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