`
`
`Shamita Etienne-Cummings (CA Bar No. 202090)
`Allen & Overy LLP
`1101 New York Avenue, NW
`Washington, DC 20005
`Telephone: (202) 683-3800
`Email: shamita.etienne@allenovery.com
`
`Bijal V. Vakil (CA Bar No. 192878)
`Allen & Overy LLP
`550 High Street
`Palo Alto, CA 94301
`Telephone: (650) 388-1650
`Email: bijal.vakil@allenovery.com
`
`Attorneys for Plaintiff Google LLC
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`
`ECOFACTOR, INC.,
`
`
`Plaintiff,
`
`
`Defendant.
`
`
`
`Case No. 4:21-cv-03220-HSG
`
`GOOGLE’S DISCLOSURE OF
`ASSERTED CLAIMS AND
`INVALIDITY CONTENTIONS
`
`JURY TRIAL DEMANDED
`
`
`
`
`
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`
`GOOGLE LLC,
`
`
`
`v.
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`INTRODUCTION
`Pursuant to the August 11, 2021 Scheduling Orders in their respective cases, Google LLC
`(“Google”) provides the Disclosure of Asserted Claims and Invalidity Contentions (“Invalidity
`Contentions”) to EcoFactor, Inc. (“EcoFactor”) for the following patents (“Asserted Patents”) and
`claims (“Asserted Claims”) identified as asserted in EcoFactor’s Disclosure of Asserted Claims
`and Infringement Contentions to Google served on August 24, 2021 (“Infringement
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 1
`
`

`

`
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`Contentions”)1:
` U.S. Patent No. 8,740,100 (“’100 Patent”) – Claims 1-16 (“’100 Asserted Claims”) 2
` U.S. Patent No. 8,751,186 (“’186 Patent”) – Claims 1-13 (“’186 Asserted Claims”)
` U.S. Patent No. 9,194,597 (“’597 Patent”) – Claims 1-24 (“’597 Asserted Claims”)3
` U.S. Patent No. 10,584,890 (“’890 Patent”) – Claims 1-17 (“’890 Asserted Claims”)
`Google addresses the invalidity of the Asserted Claims and concludes with a description
`of their document productions and identification of additional reservations and explanations.
`Nothing in these contentions limit Google’s right to select defenses for trial.
`
`
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`These Invalidity Contentions use the acronym “POSITA” to refer to a person having
`ordinary skill in the art to which the claimed inventions pertain. A POSITA at the time of the
`alleged invention of the asserted patents would have had a (1) Bachelor’s degree in engineering,
`computer science, or a comparable field of study, and (2) at least five years of (i) professional
`experience in building energy management and controls, or (ii) relevant industry experience.
`Additional relevant industry experience may compensate for lack of formal education or vice
`versa.4
`
`
`
`PRIORITY DATE OF THE ASSERTED PATENTS AND CLAIMS
`EcoFactor asserts the following priority dates for all Asserted Claims in its August 24,
`2021 Infringement Contentions:
`
`
`1 Based on EcoFactor’s assertions, the Asserted Patents are governed by the pre-AIA statutory
`framework, as the applications were filed before March 16, 2013. Google reserves the right to
`dispute the effective filing dates of the Asserted Patents, and whether they are governed by the
`pre- or post-AIA statutory framework. Google also reserves the right to challenge the sufficiency
`of EcoFactor’s infringement contentions.
`2 In its infringement contentions filed on August 24, 2021, Ecofactor fails to properly assert
`infringement of the ’100 Patent. The claim chart accompanying the pleading did not include the
`asserted claims of the ’100 Patent. See 8/24/21 Infringement Contentions, Exhibit 2. Although
`Google provided an opportunity to supplemenent its infringement contentions, Ecofactor failed to
`completely cure the defects. See 10/05/2021 Updated Charts, Exhibit 2.
`3 In its infringement contentions filed on August 24, 2021, Ecofactor fails to properly assert
`infringement of the ’597 Patent. The claim chart accompanying the pleading did not include the
`asserted claims of the ’597 Patent. See 8/24/21 Infringement Contentions, Exhibit 6.
`4 Google reserves the right to amend or modify this based on EcoFactor’s positions.
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 2
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`
`’100 Priority Date: May 11, 2009
`
`’186 Priority Date: September 17, 2007
`
`’597 Priority Date: May 12, 2009
`
`’890 Priority Date: May 26, 2010
`It is EcoFactor’s burden to show entitlement to its asserted priority dates, and Google
`maintains that EcoFactor fails to meet that burden. EcoFactor has not alleged or produced any
`evidence to support earlier dates of conception and actual reduction to practice.
