Trials@uspto.gov
`571-272-7822
`
`Paper: 7
`Date: August 3, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper: 7
`Date: August 3, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`
`
`
`
`
`
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background and Summary
`
`Petitioner, Google LLC, requests that we institute an inter partes
`
`review to challenge the patentability of claims 1–24 (the “challenged
`
`claims”) of U.S. Patent 9,194,597 B2 (Ex. 1001, “the ’597 patent”). Paper 1
`
`(“Petition” or “Pet.”). Patent Owner, EcoFactor, Inc., argues that Petitioner’s
`
`request is deficient and should not be granted. Paper 6 (“Preliminary
`
`Response” or “Prelim. Resp.”).
`
`Applying the standard set forth in 35 U.S.C. § 314(a), which requires
`
`demonstration of a reasonable likelihood that Petitioner would prevail with
`
`respect to at least one challenged claim, we grant the Petition and institute an
`
`inter partes review.1
`
`B.
`
`Related Matters
`
`The parties identify the following related district court litigation:
`
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., No. 4:21-cv-03220 (N.D.
`
`Cal.); and EcoFactor, Inc. v. ecobee, Inc., No. 6:21-cv-00428 (W.D. Tex.).
`
`Pet. 5; Paper 4, 2. Petitioner also notes that it “is in the process of filing
`
`petitions for inter partes review challenging all claims of the other three
`
`patents [involved in the Google v. EcoFactor litigation referenced supra].”
`
`Pet. 72–73.
`
`C.
`
`The ’597 Patent
`
`The ’597 patent is entitled “System, Method and Apparatus for
`
`Identifying Manual Inputs to and Adaptive Programming of a Thermostat.”
`
`Ex. 1001, code (54). The ’597 patent explains that programmable
`
`
`1 Our findings and conclusions at this stage are preliminary, and thus, no
`final determinations are made.
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`2
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`thermostats can “enhance comfort as compared to manually changing
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`setpoints using a non-programmable thermostat,” but “[i]f the temperatures
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`programmed into a thermostat do not accurately reflect the preferences of
`
`the occupants, those occupants are likely to resort to manual overrides of the
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`programmed settings.” Id. at 1:25–28, 1:60–2:8. Techniques disclosed in the
`
`’597 patent detect manual changes to the setpoint for a thermostatic
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`controller and then incorporate those manual changes into the long-term
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`programming of the thermostatic controller. Id., Abstr.
`
`The ’597 patent explains that most thermostats do not record manual
`
`inputs locally, and also do not recognize or transmit the fact that a manual
`
`override has occurred. Id. at 5:45–48. Moreover, frequent changes in
`
`setpoints may be automatically initiated by thermostat algorithms, making it
`
`difficult to infer a manual override from the mere fact that a setpoint has
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`changed. Id. at 5:47–53. Figure 7, reproduced below, illustrates a method for
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`detecting the occurrence of a manual override. Id. at 5:54–55.
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`3
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`
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`At step 1002 illustrated in Figure 7, a server associated with the
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`thermostat (e.g., a thermostat management server) retrieves setpoint data
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`used to infer the occurrence of a manual override from one or more
`
`databases. Id. at 3:61–63, 5:55–6:19. At step 1004, the server retrieves any
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`scheduled automated setpoint changes. Id. Such changes may include
`
`algorithmic changes intended to reduce energy consumption. Id.
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`4
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`At step 1006, the server calculates the setpoint difference. Id. At step
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`1008, the server calculates the scheduled setpoint difference. Id. At step
`
`1010, the server evaluates and sums all active algorithms and other server-
`
`initiated strategies to determine their net effect on the setpoint. Id. For
`
`example, if one algorithm has increased setpoint by 2 degrees as a short-term
`
`energy savings measure, but another algorithm has decreased the setpoint by
`
`one degree to compensate for expected subjective reactions to weather
`
`conditions, the net algorithmic effect is +1 degree. Id.
