UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`
`ECOBEE TECHNOLOGIES, ULC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2022-00969
`Patent No. 8,596,550
`____________
`
`
`PATENT OWNER’S RESPONSE
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`
`
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`

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`Table of Contents
`
`Introduction ............................................................................................................................. 1
`I.
`II. Background of the ‘550 Patent ............................................................................................... 2
`III. Level of a Person of Ordinary Skill in the Art (POSITA) ...................................................... 5
`IV. Claim Construction ................................................................................................................. 8
`V. Overview of the Asserted Prior Art ........................................................................................ 8
`A.
`Introduction to Ehlers ‘330 ................................................................................................. 8
`B.
`Introduction to Wruck ......................................................................................................... 9
`C.
`Introduction to Ols ............................................................................................................ 10
`D.
`Introduction to Boait ......................................................................................................... 12
`VI. General Comments on the Petition and the Auslander Declaration ..................................... 12
`VII. Rebuttal To Allegations Regarding Obviousness ................................................................. 21
`A. Ground 1: The Combination of Ehlers ‘330 and Wruck Does Not Render Claims 17-23
`Unpatentable ............................................................................................................................. 21
`1. No Motivation to Combine Ehlers ‘330 and Wruck ..................................................... 21
`2. Claim Element [17f] – “computer hardware comprising one or more computer
`processors configured to use the stored data to predict a rate of change of temperatures
`inside the structure in response to changes in outside temperatures;” .................................. 23
`3. Claim element [17g] “the one or more computer processors configured to calculate
`scheduled setpoint programming of the programmable communicating thermostat for one or
`more times based on the predicted rate of change, the scheduled programming comprising
`one or more automated setpoints;” ....................................................................................... 33
`4. Claim element [17h] - “at least a database that stores the one or more automated
`setpoints associated with the scheduled programming for said programmable
`communicating thermostat” .................................................................................................. 38
`5. Claim element [17j] - “the one or more computer processors configured to compare the
`one or more automated setpoints associated with said scheduled setpoint programming with
`said actual setpoint programming.” ...................................................................................... 38
`6. Dependent Claims 18-23 ............................................................................................... 45
`B. Ground 2: The Combination of Ols, Boait, and Wruck Does Not Render Claims 18-23
`Unpatentable ............................................................................................................................. 45
`1. There is No Motivation to Combine Ols and Boait ...................................................... 45
`2. Claim element [17f] – “computer hardware comprising one or more computer
`processors configured to use the stored data to predict a rate of change of temperatures
`inside the structure in response to changes in outside temperatures;” .................................. 50
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`3. Claim element [17g] - “the one or more computer processors configured to calculate
`scheduled setpoint programming of the programmable communicating thermostat for one or
`more times based on the predicted rate of change, the scheduled programming comprising
`one or more automated setpoints;” ....................................................................................... 54
`4. Claim element 17h – “at least a database that stores the one or more automated
`setpoints associated with the scheduled programming for said programmable
`communicating thermostat;” ................................................................................................. 57
`5. Claim element 17j – “the one or more computer processors configured to compare the
`one or more automated setpoints associated with said scheduled setpoint programming with
`said actual setpoint programming.” ...................................................................................... 57
`6. Dependent Claims 18-23 ............................................................................................... 62
`VIII. Secondary considerations ...................................................................................................... 62
`IX. Conclusion ............................................................................................................................ 64
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`IPR2022-00969
`Patent No. 8,596,550
`
`Exhibits
`
`Description
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 20 (Ecobee’s Motion to Dismiss)
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 1 (Complaint)
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 18 (ecobee Opposition to Motion to Stay)
`Ecobee’s Disclosure of Initial Invalidity Contentions, March 17,
`2022 in Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 26 (Order Denying EcoFactor’s Motion to Stay)
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`February 2, 2023, Deposition Transcripts of Dr. David
`Auslander, IPR2022-00983.
`Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC
`Control Systems, and Components Thereof, U.S. Int’l Trade
`Comm’n, 337-TA-1258 1258 Investigation, Order No. 18 -
`Construing the Terms of the Asserted Claims, at 1
`U.S. Pat. No. 7,130,719 (“Ehlers ’719”)
`
`
`
`Exhibit No.