`As an example, the ’186 patent is not entitled to claim the benefit of the filing date of any
`previously filed applications in its family, because those previously filed applications are directed
`to ineligible subject matter under 35 U.S.C. § 101 and applicable case law authority. In addition,
`those previously filed applications do not provide written description support under § 112 for the
`limitations relating to “receiving”, “storing” data, and then “calculating” and “predicting” using
`that data to determine whether “pre-cooling” is appropriate based on those data.
`As another example, the ‘’597 patent is not entitled to claim the benefit of the filing date
`of any previously filed applications in its family, because those previously filed applications are
`directed to ineligible subject matter under 35 U.S.C. § 101 and applicable case law authority.
`As another example, the ’100 patent is not entitled to claim the benefit of the filing date of
`any previously filed applications in its family, because those previously filed applications are
`directed to ineligible subject matter under 35 U.S.C. § 101 and applicable case law authority.
`As another example, the ’890 patent is not entitled to claim the benefit of the filing date of
`any previously filed applications in its family, because those previously filed applications are
`directed to ineligible subject matter under 35 U.S.C. § 101 and applicable case law authority. In
`addition, the ’890 patent is not entitled to claim the benefit of the filing date of a chain of
`applications, as shown below:
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
`
`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 3
`
`

`

`
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`The ’890 patent cannot claim the benefit of the U.S. App. Ser. No. 14/491,554 (“the ’554
`application”), filed on September 19, 2014, because several limitations of Claim 1 of the ’890
`patent do not have written description support in the ’554 application.5
`
` OVERVIEW OF GOOGLE’S INVALIDITY CONTENTIONS
`The grounds for invalidity under 35 U.S.C. §§ 101, 102, 103, and 112, respectively, are
`set forth below in Sections V through VIII. With regard to the prior art invalidating the asserted
`claims under 35 U.S.C. §§ 102 and 103, Google includes here charts contained in Exhibits A and
`B. The charts disclosed in Exhibit A (A-1 through A-43) demonstrate, on a claim-by-claim basis
`how individual prior art publications or systems disclose the limitations of the asserted claims.
`The charts disclosed in Exhibit B (B-1 through B-17) are each specific to a limitation in one or
`more of the asserted claims. The references in Exhibits A and B may disclose elements of the
`Asserted Claims explicitly or inherently. The references in Exhibits A and B may also be relied
`upon to show the state of the art at the relevant time and/or that elements of the Asserted Claims,
`or any Asserted Claim as a whole, would have been obvious to a person having ordinary skill in
`the art at the time of the alleged invention. Google provides obviousness combinations drawn
`from Exhibit B in the alternative to Google’s anticipation contentions, which should not be
`construed as suggesting that any reference included in the combinations is not by itself
`anticipatory. Google is currently unaware of the extent, if any, to which EcoFactor will contend
`that limitations of the Asserted Claims are not disclosed in the art identified by Google as
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`5 Because the ’890 patent is not entitled to the benefit of the filing date of the ’554 application, it
`is an AIA patent, and its effective filing date can be no earlier than June 7, 2017. For this reason,
`the “Quam,”, “Modi,” and “Frenz” references which will be discussed in Section VIII, qualify as
`prior art under post-AIA 35 U.S.C. § 102.
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 4
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`

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`
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`anticipatory. To the extent that an issue arises with respect to any such limitation, Google
`reserves the right to identify other references and combinations that may make obvious the
`addition of the allegedly missing limitation, including those references identified in Exhibit B as
`disclosing specific claim limitations.
`Moreover, depending on EcoFactor’s proposed claim constructions, various references
`discussed in Exhibits A and B may be of greater or lesser relevance, and different combinations
`of these references may be implicated. Given Google’s uncertainty regarding how EcoFactor will
`contend the claims apply, the discussion of the different references in Exhibits A and B may
`reflect alternative applications of the prior art against the Asserted Claims. As such, the
`comments on one item of prior art in one of the charts in Exhibits A or B should not be construed
`as necessarily applying to any of the other charts or prior art discussed in Exhibits A or B.
