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
`____________
`
`DECLARATION OF JOHN A. PALMER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2022-00538
`Patent No. 9,194,597
`____________
`
`DECLARATION OF JOHN A. PALMER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 1
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`BACKGROUND ................................................................. 2
`
`QUALIFICATIONS ............................................................ 2
`
`III.
`
`BACKGROUND OF THE ‘597 PATENT .................................. 7
`
`IV. LEGAL PRINCIPLES.......................................................... 9
`
`V.
`
`LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`(POSITA) .......................................................................... 14
`
`VI. CLAIM CONSTRUCTION PRINCIPLES ................................ 18
`
`VII. GENERAL COMMENTS ON THE SHAH REPORT ............. 19
`
`VIII. REBUTTAL TO ALLEGATIONS REGARDING
`OBVIOUSNESS................................................................ 29
`
`A.
`
`B.
`
`Introduction to Ehlers ‘330 Prior Art Reference ........................... 29
`
`Introduction to Wruck Prior Art Reference .................................. 30
`
`IX. GROUND 1: ..................................................................... 31
`
`A.
`
`The Combination of Ehlers ‘330, the Knowledge of a POSITA and
`Wruck Does Not Render Claims 1-24 Unpatentable .................... 31
`
`1.
`
`2.
`
`Claim Element [1d] - “using the stored data to predict changes
`in temperature inside the structure in response to at least
`changes in outside temperatures” ............................................ 31
`
`Claim Element [1e] - “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” ......................... 37
`
`i
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 2
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Dependent Claims 2-8............................................................. 42
`
`Independent Claim 9 ............................................................... 42
`
`Dependent Claims 10-16 ......................................................... 45
`
`Independent Claim 10 ............................................................. 45
`
`Dependent Claims 18-24 ......................................................... 45
`
`X.
`
`DECLARATION ................................................................ 46
`
`ii
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 3
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`
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`Exhibits
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`Description
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 30, 2021), Dkt. 1 (Complaint)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. Aug. 3, 2021), Dkt. 30 (Joint Case Management
`Statement)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 7, 2022), Dkt. 72 (Amended Scheduling Order)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 13, 2022), Dkt. 73 (Amended Scheduling Or-
`der)
`Google’s Oct. 19, 2021, Invalidity Contentions in Google, LLC
`f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220 (N.D. Cal.)
`“Silicon Valley’s Home Court: Patent Trends in the Northern
`District of California.” White & Case Newsflash (Mar. 18,
`2020).
`U.S. Patent No. 10,018,371
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`April 6, 2021, Deposition Transcripts of Mr. Rajenda Shah,
`IPR2021-01218.
`337-TA-1258 International Trade Commission Investigation, Or-
`der No. 18 - Construing the Terms of the Asserted Claims
`October 10, 2022, Deposition Transcripts of Mr. Rajenda Shah,
`IPR2022-00538.
`October 13, 2022, Deposition Transcripts of Mr. Rajenda Shah,
`IPR2022-00473.
`
`1
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 4
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`
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`I.
`
`1.
`
`BACKGROUND
`
`I have been retained as an expert in this case by EcoFactor, Inc. (“EcoFactor”).
`
`I have been asked to consider and opine on issues of validity regarding U.S. Patent
`
`No. 9,194,597 (“‘597 Patent”). More specifically, my opinions disclosed herein fo-
`
`cus on the Petition for Inter Partes Review (“IPR”) on the ‘597 Patent, along with
`
`the expert declaration of Rajendra Shah and all other materials referenced or cited in
`
`the IPR or Mr. Shah’s declaration.
`
`2.
`
`In forming my opinions, I have reviewed, considered, and had access to the
`
`patent specifications and claims, its prosecution history, the proposed claim con-
`
`structions, the Petition, the Shah declaration, and documents cited in the Petition and
`
`the Shah declaration, as well as the transcripts from the deposition of Mr. Shah. I
`
`have also relied on my professional and academic experience. I reserve the right to
`
`consider additional materials as I become aware of them and to revise my opinions
`
`accordingly.
