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

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`Table of Contents
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`I.
`
`Introduction ............................................................................................................................. 1
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`II. Level of a Person of Ordinary Skill in the Art (POSITA) ...................................................... 2
`
`III. Petitioner’s Argument Are Incorrect. ..................................................................................... 3
`
`A. No Motivation to Combine Ehlers and Wruck ................................................................... 3
`
`B. Petitioner Incorrectly Characterizes Ehlers. ....................................................................... 3
`
`1. Thermal Gain Rate .......................................................................................................... 3
`2. Figs. 3D, 3E, and 3F of Ehlers ........................................................................................ 6
`3. Predicted Rate of Change of Inside Temperatures Inside the Structure in Response to
`Changes in Outside Temperatures ........................................................................................ 12
`4. Calculate Scheduled Setpoint Programming … for One or More Times Based on the
`Predicted Rate of Change, the Scheduled Programming Comprising at Least a First
`Automated Setpoint .............................................................................................................. 14
`5. Comparing the One or More Automated Setpoints Associated with Said Scheduled
`Setpoint Programming with Said Actual Setpoint Programming ......................................... 16
`6. Wruck ............................................................................................................................ 17
`C. Ols, Boait, and Wruck Does Not Render Claims 17-23 Unpatentable ............................. 21
`
`1. There is No Motivation to Combine Ols and Boait ...................................................... 21
`2. Predict a Rate of Change of Temperatures Inside the Structure in Response to Changes
`in Outside Temperatures ....................................................................................................... 22
`3. Calculate Scheduled Setpoint Programming … for One or More Times Based on the
`Predicted Rate of Change, the Scheduled Programming Comprising One or More
`Automated Setpoints ............................................................................................................. 26
`4. Compare the One or More Automated Setpoints Associated with said Scheduled
`Setpoint Programming with said Actual Setpoint Programming.” ....................................... 27
`IV. Secondary Considerations ..................................................................................................... 27
`
`V. Conclusion ............................................................................................................................ 29
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`i
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`Table of Authorities
`
`Cases
`BlephEx, LLC v. Myco Indus., Inc.,
`24 F.4th 1391 (Fed. Cir. 2022) ................................................................................................... 3
`Molins PLC v. Textron, Inc.,
`48 F.3d 1172 (Fed. Cir. 1995)..................................................................................................... 3
`Stone Basket Innovations, LLC v. Cook Med. LLC,
`892 F.3d 1175 (Fed. Cir. 2018)................................................................................................... 3
`
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`ii
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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”)
`June 7, 2023, Deposition Transcripts of Dr. David Auslander,
`IPR2022-00969 and IPR2022-00983.
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`2008
`
`2009
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`2010
`2011
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`IPR2022-00969
`Patent No. 8,596,550
`
`I.
`
`Introduction
`
`Petitioner continues to fundamentally misunderstand Ehlers and its teachings
`
`regarding thermal gain. Petitioner and its expert continue to ignore this, and instead
`
`use improper hindsight to create the claims of the ‘550 patent out of the prior art.
`
`Petitioner further fails to demonstrate that the combination of Ehlers ‘330 and
`
`Wruck teaches calculating automated setpoints. Ehlers ‘330 shows ramping and
`
`recovery time, but not calculating automated setpoints. With these automated
`
`setpoints, there can be no comparison with anything else. Instead, Petitioner
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`identifies an unexplained term cited just once in Wruck and the creates an
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`unsupported story to argue that it meets this comparison. Finally, Petitioner does
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`not contest that there is no motivation to combine Ehlers ‘330 and Wruck.
`
`With respect to Ground 2, Petitioner continues to provide nothing beyond
`
`conclusory statements to explain a person of ordinary skill in the art (“POSITA”)
`
`would combine Ols and Boait. After recognizing that the equation relied upon in
`
`Boait does not address changes in outside temperature, Petitioner has to provide, for
`
`the first time, an argument that changes in temperature from one day until the next
`
`meet the claim limitations. This argument should be rejected as both new and
`
`incorrect.
`
`For these reasons, Petitioner has failed to demonstrate that the claims of the
`
`‘550 patent are invalid.
