UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2022-00538
`Patent No. 9,194,597
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`I.
`II. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSITA) ................................................................................................................. 2
`III. CREDIBILITY OF DR. PALMER ............................................................. 2
`IV. CLAIM CONSTRUCTION ......................................................................... 4
`V. PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘597
`PATENT .................................................................................................................. 4
`A. Petitioner Continues to Misunderstand the Teachings of Ehlers ‘330 That
`Are Allegedly Applicable to Limitation [1d], Which Petitioner Fails to Show Is
`Disclosed by Ehlers ’330’s “Thermal Gain” Concept ........................................... 4
`B. Claim Element [1d] - “using the stored data to predict changes in
`temperature inside the structure in response to at least changes in outside
`temperatures” ...................................................................................................... 14
`1. Petitioner’s Example 1 .............................................................................. 15
`2. Petitioner’s Example 2 .............................................................................. 16
`3. Petitioner’s Example 3 .............................................................................. 17
`C. 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” ............................. 19
`D. Claim Element [1h]: generating with the at least one computer, a difference
`value based on comparing at least one of the an 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. ....................... 21
`E. Claim [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” ...................................................................................... 22
`F. Independent Claim 17 ................................................................................... 23
`VI. CONCLUSION ........................................................................................... 24
`
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`IPR2022-00538
`Patent No. 9,194,597
`
`Exhibits
`
`Description
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 30, 2021), Dkt. 1 (Complaint)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. Aug. 3, 2021), Dkt. 30 (Joint Case Management
`Statement)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 7, 2022), Dkt. 72 (Amended Scheduling Order)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 13, 2022), Dkt. 73 (Amended Scheduling
`Order)
`Google’s Oct. 19, 2021, Invalidity Contentions in Google, LLC
`f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220 (N.D. Cal.)
`“Silicon Valley’s Home Court: Patent Trends in the Northern
`District of California.” White & Case Newsflash (Mar. 18,
`2020).
`U.S. Patent No. 10,018,371
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`April 6, 2021, Deposition Transcripts of Mr. Rajendra Shah,
`IPR2021-01218.
`337-TA-1258 International Trade Commission Investigation,
`Order No. 18 - Construing the Terms of the Asserted Claims
`October 10, 2022, Deposition Transcripts of Mr. Rajendra Shah,
`IPR2022-00538.
`October 13, 2022, Deposition Transcripts of Mr. Rajendra Shah,
`IPR2022-00473.
`Petitioner Google’s Reply in IPR2022-00473
`January 6, 2023, Deposition of Dr. John A. Palmer, IPR2022-
`00473
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`2009
`2010
`
`2011
`
`2012
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`2013
`
`2014
`2015
`
`
`
`ii
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`

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`IPR2022-00538
`Patent No. 9,194,597
`
`I.
`
`INTRODUCTION
`
`Patent Owner EcoFactor submits this sur-reply in response to Petitioner’s
`
`Reply. Petitioner fails to demonstrate that the challenged claims 1-24 of U.S. Patent
`
`No. 9,194,597 (the ‘597 patent) (Ex. 1001) under the one ground of unpatentability
`
`set forth. Petitioner and its expert maintain their fundamental misunderstanding of
`
`the Ehlers ‘330 reference and its teachings regarding thermal gain. As noted in the
`
`Patent Owner Response (“POR”), thermal gain is the addition of thermal heat, not
`
`the increase of an inside temperature. Thus, the Ehlers ‘330 reference and its system
`
`do not teach the claimed invention of the ‘597 patent. Petitioner and its expert ignore
`
`this, and instead use improper hindsight to create the claims of the ‘597 patent out
`
`of the prior art.
`
`Petitioner and its expert further fail to show that the combination of Ehlers
`
`‘330, the knowledge of a person of ordinary skill in the art (“POSITA”), and Wruck
`
`teaches calculating automated setpoints. Ehlers ‘330 shows ramping and recovery
`
`time, but not calculating “automated setpoints at a first time” as claimed by the ‘597
`
`patent.
`
`Finally, Petitioners mapping of various claim limitations is inconsistent.
`
`Petitioner points to certain features of Ehlers ‘330 as being the “automated setpoint
`
`at a first time” for claim element [1e], but points to entirely different features of
`
`Ehlers ‘330 as being the “setpoint at the first time” for claim element [1h].