`
`II. QUALIFICATIONS
`
`3.
`
`My qualifications for forming the opinions set forth in this Declaration are
`
`summarized here and explained in more detail in my curriculum vitae, which is at-
`
`tached as Exhibit 2009.
`
`4.
`
`As indicated therein, I have a Bachelor of Science degree in Electrical Engi-
`
`neering with a power option from Brigham Young University (1991), and Masters
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`2
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 5
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`(1992) and Doctoral (1996) degrees in Electric Power Engineering from Rensselaer
`
`Polytechnic Institute. Electric Power Engineering is a discipline of engineering in
`
`which principles of physics and electrical science are applied to practical applica-
`
`tions pertaining to the production, transmission, distribution and utilization of elec-
`
`trical energy.
`
`5.
`
`Through the course of my education, I participated in multiple research pro-
`
`jects that included topics related to electric power transmission system efficiency
`
`and power transformer reliability. Practical applications of simulation, physical
`
`modeling, data acquisition and assimilation, and control were all included within the
`
`scope of my research projects. The research that I performed led to multiple technical
`
`publications, presentations, and a patent, as set forth in the list of publications shown
`
`in Exhibit A. Furthermore, internships interspersed with my engineering education
`
`provided me with opportunities to work for the electric utility industry in several
`
`different areas of interest.
`
`6.
`
`Upon completion of my doctorate in 1996, I was employed for 4 1/2 years as
`
`a member of the faculty at the Colorado School of Mines (CSM) Division of Engi-
`
`neering teaching and performing research in the general area of electric power engi-
`
`neering. I developed and taught courses in Electric Machinery, Electric Power
`
`Systems, High Power Electronics, and practical applications of design, control and
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`instrumentation for electronic systems. A significant element of all of these courses
`
`3
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 6
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`was energy efficiency and management. My research efforts at CSM in association
`
`with the Center for Advanced Control of Electric Power Systems (ACEPS), included
`
`energy efficiency projects and diagnostics and monitoring of electric power equip-
`
`ment.
`
`7.
`
`Overlapping with my employment at CSM, I consulted with NEI Electric
`
`Power Engineering, including participation in design and energy efficiency studies
`
`for industrial facilities. I also began working as an electrical forensic engineer at
`
`Knott Laboratory, LLC, which evolved into a full-time position in January 2000. In
`
`my various positions at Knott Laboratory, I investigated and became familiar with a
`
`wide range of electrical failures and accidents, including many control system fail-
`
`ures related to industrial, commercial, and residential HVAC systems. Subsequent
`
`to my employment at CSM, I began teaching on a part-time basis at the Electrical
`
`Engineering Department of the University of Colorado, Denver (UCD). The courses
`
`I taught at UCD included Power Systems Analysis and Electrical Forensic Engineer-
`
`ing.
`
`8.
`
`In 2009, I established Palmer Engineering and Forensics, LLC, and I continue
`
`to lead that company as its president and principal engineer at the present time. In
`
`addition to my administrative responsibilities, I provide consulting engineering ser-
`
`vices to insurance companies, attorneys, utilities, and other companies, related to
`
`4
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 7
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`
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`electrical equipment and system failures and accidents, fires, and system improve-
`
`ments. I also serve currently as an associate professor (lecturer) in the Department
`
`of Electrical and Computer Engineering at the University of Utah teaching a variety
`
`of topics including Power System Analysis, Power System Protection, Power Elec-
`
`tronics, and Electrical Forensic Engineering and Failure Analysis. As a faculty mem-
`
`ber at the University of Utah, I also consult with students in their various research
`
`and design projects and serve on various graduate thesis committees.