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`1
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`IPR2022-00969
`Patent No. 8,596,550
`II. Level of a Person of Ordinary Skill in the Art (POSITA)
`
`Petitioner and Dr. Auslander assert that the different levels for a POSITA
`
`between EcoFactor and Petitioner does not affect the outcome. Reply at 2; Ex. 1023,
`
`¶¶6-7.
`
`Notably, Petitioner does not actually dispute EcoFactor’s proposed level of
`
`ordinary skill in the art (“POSITA”) for the ‘550 patent as someone having 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. Ex. 2006, ¶26. Further,
`
`both Petitioner and Dr. Auslander continue to ignore 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”), which agreed with EcoFactor’s position.
`
`Ex. 2009, at 8.
`
`Thus, the Board should adopt EcoFactor’s proposed level of ordinary skill in
`
`the art.
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`IPR2022-00969
`Patent No. 8,596,550
`
`III. Petitioner’s Argument Are Incorrect.
`
`A. No Motivation to Combine Ehlers and Wruck
`
`EcoFactor asserted in its Patent Owner’s Response (“POR”) that there was no
`
`motivation to combine Ehlers and Wruck. POR at 21. However, Petitioner does not
`
`address this argument in its Reply, and thus appears to have conceded this argument.
`
`Therefore, for this reason, the combination of Ehlers and Wruck do not render claims
`
`17-23 of the ‘550 patent unpatentable.
`
`B.
`
`Petitioner Incorrectly Characterizes Ehlers.
`
`1.
`
`Thermal Gain Rate
`
`Petitioner and its expert continue to cite to select portions of Ehlers1 without
`
`taking into consideration the entire context of its teachings. Petitioner asserts that
`
`EcoFactor’s position with respect to the teachings of Ehlers “contradicts Ehlers and
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`leads to a result that EcoFactor’s expert agrees would be nonsensical.” Reply at 4
`
`
`1 Petitioner asserts that the citation on the face of the ‘550 patent of another Ehlers
`document with the same disclosure as the Ehlers cited in this proceeding “does not
`change what a POSITA would understand from Ehlers.” Reply at 3, fn. 1. But it
`would provide an understanding as to how the Examiner interpreted the claims of
`the ‘550 patent, as the Examiner is presumed to have considered it. BlephEx, LLC v.
`Myco Indus., Inc., 24 F.4th 1391, 1402 (Fed. Cir. 2022) (“[W]hen prior art ‘is listed
`on the face’ of a patent, ‘the examiner is presumed to have considered it.’” (quoting
`Stone Basket Innovations, LLC v. Cook Med. LLC, 892 F.3d 1175, 1179 (Fed. Cir.
`2018)); Molins PLC v. Textron, Inc., 48 F.3d 1172, 1184 (Fed. Cir. 1995) (“The
`examiner initialed each reference, indicating his consideration of the same, and
`stated that he had considered all of the cited prior art. Absent proof to the contrary,
`we assume that the examiner did consider the references.”)
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`IPR2022-00969
`Patent No. 8,596,550
`(citing Ex. 1022, 107:16-108:7). But Dr. Palmer’s testimony does not support this
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`statement. Rather, Dr. Palmer recognized that it is Petitioner’s position that is
`
`nonsensical, not EcoFactor’s position.
`
`As stated before, the phrase “thermal gain rate” is well understood by a
`
`POSITA to be the rate at which energy is absorbed—which is not the rate of change
`
`in indoor temperature. Ex. 2006, ¶38. That is, thermal gain is specifically referring
`
`to the absorption of energy, for example by sunlight irradiating a house or by
`
`convective and conductive 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. Id.