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`
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`1
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`IPR2022-00538
`Patent No. 9,194,597
`II. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSITA)
`The Board should adopt Patent Owner’s proposed level of skill in the art. POR
`
`at 4-7; Ex. 2008, ¶¶26-28. Petitioner asserts that Dr. Palmer’s opinions are not based
`
`on the ITC determination. Reply at 8. But this is wrong, as Dr. Palmer specifically
`
`indicated that the ITC determination “informed” and “affirmed [his] position.” Ex.
`
`1026, 22:7-17. Moreover, this is in stark contrast to Petitioner’s expert, Mr. Shah,
`
`who did not consider the ITC determination because Petitioner did not inform him
`
`of it. Ex. 2010, 11:13-12:19.
`
`III. CREDIBILITY OF DR. PALMER
`
`While Petitioner does not seek exclusion of Dr. Palmer’s testimony, the Reply
`
`does argue that Mr. Shah’s testimony is more credible than Dr. Palmer. Reply at 8-
`
`9. But Petitioner cannot meaningfully challenge Dr. Palmer’s expertise in HVAC
`
`systems. Dr. Palmer’s experience with thermal modeling for cooling systems makes
`
`him particularly well suited for this proceeding. For example, Dr. Palmer is co-
`
`inventor of U.S. Patent No. 5,838,881, titled “System and method for mitigation of
`
`streaming electrification in power transformers by intelligent cooling system
`
`control,” which claims a “system comprising a power transformer having a cooling
`
`system” and which issued in November 1998. Ex. 2008 at 3. In his patent, Dr. Palmer
`
`describes improvements to “thermal models” applied to “cooling systems,” which
`
`enable heat exchangers and pumps to provide cooling rates at a lower flow rate. Dr.
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`
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`2
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`IPR2022-00538
`Patent No. 9,194,597
`Palmer’s expertise with HVAC systems, and the thermal modeling thereof, is not
`
`subject to question.
`
`Moreover, Dr. Palmer’s experience in failure analysis of electromechanical
`
`systems is not, as Petitioner appears to suggest, any less relevant than the experience
`
`of Petitioner’s expert, Mr. Shah. During failure analysis, Dr. Palmer is required to
`
`determine why a particular system, such as an HVAC system and systems that are
`
`connected to it and that control it, did not work and how it should have worked. This
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`involves a detailed study of the HVAC system that was designed, how it failed, and
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`how it could or should have been designed and/or controlled. This also includes
`
`understanding the surrounding systems and operating environments of the HVAC
`
`system.
`
`Moreover, contrary to the Reply, electrical power engineering focuses heavily
`
`on detailed aspects of HVAC systems, including thermal modeling. Reply at 9.
`
`HVAC systems are powered by electricity, and electric power systems in buildings
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`will necessarily interact with HVAC systems and controllers. As reflected in Dr.
`
`Palmer’s patent, research, and experience, Dr. Palmer’s work in electrical power
`
`engineering has involved computational thermal modeling for efficient power
`
`delivery to HVAC systems to prevent equipment degradation or failure.
`
`Thus, Dr. Palmer’s experience, and his opinions in this matter, are equally
`
`valuable as those of Mr. Shah.
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`
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`3
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`IPR2022-00538
`Patent No. 9,194,597
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`IV. CLAIM CONSTRUCTION
`
`The claim terms of the ‘597 patent should be given their plain and ordinary
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`meaning. POR at 8. Petitioner’s assertion that “EcoFactor at times seeks to impose
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`requirements on the claims which are not found in the claim language” is incorrect
`
`as discussed below. Reply at 9.
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`V.
`
`PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘597
`PATENT
`Petitioner’ Reply does not demonstrate that the combination of Ehlers ‘330,
`
`the knowledge of a POSITA, and Wruck, renders obvious claims 1-24 of the ‘597
`
`patent.
`
`A.