`
`9. While my extensive engineering education (9 years university education in-
`
`cluding bachelor’s, master’s, and doctoral degrees) and career (26 years since my
`
`PhD) are fully applicable to the subject matter at hand, following are a variety of
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`examples of experience that is more specifically applicable: 1) as a homeowner and
`
`as a business owner, I have installed residential wiring, commercial lighting, com-
`
`munication cables and networks, thermostats (including researching and specifying),
`
`and various other devices and systems; 2) As a doctoral student, my research in-
`
`cluded extensive work with a testbed that included temperature monitoring and con-
`
`trol, including data acquisition and logging; 3) As a member of the faculty at the
`
`Colorado School of Mines, I taught laboratory classes that included data acquisition
`
`and control including temperature monitoring and control, as well as overseeing a
`
`significant laboratory upgrade that included sensors, controls, and networking. I
`
`5
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 8
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`have also taught numerous lectures on topics such as energy efficiency, power sys-
`
`tem operation and control, the nature of the power grid, demand side management,
`
`etc.; 4) As an engineering consultant I have evaluated and investigated numerous
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`control systems which included sensors (including temperature sensors), actuators,
`
`and controllers. Examples include at least 10 commercial and industrial HVAC sys-
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`tems that were involved in fire incidents, a residential thermostat that failed causing
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`overtemperature in a residence, numerous residential fires associated with boilers,
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`furnaces and air conditioners, a power plant fuel safety system involved in an explo-
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`sion, several chemical production facilities, and at least two industrial paint ovens.
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`In performing these evaluations and investigations, I have had to understand the
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`thermostat performs and functions and how the performance and functions enable
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`control the HVAC system. I also performed in-depth analysis of various smart ther-
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`mostats and other HVAC control systems in the context of intellectual property liti-
`
`gation.
`
`10.
`
`I am a registered professional engineer in seven states namely: Utah, Arizona,
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`Colorado, Alabama, Florida, Wyoming, and Idaho.
`
`11.
`
`Through my considerable education and experience, I have developed a strong
`
`understanding of the practices and terminology of the electric power industry, energy
`
`efficiency objectives and implementation, energy control systems, load management
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`technologies and procedures, HVAC operation and control, etc.
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`6
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 9
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`III. BACKGROUND OF THE ‘597 PATENT
`
`12.
`
`The inventors of the ’597 patent are John Steinberg, Scott Hublou, and Leo
`
`Cheung, and the ’597 patent claims priority to US application 12/778/052, and Pro-
`
`visional Application No. 61/215,999 filed on May 12, 2009. The ’597 patent is en-
`
`titled “System, method and apparatus for identifying manual inputs to and adaptive
`
`programming of a thermostat.” The ’597 patent was issued after the USPTO cited
`
`and considered numerous prior art references. See, e.g., Ex. 1001, Pages 1-3 of
`
`the ’597 patent.
`
`13.
`
`The ’597 patent teaches “[s]ystems and methods are disclosed for incorporat-
`
`ing manual changes to the setpoint for a thermostatic controller into long-term pro-
`
`gramming of the thermostatic controller. For example, one or more of the exemplary
`
`systems compares the actual setpoint at a given time for the thermostatic controller
`
`to an expected setpoint for the thermostatic controller in light of the scheduled pro-
`
`gramming. A determination is then made as to whether the actual setpoint and the
`
`expected setpoint are the same or different. Furthermore, a manual change to the
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`actual setpoint for the thermostatic controller is compared to previously recorded
`
`setpoint data for the thermostatic controller. At least one rule is then applied for the
`
`interpretation of the manual change in light of the previously recorded setpoint data.”
`
`Ex. 1001, ‘597 patent at Abstract; see also, e.g., Figs. 1-10.
`
`7
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 10
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`
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`14.
`
`The ’597 patent recognized that “the advantages of a programmable thermo-
`
`stat depend on the match between the preferences of the occupants and the actual
`
`settings employed. If, for example, the thermostat is set to warm up the house on
`
`winter mornings at 7 AM, but the homeowner gets up at 5:30, the homeowner is
`
`likely to be dissatisfied. If a homeowner has programmed her thermostat to cool
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`down the house at 5 PM each afternoon based on the assumption that she will come
`
`home at 6 PM, but her schedule changes and she begins to arrive home at 4:30 each
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`day, she is likely to be uncomfortable and either make frequent manual changes or
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`go through the generally non-intuitive process of reprogramming the thermostat to
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`match her new schedule. Because the limited interface on most thermostats, that
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`process may take considerable effort, which leads many users to avoid reprogram-
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`ming their thermostats for long periods or even to skip doing so entirely.” Ex. 1001,
`
`‘597 patent at 1:45-60.
