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`
`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
`____________
`
`
`ECOFACTOR, INC.’s ORAL HEARING DEMONSTRATIVES
`
`
`
`IPR2022-00538
`Patent No. 9,194,597
`In accordance with the Board’s Order – Order Setting Oral Argument (Paper
`
`19), Patent Owner EcoFactor, Inc., hereby files its oral hearing demonstratives.
`
`
`
`
`Dated: April 28, 2023
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Philip X. Wang
`
`
`
`Philip X. Wang (Reg. No. 74,621)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`rak_ecofactor@raklaw.com
`
`1
`
`
`
`
`
`
`
`IPR2022-00538
`Patent No. 9,194,597
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on April
`
`28, 2023, by filing this document through the Patent Trial and Appeal Board End to
`
`End system as well as delivering a copy via electronic mail upon the following
`
`attorneys of record for the Petitioner:
`
`Matthew A. Smith
`Elizabeth Laughton
`smith@smithbaluch.com
`laughton@smithbaluch.com
`
`
`
`
`
`
`
`/s/ Philip X. Wang
`
`
`
`Philip X. Wang (Reg. No. 74,621)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`Dated: April 28, 2023
`
`
`
`
`
`
`
`
`
`Google, LLC
`v.
`EcoFactor, Inc.
`• U.S. Patent No. 9,924,597
`IPR2022-00538
`
`EcoFactor’s Hearing Demonstratives
`May 3, 2023
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`0
`
`
`
`Instituted Grounds
`
`» Ground 1: Claims 1-24
`Obviousness over Ehlers ‘330 in view of Knowledge
`of a POSITA and Wruck
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`1
`
`
`
`Overview of Argument
`
`• Petitioner Fundamentally Misunderstands the Teachings of
`Ehlers ’330
`
`• Claims 1 and 17 Are Not Invalid
`○ Prior Art Does Not Disclose “using the stored data to predict changes in temperature
`inside the structure in response to at least changes in outside temperatures.”
`○ Prior Art Does Not Disclose “calculating … a first automated setpoint at a first time”
`○ Prior Art Does Not Disclose “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”
`
`EcoFactor, Inc.
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`IPR2022-00538 | SLIDE
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`2
`
`
`
`
`
`‘597 Patent‘597 Patent
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`IPR2022-00538 | SLIDE
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`3
`
`
`
`‘567 Patent
`
`U.S. Patent No. 8,194,597
`(“’597 Patent”)
`
`Title:
`“System, Method and Apparatus for
`Identifying Manual Inputs to and Adaptive
`Programming of a Thermostat”
`
`Issue Date:
`November 24, 2015
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`4
`
`Ex. 1001
`
`
`
`Challenged Independent Claim 1
`
`* * *
`
`Ex. 1001, col. 8:8-38.
`
`EcoFactor, Inc.
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`IPR2022-00538 | SLIDE
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`5
`
`
`
`Challenged Independent Claim 9
`
`* * *
`
`Ex. 1001, col. 8:56-9:21
`
`EcoFactor, Inc.
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`IPR2022-00538 | SLIDE
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`6
`
`
`
`Challenged Independent Claim 17
`
`* * *
`
`Ex. 1001, col. 9:40-10:34
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`IPR2022-00538 | SLIDE
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`7
`
`
`
`Ehlers ‘330
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
`
`8
`
`
`
`Ehlers ‘330
`
`U.S. Patent App. Pub. No.
`2004/0117330 (“Ehlers ‘330”)
`
`Title:
`“System and for Controlling Usage of
`a Commodity”
`
`Pub. Date:
`June 17, 2004
`
`EcoFactor, Inc.
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`IPR2022-00538 | SLIDE
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`9
`
`Ex. 1004
`
`
`
`Wruck
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`10
`
`
`
`Wruck
`
`U.S. Patent App. Pub. No.