`
`Petitioner Continues to Misunderstand the Teachings of Ehlers
`‘330 That Are Allegedly Applicable to Limitation [1d], Which
`Petitioner Fails to Show Is Disclosed by Ehlers ’330’s “Thermal
`Gain” Concept
`Petitioner argues that “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. Reply at 9. But this
`
`argument continues to be based on impermissible hindsight, because it re-interprets
`
`the “thermal gain rate” in Ehlers ’330—contradicting the plain meaning of this term
`
`and its consistent use throughout the text of Ehlers to refer to a rate of heat
`
`absorption that can, at most, influence the inside temperature, but that is a different
`
`mathematical concept from a rate of change in temperature—to produce something
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`that resembles the challenged claims and their “predicted rates of change in
`
`
`
`4
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`IPR2022-00538
`Patent No. 9,194,597
`temperature.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553
`
`(Fed. Cir. 1983) (“[i]t is difficult but necessary that the decision maker forget what
`
`he or she has been taught … about the claimed invention and cast the mind back to
`
`the time the invention was made (often as here many years), to occupy the mind of
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`one skilled in the art.”).
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`Moreover, Petitioner identifies one line in Ehlers ‘330 that allegedly supports
`
`its position, while ignoring the remainder of the teachings of Ehlers ‘330 that directly
`
`contradicts its position. Petitioner also ignores its own expert’s admission that his
`
`interpretation of the phrase “thermal gain” may not have the meaning that he
`
`attributes to it in applying the language of Ehlers ‘330, saying “The thermal gain rate
`
`[] depends on how you interpret the language.” Ex. 2013, at 27:13-14. This is in
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`contrast to Dr. Palmer’s explicit testimony that the phrase “thermal gain rate” is well
`
`understood by a POSITA to be the rate at which energy is absorbed. Ex. 2008, ¶37.
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`Only Dr. Palmer’s opinion is supported by the consistent and repeated disclosures
`
`in Ehlers ‘330, all of which confirm that the “thermal gain rate” is not, and cannot
`
`be, a “predicted rate of change in temperature.” Patent Owner’s Sur-Reply
`
`arguments in this Section V.A are hereby incorporated by reference as applicable to
`
`claim element [1e] below and as confirming that Petitioners fail to show [1e] in the
`
`prior art.
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`IPR2022-00538
`Patent No. 9,194,597
`Petitioner ignores the thermal gain teachings of Figures 3D, 3E, and 3G of
`
`Ehlers ’330 that directly contradict Petitioner’s interpretation of “thermal gain rate”
`
`as a “rate of change in temperature.” The thermal gain rate does not correspond to
`
`the rate of change in indoor temperature, as they are different mathematical values
`
`that describe different things. Figures 3E and 3G each illustrate that the “thermal
`
`gain rate” is a rate of heat absorption that remains positive during all 24 hours of the
`
`day. As depicted in Figure 3E, the thermal gain rate (depicted as a dashed curve)
`
`remains a positive value between 1 and 4 even while the rate of change in indoor
`
`temperature is flat or negative because of the cooling provided by the HVAC system,
`
`which operates in accordance with the “HVAC runtime percentage” depicted as the
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`solid curve. This is consistent with the plain meaning of thermal gain as a rate of
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`heat absorption that can influence the inside temperature but is by no means equal
`
`to the rate of change in inside temperature, which will often be a negative value.
`
`Dr. Palmer explains that, if the Board adopts the interpretation of “thermal
`
`gain rate” to mean rate of change in indoor temperature, then the temperature would
`
`be increasing at a rate of 1 to 4 degrees per hour continuously for an entire 24 hour
`
`period according to Figures 3E and 3G. This would result in an indoor temperature
`
`of well over 100 degrees, despite the HVAC’s runtime percentage. This would be
`
`nonsensical to a POSA in view of the occupants’ need for comfort and the disclosure
`
`in Figures 3E and 3G that the HVAC system has a runtime percentage exceeding
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`
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`6
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`IPR2022-00538
`Patent No. 9,194,597
`50-80% during the afternoons to maintain the inside temperature at or below the
`
`user-defined setpoint. By contrast, the thermal gain rate is exactly what a POSA
`
`would understand it to be, namely a rate of heat absorption that can, at most,
`
`influence the rate of change in indoor temperature, but that is often quite different
`
`from the rate of change in temperature. These figures, and their accompanying text,
`
`foreclose any interpretation of “thermal gain” in Ehlers ’330 as referring to the rate
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`of change in indoor temperature.