`
`15.
`
`The ‘597 patents further states that it “would therefore be advantageous to
`
`have a means for adapting to signaling from occupants in the form of manual tem-
`
`perature changes and incorporating the information contained in such gestures into
`
`long-term programming. It would also be desirable to take into account both outside
`
`weather conditions and the thermal characteristics of individual homes in order to
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`improve the ability to dynamically achieve the best possible balance between com-
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`fort and energy savings.” Id. at 2:9-17.
`
`8
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 11
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`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
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`16.
`
`The ‘597 patent describes various embodiments to address the shortcomings
`
`of prior art systems. For example, Fig. 7 illustrates an example for detecting the
`
`occurrence of a manual override event. Id. at Fig. 7, 5:54-6:30; see also, e.g., Id. at
`
`2:50-5:53, 6:30-8:5.
`
`IV. LEGAL PRINCIPLES
`17. Anticipation: I understand that invalidation by anticipation under 35 U.S.C.
`
`§ 102 applies only if a single alleged prior art reference discloses each and every
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`9
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`IPR2022-00538
`Exhibit 2008
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`Case Nos. IPR2022-00538
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`limitation of the claim at issue, either expressly or inherently. In other words, every
`
`limitation of the claim must appear in a single prior art reference for the reference to
`
`anticipate that claim. A requirement of a claim that is not expressly disclosed in a
`
`prior art may be disclosed inherently only if that missing requirement is necessarily
`
`present in that prior art. I also understand that all elements of the claim must be
`
`disclosed in the reference as they are arranged in the claim. I also understand that to
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`be considered anticipatory, the prior art reference must be enabling and must de-
`
`scribe the patentee's claimed invention sufficiently to have placed it in the possession
`
`of a person of ordinary skill in the art (“POSITA”). I further understand that, if a
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`prior art reference fails to disclose an element of an independent claim, then that
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`reference also cannot anticipate any dependent claim that is based on that independ-
`
`ent claim.
`
`18. Obviousness: I understand that a patent may be rendered “obvious” based on
`
`an alleged prior art reference or a combination of such references plus what a person
`
`of ordinary skill in the art would understand based on his or her knowledge and the
`
`references. I understand that a patent cannot be properly granted for subject matter
`
`that would have been obvious to a person of ordinary skill in the art at the time of
`
`the alleged invention, and that a patent claim directed to such obvious subject matter
`
`is invalid under 35 U.S.C. § 103. It is also my understanding that in assessing the
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`obviousness of claimed subject matter one should evaluate obviousness over the
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`10
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`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 13
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`Case Nos. IPR2022-00538
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`prior art from the perspective of one of ordinary skill in the art at the time the inven-
`
`tion was made, and not from the perspective of either a layman or a genius in that
`
`art. The existence of each and every element of the claimed invention in multiple
`
`prior art references/systems does not necessarily prove obviousness. Most, if not
`
`all, inventions rely on building blocks of prior art. Obviousness may be found where
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`there is a preponderance of the evidence that the differences between the subject
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`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 hav-
`
`ing ordinary skill in the art to which said subject matter pertains. Further, I under-
`
`stand that the combination and arrangement of the elements from the different prior
`
`art references/systems must be obvious to a person of ordinary skill in the art. There
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`must be a motivation to make the combination, though that motivation can come
`
`from the knowledge of a person of ordinary skill in the art. I further understand that
`
`an obviousness assertion cannot be based on hindsight reasoning and must be sup-
`
`ported by more than conclusory expert testimony.
`
`19.