`2005/0159846 (“Wruck”)
`
`Title:
`“Transfer Mode for HVAC System”
`
`Date:
`July 21, 2005
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
`
`11
`
`Ex. 1005
`
`
`
`Ground 1:
`Ehlers ‘330, Knowledge of a
`POSITA and Wruck Do Not Render
`Obvious Claims 1-24
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`12
`
`
`
`Petitioner Misunderstands the Teachings of Ehlers ‘330
`
`“Thermal Gain Rate” ≠ “Rate of Change in Temperature”
`
`• The “Thermal Gain Rate” Is Not The Same as a “Rate of Change
`in Temperature”
`• The phrase “thermal gain rate” is well understood by a POSITA as
`the rate at which energy is absorbed.
`• The phrase “rate of change of temperature” is well understood to
`mean the specific change of temperature over a specific time period.
`
`POR at 11; Sur-reply at 4-5.
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
`
`13
`
`
`
`Petitioner Misunderstands the Teachings of Ehlers ‘330
`Takes Fig. 3D Out of Context
`
`Left Hand Label Indicates “Indoor Setpoint”
`•
`• Requires 128 minutes for Readings
`•
`If read literally, Ehlers ‘330’s
`description would indicate that the
`thermal gain rate would be a
`continuously increasing value between
`72 and 80 (units unspecified).
`But this is not consistent with other
`discussion in Ehlers ‘330.
`
`POR at 12-13; Sur-reply at 6-7; Ex. 1004, Fig. 3D.
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
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`14
`
`
`
`Petitioner Misunderstands the Teachings of Ehlers ‘330
`Fig. 3E Provides Necessary Context
`
`•
`•
`•
`
`Left Axis labeled “HVAC Runtime”
`Right Axis labeled “Thermal Gain Rate Per Hour”
`Horizontal Axis labeled “Intervals of Time–Hour
`Intervals”
`Mr. Shah testified that
`“So whatever heat is being absorbed from
`the outside, the cooling of the HVAC
`system matches it in order to keep the
`inside temperature almost the same at the
`set point. that’s what this graph [Figure 3E]
`is showing.” Ex. 2013, 28:7-11.
`
`POR at 13-15; Sur-reply at 7-9; Ex. 1004, Fig. 3E.
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
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`15
`
`
`
`Petitioner Misunderstands the Teachings of Ehlers ‘330
`Fig. 3G Provides Necessary Context
`
`• Same labels as Fig. 3E
`•
`Fig. 3G has nearly the same thermal
`gain plot as Fig. 3E, as illustrated in
`the superposition of the two plots, but
`allows indoor temperature to change
`by up to 3 Degrees F.
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`16
`
`POR at 15-16; Sur-reply at 7-9; Ex. 1004, Fig. 3G.
`
`
`
`Petitioner Misunderstands the Teachings of Ehlers ‘330
`Figs. 3E and 3G Provide Necessary Context
`
`•
`Fig. 3G superimposed on Fig. 3E
`• Same thermal gain rates but very
`different HVAC run % rates
`• Under Petitioner’s interpretation, the
`temperature would be increasing for
`both by 1-3 degrees per hour
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`17
`
`POR at 17-18; Sur-reply at 7-9; Ex. 1004,
`Figs. 3E and 3G.
`
`
`
`Prior Art Does Not Disclose
`“using the stored data to predict changes in temperature inside the structure in
`response to at least changes in outside temperatures.”
`
`• Claim 1d:
`
`Ex. 1001, col. 8:17-19
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`18
`
`
`
`Prior Art Does Not Disclose “using the stored data to predict
`changes in temperature inside the structure in response to
`at least changes in outside temperatures.”
`
`• Petitioner continues error of conflating “thermal gain rate” with “rate of changes
`in temperature.”
`•
`But as noted, they are not the same.
`
`•
`
`The HVAC system being turned ON and functioning will not necessarily affect
`the thermal gain rate, as illustrated in Fig. 3E and Fig. 3G, discussed above,
`while it will significantly impact the rate of change of temperature.
`
`POR at 19-20.
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
`
`19
`
`
`
`Ehlers ‘330 Does Not Predict Changes in Inside Temperature
`Based on Changes in Outside Temperature
`
`• Calculating a setpoint is not a prediction, it is developing an instruction for the
`control system.
`•
`A setpoint is a prediction only insofar as one might expect that when a thermostat
`receives a setpoint it will eventually control the HVAC system to achieve that
`temperature.