`2001
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`2002
`
`2003
`
`2004
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`2005
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`2006
`2007
`2008
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`2009
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`2010
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`iii
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`IPR2022-00969
`Patent No. 8,596,550
`
`I.
`
`Introduction
`
`The Petition challenges claims 17-23 of U.S. Patent No. 8,596,550 (Ex. 1001)
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`under two grounds of unpatentability.
`
`However, this challenge demonstrates a fundamental misunderstanding of the
`
`Ehlers ‘330 reference and its teachings regarding thermal gain. Thermal gain is the
`
`addition of thermal heat, not the increase of an inside temperature. Thus, the Ehlers
`
`‘330 reference and its system teach away from the claimed invention of the ‘550
`
`patent. Petitioner and its expert ignore this, and instead use improper hindsight to
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`create the claims of the ‘550 patent out of the prior art.
`
`With respect to Ground 1, Petitioner and its expert further fail to show that the
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`combination of Ehlers ‘330 and Wruck teaches calculating automated setpoints.
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`Ehlers ‘330 shows ramping and recovery time, but not calculating automated
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`setpoints. Petitioner and its expert fail to map what in Ehlers ‘330 they consider the
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`“automated setpoint at a first time” as claimed by the ‘550 patent. Further, there is
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`no comparison of setpoints in Ehlers ‘330 or Wruck. Because this comparison is the
`
`reason for allegedly combining Ehlers ‘330 and Wruck, Petitioner has failed to
`
`provide a motivation to combine these two references.
`
`With respect to Ground 2, Petitioner fails to show a motivation to combine
`
`Ols and Boait. Further, the combination of Ols and Boait does not disclose (1),
`
`predicting a rate of change of inside temperatures in response to changes in outside
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`
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`IPR2022-00969
`Patent No. 8,596,550
`temperatures, (2) computing automated setpoints based on the predicted rate of
`
`change, or (3) comparing the automated setpoint with a scheduled setpoint.
`
`Finally, Petitioner’s expert, Dr. David Auslander, formerly worked with
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`EcoFactor when it was gathering data and information related to temperature
`
`changes in homes. This work was similar to the technology of the ‘550 patent. Dr.
`
`Auslander even wrote the forward to a document EcoFactor prepared regarding this
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`data, thus demonstrating satisfying a long-felt need and praise of the invention.
`
`For these reasons, Petitioner has failed to demonstrate that the claims of the
`
`‘550 patent are invalid.
`
`II. Background of the ‘550 Patent1
`
`The inventors of the ’550 patent are John Steinberg, Scott Hublou, and Leo
`
`Cheung, and the ’550 patent claims priority to Provisional Application No.
`
`61/215,999 filed on May 12, 2009. The ’550 patent is entitled “System, method and
`
`apparatus for identifying manual inputs to and adaptive programming of a
`
`thermostat.” The ’550 patent was issued after the USPTO cited and considered
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`numerous prior art references. See, e.g., Ex. 1001, Pages 1 and 2 of the ’550 patent.
`
`The ’550 patent teaches “[s]ystems and methods are disclosed for
`
`incorporating manual changes to the setpoint for a thermostatic controller into long-
`
`term programming of the thermostatic controller. For example, one or more of the
`
`
`1 See generally Ex. 2006, ¶¶12-16.
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`2
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`IPR2022-00969
`Patent No. 8,596,550
`exemplary systems compares the actual setpoint at a given time for the thermostatic
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`controller to an expected setpoint for the thermostatic controller in light of the
`
`scheduled programming. A determination is then made as to whether the actual
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`setpoint and the expected setpoint are the same or different. Furthermore, a manual
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`change to the actual setpoint for the thermostatic controller is compared to
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`previously recorded setpoint data for the thermostatic controller. At least one rule is
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`then applied for the interpretation of the manual change in light of the previously
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`recorded setpoint data.” Ex. 1001, Abstract; see also, e.g., Figs. 1-10.