`
`At step 1012, the server calculates the value for M, where M is equal
`
`to the difference between actual setpoints dA, less the difference between
`
`scheduled setpoints dS, less the aggregate of algorithmic change sC. Id. at
`
`6:20–30. At step 1014, the server evaluates the difference—if the difference
`
`equals zero, the server concludes that no manual override has occurred;
`
`however, if the difference is non-zero, the server concludes that a manual
`
`override has occurred, and at step 1016, the server logs the override to the
`
`database(s). Id.
`
`After a manual override has been recognized, it can be used to either
`
`make short-term changes to the thermostat, or to alter long-term changes to
`
`interpretive rules and to setpoint scheduling for the thermostat. Id. at 2:37–
`
`42. Figure 8, reproduced below, illustrates a process of interpreting manual
`
`overrides and making short-term thermostat changes in response thereto. Id.
`
`at 2:37–42, 6:31–32.
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`
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`After a manual override is detected (step 1102 in Figure 8), the server
`
`retrieves rules (step 10042), contextual data (step 1106), and recent historical
`
`override data (step 1008). Id. at 6:31–60, Fig. 8. The retrieved rules include,
`
`for example, weather and time-related inferences such as: “if heating
`
`setpoint change is scheduled from ‘away’ to ‘home’ within following 2
`
`hours after detected override, and override increases setpoint by at least 2
`
`degrees, then change to ‘home’ setting.” Id. at 6:52–60. The “[contextual
`
`
`2 There appears to be typographical errors between Figure 8 and the
`descriptive text (Ex. 1001, 6:31–60) related to the labeling of steps 1104,
`1106, and 1108. We refer here to the steps as labeled in Figure 8.
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`6
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`data] may include current and recent weather conditions, current and recent
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`inside temperatures, etc.” Id. at 6:34–36. The historical override data
`
`includes any “override data from the period preceding the specific override
`
`being evaluated that has not yet been evaluated by and incorporated into the
`
`long-term programming and rules engines.” Id. at 6:42–51.
`
`At step 1110, the server applies the rules to the override and
`
`determines which rule, if any, should be applied as a result of the override,
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`and in step 1112, the server determines whether to alter the current setpoint
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`as a result of applying the rules in step 1110. Id. If a setpoint change is
`
`indicated, then the server transmits the setpoint change to the thermostat
`
`(step 1114), and records that change to database(s) (step 1116). Id.
`
`The ’597 patent further explains that, in order to ensure that both the
`
`stored rules for interpreting manual thermostat overrides and the thermostat
`
`programming itself continue to most accurately reflect the intentions of the
`
`occupants, the server periodically reviews both the rules used to interpret
`
`overrides and the thermostat setpoint scheduling employed. Id. at 7:3–43.
`
`D.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–24 of the ’597 patent. Of the
`
`challenged claims, claims 1, 9, and 17 are independent and claim 1 is
`
`illustrative:
`
`1. A method for detecting manual changes to the setpoint for a
`thermostatic controller comprising:
`
`providing a thermostatic controller operatively connected
`to a heating ventilation and air conditioning system, the
`temperature set point of the heating ventilation and air
`conditioning system being manually changeable;
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`accessing stored data comprising a plurality of internal
`temperature measurements taken within a structure and a
`plurality of outside temperature measurements;
`
`using the stored data to predict changes in temperature
`inside the structure in response to at least changes in outside
`temperatures;
`
`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;
`
`thermostatic controller, actual
`the
`recording, with
`setpoints of the heating ventilation and air condition system;
`
`communicating the actual setpoints from the one or more
`thermostatic controllers to the at least one computer;
`
`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 setpoints
`and the first automated setpoint are the same or different based
`on the difference value; and
`
`logging the manual change to a database.
`
`Ex. 1001, 8:8–38.
`
`II. ANALYSIS
`
`A.
`
`Summary of Issues
`
`In the below analysis, we first address the grounds of unpatentability.
`
`We then address whether we should discretionarily deny the Petition.
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`B. Grounds of Unpatentability
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`Petitioner asserts the following ground of unpatentability (Pet. 6),
`
`supported by the declaration of Rajendra Shah (Ex. 1002):
`
`Claim(s) Challenged
`1–24
`
`
`35 U.S.C. §
`103(a)3
`
`Reference(s)/Basis
`Ehlers,4 Wruck5
`
`C.