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`To defend their interpretation, Petitioner argues that, with respect to Figures
`
`3E and 3G (reproduced below), “Ehlers ’330 does not specifically depict the
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`‘thermal gain rates’ during the portions of the cycle when the HVAC system is ‘ON’
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`in these Figures because during those times, the ‘thermal gain rates’ would be
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`‘negative’ due to the cooling of the system over time.” Reply at 13. That is clearly
`
`false, as Figures 3E and 3G depict a 24-hour period with an HVAC Run percentage
`
`reflecting that the HVAC system was ON for 50-80% of the time throughout the
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`period that the thermal gain rate was a positive number between 3 and 4. And indeed,
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`there is no disclosure in Figures 3E and 3G of a negative thermal gain rate, because
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`the thermal gain rate remains positive even when the cooling system turns on to
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`produce a rate of change in inside temperature that is negative.
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`
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`7
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`IPR2022-00538
`Patent No. 9,194,597
`
`Simply put, Figures 3D, 3E, and 3G only disclose a positive thermal gain. See Ex.
`
`
`
`2008, ¶41.
`
`Petitioner’s conclusions are clearly incorrect and are not supported by the
`
`testimony of Mr. Shah, who agreed that in the system of Ehlers ’330, the HVAC
`
`system turns on to “keep the inside temperature almost the same as the setpoint,”
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`which confirms that the flat or near-zero rate of change in inside temperature does
`
`not resemble the thermal gain rates—which are always positive integers ranging
`
`between 1 and 4 in the disclosures of Ehlers. The thermal gain is not a rate of
`
`temperature change because Ehlers ‘330 expressly states that “it should be noted
`
`here that the set point of the system 3.08 was set at a fixed point for the entire day
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`and the use of humidity sensing and control of humidity levels were not introduced
`
`into the illustration so that the graphical plots depict a normal home with a normal
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`HVAC control thermostat.” Ex. 1004, ¶254. Mr. Shah admitted that this is the
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`correct interpretation of Ehlers ‘330, saying “So whatever heat is being absorbed
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`
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`8
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`IPR2022-00538
`Patent No. 9,194,597
`from the outside, the cooling of the HVAC system matches it in order to keep the
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`inside temperature almost the same as the set point. That’s what this graph is
`
`showing.” Ex. 2013, at 28:7-11. But such an interpretation is not consistent with
`
`Mr. Shah’s opinion that thermal gain rate is the same as rate of change of
`
`temperature.
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`Petitioner also asserts that “the ‘thermal gain’ as 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.’” Reply at 14-15. This argument is new and should be disregarded. It also
`
`contradicts Petitioner’s theory that “It would be apparent to a POSA reviewing
`
`Figure 3D that during the period in which the above-depicted thermal gain rates are
`
`recorded, the HVAC system is OFF and is not working to actively cool the home to
`
`maintain the setpoint.” Pet. at 41-42. In any event, even if the HVAC were ON
`
`during data gathering, the thermal gain rate would still not correspond to the rate of
`
`change in inside temperature, as they are simply different mathematical values that
`
`describe different things. Petitioner’s belated argument contradicts its theory that the
`
`only teaching of measuring thermal gain is in relation to Fig. 3D, which Petitioner
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`and Mr. Shah both admit depicts when the HVAC system is OFF. Pet. at 36; Ex.
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`1002, ¶93.
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`
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`9
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`IPR2022-00538
`Patent No. 9,194,597
`Petitioner attempts to avoid this by asserting there is no requirement in the
`
`claim language to calculate predicted rates of change when the HVAC system in
`
`ON. Reply at 14, fn. 6. But EcoFactor has never argued that. EcoFactor argues that
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`the “thermal gain rate” in Ehlers ‘330 is not a rate of change in temperature, and thus
`
`is not calculating “predicted changes in temperature inside the structure in response
`
`to at least changes in outside temperatures.” Patent Owner’s Reply (“POR”) at 19-
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`25. And, in response to Petitioner’s theory that the thermal gain rate is a rate of
`
`change in temperature (despite the fact that it consistently fails to align with a flat or
`
`negative rate of change in indoor temperature), EcoFactor has simply pointed out
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`that Ehlers does not disclose a thermal gain that is ever negative.