`In Ehlers ‘330, the user selecting the set point as well as providing “the number of
`degrees from the set point that the customer would make available to the system
`3.08.”
`•
`Based on this, the HVAC system is operated.
`•
`Not predicting a change in inside temperature based on change in outside temperature
`but merely setting a recovery time.
`
`•
`
`POR at 21-22; Sur-reply at 15-16; Ex. 1004, ¶255.
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`IPR2022-00538 | SLIDE
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`20
`
`
`
`Ehlers ‘330 Does Not Predict Changes in Inside Temperature
`Based on Changes in Outside Temperature
`
`• Calculating a recovery time is predicting setpoint is not a prediction of inside
`temperature based on changes in outside temperature.
`•
`It is merely a calculation when the HVAC system is On and Function.
`• Ehlers ‘330 controlling inside temperature to balance occupant comfort with
`energy savings” is not a prediction of inside temperature based on changes in
`outside temperature.”
`• Mr. Shah agreed that the HVAC runtime in Figs. 3E and 3G will keep inside
`temperature flat.
`Thus, the thermal gain rate is not a prediction of how inside temperature will
`behave.
`
`•
`
`POR at 22-25; Sur-reply at 17-19.
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
`
`21
`
`
`
`Ehlers ‘330 Does Not Predict Changes in Inside Temperature
`Based on Changes in Outside Temperature
`
`• No disclosure in Ehlers ’330 of how to
`calculate ”thermal gain rate.”
`• Petitioner and Expert provide no
`support for conclusory statements
`about teachings of Ehlers ‘330.
`• At best, shows changes in
`temperature for a single, specific
`outside temperature.
`
`EcoFactor, Inc.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`IPR2022-00538 | SLIDE
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`22
`
`POR at 22-23; Ex. 1004, Fig. 3D.
`
`
`
`Petitioner’s Interpretation of Ehlers ‘330 Is Incorrect
`Under Petitioner’s Interpretation, there would be a temperature increase
`of approx. 42 degrees in one 24-hour period.
`
`POR at 23-24; Ex. 1004, Figs. 3E and 3G.
`The increase in operational runtime of the HVAC system is necessary
`to counteract the increase in thermal gain (energy absorbed by the structure)
`in order to maintain the same inside temperature consistent with the fixed setpoint.
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
`
`23
`
`
`
`Petitioner’s Expert Actually Recognizes Ehlers ‘330 Is
`Incorrect
`
`Deposition Testimony of Petitioner’s Expert,
`Mr. Rajendra Shah:
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
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`24
`
`Ex. 2013, 28:5-11
`
`
`
`Prior Art Does Not Disclose “calculating … a first automated
`setpoint at a first time.”
`
`• Claim 1e:
`
`Ex. 1001, col. 8:20-24
`
`EcoFactor, Inc.
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`
`IPR2022-00538 | SLIDE
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`25
`
`
`
`The Computations Identified in Ehlers ‘330
`Are Not Automated Setpoints”
`
`• Mr. Shah acknowledged that: “a setpoint would be a temperature
`that is set that the HVAC system is supposed to, I guess, achieve
`and/or maintain.”
`
`• But the examples identified are not automated setpoints.
`
`Ex. 2012, 47:13-20; POR at 25-26; Sur-reply at 19-20.
`
`EcoFactor, Inc.
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`
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`
`26
`
`
`
`Petitioner’s First Example Is Not An Automated Setpoint
`
`• Petitioner asserts that Ehlers ‘330 “can provide for an automated setpoint—in this
`example, the set point calculated by the system which does not increase HVAC
`run time—which can be scheduled to occur at a first time.”
`• But this ignores that Ehlers ‘330 teaches that it “computes the required effective
`set point offset needed to keep the HVAC cycle run time at the specified trigger
`level of 33%.”
`•
`But a “setpoint offset” is not an “automated setpoint.”
`•
`Petitioner fails to identify when the “first time” is calculated that is associated with this
`“set point offset.”
`
`Pet. at 44; POR 26-27; Sur-reply at 19-20; Ex. 1004, ¶256.
`
`EcoFactor, Inc.