`
`Legal Standards
`
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015). At this preliminary stage, we determine whether the information
`
`presented in the Petition shows a reasonable likelihood that Petitioner would
`
`prevail in establishing that at least one of the challenged claims would have
`
`been unpatentable. See 35 U.S.C. § 314(a).
`
`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the
`
`differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
`
`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of
`
`obviousness based on underlying factual determinations, including (1) the
`
`scope and content of the prior art; (2) any differences between the prior art
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`We refer to the pre-AIA version of § 103.
`4 U.S. Patent Pub. 2004/0117330 A1, pub. June 17, 2004 (Ex. 1004,
`“Ehlers”).
`5 U.S. Patent Pub. 2005/0040250 A1, pub. Feb. 24, 2005 (Ex. 1005,
`“Wruck”).
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`and the claims; (3) the level of skill in the art; and (4) when in evidence,
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`objective indicia of obviousness or nonobviousness. See Graham v. John
`
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`We apply these principles to the Petition’s challenges.
`
`D.
`
`Level of Ordinary Skill in the Art
`
`Petitioner does not provide a level of skill for a person of ordinary
`
`skill in the art (“POSA”). See generally Pet. However, Petitioner’s declarant
`
`states that the level of skill:
`
`encompassed a person with at least 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. In my opinion, additional relevant industry
`experience may compensate for lack of formal education or vice
`versa.
`
`Ex. 1002 ¶ 27.
`
`Patent Owner does not provide a level of skill for a person of ordinary
`
`skill in the art, and does not challenge the level of skill discussed by
`
`Petitioner’s declarant. See generally Prelim. Resp.
`
`We adopt this definition of the level of ordinary skill for the purposes
`
`of this Decision.
`
`E.
`
`Claim Construction
`
`In inter partes review, we construe claims using the same claim
`
`construction standard that would be used to construe the claim in a civil
`
`action under 35 U.S.C. § 282(b), including construing the claim in
`
`accordance with the ordinary and customary meaning of such claim as
`
`understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2021).
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`Petitioner states that “[a] prior ITC investigation [(In the Matter of
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`Certain Smart Thermostats, Smart HVAC Systems, and Components
`
`Thereof, ITC-337-TA-1185 (ITC 2021))],” for a related patent, addressed a
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`phrase similar to a phrase in claim 1, which Petitioner describes as an
`
`“apparent construction.” Pet. 11–12 (citing Ex. 1017, 396–402). It is not
`
`clear what Petitioner means by an apparent construction.
`
`At the same time, we determine that no construction of the claims is
`
`necessary at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean
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`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe
`
`terms that are in controversy, and only to the extent necessary to resolve the
`
`controversy.” (internal quotation omitted)).
`
`F.
`
`35 U.S.C. § 103(a) – Ehlers, Wruck
`
`Petitioner argues that the combination of Ehlers and Wruck renders
`
`obvious claims 1–24. Pet. 13–72. Patent Owner does not address Petitioner’s
`
`arguments. See generally Prelim. Resp.
`
`For the reasons expressed below, we determine that Petitioner has
`
`established a reasonable likelihood of succeeding in showing that at least
`
`claim 1 is unpatentable.
`
`1.
`
`Ehlers
`
`Ehlers is titled “System and Method for Controlling Usage of a
`
`Commodity.” Ex. 1004, code (54). Ehlers describes “managing delivery of
`
`energy from a distribution network to one or more sites.” Id. at Abstr. Figure
`
`1B of Ehlers, reproduced below, illustrates an energy management system.
`
`Id. ¶¶ 20, 72.
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`
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`Figure 1B of Ehlers illustrates a customer site 1.04, and a utility 1.06
`
`that generates and/or transmits electricity to the customer site. Id. ¶¶ 59–60.
`
`A gateway node 1.10D at the customer site communicates with a utility
`
`control system. Id. ¶ 72. The customer site 1.04 can include a number of
`
`systems that use electricity and communicates with the gateway, such as an
`
`electricity meter, a water heater, and an advanced thermostat device 1.30D.
`
`Id. ¶ 76.