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`The ’550 patent recognized that “the advantages of a programmable
`
`thermostat 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
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`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
`
`process may take considerable effort, which leads many users to avoid
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`IPR2022-00969
`Patent No. 8,596,550
`reprogramming their thermostats for long periods or even to skip doing so entirely.”
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`Ex. 1001, 1:18-2:8.
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`“It would therefore be advantageous to have a means for adapting to signaling
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`from occupants in the form of manual temperature changes and incorporating the
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`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 improve the ability to dynamically
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`achieve the best possible balance between comfort and energy savings.” Id. at 2:9-
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`17.
`
`The ’550 patent describes various embodiments to address the shortcomings
`
`of prior art systems. For example, Fig. 7 illustrates an example for detecting the
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`occurrence of a manual override event. Id. at Fig. 7, 5:54-6:30; see also, e.g., Id. at
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`2:50-5:53, 6:30-8:5.
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`IPR2022-00969
`Patent No. 8,596,550
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`
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`III. Level of a Person of Ordinary Skill in the Art (POSITA)
`
`Petitioner and Dr. Auslander assert that a person of ordinary skill in the art
`
`(“POSITA”) for the ‘550 patent is someone having “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
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`IPR2022-00969
`Patent No. 8,596,550
`compensate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002,
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`¶¶23-25).
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`Although Dr. Palmer, Patent Owner’s expert, meets the requirements of a
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`POSITA under Petitioner’s definition, Patent Owner disagrees with it. Ex. 2006, ¶26.
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`Rather, 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 substituting for education and vice
`
`versa. Id. This understanding is based on Dr. Palmer’s experience, as well as the
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`claim construction ruling in the ITC investigation captioned Smart Thermostat
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`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
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`Petitioner and Patent Owner were parties to the 1258 Investigation, and the claim
`
`construction ruling involved the ‘550 patent. Ex. 2009, 1258 Investigation, Order
`
`No. 18 - Construing the Terms of the Asserted Claims, at 1. In the 1258
`
`Investigation, the Administrative Law Judge (“ALJ”) determined that “a bachelor’s
`
`degree in engineering, computer science, or a comparable field, with 2-3 years’
`
`experience
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`in
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`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. 2009, at 8.
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`IPR2022-00969
`Patent No. 8,596,550
`Notably, both Petitioner and Dr. Auslander were involved in the 1258 Investigation
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`and were aware of the ALJ’s holding. Ex. 2008, February 2, 2023, Deposition
`
`Transcripts of Dr. David Auslander, IPR2022-00983, at 17:21-18:14. Despite this
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`knowledge, neither Petitioner nor Dr. Auslander factored this decision into their
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`analysis nor informed the Patent Trial and Appeals Board of this decision. Id. at
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`18:7-18.
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`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
`
`generally applied, describes a complex implementation of multiple sensors,
`
`processors, actuators, and other components and devices integrated into a large
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`commercial building or multiplicity of buildings such as on a campus. Ex. 2006,
`
`¶28. The building energy management system will generally control not only the
`
`HVAC system but also other power consumers such as elevators, escalators,
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`lighting, and other equipment. By contrast, the subject matter of the ‘550 patent is
`
`focused on residential and similar smaller-scale structures that do not require the
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`sophistication of controls that are integral to typical building energy management
`
`systems. Id. Moreover, Dr. Auslander agreed in his deposition that “people that use
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`[building energy management]controls, such as a building manager … [would be] a
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`person having professional experience in building energy management controls.”
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`Ex. 2008, 17:13-20.
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`IPR2022-00969
`Patent No. 8,596,550
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`IV. Claim Construction
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`The claim terms of the ‘550 patent should be given their plain and ordinary
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`meaning. Ex. 2006, ¶31. Petitioner and Dr. Auslander have applied the claim
`
`constructions from the 1258 Investigation for this IPR. Pet. at 12-13; Ex. 1002, ¶¶41-
`
`42. For purposes of this Patent Owner’s Response, the same constructions as used
`
`by Petitioner and Dr. Auslander in his declaration have been applied. Ex. 2006, ¶32.