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`In sum, Petitioner cannot explain away Figure 3E or Figure 3G, both of which
`
`are also consistent with the text accompanying Figure 3D, which similarly discloses
`
`that the thermal gain rate is always a positive integer value between 1 and 4.
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`Petitioner’s only response is that Figure 3D itself, viewed in total isolation, illustrates
`
`temperature data and therefore must show rates of change in temperature. Reply at
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`11. Because Figure 3D appears to show an “indoor setpoint” on the y axis (which
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`Petitioner improperly conflates with the indoor temperature), Petitioner alleges that
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`“EcoFactor and Dr. Palmer thus recognize that Ehlers ’330’s Figure 3D illustrates
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`that the system measures rates of change of inside temperature over time.” Reply at
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`
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`10
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`IPR2022-00538
`Patent No. 9,194,597
`12. This is incorrect. Dr. Palmer and EcoFactor have been very clear that Figure 3D
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`does not illustrate anything of the sort.
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`Although Ehlers ’330 never expressly states any of this, Petitioner’s theory of
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`Figure 3D requires that a POSA interpret it as follows: first, the HVAC system must
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`be turned “OFF”; next, the home’s inside temperature is measured at regular
`
`intervals and is permitted to rise from 72 degrees to the “indoor setpoint” values
`
`shown in the graph (e.g., up to 80 degrees); next, this process is repeated for every
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`single initial indoor temperature setpoint, every day, regardless of the outside
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`temperature that day; the “setpoint” values in the y axis are interpreted not as
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`setpoints, but as temperatures; and finally, sufficient data is obtained to describe the
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`learned thermal gain characteristics of the structure. Indeed, Petitioner’s expert Mr.
`
`Shah specifically states that “It would be apparent to a POSA reviewing Figure 3D
`
`that during the period in which the above-depicted thermal gain rates are recorded,
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`the HVAC system is OFF and is not working to actively cool the home to maintain
`
`the setpoint.” Ex. 1002, ¶92. Thus, Petitioner’s theory requires that every
`
`homeowner consent to months of data gathering where the HVAC system is turned
`
`OFF despite outside temperatures as high as 99 degrees Fahrenheit. This is
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`nonsensical, and EcoFactor and Dr. Palmer have simply pointed out flaws in this
`
`theory.
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`11
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`IPR2022-00538
`Patent No. 9,194,597
`This is also contrary to Petitioner’s own arguments regarding the motivation
`
`to combine Schurr and Ehlers ‘330 in IPR2022-00473. In challenging Dr. Palmer,
`
`Petitioner questioned him about Figure 3D, and he agreed that Figure 3D only shows
`
`a maximum indoor setpoint of 80 degrees—while also explaining that Figures 3E
`
`and 3G illustrate that the proposed data gathering approach of Petitioner’s theory
`
`would require allowing the indoor temperature to rise much higher than the 80
`
`degrees shown in the graph, as the HVAC system cannot be turned ON when thermal
`
`gain is being measured. Petitioner asserts that Dr. Palmer recognized “occupants
`
`would not have to endure 90+F indoor temperatures to gather data.” Ex. 2015,
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`Petitioner Google’s Reply in IPR2022-00473, at 18-19.1 To support this statement,
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`Petitioner relied on Dr. Palmer’s testimony that Fig. 3D does not “show that it is
`
`over 90 degrees Fahrenheit inside the structure at any point.” Ex. 2015, 29:10-30:6.
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`This is not an “admission”; it is simply a true statement that the y axis in Figure 3D
`
`does not show values greater than 80. But temperature values greater than 80 would
`
`necessarily result from adopting Petitioner’s interpretation of the thermal gain rates
`
`in Ehlers ’330 (which are positive integer values ranging from 1 to 4) as
`
`corresponding to the rate of change in inside temperature. Indeed, Petitioner states
`
`that the “rate of changes in temperature inside the structure over time is the slope
`
`of the lines depicted in Figure 3D, over a particular period of time” Pet. at 35. When
`
`
`1 All emphasis in original unless otherwise stated.
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`
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`12
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`IPR2022-00538
`Patent No. 9,194,597
`the HVAC system is turned off, the inside temperature would increase well above
`
`80 degrees, making occupants extremely uncomfortable.