`
`The customer is able to monitor and control the devices through a user
`
`interface 1.14 and the utility may also monitor the devices and control their
`
`usage of electricity. Id. ¶¶ 69, 77–78. In this way, the utility may implement
`
`a Power Supply Program designed to alleviate or reduce energy demand
`
`during peak periods. Id.
`
`Figure 3B of Ehlers, reproduced below, is a block diagram of an
`
`advanced thermostat device. Id. ¶¶ 28, 229.
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`Advanced thermostat device 1.30D in Figure 3B is part of a
`
`temperature and environmental sensing and control system 3.08, with
`
`thermostat 1.30D being a node having a node processor, a memory and a
`
`two-way communications channel 2.06. Id. ¶ 229. Thermostat 1.30D is
`
`coupled to sensors 3.10 adapted to sense one or more parameters related to
`
`indoor or outdoor air quality (temperature, humidity, etc.). Id. ¶ 237.
`
`Thermostat 1.30D may also receive external information through gateway
`
`node 1.10D, such as the local weather forecast. Id. Based on this data and
`
`information, thermostat 1.30D controls other devices 1.08 (such as a HVAC
`
`system) to manage air quality. Id.
`
`Ehlers explains that system 3.08 learns from the user’s inputs or
`
`adjustments to the system to change or modify indoor air temperature. Id.
`
`¶ 242. The system can then monitor and control temperature and humidity
`
`levels. Id.
`
`For example, if the customer initially sets the thermostat at 72° F, the
`
`system maintains a relationship between the temperature and humidity level
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`sensed, and, as the humidity level of the home rises in summer, the effective
`
`setpoint is automatically lowered to maintain a consistent level of comfort.
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`Id. ¶ 243. “[T]he system 2.18 may have to lower the effective set point from
`
`that established by the customer by 3 degrees F. for every 10% of relative
`
`humidity that is sensed to retain the comfort level in the site.” Id.
`
`2. Wruck
`
`Wruck is titled “Transfer of Controller Customizations,” and pertains
`
`to “configuring, setting and adjusting of programmable thermostats of air
`
`management systems, and the transfer of configuration information among
`
`the configuration tools.” Ex. 1005, code (54), ¶ 2. Wruck describes that a
`
`personal digital assistant or computer can be used to remotely configure, set
`
`or adjust the parameters and options of a control system. Id. at Abstr.
`
`Figures 9G and 9I of Wruck, reproduced below, illustrate steps for
`
`reviewing the configuration of a thermostat and making possible changes.
`
`Id. ¶ 28.
`
`Figure 9G illustrates an events schedule screen that enables
`
`modification of a schedule relative to unoccupied and occupied times of a
`
`user’s space, for each day of the week, and Figure 9I illustrates a screen
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`where a user may enter temperature set points for heating and cooling of a
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`space that is occupied or unoccupied. Id. ¶¶ 28, 98.
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`Wruck provides that thermostat operating data may be monitored and
`
`displayed. Id. ¶ 110. For example, a temporary setpoint can be displayed:
`
`“Display actual temporary setpoint if Delta value < > 0.” Id. at Table 28.
`
`3.
`
`Claim 1
`
`The Petition outlines how the combination of Ehlers and Wruck
`
`teaches the features of independent claim 1. Pet. 23–56. Generally,
`
`Petitioner relies on Ehlers for the majority of the features of claim 1 and on
`
`the combination of Ehlers and Wruck for the features involving “generating
`
`with the at least one computer, a difference value” and “detecting a manual
`
`change.” Pet. 23–56.
`
`As noted previously, Patent Owner does not address Petitioner’s
`
`arguments. See generally Prelim. Resp.
`
`Below, we consider the arguments and evidence presented by
`
`Petitioner relating to the limitations of claim 1.
`
`a)
`A method for detecting manual changes to the
`setpoint for a thermostatic controller comprising:
`
`Petitioner argues that the preamble of claim 1 is suggested by Ehlers.