`
`Petitioner asserts that Dr. Palmer “initially testified that ‘thermal mass’ refers
`
`to ‘the speed with which the temperature inside the structure will change in response
`
`to changes in outside temperatures.’” Reply at 4 (citing Ex.1022, 27:19-28:15,
`
`115:1-13). But this ignores that Dr. Palmer testimony was in response to questions
`
`about the teachings of the ‘550 patent. Ex. 1022, 27:19-28:20. Petitioner than
`
`improperly argues that Dr. Palmer then “ultimately conceded that ‘thermal mass,’ as
`
`used in the field, actually refers to ‘an amount of energy that …a structure or system
`
`would absorb to result in a … particular change in temperature.’” Reply at 4 (citing
`
`Ex.1022, 35:7-27:5). But this ignores Dr. Palmer specifically testifying that the
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`“term ‘thermal mass’ represents a characteristic of how much energy a system needs
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`IPR2022-00969
`Patent No. 8,596,550
`to absorb in order to effect a change in temperature. So it’s not time based, it's energy
`
`based, strictly speaking, as it’s typically used.” Ex. 1022, 36:7-11. Dr. Palmer
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`expressly noted that “thermal mass” could be “BTUs per degree Fahrenheit. It could
`
`be joules per second. There’s a couple of different ways that it could be
`
`documented.” Id. at 37:3-5. Thus, Dr. Palmer did not concede anything, but rather
`
`provided testimony about the teachings of the ‘550 patent and how a POSITA would
`
`have understood the term “thermal mass.”
`
`Petitioner also states that “[e]ven Dr. Palmer could not dispute that Ehlers’
`
`language describes a rate of inside temperature change.” Reply at 4. But Petitioner
`
`appears to be referencing Dr. Palmer’s testimony about one isolated portion of
`
`Ehlers. Ex. 1022, 52:6-15. Dr. Palmer makes clear that Ehlers description of “3
`
`degrees per hour” is not necessarily “thermal mass.” Id. Further, when asked why
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`“Ehlers refers to that as thermal gain,” Dr. Palmer testified that “this one sentence is
`
`completely inconsistent with the way [Ehlers] used thermal gain throughout the rest
`
`of his specification.” Id. at 52:19-53:2. Petitioner ignores this, despite Dr. Auslander
`
`admitting that there is nowhere else in Ehlers that describes the thermal gain rate as
`
`a time value measurement. Ex. 2011, 21:7-12.
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`IPR2022-00969
`Patent No. 8,596,550
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`2.
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`Figs. 3D, 3E, and 3F of Ehlers
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`Petitioner admits that Fig. 3 of Ehlers “plots inside temperatures over time in
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`response to different outside temperatures.” Reply at 5. But this is not determining
`
`a “change in inside temperatures in response to changes in outside temperatures.”
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`
`
`Ex. 1004, Fig. 3D. Again, if read literally, Ehlers’ description would indicate that
`
`the thermal gain rate would be a continuously increasing value between 72 and 80
`
`(units unspecified), but this is not consistent with other discussion in Ehlers ‘330.
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`Ex. 2006, ¶39. Petitioner argues that EcoFactor’s interpretation of Fig. 3D involves
`
`“strained logic.” Reply at 7. But this ignores that proper interpretation of Fig. 3D
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`IPR2022-00969
`Patent No. 8,596,550
`requires reading the subsequent paragraphs. Even Dr. Auslander admits that Figs.
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`3D, 3E, and 3G are related. Ex. 2011, 24:1-9.
`
`Ehlers continues his explanation of thermal gain as follows: “The second step
`
`is to learn the operational run characteristics of the HVAC system as a function of
`
`the thermal gain. Since the outside temperature varies continuously during a 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
`
`thermal gain rate and the associated HVAC run time.” Ex. 1004, ¶254. As noted in
`
`the Patent Owner’s Response (“POR”), 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.
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`IPR2022-00969
`Patent No. 8,596,550
`This clearly illustrates that in the middle of the night (e.g., hours 0-3 and 22-24) 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 desired
`
`temperature setpoint, and the thermal gain is nearly three times greater in the
`
`afternoon hours. Ex. 2006, ¶41. However, the thermal gain cannot be interpreted as
`
`being a rate of inside temperature change because Ehlers expressly states that “it
`
`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
`
`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
`
`affirmed by the plot of HVAC Run% which increases when the greater rate of
`
`thermal energy is being absorbed by the structure, in order to hold the temperature
`
`constant, and lowers when the energy absorbed by the structure is at a lower rate.
`
`Ex. 2006, ¶41.
`
`Petitioner argues that “Fig. 3D shows the tracking of inside temperatures as
`
`they approach warmer outside temperatures, when the system cycles off from given
`
`setpoints (i.e., from a particular setpoint, the system switches off and the inside
`
`
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`8
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`IPR2022-00969
`Patent No. 8,596,550
`temperature begins to rise).” Reply at 7. But Petitioner provides no support in Ehlers
`
`for this bare assertion other than that Ehlers “uses the learned thermal gain
`
`characteristics.” Ex. 1004, ¶256.