`Google provides pinpoint citations to exemplary portions of the prior art describing the manner in
`which the prior art references meet the claim limitations. Such citations, however, should not be
`construed to mean that other portions of the prior art references are not relevant to the invalidity
`of the claims. Google specifically reserves the right to rely on the entirety of any or all of the
`prior art references—whether charted or not charted—as a basis for asserting invalidity of the
`Asserted Claims and/or as necessary to supplement its Invalidity Contentions with additional
`citations and evidence.
`
`A.
`Anticipation
`Based on Google’s understanding of EcoFactor’s Infringement Contentions, at least one
`or more Asserted Claims are invalid as anticipated under 35 U.S.C. § 102 in view of the prior art
`references identified and discussed in Exhibit A, as well as any methods or systems that embody
`the concepts disclosed in those references. Exhibit A is a series of charts, numbered A-1 through
`A-43, that identifies specific examples of where each claim limitation is found in a particular
`reference.
`Table of Reference-Specific Charts
`Chart
`Reference (Short Name)
`A-1
`Ehlers ’330
`A-2
`McLellan
`
`Asserted Patent
`’100
`’100
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 5
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`

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`Reference (Short Name)
`Schurr
`Chen – Demand Response
`Hansen
`Honeywell W7753
`Jayadev
`Webster-Technology Assessment
`Ehlers ’330
`Xu – Peak Demand
`Rosen
`Springer
`Alles
`Jayadev
`Pimputkar
`Schurr
`Arens – Demand Response
`Oswald
`Shah ’927
`Cler
`Honeywell T7350
`WebCTRL
`Boait
`Ehlers ’330
`Nicodem
`Ehlers ’956
`Jayadev
`Kath
`Mueller
`Ols
`Benco
`Ehlers ‘330
`Drees
`Quam
`Modi
`Barnard
`Van Ostrand
`CFC Scout
`Halsey
`Jayedev
`Shamoon
`Thomson
`Frenz
`
`Asserted Patent
`’100
`’100
`’100
`’100
`’100
`’100
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’186
`’597
`’597
`’597
`’597
`’597
`’597
`’597
`’597
`’597
`’597
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`’890
`
`Chart
`A-3
`A-4
`A-5
`A-6
`A-7
`A-8
`A-9
`A-10
`A-11
`A-12
`A-13
`A-14
`A-15
`A-16
`A-17
`A-18
`A-19
`A-20
`A-21
`A-22
`A-23
`A-24
`A-25
`A-26
`A-27
`A-28
`A-29
`A-30
`A-31
`A-32
`A-33
`A-34
`A-35
`A-36
`A-37
`A-38
`A-39
`A-40
`A-41
`A-42
`A-43
`
`Google further intends to rely on inventor admissions concerning the scope of the prior art
`relevant to the Asserted Claims found in, among other things: the patent prosecution history for
`the asserted patents, related patents, and/or related patent applications; and any deposition
`testimony of the named inventors.
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
`
`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 6
`
`

`

`
`
`Moreover, these cases have only recently begun, discovery is ongoing, and Google’s prior
`art investigation and third-party discovery are therefore not yet complete. Google reserves the
`right to present additional items of prior art under 35 U.S.C. §§ 102 and/or 103 located through
`discovery or further investigation.
`
`B.
`Obviousness
`Prior art references that invalidate the Asserted Patents are outlined below and listed in
`Exhibits A and B. These prior art references evidence teachings, suggestions, motivations, and/or
`other reasons to combine various ones thereof in ways that render obvious all of the Asserted
`Claims. Certain references within Exhibit B are grouped or categorized according to a particular
`claim limitation that is disclosed within each reference. References from within a group share
`similar reasons as to why they would have been well within the level of ordinary skill in the art
`and obvious to combine with prior art listed in Exhibits A with other references in Exhibit B.
`Thus, in addition to the specific combinations of prior art disclosed using claim charts, Google
`reserves the right to rely on any combination of prior art references disclosed herein.
`Based on Google’s understanding of EcoFactor’s Infringement Contentions, Google
`believes that the references discussed in Exhibits A-1 through A-43 each anticipate one or more
`of the Asserted Claims. However, if the finder of fact determines that some limitation of a given
`claim was not disclosed by the asserted reference, Google contends that the charted reference in
`combination with the knowledge and skill of a person of ordinary skill in the art at the time of the
`alleged invention and/or in combination with the disclosures of other prior art would have
`rendered all of the Asserted Claims obvious.