`
`Pet. 23–28. As identified by the Petition, Ehlers teaches managing a
`
`thermostatic controller. Id. at 23 (citing Ex. 1004, Abstr. ¶¶ 84, 90, 92, 190,
`
`191). Petitioner argues that Ehlers teaches that “a user may set a desired
`
`temperature set point for the thermostat” and that the “user can also
`
`‘override’ a scheduled setpoint.” Id. at 26 (citing e.g., Ex. 1004 ¶¶ 12, 116).
`
`Concerning “detecting manual changes to the setpoint,” Petitioner
`
`argues that Ehler teaches that the system learns from a user’s changes to the
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`temperature setpoint so that over time, the system should better reflect the
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`users preferences, decreasing the likelihood of the user needing to manually
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`override the setpoint. Id. at 26–28 (citing e.g., Ex. 1004 ¶¶ 242–243, 308–
`
`309; Ex. 1002 ¶¶ 77–80).
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers suggests the preamble6 of independent claim 1.
`
`b)
`providing a thermostatic controller operatively
`connected to a heating ventilation and air conditioning
`system, the temperature set point of the heating
`ventilation and air conditioning system being manually
`changeable;
`
`Petitioner argues that these elements of claim 1 are taught by Ehlers.
`
`Pet. 28–29. For example, Petitioner argues that Ehlers teaches controlling an
`
`HVAC system and that the temperature setpoints of the system are
`
`changeable by the user. Id. (citing e.g., Ex. 1004 ¶¶ 66, 81, 137–138, 153–
`
`160).
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches these elements of claim 1.
`
`c)
`accessing stored data comprising a plurality of
`internal temperature measurements taken within a
`structure and a plurality of outside temperature
`measurements;
`
`Petitioner argues that these elements of claim 1 are suggested by
`
`Ehlers. Pet. 29–34. For example, Petitioner points to Ehlers’ teaching that
`
`internal and external temperature measurements are stored by the system. Id.
`
`at 29, 31–32 (citing e.g., Ex. 1004 ¶¶ 268, 283, 293). Petitioner further
`
`
`6 We make no determination at this stage whether the preamble is a required
`aspect of the claim.
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`argues that Ehlers’ system accesses the stored measurements, for example to
`
`generate historical reports and to calculate thermal gain rates. Id. at 31–33
`
`(citing e.g, Ex. 1004 ¶¶ 123–125, 253, 256; Ex. 1002 ¶¶ 87, 90).
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches or suggests these elements of claim 1.
`
`d)
`using the stored data to predict changes in
`temperature inside the structure in response to at least
`changes in outside temperatures;
`
`Petitioner argues that these elements of claim 1 are suggested by
`
`Ehlers. Pet. 34–43. Petitioner first argues that Ehlers teaches that the stored
`
`data is used to determine the thermal gain of the structure, or how the inside
`
`temperature is affected by the outside temperature over time. Id. at 34–38
`
`(citing e.g., Ex. 1004, Figs. 3D–3E, ¶¶ 253–254). Petitioner then identifies
`
`three ways in which this information is allegedly used to predict internal
`
`temperature changes. Id. at 38–43.
`
`For our purposes, it is sufficient to discuss the second method
`
`identified by Petitioner. Petitioner argues that Ehlers’ thermal gain rate is
`
`“used to predict recovery time” which “is the time it takes for the HVAC
`
`system to change the inside temperature” from a first set temperature to a
`
`second set temperature, such as moving between temperature settings set for
`
`when the structure is unoccupied to being occupied. Id. at 40. Petitioner
`
`argues that “[p]redicting recovery time allows the system to turn on the
`
`HVAC system at the appropriate time, and thus achieve the ‘occupied’
`
`temperature setting by the time people are present.” Id. (citing Ex. 1004
`
`¶ 246) (Ex. 1002 ¶ 98); see also id. at 40–41 (citing Ex. 1004 ¶ 268)
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`(discussing that stored data can be used to compute the recovery time).
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`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches or suggests these elements of claim 1.