`
`V. Overview of the Asserted Prior Art2
`
`A.
`
`Introduction to Ehlers ‘330
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`U.S. Patent Application Publication 2004/0117330, entitled “System and
`
`Method for Controlling Usage of a Commodity,” is listed with Gregory A. Ehlers,
`
`James H. Turner, Joseph Beaudet, Ronald Strich, and George Loughmiller as
`
`Inventors. Ex. 1004. Ehlers ‘330 was filed on July 28, 2003, but never issued as a
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`patent.
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`The focus and substance of Ehlers ‘330 is the management of energy delivery
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`from a distribution network such as the interconnected power grid or a natural gas
`
`distribution system. Specifically, it contemplates energy cost savings in applications
`
`where energy costs vary with time according to utility specified constraints, with
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`specific tools to quantify and/or graphically illustrate the savings that were or could
`
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`2 See generally Ex. 2006, ¶¶47-54.
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`IPR2022-00969
`Patent No. 8,596,550
`be achieved relative to a baseline condition. The application of Ehlers ‘330 is
`
`illustrated, for example, in Figure 1B:
`
`The Ehlers ‘330 system includes a customer graphical user interface that connects
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`
`
`to the server through the internet.
`
`B.
`
`Introduction to Wruck
`
`U.S. Patent Application Publication 2004/0040250, entitled “Transfer of
`
`Controller Customizations” is listed with Richard A. Wruck as the Inventor. Wruck
`
`was filed on July 28, 2003 and published on February 24, 2005. Ex. 1005.
`
`Wruck is directed toward “controllers and particularly to thermostats and the
`
`control of air management systems. More particularly, it pertains to the use of
`
`configuration tools for configuring, setting and adjusting of programmable
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`IPR2022-00969
`Patent No. 8,596,550
`thermostats of air management systems, and the transfer of configuration
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`information among the configuration tools.” Ex. 1005, ¶0002. Unlike Ehlers ‘330,
`
`Wruck focuses on various configuration tools to simplify the transfer of information
`
`of user inputs to simplify the programming of the thermostat or other control system
`
`rather than changing the control system operation for improved efficiency or energy
`
`cost savings.
`
`C.
`
`Introduction to Ols
`
`U.S. Patent 7,784,704, entitled “Climate Control” is listed with Joseph David
`
`Ols as the Inventor. Ols was claims priority to a provisional application filed on
`
`November 27, 2007, and issued on February 12, 2013. Ex. 1006.
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`Ols discloses a system in which “the climate control system may be retrofit to
`
`an existing climate control system” and “the dampers may be individually
`
`controlled.” Ex. 1006, Abstract. Ols provides controlling the temperature in zones
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`112a-112n, with each zone having multiple rooms 113aa-113nm. Ex. 1006, Fig. 1A.
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`IPR2022-00969
`Patent No. 8,596,550
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`
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`Ex. 1006, Fig. 1A. The system provides “instructions for analyzing (e.g. evaluating
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`and/or comparing) the retrieved values as part of computing (1) whether to
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`implement directives and settings associated with components of system 100 (e.g.
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`the positions of the air registers 114aa-114nm, the on/off state of the devices within
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`heating/AC system 104, and a degree of change in settings required to obtain a
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`desired climate), (2) when to implement the directives and/or settings, and (3) how
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`to implement the directives and settings optimally and efficiently.” Id. at 26:35-44.
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`Moreover, the system “may be used by retrofit control system 102 to determine
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`whether to draw outside air into one or more rooms 113aa-113nm, or dump air from
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`one of the rooms 113aa-113nm outside. Id. at 19:26-29.
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`IPR2022-00969
`Patent No. 8,596,550
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`D.
`
`Introduction to Boait
`
`UK Patent Application 2,432,016 entitled “Electronic control units for central
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`heating systems” is listed with Peter Boait as the Inventor. Boait was filed on
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`November 4, 2005, and published on May 9, 2007.
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`Boait describes an “automatic electronic control unit for controlling the
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`operation of a central heating system. Ex. 1007, Abstract. The system described
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`involves controlling the temperature of hot water in a central heating boiler which is
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`distributed to radiators for heating different rooms. Id. at 21.