`
`It is my understanding that in determining whether any of the claims is obvi-
`
`ous, I should consider whether there was a reason that would have prompted a person
`
`having ordinary skill in the art to combine the known elements in a way the claimed
`
`invention does, taking into account such factors as (1) whether the claimed invention
`
`was merely the predictable result of using prior art elements according to their
`
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`known function(s); (2) whether the claimed invention provides an obvious solution
`
`to a known problem in the relevant field; (3) whether the prior art teaches or suggests
`
`the desirability of combining elements claimed in the invention; (4) whether the prior
`
`art teaches away from combining elements in the claimed invention; (5) whether it
`
`would have been obvious to try the combinations of elements, such as when there is
`
`a design need or market pressure to solve a problem and there are a finite number of
`
`identified, predictable solutions; and (6) whether the change resulted more from de-
`
`sign incentives or other market forces. To render a claim obvious, the prior art must
`
`have provided a reasonable expectation of success
`
`20.
`
`It is my further understanding that the question of obviousness is to be deter-
`
`mined based on:
`
` The scope and content of the prior art;
`
` The difference or differences between the subject matter of the claim and the
`
`prior art (whereby in assessing the possibility of obviousness one should con-
`
`sider the manner in which a patentee and/or a court has construed the scope
`
`of a claim);
`
` The level of ordinary skill in the art at the time of the alleged invention of the
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`subject matter of the claim; and,
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`12
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`Exhibit 2008
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` It is my understanding that to determine whether it would have been obvious
`
`to combine known elements in the manner claimed in a patent, one may con-
`
`sider such things as the interrelated teachings of multiple patents, the effects
`
`of demands known to the design community or present in the marketplace,
`
`and the background knowledge of one with ordinary skill in the art.
`
`21.
`
`It is my understanding that I should also consider any objective factors / evi-
`
`dence (sometimes called “secondary considerations” or “secondary indicia”) that
`
`may have existed at the time of the invention and afterwards that may shed light on
`
`the obviousness of the claims, such as:
`
` Whether the invention was commercially successful as a result of the merits
`
`of the claimed invention (rather than the result of design needs or market-
`
`pressure advertising or similar activities);
`
` Whether the invention satisfied a long-felt but unmet need;
`
` Whether others had tried and failed to make the invention;
`
` Whether others invented the invention at roughly the same time;
`
` Whether others copied the invention;
`
` Whether there were changes or related technologies or market needs contem-
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`poraneous with the invention;
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` Whether the invention achieved unexpected results;
`
`13
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`Exhibit 2008
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` Whether others in the field praised the invention;
`
` Whether persons having ordinary skill in the art of the invention expressed
`
`surprise or disbelief regarding the invention;
`
` Whether others sought or obtained rights to the patent from the patent holder;
`
`and
`
` Whether the inventor proceeded contrary to accepted wisdom in the field.
`
`22. Rebutting Assertions of Invalidity: To rebut an assertion of invalidity it is
`
`my understanding that it is only necessary to show that at least one of the limitations
`
`of an allowed claim is not found in the prior art, and that is what I have done for
`
`each challenged claim and for each item of allegedly invalidating prior art. In other
`
`words, in rebutting the allegations of invalidity, it has not been necessary for me to
`
`demonstrate that each and every limitation of an asserted claim is missing from the
`
`art and/or combinations of art. I note, however, that my decision not to address
`
`certain elements of the asserted claims should not be considered an admission that
`
`such elements are found in the art.
`
`LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`V.
`(POSITA)
`
`23.
`
`I understand that in evaluating the validity of the ‘597 patent claims, the con-
`
`tent of a patent or printed publication prior art should be interpreted the way a person
`
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`Exhibit 2008
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`of ordinary skill in the art (“POSITA”) would have interpreted the prior art as of the
`
`effective filing date of the challenged patent.
`
`24.
`
`I understand that factors that may be considered in determining the level of
`
`ordinary skill in the art at the time of the effective filing date of the challenged pa-
`
`tents include: (1) the educational level of the inventor; (2) type of problems encoun-
`
`tered in the art; (3) prior art solutions to those problems; (4) rapidity with which
`
`innovations are made; (5) sophistication of the technology; and (6) educational level
`
`of active workers in the field.