`
`e)
`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 argues that these elements of claim 1 are suggested by
`
`Ehlers. Pet. 43–47. Petitioner argues that:
`
`As explained above . . . , Ehlers . . . teaches that “the system 3.08”
`computes various thermal gain rates and then uses those thermal
`gain rates to perform various computations to manage the
`system. (See, e.g., Ex. 1004, ¶¶0252-0256). In doing so, the
`Ehlers . . . system calculates . . . scheduled programming of
`the thermostatic controller for one or more times to control
`the HVAC system, the scheduled programming comprising
`at least a first automated setpoint at a first time. (Ex. 1002,
`¶101).
`
`Id. at 43.
`
`Petitioner argues that predicted recovery times “can be calculated in
`
`connection with changes in [automated] setpoints due to changes between
`
`occupancy modes.” Id. at 44–45 (citing Ex. 1004 ¶ 246).
`
`Petitioner further argues that “thermostat 1.30D (the thermostatic
`
`controller) is connected to a gateway node 1.10D” and that the gateway
`
`node reads on the claimed at least one computer. Id. at 45–46; see also id. at
`
`45 (citing Ex. 1004 ¶ 268 (which states in part: “each node . . . includes a
`
`node processor 2.02 and memory 2.04” and “any node . . . may assume the
`
`processing and/or the control of one or more devices and/or the storage of
`
`system data”)).
`
`18
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`Concerning using the node to perform the claimed calculations,
`
`Petitioner implicitly acknowledges that this is not expressly taught by
`
`Ehlers. Id. at 46. Rather, Petitioner argues that one of skill in the art “would
`
`understand . . . that the gateway node . . . can be used to perform the claimed
`
`calculations” or that alternatively, that “[i]t would also be obvious to use the
`
`gateway node to perform the claimed calculations.” Id. (citing e.g., Ex. 1002
`
`¶ 106).
`
`Petitioner argues that as “gateway nodes are typically a computer
`
`supplied by an energy company,” “[i]t would be obvious to configure a
`
`gateway node to perform the disclosed calculations because it would be
`
`more convenient for an energy company to do so.” Id. (citing Ex. 1002
`
`¶ 106). Petitioner also argues that “[i]t would further have been obvious
`
`under KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416-21 (2007) to use any
`
`computer in communication with the thermostatic controller.” Id.
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches or suggests these elements of claim 1.
`
`f)
`recording, with the thermostatic controller, actual
`setpoints of the heating ventilation and air condition
`system;
`
`g)
`communicating the actual setpoints from the one
`or more thermostatic controllers to the at least one
`computer;
`
`Petitioner argues that these elements of claim 1 are suggested by
`
`Ehlers. Pet. 47–49. Petitioner argues that Ehlers’ teaches that the
`
`temperature set points are stored by the system, and in particular are
`
`recorded by the thermostat. Id. at 47–48 (citing e.g., Ex. 1004 ¶ 253).
`
`Concerning the step of communicating, Petitioner argues that:
`
`19
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`
`
`Ehlers ’330 renders obvious this claim element. (Ex. 1002,
`¶110). As set forth under claim element [1e] above, it is obvious
`to calculate scheduled programming of the thermostatic
`controller using Ehlers ’330’s gateway node, which is a
`computer. (Ex. 1002, ¶110). As set forth below under claim
`elements [1h] and [1i], it is obvious to use the computer to detect
`a manual change to the first automated setpoint. (Ex. 1002,
`¶110). It would also be obvious to communicate the actual
`setpoints from Ehlers
`’330’s
`thermostat 1.30D
`(the
`thermostatic controller) to the gateway node (a computer) in
`order to use them in the computations relating to calculating
`scheduled programming and detecting manual set point changes.
`(See, e.g., Ex. 1004, ¶¶0150, 0153-0157, 0195)(Ex. 1002, ¶110)
`
`Id. 49.
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches or suggests these elements of claim 1.
`
`h)
`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; [and] detecting a manual
`change to the first automated setpoint by determining
`whether the at least one of the actual setpoints and the
`first automated setpoint are the same or different based
`on the difference value; and
`
`Petitioner argues that these elements of claim 1 are taught or
`
`suggested by the combination of Ehlers and Wruck. Pet. 50–54. Petitioner
`
`states that though Ehler’s system “detect[s] a manual change to a setpoint,”
`
`it does not disclose how. Id. at 50 (citing Ex. 1004 ¶¶ 242–243, 268, 308,
`
`309; Ex. 1002 ¶¶ 113, 114). Accordingly, Petitioner argues that “[t]o
`
`determine whether two numbers are same or different from each other . . .,
`
`20
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`the most obvious thing to do is to compare them,” as required by the claim.