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`VI. General Comments on the Petition and the Auslander Declaration
`
`In his declaration dated May 5, 2022, Dr. Auslander expressed his opinions
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`regarding the “unpatentability” of the ‘550 patent. Some inaccuracies and
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`mischaracterizations were observed in his introductory comments and his analyses
`
`that are addressed here. Ex. 2006, ¶33.
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`Dr. Auslander asserts that “Ehlers was not of record during the prosecution of
`
`the application leading to the ’550 patent, although a different Ehlers (U.S. Pat. No.
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`7,130,719 (“Ehlers ’719”)), from a different patent family and having a different
`
`disclosure, was cited.” Pet. at 14; Ex. 1002, ¶47. But this is demonstrably inaccurate,
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`as the disclosure in Ehlers ‘330 is identical to the disclosure in Ehlers ‘719. Compare
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`Ex. 1004 (Ehlers ‘330) with Ex. 2010 (Ehlers ‘719). Ehlers’ 330 and Ehlers ‘719
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`both claim priority to “continuation of application No. 10/402,370, filed on March
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`IPR2022-00969
`Patent No. 8,596,550
`28, 2003.” Id. Both Ehlers ‘330 and Ehlers ‘719 contain the same 18 sheets of
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`drawings and the same substantive disclosure. Ex. 2006, ¶34. Despite providing
`
`these opinions in his report, Dr. Auslander admitted is his deposition that he never
`
`actually compared Ehlers ‘330 and Ehlers ‘719. Ex. 2008, 19:17-19.
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`Thus, while Ehlers ‘719 was not expressly discussed by the Examiner during
`
`the prosecution of the ‘550 patent, it is clearly wrong to imply that the Examiner did
`
`not have the teachings of Ehlers ‘330 before them when examining and issuing the
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`‘550 patent. Ex. 2006, ¶35. It is presumed that the Examiner considered the
`
`teachings of Ehlers ‘330 (via Ehlers ‘719 patent) when concluding that the claims of
`
`the ‘550 patent were patentable. 37 C.F.R. 1.104(A)(1) (“On taking up an application
`
`for examination or a patent in a reexamination proceeding, the examiner shall make
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`a thorough study thereof and shall make a thorough investigation of the available
`
`prior art relating to the subject matter of the claimed invention.”)(emphasis added).
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`In addition, of particular note is Petitioner and Dr. Auslander’s reference to
`
`“thermal gain” frequently from the Ehlers reference and the heavy reliance on that
`
`phrase. However, the use, and misapplication, of this phrase is extensive. Ex. 2006,
`
`¶36.
`
`Dr. Auslander introduces his position as follows: “Ehlers ’330 also teaches
`
`using the rate of change of inside temperature, including calculating the rate at which
`
`inside temperature changes at any given outside temperature (i.e. the “thermal gain
`
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`IPR2022-00969
`Patent No. 8,596,550
`rate”) for a given setpoint, in order to predict how long it will take for the HVAC
`
`system to heat or cool the building from one setpoint to another.” Ex. 1002, at ¶54.
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`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 in his specification, Dr. Auslander applies impermissible
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`hindsight in view of the ‘550 patent to define Ehlers’ phrase “thermal gain rate” as
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`“a rate of change of temperature.” Ex. 2006, ¶37.
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`The phrase “thermal gain rate” is well understood by a POSITA to be the rate
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`at which energy is absorbed—which is not the rate of change in indoor temperature.
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`Ex. 2006, ¶38. That is, thermal gain is specifically referring to the absorption of
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`energy, for example by sunlight irradiating a house or by convective and conductive
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`heat transfer into the house from the warm outside air into the walls. While it may
`
`influence the temperature of the structure, it is not synonymous with the temperature.