`The Supreme Court has held that the combination of familiar elements according to
`known methods is likely to be obvious when it does no more than yield predictable results. KSR
`Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739 (2007). When a work is available in one field of
`endeavor, design incentives and other market forces can prompt variations of it, either in the same
`field or a different one. Id. at 1740. No showing of a specific motivation to combine prior art is
`therefore required to combine the references disclosed in Exhibits A and B or otherwise discussed
`herein, as each combination of art would have yielded expected or predictable results and at most
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 7
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`would simply represent a known alternative to one of skill in the art. See id. at 1739-40 (rejecting
`the Federal Circuit’s “rigid” application of the teaching, suggestion, or motivation to combine
`test, and instead applying an “expansive and flexible” approach); see also Apple Inc. v. Samsung
`Elecs. Co., 839 F.3d 1034, 1058 (Fed. Cir. 2016); Intercontinental Great Brands LLC v. Kellogg
`N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017). Indeed, the Supreme Court held that a
`POSITA is “a person of ordinary creativity, not an automaton” and “in many cases a person of
`ordinary skill in the art will be able to fit the teachings of multiple patents together like pieces of a
`puzzle.” KSR, 127 S. Ct. at 1742. Nevertheless, in addition to the information contained in the
`section immediately above and elsewhere in these contentions, Google hereby identifies
`additional motivations and reasons to combine.
`One or more combinations of the prior art references identified above would have been
`obvious because these references would have been combined using: known methods to yield
`predictable results; known techniques in the same way; a simple substitution of one known,
`equivalent element for another to obtain predictable results; and/or a teaching, suggestion, or
`motivation in the prior art generally. See Apple, 839 F.3d at 1077; Intercontinental Great Brands,
`869 F.3d at 1344. In addition, it would have been obvious to try combining the prior art
`references identified above because there were only a finite number of predictable solutions
`and/or because known work in one field of endeavor prompted variations based on predictable
`design incentives and/or market forces either in the same field or a different one. See ACCO
`Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016); Sanofi-Aventis
`Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748 F.3d 1354, 1360 (Fed. Cir. 2014);
`Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1329 (Fed. Cir. 2017); KSR, 127 S. Ct.
`at 1742. Further, the combinations of the prior art references identified above and in the claim
`charts would have been obvious because the combinations represent known potential options with
`a reasonable expectation of success. See InTouch Techs., Inc. v. VGo Commc’ns, Inc., 751 F.3d
`1327, 1347 (Fed. Cir. 2014).
`Additional evidence that there would have been a motivation to combine the prior art
`references identified above includes the interrelated teachings of multiple prior art references; the
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 8
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`

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`effects of demands known to the design community or present in the marketplace; the existence
`of a known problem for which there was an obvious solution encompassed by the Asserted
`Claims; the existence of a known need or problem in the field of the endeavor at the time of the
`alleged inventions; and the background knowledge that would have been possessed by a POSITA.
`See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017);
`Intercontinental Great Brands, 869 F.3d at 1344; Unwired Planet, LLC v. Google Inc., 841 F.3d
`995, 1003 (Fed. Cir. 2016); Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322-23 (Fed.
`Cir. 2012).
`The motivation to combine the teachings of the prior art references disclosed herein is also
`found in the references themselves and in: (1) the nature of the problem being solved; (2) the
`express, implied and inherent teachings of the prior art; (3) the knowledge of POSITAs; (4) the
`predictable results obtained in combining the different elements of the prior art; (5) the
`predictable results obtained in simple substitution of one known element for another; (6) the use
`of a known technique to improve similar devices, methods, or products in the same way; (7) the
`predictable results obtained in applying a known technique to a known device, method, or product
`ready for improvement; (8) the finite number of identified predictable solutions that had a
`reasonable expectation of success; and (9) known work in various technological fields that could
`be applied to the same or different technological fields based on design incentives or other market
`forces. See above legal background regarding obviousness combinations and M.P.E.P. § 2143.
`
`
`General State of the Art and Combinations
`In addition to the discussion above, and to the extent not anticipated, the Asserted Claims
`are invalid under 35 U.S.C. § 103 as being obvious to a person having ordinary skill in the art of
`the relevant technology. Items of prior art that render obvious the asserted claims, as well as
`exemplary secondary references and obviousness combinations, are cited and described in
`attached claim charts Exhibits A-1 to A-43 and B-1 to B-17. In the event a particular primary
`reference identified in the claim charts does not anticipate one of the asserted claims, the
`reference, alone or in combination with one or more of the exemplary secondary references
`identified in any of those charts, would render the claim obvious. The identification of certain
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`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 9
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`combinations of prior art does not exclude other combinations and is without prejudice to
`Google’s right to rely on additional specific combinations as well as to detail and explain such
`combinations.