`
`Id. (citing Ex. 1002 ¶ 114).
`
`Similarly, Petitioner argues that “Wruck teaches determining whether
`
`a user’s manually entered setpoint differs from a scheduled setpoint by
`
`forming a difference value.” Id. at 51–52 (citing Ex. 1005, Table 28, ¶ 110;
`
`Ex. 1002 ¶ 116). Petitioner further argues that
`
`It would thus be obvious . . . to form a difference value by
`comparing an actual setpoint at the first time for the
`thermostatic controller to a scheduled, automated setpoint for
`the thermostatic controller in order to determine whether they
`are the same or different from each other, and thus detect a
`manual change.
`
`Id. at 53 (citing Ex. 1002 ¶ 118).
`
`On the current record, Petitioner has made a sufficient showing that
`
`the combination of Ehlers and Wruck teaches or suggests these elements of
`
`claim 1.
`
`i)
`
`logging the manual change to a database.
`
`Petitioner argues that this element of claim 1 is suggested by Ehlers.
`
`Pet. 54–56. As previously discussed, Petitioner cites to Ehler’s teachings of
`
`learning from user changes to the set point and argues that it would have
`
`been obvious to log these changes to a database. Id. (citing e.g. Ex. 1002
`
`¶¶ 121–124).
`
`On the current record, Petitioner has made a sufficient showing that
`
`Ehlers teaches or suggests this element of claim 1.
`
`j)
`
`Conclusion
`
`After our review of Petitioner’s assertions with respect to claim 1, and
`
`the supporting evidence, we determine that Petitioner has established a
`
`reasonable likelihood of prevailing with respect to independent claim 1.
`
`21
`
`
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`IPR2022-00538
`Patent 9,194,597 B2
`
`4.
`
`Claims 2–24
`
`The Petition relies on essentially the same discussion as that for claim
`
`1, for related aspects of independent claims 9 and 17. Pet. 60–71. The
`
`Petition further directs us to where Ehlers and Wruck teach or suggest each
`
`of the limitations recited in dependent claims 2–8, 10–16, and 18–24. See
`
`id. at 56–60, 67, 71–72.
`
`Patent Owner does not challenge any of Petitioner’s contentions
`
`relating to any of these claims. See Prelim. Resp.
`
`Having determined that Petitioner has established a reasonable
`
`likelihood of prevailing with respect to independent claim 1, it is
`
`unnecessary to make a further preliminary determination concerning the
`
`remaining claims.
`
`G. Discretion under 35 U.S.C. § 314(a)
`
`As noted above, the parties identify the following parallel district
`
`court proceeding as involving the ’597 patent: Google, LLC f/k/a Google
`
`Inc. v. EcoFactor, Inc., No. 4:21-cv-03220 (N.D. Cal.) (“the parallel district
`
`court proceeding”). Prelim. Resp. 3. Patent Owner argues that the Board
`
`should not institute this inter partes review (“IPR”) in view of our precedent
`
`and based on the advanced state of the parallel district court proceeding, for
`
`which Patent Owner asserts, “all six Fintiv factors weigh against institution.”
`
`Prelim. Resp. 3, 13.
`
`Under 35 U.S.C. § 314(a), the Director has discretion to deny
`
`institution of an inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136
`
`S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
`
`matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu,
`
`138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with
`
`22
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`discretion on the question whether to institute review . . . .” (emphasis
`
`omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir.
`
`2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR
`
`proceeding.”). In determining whether to exercise discretion to deny
`
`institution under 35 U.S.C. § 314(a), the Board considers the advanced state
`
`of a parallel district court proceeding as part of an assessment of all relevant
`
`circumstances of the case, including the merits, in an effort to balance
`
`considerations such as system efficiency, fairness, and patent quality. Apple
`
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020)
`
`(precedential) (“Fintiv Order”)
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