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`For example, Ehlers discloses that “the system 3.08 tracks and learns about the
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`thermal gain characteristics of the home 2.18… With reference to Fig. 3D, a thermal
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`gain table for two set points is illustrated.” Ex. 1004 ¶253 (emphasis added). There
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`is some confusion about the content of Fig. 3D, illustrated below, due to
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`incongruities between the text (which refers to Fig. 3D as a table instead of a graph)
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`and the figure. Ex. 2006, ¶38.
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`IPR2022-00969
`Patent No. 8,596,550
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`
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`The figure shows a horizontal axis spanning a little over 2 hours, and a vertical
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`axis labeled “Indoor Setpoint” with values apparently corresponding to degrees
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`Fahrenheit. Ex. 2006, ¶39. The lines appear to reflect temperatures rather than rates
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`of energy increase, and no axis or label quantifies the “thermal gain.” If read
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`literally, Ehlers ‘330’s description would indicate that the thermal gain rate would
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`be a continuously increasing value between 72 and 80 (units unspecified), but this is
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`not consistent with other discussion in Ehlers ‘330. Id. To properly interpret Fig. 3D
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`requires reading the subsequent paragraph.
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`Ehlers ‘330 continues his explanation of thermal gain as follows: “The second
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`step is to learn the operational run characteristics of the HVAC system as a function
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`IPR2022-00969
`Patent No. 8,596,550
`of the thermal gain. Since the outside temperature varies continuously during a
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`typical day, the rate of thermal gain and the HVAC run times also vary in accordance
`
`with these changes. Fig. 1E (sic) illustrates a typical day showing plot lines for the
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`thermal gain rate and the associated HVAC run time.” Ex. 1004, ¶254. Unlike Fig.
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`3D, Fig. 3E, copied below, is much clearer and is also consistent with the definition
`
`of thermal gain as the absorption of thermal energy. Ex. 2006, ¶40. Specifically, the
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`graph has a horizontal axis with units of hours illustrating a full day period. The left
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`vertical axis is clearly labeled as “HVAC Runtime %” with units ranging from 10%
`
`to 80%. The right vertical axis is labeled “Thermal Gain Rate Per Hour” with no
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`units specified, but a scale from 0 to 4, with actual values plotted between 1 and just
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`under 3. Ex. 1004, ¶254.
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`This clearly illustrates that in the middle of the night (e.g. hours 0-3 and 22-
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`24) the thermal gain is low, but still positive, which a POSITA would reasonably
`
`understand to be because it is in a climate where overnight lows are still above the
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`desired temperature setpoint, and the thermal gain is nearly three times greater in the
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`afternoon hours. Ex. 2006, ¶41. However, the thermal gain cannot be interpreted as
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`being a rate of inside temperature change because Ehlers expressly states that “it
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`should be noted here that the set point of the system 3.08 was set at a fixed point for
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`the entire day and the use of humidity sensing and control of humidity levels were
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`not introduced into the illustration so that the graphical plots depict a normal home
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`with a normal HVAC control thermostat.” Ex. 1004, ¶254. A normal thermostat with
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`a constant temperature will not allow a significant temperature excursion, as
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`affirmed by the plot of HVAC Run% which increases when the greater rate of
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`thermal energy is being absorbed by the structure, in order to hold the temperature
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`constant, and lowers when the energy absorbed by the structure is at a lower rate.
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`Ex. 2006, ¶41.
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`The distinction between the thermal gain rate and the rate of change of
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`temperature is further illustrated in Ehlers’ discussion of his Fig. 3G. Ex. 2006, ¶42.
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`Ehlers explains:
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`“For this example, the set point of the thermostat is 72 degrees F. and
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`the allowed variation selected by the customer is 4 degrees F. making
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`the acceptable range for indoor temperature from 72 degrees F. to 76
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`degrees F… for this example it is assumed that the customer has set
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`the base line trigger to be set when the HVAC units run time reaches
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`33%. In the early morning when it is cool, the system 3.08 in this
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`example will be operating at a cycle rate of 10%. As the outside
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`temperature rises, the thermal gain on the home 2.18 is monitored
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`along with the HVAC cycle rate on a continuous basis. The rise in the
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`outside temperature causes the HVAC cycle time to increase as
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`illustrated in Fig. 3E. As the system 3.08 reaches the trigger level of
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`33% cycle run time, the base line is established and the system 3.08
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`computes the required effective set point offset needed to keep the
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`HVAC cycle run time at the specified trigger level of 33%. By
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`adjusting the effective set point upward, the system 3.08 is able to
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`maintain the HVAC run time at the predetermined trigger level up to
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`the point that the thermal gain rise rate exhausts the allowed
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`temperature variant allowed for the site 1.04… Fig. 3G illustrates this
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`scenario assuming that the thermal gain of the site 1.04 does not
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`exhaust the allowed temperature variant for the site 1.04.”
