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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC,
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`Petitioner
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`v.
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`ECOFACTOR, INC.,
`Patent Owner
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`IPR2022-00538
` Patent 9,194,597 B2
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`JOINT NOTICE REGARDING CO-PENDING LITIGATIONS
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`Pursuant to the Board’s direction at the May 3, 2023 Oral Hearings in
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`IPR2022-00538 and IPR2022-00473, Petitioner Google LLC and Patent Owner
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`EcoFactor, Inc. hereby provide the following update regarding the status of the co-
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`pending litigations involving U.S. Patent Nos. 9,194,597; 8,751,186; and 8,740,100.
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`Patent Owner EcoFactor asserted all three patents in both litigations discussed
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`below.
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`Google LLC v. EcoFactor, Inc., Case No. 4:21-cv-03220 (N.D. Cal.)
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`This litigation is currently stayed pending the resolution of IPRs 2022-00538,
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`2022-00473, and 2022-00475. A Markman hearing took place on July 22, 2022 but
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`no claim construction decision has issued.
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`EcoFactor, Inc. v. ecobee, Inc., Case No. 6:21-cv-00428 (W.D. Tex.)1
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`This litigation is currently ongoing with a pre-trial conference currently
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`scheduled to take place on May 11, 2023 and a jury trial currently scheduled to begin
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`on June 20, 2023. Of the three patents identified above, EcoFactor is presently only
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`asserting U.S. Patent No. 8,751,186 in this action.
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`On March 22, 2022, the Court conducted a Markman hearing, during which it
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`upheld the Court’s preliminary finding that claim 9 of U.S. Patent No. 9,194,597
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`and, by extension, its dependent claims 10-16 are invalid for indefiniteness. No
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`written claim construction opinion has issued. A joint motion to dismiss U.S. Patent
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`1 Petitioner Google LLC is not a party to this litigation.
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`No. 9,194,597 from the case was granted on October 11, 2022. This dismissal was
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`made with prejudice as to claims 9-16 and without prejudice as to claims 1-8 and
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`17-24. As part of a mutual narrowing of asserted claims and invalidity theories,
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`EcoFactor also withdrew its infringement allegations as to U.S. Patent No. 8,740,100
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`on January 23, 2023, such that the patent is no longer being asserted in this litigation.
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`Dated: May 10, 2023
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`Respectfully submitted,
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`/Matthew A. Smith/
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`Matthew A. Smith (Reg. No. 49,003)
`SMITH BALUCH LLP
`700 Pennsylvania Ave. SE 2nd Floor
`Washington, DC 20003
`Phone: (202) 669-6207
`smith@smithbaluch.com
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`Counsel for Petitioner Google LLC
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`/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
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`Counsel for Patent Owner EcoFactor,
`Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT NOTICE
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`REGARDING CO-PENDING LITIGATIONS was served by electronic mail on
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`May 10, 2023, on all counsel of record at the United States Patent & Trademark
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`Office.
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`Date: May 10, 2023
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`/Matthew A. Smith/ (RN 49,003)
`Matthew A. Smith
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