rate of the structure. (Id.) The net effect is to keep the inside temperature essentially
`
`unchanged at or near the setpoint. (Ex. 1004, ¶0254)(Ex. 1021, ¶¶16-17). In other
`
`words, the HVAC system cycles ON and OFF to effectively balance out the overall
`
`full cycle average rate of change of inside temperature at or near zero. The HVAC
`
`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
`
`rates. (Ex. 1021, ¶¶16-21).5
`
`EcoFactor and Dr. Palmer also suggest that Ehlers ’330 does not measure the
`
`“thermal gain rates” for a building when the HVAC system is “ON.” (POR, 19).
`
`The claims of the ’597 patent, however, do not require this. (Ex. 1021, ¶¶22-25)(Ex.
`
`1001).6 Nonetheless, Ehlers ’330 teaches it. This is because the “thermal gain” as
`
`
`5 A contrary interpretation is in fact, nonsensical, as EcoFactor and Dr. Palmer
`
`recognize. (See POR, 24-25). For example, Ehlers ’330 teaches with reference to
`
`Figure 3E that the system is cycling “ON” and “OFF” to maintain the temperature
`
`at or near the setpoint. (Ex. 1004, ¶0254, Fig. 3E). The thermal gain rates
`
`depicted in Figures 3E and 3G thus do not specifically illustrate the (negative) rates
`
`of change of inside temperature when the system is ON and cooling. (Ex. 1021,
`
`¶¶16, 21).
`
`6 Any suggestion that the claims require calculating predicted rates when the
`
`HVAC system is “ON” finds no support in the claim language. EcoFactor knows
`
`how to separately claim determining rates of change when the system is both “OFF
`
`and “ON” and has in fact done so in other patents. (See, e.g., Ex. 1028, claims 1,
`
`7).
`
`
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`well as the “HVAC cycle rate” are both being measured “on a continuous basis”,
`
`and thus the system is also measuring the thermal gain rate during periods when the
`
`status of the HVAC system is “ON”. (Ex. 1004, ¶0256)(Emphasis added)(Ex. 1021,
`
`¶¶22-25). Ehlers ’330 also computes and stores a “[c]omputed thermal recovery
`
`time for heating and cooling adjusted to compensate for the external temperature”
`
`and stores “[t]he average thermal recovery time per degree when heating and cooling
`
`systems are operational” (Ex. 1004, ¶¶0295, 0285)(Ex. 1021, ¶¶22-25)(Ex. 1002,
`
`¶¶94, 55, 89, 98). A POSITA would also understand from these disclosures that
`
`Ehlers ’330 computes rates of change of inside temperature when the system is
`
`“ON.” (Ex. 1021, ¶¶22-25).
`
`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
`
`claims 1, 9, and 17.7 EcoFactor presents no arguments specific to any of the
`
`
`7 EcoFactor presents its arguments in the context of independent claims 1 and 9
`
`and then asserts that “for substantially the same reasons . . . the combination . . .
`
`does not render obvious claim 17. (POR, 34). Petitioner’s arguments with respect
`
`to claims 1 and 9 apply equally to independent claim 17 as well. Petitioner
`
`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,
`
`as explained below.
`
`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
`
`inside temperature. (POR, 19-21). As the Petition explains, and is explained above
`
`under §V, Ehlers ’330 calculates rates of change of inside temperature in a building
`
`given different outside temperature conditions. (See Pet., 34-43).8
`
`EcoFactor also argues that “Ehlers ’330 is not predicting changes in inside
`
`temperature in response to changes in outside temperature.” (POR, 21). However,
`
`the very reason that Ehlers ’330 “tracks and learns about the thermal gain
`
`characteristics of the home” (Ex. 1004, ¶0253) is to be able to use that data to make
`
`predictions about the future behavior of the inside temperature in the home. (Ex.
`
`
`limitation [9e] are specific to the specific claim language therein, the language in
`
`claim 17 differs.
`
`8 EcoFactor does not dispute that it would be obvious to store inside and outside
`
`temperature measurements. (See, e.g., Ex. 1004, ¶0124, Fig. 4L)(Ex. 1022, 164:8-
`
`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
`
`system to “manage costs and comfort.” (Ex. 1004, ¶¶0252-0253)(Ex. 1021, ¶26).
`
`The Petition presented three examples of how Ehlers ’330’s thermal gain rates
`
`are used to predict changes in inside temperature (Pet., 38-42), and EcoFactor’s
`
`arguments concerning these examples are addressed in §§1-3 below.
`
`1. Example 1
`In a first example, as explained in the Petition, one way in which Ehlers ’330
`
`uses predicted rates of change is when it uses the thermal gain rate to determine a
`
`new offset temperature. (Pet., 38). Ehlers ’330 uses the “computed thermal gain
`
`rate” to “compute[] the required effective set point offset needed to keep the HVAC
`
`cycle run time at [a] specified trigger level.” (Ex. 1004, ¶0256). To do so, Ehlers
`
`’330 predicts that the thermal gain rate it computed in the past represents a speed at
`
`which temperatures inside the first location will change in response to changes in
`
`outside temperature, at the current time or at a time in the future. (Ex. 1021, ¶¶27-
`
`36).
`
`The thermal gain rate is used to predict changes in inside temperature in
`
`the context of the example described in paragraph 256 of Ehlers ’330. (Ex. 1021,
`
`¶¶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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`
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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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`