`
`
`Thus, Dr. Palmer’s testimony that Fig. 3D does not “show that it is over 90 degrees
`
`Fahrenheit inside the structure at any point” does not support Petitioner’s theories,
`
`but instead supports EcoFactor’s rebuttal. Ex. 2015, 29:10-30:6.
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`Moreover, Petitioner originally argued that Fig. 3D shows measured inside
`
`temperature (Pet. at 35) but now apparently agrees that Fig. 3D it does. Ex. 2014, at
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`18-19. Petitioner’s attempts to interpret Fig. 3D in contradictory manners depending
`
`upon the argument it is making shows that its position is erroneous.
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`
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`13
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`IPR2022-00538
`Patent No. 9,194,597
`B. Claim Element [1d] - “using the stored data to predict changes in
`temperature inside the structure in response to at least changes in
`outside temperatures”
`Patent Owner’s Sur-Reply arguments in Section V.A above are incorporated
`
`by reference herein as applicable to claim element [1d]. Petitioner wrongly asserts
`
`that “Ehlers ’330 calculates rates of change of inside temperature in a building given
`
`different outside temperature conditions.” with respect to claim element [1d].2 Reply
`
`at 16. This is incorrect, as noted above, because Petitioner and Mr. Shah err in their
`
`assertion that “thermal gain rate [] represents a rate of change in temperatures inside
`
`the structure,” as discussed in detail above. POR at 19.
`
`Petitioner continues to argue that there are “three examples of how Ehlers
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`’330’s thermal gain rates are used to predict changes in inside temperature.” Reply
`
`at 17. But as noted in the POR and below, none of these arguments are correct
`
`because, as noted above, the thermal gain rate in Ehlers ‘330 does not represent a
`
`rate of change in temperatures inside the structure. Further, Petitioner’s three
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`examples are all incorrect as set forth below.
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`
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`
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`2 The parties agree that the arguments applicable to claim 1 apply equally to claim
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`8. POR at 34; Reply at 15, fn. 7.
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`14
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`IPR2022-00538
`Patent No. 9,194,597
`
`1.
`
`Petitioner’s Example 1
`
`Petitioner argues that the first example of when “Ehlers ’330 uses predicted
`
`rates of change is when it uses the thermal gain rate to determine a new offset
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`temperature.” Reply at 17. Petitioner then cites to ¶256 of Ehlers ‘330 in support of
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`this statement. Id. at 17-18. But ¶256 of Ehlers ‘330 does not disclose that. What
`
`Ehlers ‘330 does disclose at ¶256 is that when the run time of 33% is reached, “the
`
`system will have the option, based on control parameters set in the system by the
`
`customer or user or any other controlling entity, to exceed the cycle run-time trigger
`
`level or exceed the allowed temperature”. Ex. 1004, ¶256. There is no mention of
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`computing a new setpoint. Tellingly, Petitioner does not quote any such language in
`
`Ehlers ‘330.
`
`As noted above, and in the POR, a thermal gain rate is not a change in inside
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`temperature based on changes in outside temperature. POR at 19-25. Moreover,
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`Petitioner’s arguments that Ehlers ‘330 thermal gain rates are predicted thermal gain
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`rates are inaccurate. Petitioner asserts that “with reference to Figure 3D, given an
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`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 will change at about 1 degree F per hour when the outside temperature
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`is 77 degrees F.” Reply at 18-19. But this is not disclosed in Ehlers ’330, as the
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`quoted portion of the reference indicates the indoor setpoint is 72 degrees F, meaning
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`the HVAC system will prevent the inside temperature from rising above 72 degrees
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`F.
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`Even if “setpoint” shown on the y axis of Figure 3D is wrongly interpreted as
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`equivalent to “temperature,” it does not matter because the inside temperature never
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`matches the slopes of the lines in Figure 3D. Thus, it would be clear to a POSITA
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`that the slopes of those lines are not predictions about indoor temperature.
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`Petitioner relies upon Mr. Shah statement that “explains, Ehlers ’330 uses the
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`learned thermal gain rates to predict that a 33% run time will be maintained if the
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`setpoint is allowed to change to 74 degrees F. This is because if the inside
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`temperature changes by, for example, 2.7 degrees F/hour while the system is OFF,
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`then the system need only run for 33% of the time to recover the indoor temperature
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`to the original setpoint.” Reply at 19. But nothing here or in Ehlers ‘330 describes a
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`new setpoint. Instead, it only describes how much the HVAC system will run up to
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`the 33% limit. And as noted previously, Ehlers ‘330 only describes letting the HVAC
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`run-time exceed 33% or letting the temperature exceed the setpoint. Ex. 1004, ¶256.