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`27
`
`
`
`Petitioner’s Second and Third Examples Are Not Automated
`Setpoints
`
`• Petitioner asserts that the system 3.08 in Ehlers ‘330 “uses the thermal gain rates
`to predict recovery time and/or to control the ‘ramping rate at which the system
`3.08 would permit the temperature to rise within the site 1.04 as it moved from
`one set point to a higher or lower one to achieve economic benefit.’”
`• But a recovery time is not an “automated setpoint.”
`•
`A recovery time just determines when the HVAC system needs to start to reach a
`setpoint.
`
`Pet. at 44; POR 27; Sur-reply at 20; Ex. 1002, ¶ 103; Ex. 1004, ¶246.
`
`EcoFactor, Inc.
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`28
`
`
`
`Petitioner’s Second and Third Examples Are Not Automated
`Setpoints (cont.)
`
`• Mr. Shaw acknowledge in his declaration that a setpoint is already provided in
`Ehlers ‘330.
`•
`“As Ehlers ’330 explains, recovery times can be calculated in connection with
`changes in setpoints due to changes between occupancy modes.” Ex. 1002, ¶103.
`• Mr. Shah even quotes Ehlers ‘330 as describing that “The thermostat
`scheduling panel 4.36 permits the customer to select the occupancy mode
`which will be used for various time periods during the day.” Ex. 1002, ¶103
`(citing Ex. 1004, ¶ 325.)
`Further, the third example is not an automated setpoint at a first time that is
`calculated.
`
`•
`
`Pet. at 44-45; POR 27; Sur-reply at 20; Ex. 1002, ¶ 103; Ex. 1004, ¶246.
`
`EcoFactor, Inc.
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`29
`
`
`
`Prior Art Does Not Disclose
`“generating … a difference value based on comparing at least one of the an actual
`setpoints … the first automated setpoint …”
`
`• Claim 1h:
`
`Ex. 1001, col. 8:29-33
`
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`30
`
`
`
`Petitioner’s Theory Would Cover User Adjustments To A
`Previously Manual Setpoint
`
`• Claim [1h] is directed to detecting manual overrides to computer-
`calculated temperature settings.
`• Petitioner’s theory of Ehlers ‘330 is that it merely renders obvious
`detecting a user’s changes and adjustments to other user programmed
`manual setpoints.
`
`POR at 28; Sur-reply at 21-22.
`
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`31
`
`
`
`Petitioner’s Theory Is Inconsistent
`Across Limitations of Claim 1
`
`•
`
`In limitation [1e], Petitioner asserts that the ”set point offset” and
`“recovery time” in Ehlers ‘330 meet the “automated setpoints.”
`• But Petitioner does not does not allege, let alone argue, that “set point
`offset” or “recovery time” are involved in any comparison in Ehlers ‘330.
`• Ehlers ‘330 at best teaches tracking user setpoint changes and
`adjustments. Ex. 1004, ¶¶ 242-243, 268, 308, 309.
`
`POR at 28-29; Sur-reply at 21-22.
`
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`32
`
`
`
`Petitioner’s New Theory Must Be Disregarded
`
`•
`
`•
`
`•
`
`In its Reply, Petitioner asserts that that “in the precise example [of Ehlers ‘330] identified
`by Petitioner (Pet., 50-54, 26-28), the system calculates a new setpoint (to account for
`humidity) which can be based on an original setpoint provided by the user, and then
`proceeds to “learn the user’s individual preferences,” which involves making further
`changes to the calculated setpoint.” Reply at 28.
`But the Petition does not describe a new setpoint to account for humidity.
`•
`None of Petition pages cited in Reply describe humidity or cite Ehlers ‘330 ¶243.
`•
`None of the three examples applied to claim element [1e] involve humidity adjustment.
`Petitioner may not submit new evidence or argument in reply that it could have
`presented earlier, e.g., to make out a prima facie case of unpatentability.” PTAB
`Consolidated Trial Practice Guide Nov. 2019, at 73
`Sur-reply at 21-22; POR 27; Ex. 1002, ¶ 103; Ex. 1004, ¶246.
`
`EcoFactor, Inc.
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`33
`
`
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