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`Ex. 1004 ¶254. In other words, Fig. 3G has nearly the same thermal gain plot as Fig.
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`3E, as illustrated below in the superposition of the two plots, but allows indoor
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`temperature to change by up to 4 oF. Ex. 2006, ¶43.
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`Thus, Dr. Auslander’s usage of Ehlers’ phrase “thermal gain rate” is directly
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`contrary to Ehlers’ own usage. Ex. 2006, ¶44. Further illustrating the incorrectness
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`of Dr. Auslander’s misconstruction is the fact that if “thermal gain rate” meant “rate
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`of change of temperature,” then the illustrations of Fig. 3E and Fig. 3G would
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`indicate that the temperature was continuously increasing by 1 to 3 degrees per hour,
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`for a total of nearly 42 oF. over the 24-hour period, regardless of the operation of the
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`HVAC equipment. Id.
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`Thus, Dr. Auslander is incorrect in his opinion that Ehlers’ “thermal gain rate”
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`is the same as the “rate of change of temperature” of Patent ‘550. Ex. 2006, ¶45. The
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`specific implications of Dr. Auslander’s misconstruction will be discussed in greater
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`detail below.
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`VII. Rebuttal To Allegations Regarding Obviousness
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`Petitioner and Dr. Auslander’s opinions regarding the patentability of the ‘550
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`patent, as outlined in his declaration, rely on two grounds that include one issued
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`patent, two published U.S. patent applications and one U.K. patent application: U.S.
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`patent application 2004/0117330 (“Ehlers ‘330”), U.S. patent application
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`2005/0040250 (“Wruck”), U.S. patent No. 8,374,725 (“Ols”), and UK Patent
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`Application 2,432,016 (“Boait”). See, e.g., Pet. at 10-11; Ex. 1002 at ¶¶44, 142.
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`A. Ground 1: The Combination of Ehlers ‘330 and Wruck Does Not
`Render Claims 17-23 Unpatentable
`Petitioner and Dr. Auslander allege that the combination of Ehlers ‘330 and
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`Wruck renders obvious claims 17-23 of the ‘550 patent. See, e.g., Pet. at 13; Ex.
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`1002 at ¶44. This is incorrect. Ex. 2006, ¶55.
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`1.
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`No Motivation to Combine Ehlers ‘330 and Wruck
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`Petitioner and Dr. Auslander state that “based on Ehlers ’330 alone, it would
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`have been obvious to determine a ‘difference value’ (as claimed) based on
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`comparing an actual setpoint (at a first time) to a first automated setpoint.” Pet. at
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`18; Ex. 1002, ¶63. He further states that “a POSITA would have understood from
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`Ehlers ’330 that comparing entered and automated setpoints would be beneficial to
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`the described ‘learning from the user’s inputs or adjustments to the system 3.08 to
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`change or modify indoor air temperature.’” Ex. 1002, ¶64 (quoting Ex. 1004, ¶0242).
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`Dr. Auslander then asserts that “Wruck does just that.” Ex. 1002, ¶65.
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`But as noted below, Wruck does not do that. Ex. 2006, ¶57. There is no
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`teaching in Wruck of comparing two different setpoints. The only portion of Wruck
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`relied upon by Dr. Auslander in support of his conclusion is one entry in Table 28,
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`which states that “Display actual temporary setpoint if Delta value < > 0.” Ex. 1005,
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`¶110. There is no explanation anywhere in Wruck of what “Delta value” is or how
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`it is obtained. There is certain