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`Neither of these is a new, calculated setpoint.
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`2.
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`Petitioner’s Example 2
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`Petitioner’s second example involves recovery times. Reply at 20. But this is
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`incorrect, the system is not predicting a change in inside temperature based on the
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`change in outside temperatures, but rather is merely setting a recovery time when
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`the HVAC system is ON and functional. POR at 22.
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`3.
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`Petitioner’s Example 3
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`Petitioner’s third example is where “Ehlers ‘330 uses thermal gain rates to
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`control inside temperature to balance occupant comfort with energy savings.” Pet.
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`at 41. But in merely restating the arguments in the Petition, Petitioner never
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`addresses EcoFactor’s arguments that the thermal gain rates in Ehlers ‘330 are not
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`used to predict changes in inside temperatures because “the user select[s] the set
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`point as well as providing ‘the number of degrees from the set point that the customer
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`would make available to the system 3.08.’” POR at 21 (citing Ex. 1004, ¶0255).
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`On this point, Petitioner states, with no support, that “Ehlers ’330 also uses
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`data such as that depicted in Figure 3D to compute, for example, the information
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`depicted in Figures 3E and 3G.” Reply at 22 (citing Ex. 1004, Figs. 3E, 3G). But
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`again, while the thermal gain rates depicted in Figures 3E and 3G may be consistent
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`with the rates depicted in Figure 3D, they are not reflective or predictive of the rate
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`of change in inside temperature. The HVAC runtime percentage (dashed curve in
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`Figures 3E and 3G) confirms the inside temperature will be flat or negative thanks
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`to the operation of the HVAC system, and Mr. Shah expressly agreed that the indoor
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`temperature will be maintained at the indoor setpoint. This confirms the thermal gain
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`rate is not a prediction of how the inside temperature will behave. As the POR
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`explained, the increase in operational runtime of the HVAC system in Ehlers ‘330
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`is necessary to counteract the increase in thermal gain (energy absorbed by the
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`structure) to maintain the inside temperature at or around the fixed setpoint
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`temperature. POR at 22-25.
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`Further, Figs. 3E and 3G (shown below) depict thermal gain rates that are
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`never below zero.
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`Petitioner fails to address that the system in Ehlers ‘330 would see a temperature
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`increase of approximately 42 degrees in one 24-hour period despite the HVAC
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`system operating continuously. POR at 22-25.
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`Petitioner states that “EcoFactor and Dr. Palmer criticize Ehlers ’330 for not
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`saying more regarding how to calculate thermal gain rates.” Reply at 23. Petitioner
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`then argues Ehlers ‘330 provides more information than the ‘597 patent. Id. But that
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`was never EcoFactor’s argument. Ehlers ‘330 does not teach or describe the
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`elements Petitioner asserts it does. Petitioner and its expert ignore ambiguities in
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`Ehlers ‘330 and instead just assume it teaches what they want. This is fatal to the
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`Petition.
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`C. 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”
`Petitioner and Mr. Shah continue to rely on the three examples of automated
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`setpoints alleged disclosed in Ehlers ‘330. Reply at 24. But as noted above for the
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`first example, when the run time of 33% is reached, “the system will have the option,
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`based on control parameters set in the system by the customer or user or any other
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`controlling entity, to exceed the cycle run-time trigger level or exceed the allowed
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`temperature”. Ex. 1004, ¶256. There is no mention of computing a new setpoint
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`beyond the 33%, and Petitioner identifies none.
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`Petitioner then takes statements by Dr. Palmer out of context, ignoring that
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`the thermal gain rate is used with a user specified HVAC cycle runtime. Ex. 2008,
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`¶57. Petitioner’s citations to Dr. Palmer’s deposition testimony are similarly flawed.
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`When asked about a hypothetical “instance in which the original set point is set by
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`the user but the computer calculates the magnitude of the offset to be applied to that
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`set point?”, Dr. Palmer only responded “That could potentially be an automated set
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`poin