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`The distinction between the thermal gain rate and the rate of change of
`
`temperature is further illustrated in Ehlers’ discussion of his Fig. 3G. Ex. 2006, ¶42.
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`In fact, Fig. 3G has nearly the same thermal gain plot as Fig. 3E, as illustrated below
`
`in the superposition of the two plots but allows indoor temperature to change by up
`
`to 4 oF. Ex. 2006, ¶43.
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`9
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`IPR2022-00969
`Patent No. 8,596,550
`
`
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`Thus, when looking at Ehler’s usage of “thermal gain rate” was a whole,
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`Petitioner’s usage of Ehlers’ phrase “thermal gain rate” is directly contrary to Ehlers’
`
`own usage. Ex. 2006, ¶44.
`
`Petitioner improperly attempts to equate the teachings of Ehlers with the
`
`teachings of the ‘550 patent. Reply at 8. In doing so, Petitioner ignores that the ‘550
`
`patent contains numerous references to “the speed with the temperature inside a
`
`given building will change in response to changes in outside temperature.” Ex. 1001,
`
`5:27-29; see also 5:7-8, 35-40. This is in stark contrast to the single teaching in
`
`Ehlers, which in context, does not disclose this. Ex. 2011, 21:7-12.
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`10
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`IPR2022-00969
`Patent No. 8,596,550
`Petitioner also asserts that EcoFactor’s argument is “that if the thermal gain
`
`rate was in degrees per hour, Figs. 3E and 3G would indicate a continuous increase
`
`in inside temperatures over a 24-hour period” is wrong, as a “POSITA would not
`
`have found that to be a logical interpretation of those figures.” Reply at 9. Petitioner
`
`asserts this is because “HVAC systems cycle on and off to maintain a fairly constant
`
`inside temperature.” Id. But neither Petitioner nor Dr. Auslander cited to any
`
`disclosure in Ehlers of indicating the change in inside temperature when the HVAC
`
`system in ON. Ex. 2011, 33:23-34:2. Moreover, a POSITA would recognize the
`
`EcoFactor’s interpretation of “thermal gain” is consistent with Figs. 3E and 3G.
`
`Petitioner further argues that “in Fig. 3G, the projected rate of thermal gain
`
`(change of inside temperature per unit time) for the current outdoor temperature is
`
`used to calculate a new setpoint.” Reply at 11. But nothing Petitioner cites in support
`
`addresses changes in inside temperature, either when the HVAC system is ON or
`
`when it is OFF. Further, nothing Petitioner cites indicates how the inside temperature
`
`changes based on changes in outside temperature whenever there is allegedly a new
`
`calculated setpoint.
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`To avoid this, Petitioner argues that “EcoFactor asserts that Ehlers’ thermal
`
`gain rate indicates a continuous increase in inside temperature, even with the HVAC
`
`operating normally to maintain the setpoint.” Reply at 12. This is wrong.
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`EcoFactor’s assertion is based on Petitioner’s incorrect interpretation of “thermal
`
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`11
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`IPR2022-00969
`Patent No. 8,596,550
`gain rate” in Ehlers. Thus, it is Petitioner’s interpretation of Ehlers that is wrong, not
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`EcoFactor’s.
`
`3.
`
`Predicted Rate of Change of Inside Temperatures
`Inside the Structure in Response to Changes in
`Outside Temperatures
`Petitioner asserts that “a POSITA would have understood that Ehlers’ Figs.
`
`3D, 3E and 3G (and associated descriptions) indicate the storage of ‘a plurality of
`
`internal temperature measurements … and a plurality of outside temperature
`
`measurements’ and the use of ‘the stored data to predict to predict a rate of change
`
`of temperatures inside the structure in response to changes in outside temperatures.’”
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`Reply at 13. However, this is incorrect, because, for the reasons set forth above,
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`Petitioner misunderstands Ehlers.
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`Again, Dr. Auslander errs in his assertion that “thermal gain rate [] is the rate
`
`of change in temperatures inside the structure,” as discussed in detail above. Ex.