`Based on all of these considerations, as further detailed in Exhibits A-1 to A-43 and B-1 to
`B-17, a POSITA would have combined the teachings of the prior art references discussed and
`charted there. The combinations of these references would have rendered obvious to one of
`ordinary skill in the art the subject matter of the Asserted Claims. The references identified in
`Exhibits A-1 to A-43 and B-1 to B-17 are analogous prior art to the subject matter of the Asserted
`Claims and, for at least the reasons set forth below, are properly combinable. Because these prior
`art references exist within a single field of art, particularly one in which individuals in the field
`often shared and/or collaborated on their work, it would have been obvious for a person of skill in
`the art to look from one piece of prior art to another in order to find any missing functionality
`they desired to implement. Therefore, these references provide interrelated teachings, and one of
`ordinary skill would look to the concepts in any of these references when seeking to solve the
`problems purportedly addressed by the asserted patents. It would have been within the ability of
`a POSITA to combine any of the references identified in Exhibits A-1 to A-43 and B-1 to B-17.
`A POSITA would have had a reasonable expectation of success in combining any of the
`references identified in Exhibits A-1 to A-43 and B-1 to B-17 because they involve only the
`predictable use of prior art elements according to their established functions.
`In addition, it would have been obvious to combine any of the prior art in Exhibits A-1 to
`A-43 and B-1 to B-17 because all of these references relate to devices and methods of using well-
`known methods to model, control, and/or interact with HVAC systems, or otherwise relate to the
`field of energy management in a house or other structure, as well as other limitations disclosed in
`the asserted claims, in routine and predictable ways.
`Indeed, in discussing the state of the art for “temperature control device” at the relevant
`time, U.S. Patent App. No. 2004/0117330 (“Ehlers ’330”) expressly notes “[t]hermostats,
`thermostatic control devices and environmental control systems have been designed,
`manufactured and placed in use for many years.” Ehlers ’330 ¶ 411. Ehlers ’330 goes on to
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 10
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`explain that the control devices have been developed over time to have “the ability to be
`programmed with multiple setpoints.” Id. ¶ 13.
`In discussing the state of the art for “household energy management” at the relevant time,
`U.S. Patent App. No. 2005/0171645 (“Oswald ’645”) expressly notes, “[t]here have been a
`number of patents in this field in recent years, which describe new hardware solutions to
`achieving a computer/Internet-controlled house and provide improved control of the energy
`consumption in the household.” Oswald ’645. Oswald ’645 goes on to cite several related
`patents and/or patent applications widely known in the art at the time, including U.S. Patent No.
`5,572,438 by Ehlers, U.S. Patent Appl. Pub. No. 2003/0050737 by Osann, U.S. Patent No.
`5,115,967, U.S. Patent No. 6,324,008, U.S. Patent Appl. Pub. No. 2002/0095269, as well as the
`work of third parties including Microchip Technology Inc. and their relevant publications. See id.
`at ¶¶ 5-11. Each of these references relates to the same general field as the asserted patents and
`further confirms the proliferation of related prior art known to those of skill in the art at the
`relevant time.
`One of ordinary skill in the art at the relevant time would have similarly been familiar
`with any number of techniques and approaches to energy demand management and related
`systems and methods. For example, the term demand-side management originated “following the
`time for the 1973 energy crisis and 1979 energy crisis.” See Energy demand management,
`Wikipedia, https://en.wikipedia.org/wiki/ Energy_demand_management. By the relevant priority
`dates for the asserted patents, a POSITA would have been familiar with any number of prior art
`systems associated with demand-side management of a structure and the related systems for
`efficiently implementing such systems. For example, U.S. Patent Application No.
`2004/0117330A1 (“Ehlers ’330”) notes, “[t]hermostats, thermostatic control devices and
`environmental control systems have been designed, manufactured and placed in use for many
`years. These devices are primarily designed to sense the temperature inside a site [] and based on
`occupant designated setting, activate the heating and/or air conditioning system or systems to
`maintain a comfort level based on the occupants designated level of comfort.” Ehlers notes there
`have been known prior art systems relating to this field of art “for many years”. Id. at [0011].