`
`25.
`
`Petitioner and Mr. Shah assert that a person of ordinary skill in the art
`
`(“POSITA”) for the ‘597 patent is someone having “at least (1) a Bachelor’s degree
`
`in engineering, computer science, or a comparable field of study, and (2) five years
`
`of (i) professional experience in building energy management and controls, or (ii)
`
`relevant industry experience. Additional relevant industry experience may compen-
`
`sate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002, ¶¶26-
`
`28). Further, Mr. Shah testified that a “person who knows how thermostats functions
`
`and can be made to function to control the HVAC system” would be a person with
`
`experience in building energy management and controls. Ex. 2010, April 6, 2021,
`
`Deposition Transcripts of Mr. Rajenda Shah, IPR2021-01218 (“Shah Dep. Tr.”) at
`
`28:25-29:5.
`
`15
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 18
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`26. Although I meet the requirements of a POSITA under Petitioner’s definition,
`
`I disagree with it. I understand that a POSITA would have a bachelor’s degree in
`
`engineering, computer science, or a comparable field, with 2-3 years’ experience in
`
`temperature controls, embedded control systems, electronic thermostats, or HVAC
`
`controls, or similarly relevant industry experience, with relevant experience substi-
`
`tuting for education and vice versa. This understanding is based on my own experi-
`
`ence. It is also based on the claim construction ruling in the ITC investigation
`
`captioned Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC Control
`
`Systems, and Components Thereof, U.S. Int’l Trade Comm’n, 337-TA-1258 (the
`
`1258 Investigation”). Both Petitioner and Patent Owner are parties to the 1258 In-
`
`vestigation, and the claim construction ruling involved U.S. Patent No. 8,596,550
`
`(the “‘550 patent”). Ex. 2011, 1258 Investigation, Order No. 18 - Construing the
`
`Terms of the Asserted Claims, at 1. The ‘597 patent claims priority to the ‘550 pa-
`
`tent. Ex. 1001. In the 1258 Investigation, the Administrative Law Judge (“ALJ”)
`
`determined that “a bachelor’s degree in engineering, computer science, or a compa-
`
`rable field, with 2-3 years’ experience in temperature controls, embedded control
`
`systems, electronic thermostats, or HVAC controls, or similarly relevant industry
`
`experience, with relevant experience substituting for education and vice versa.” Ex.
`
`2011, at 8. Notably, although the ALJ’s holding occurred on September 1, 2021, Mr.
`
`Shah was not aware of this decision, nor did he factor it into his opinions. Ex. 2012,
`
`16
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 19
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`October 10, 2022, Deposition Transcripts of Mr. Rajenda Shah, IPR2022-00538, at
`
`17:12-19:13.
`
`27. Under either of the above definitions, I am qualified as being a person of at
`
`least ordinary skill in the arts pertaining to the subject patents.
`
`28. As an example of a flaw in Petitioner’s proposed definition of a POSITA, it
`
`should be noted that a building energy management system, as the phrase is gener-
`
`ally applied, describes a complex implementation of multiple sensors, processors,
`
`actuators, and other components and devices integrated into a large commercial
`
`building or multiplicity of buildings such as on a campus. The building energy man-
`
`agement system will generally control not only the HVAC system but also other
`
`power consumers such as elevators, escalators, lighting, and other equipment. By
`
`contrast, the subject matter of the ‘597 patent is focused on residential and similar
`
`smaller-scale structures that do not require the sophistication of controls that are in-
`
`tegral to typical building energy management systems.
`
`29.
`
` I have used the perspective of a POSITA, as I have defined that individual, at
`
`the time of the priority date of the ‘597 patent to form my opinions in reply to the
`
`Petition and Mr. Shah’s opinions.
`
`17
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 20
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`VI. CLAIM CONSTRUCTION PRINCIPLES
`
`30.