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 11
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`Moreover, as noted in “Peak Demand Reduction from Pre-Cooling with Zone
`Temperature Reset in an Office Building” by Xu (“Xu”), “[s]trategies to improve building control
`by using thermal mass have been investigated in the past years.” Xu at 2. Indeed, Ota notes that
`“[u]sing simulation, Braun (1990) demonstrated 10-35% peak load reductions and 10-50% cost
`savings using a series of pre-cooling strategies.” Id. It would have been obvious to a POSITA to
`combine the teachings of any one of the references disclosed in Exhibits A and B because, inter
`alia, they concern the predictable use of prior art elements according to their established
`functions—all of which relate to the same general fields as the asserted patents.
`As an additional example, and without limitation, it would have been obvious to a
`POSITA to combine the teachings of U.S. Patent Appl. Pub. No. 2004/0117330 (“Ehlers ’330”)
`with U.S. Patent No. 6,868,293 (“Schurr”). Ehlers ’330 and Schurr are in the same field of
`endeavor. A POSITA would be motivated to add the temperature-data gathering and predicted
`rate of change calculations by Ehlers ’330 to improve the operation of Schurr’s HVAC control
`system based on one or more servers. It would have been within the ability of a POSITA to
`combine them. A POSITA would have had a reasonable expectation of success combining Ehlers
`’330 with Schurr because it only involves the predictable use of prior art elements according to
`their established functions.
`As another example, and without limitation, it would have been obvious to a POSITA to
`combine the teachings of Oswald ’645 with Rosen. Oswald ’645 and Rosen are in the same field
`of endeavor. A POSITA would be motivated to add the techniques for looking up weather data
`using the Internet disclosed by Rosen to implement Oswald ’645’s teaching of using the Internet
`to obtain local weather information. It would have been within the ability of a POSITA to
`combine them. A POSITA would have had a reasonable expectation of success combining
`Oswald ’645 with Rosen because it only involves the predictable use of prior art elements
`according to their established functions.
`As another example, and without limitation, it would have been obvious to a POSITA to
`combine the teachings of Ehlers ’330 with McLellan. Ehlers ’330 and McLellan are in the same
`field of endeavor. A POSITA would be motivated to use McLellan’s delays that prevent an
`
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`GOOGLE’S DISCLOSURE OF ASSERTED CLAIMS AND INVALIDITY CONTENTIONS
`No. 4:21-cv-03220-HSG
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`GOOGLE V. ECOFACTOR
`IPR2022-00538
`Exhibit 2005
`Page 12
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`HVAC system from turning on again for a period of time in Ehlers ’330’s energy management
`system. It would have been within the ability of a POSITA to combine them. A POSITA would
`have had a reasonable expectation of success combining Ehlers ’330 with McLellan because it
`only involves the predictable use of prior art elements according to their established functions.
`Exhibit B lists B-1 through B-17—one for each category of obvious elements identified
`below. Based on Google’s understanding of EcoFactor’s Infringement Contentions, each list in
`Exhibit B identifies specific pinpoint citations exemplifying where the particular limitation can be
`found in the prior art references within each list.
`Table of Limitation-Specific Charts
`Chart
`Representative Limitation
`B-1
`
`Asserted
`Patents
`’186
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`B-3
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`’186 Patent Claim 1: “wherein the one or more server computers
`are further configured to determine whether to direct the HVAC
`control system to pre-cool the first structure based on the one or
`more predicted rates of change prior to directing the HVAC control
`system to reduce electricity demand”
`Claim 8e: “determining with the one or more server computers
`whether to direct the HVAC control system to pre-cool the first
`structure based on the one or more predicted rates of change prior to
`directing the HVAC control system to reduce electricity demand”
`’100 Patent Claim 1a: “a thermostatic controller having at least two
`settings for a delay enforced by said thermostatic controller after
`said thermostatic controller turns said ventilation system off prior to
`allowing said thermostatic controller to signal said ventilation
`system to turn on again, one setting being for a first interval, and at
`least a second setting for a second interval that is longer than said
`first interval;” Claim 1e: “[the processor configured to] evaluate one
`or more parameters including at least the outside temperature
`measurements and the predicted rate of change, and to determine
`whether to adopt said first interval or said second interval based
`upon the values of said parameters;” Claim 9 – “A process for
`optimizing the delay enforced by a thermostatic controller after said
`thermostatic controller turns a ventilation system off prior to
`allowing said thermostatic controller to signal said ventilation
`system to turn on again comprising;” Claim 9e: “determining which
`of at least a first interval and a second interval is to be enforced as a
`delay by said th