`
`I understand that “claim construction” is the process of determining a patent
`
`claim’s meaning. I also have been informed and understand that the proper construc-
`
`tion of a claim term is the plain and ordinary meaning that a person of ordinary skill
`
`in the art would have given to that term in light of the specification. In performing
`
`my analyses set forth in this declaration, I have interpreted all claim terms based
`
`upon their plain and ordinary meaning, as they would have been understood by a
`
`POSITA, as of the effective filing date, in the context of the ‘597 patent.
`
`31.
`
`I understand that the Board does not construe claim terms unnecessary to re-
`
`solving the controversy. Petitioner states that the ITC investigation captioned Smart
`
`HVAC Systems and Components Thereof 337-TA-1185 involved U.S. Pat. No.
`
`10,018,371, and that claim 9 of the ‘371 patent recites a limitation similar to the
`
`“detecting manual change” limitation of the ‘597 patent. Pet. at 11-12. The Initial
`
`Determination from the 1185 investigation was provided as Exhibit 1017 to the Pe-
`
`tition. However, the Initial Determination provided is heavily redacted, particularly
`
`at pages 396-402, which were cited by Petitioner and Mr. Shah. Thus, it is difficult
`
`to verify the accuracy of the statement that “EcoFactor argued that the ‘detecting a
`
`manual setpoint change’ limitation was met when the relevant comparison was car-
`
`ried out, regardless of whether the system had previously detected a setpoint change,
`
`and regardless of whether the system could retrieve complete manual setpoint
`
`18
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 21
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`change information from its memory.” Pet. at 12, see also, Ex. 1002, at ¶45. When
`
`asked about this statement in his deposition, Mr. Shah was unable to identify where
`
`in the Initial Determination from the 1185 investigation that provided support. Ex.
`
`2012, October 10, 2022, Deposition Transcripts of Mr. Rajenda Shah, IPR2022-
`
`00538, at 23:22-24:15. Instead, he noted that “there are a lot of redactions on this”
`
`Initial Determination and admitted that he had never seen the unredacted document.
`
`Id.
`
`32. Nevertheless, the claim terms of the ‘597 patent should be given their plain
`
`and ordinary meaning.
`
`VII. GENERAL COMMENTS ON THE SHAH REPORT
`
`33.
`
`In his declaration dated January 31, 2022, Mr. Rajendra Shah expressed his
`
`opinions regarding the “unpatentability” of the ‘597 patent. Some inaccuracies and
`
`mischaracterizations were observed in his introductory comments and his analyses
`
`that are addressed here.
`
`34. Of particular note is a phrase which Mr. Shah references frequently from the
`
`Ehlers reference and relies on heavily throughout his report. Given that his use of
`
`the phrase is relied on so heavily, I will address it here and reference these comments
`
`in rebutting particular points and assertions made by Mr. Shah in his claim mapping
`
`section. The phrase is “thermal gain.”
`
`19
`
`GOOGLE v. ECOFACTOR
`IPR2022-00538
`Exhibit 2008
`Page 22
`
`
`
`Case Nos. IPR2022-00538
`U.S. Patent No. 9,194,597
`
`35. Mr. Shah introduces his position as follows: “Ehlers ‘330 also teaches using
`
`a rate of changes (sic) in temperatures inside the structure in response to at least
`
`changes in outside temperatures. For example, Ehlers ‘330 teaches calculating the
`
`rate at which inside temperature changes at any given outside temperature (i.e. the
`
`“thermal gain rate”) for a given setpoint…” Ex. 1002, at ¶55. Mr. Shah further ex-
`
`presses “In my opinion, the ‘rate of thermal gain,’ ‘thermal rate of gain,’ or ‘thermal
`
`gain rate’ in Ehlers ‘330 is the rate of changes in temperature inside the structure.”
`
`Ex. 1002 at ¶93. In other words, rather than interpret Ehlers’ phrase “thermal gain
`
`rate” as it would be understood by a person having ordinary skill in the art and as it
`
`is used intrinsically by Ehlers ‘330 in his specification, Mr. Shah applies impermis-
`
`sible hindsight in view of the ‘597 patent to define Ehlers’ ‘330 phrase “thermal gain
`
`rate” as “a rate of c
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