`
`2006, ¶60. The “thermal gain rate” is not the “rate of change in temperatures inside
`
`the structure.” Dr. Auslander’s assertion that “thermal gain rate” means “rate of
`
`change in inside temperature” is incompatible with Figs. 3E and 3G. If thermal gain
`
`rate were interpreted to be synonymous with the rate of change in inside temperature,
`
`then these figures would indicate that the temperature was continuously increasing
`
`by 1 to 3 degrees per hour, for a total of nearly 42 oF. over the 24-hour period,
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`regardless of the operation of the HVAC system. That is not a plausible reading of
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`12
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`IPR2022-00969
`Patent No. 8,596,550
`Ehlers. Rather, Ehlers Figs. 3E and 3G make clear that the “thermal gain rate”
`
`remains positive throughout a 24-hour period (despite significant HVAC runtime),
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`which is quite different from the rate of change in inside temperatures over that same
`
`24-hour period.
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`Furthermore, Dr. Auslander agrees that information presented in Fig. 3D of
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`Ehlers only relates to changes in temperature when the HVAC system is OFF. Ex.
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`2008, 31:25-32:3. Thus, the “thermal gain rates” qualitatively illustrated in Fig. 3D
`
`are only for a building with an HVAC system turned OFF. Ex. 2006, ¶62. It does not
`
`provide thermal gain rates (or indoor temperatures) for a building when the HVAC
`
`system is ON and functioning. Dr. Auslander agrees. Ex. 2008, at 32:4-16.
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`Furthermore, it does not provide information about changes in inside temperature
`
`under conditions when the HVAC system is actively cooling. Ex. 2006, ¶62. Thus,
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`for the reasons set forth above, and as set forth in EcoFactor’s POR, Petitioner’s
`
`position is incorrect.
`
`For the first time, Petitioner appears to be arguing that the change in
`
`temperature from one day to the next would meet this claim limitation. Reply at 13.
`
`However, Petitioner provides no reference to the Petition for where this argument
`
`was previously made. This new argument should be disregarded. PTAB
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`Consolidated Trial Practice Guide November 2019, at 73 (“Petitioner may not
`
`
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`13
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`IPR2022-00969
`Patent No. 8,596,550
`submit new evidence or argument in reply that it could have presented earlier, e.g.
`
`to make out a prima facie case of unpatentability.”)
`
`4.
`
`Calculate Scheduled Setpoint Programming … for
`One or More Times Based on the Predicted Rate of
`Change, the Scheduled Programming Comprising at
`Least a First Automated Setpoint
`Petitioner asserts that “Ehlers uses its learned predictions pertaining to how
`
`quickly an inside temperature will rise in response to different outside temperatures
`
`to create new setpoint programming.” Reply at 13. But as noted in EcoFactor’s POR,
`
`Ehlers does not calculate automated setpoints. POR at 33-38.
`
`Dr. Aulander does not cite to anything in Ehlers disclosing an automated
`
`setpoint being calculated. Ex. 2011, 37:14-19. Dr. Auslander further admits that the
`
`user of the Ehlers’ system sets the variance based on comfort and economy. Id. at
`
`37:20-38:8. Thus, when the economic incentives are no longer in effect, the system
`
`will stop permitting the temperature to increase in the home to the offset specified
`
`by the customer and instead use the initial setpoint provided by the customer. But
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`these setpoint parameters are supplied by the user, not calculated by a computer. Ex.
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`2006, ¶83.
`
`Petitioner argues that “Ehlers clearly describes calculating a new setpoint that
`
`is different from the one selected by a user.” Reply at 14. But none of the examples
`
`cited by Petitioner describe a new offset that is calculated. Rather, they describe the
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`system varying the temperature up to the offset provided by the user. Ex. 1004, ¶255
`
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`14
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`IPR2022-00969
`Patent No. 8,596,550
`(“permit the system in this example to vary the temperature in the home from the
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`normal set point of 72 F by the 4 degree offset …”). This is not an automated offset.
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`Tellingly, the only citations to Ehlers by Petitioner and Dr. Auslander describe the
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`user provided offset and the user provided variance, not a new automated setpoint.
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`Petitioner also argues that “ramping from one temperature to the next” is
`
`calculating an automated setpoint because it involves “selecting intermediate
`
`setpoints (time and temperature) to allow the system to reach a desired user setting
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`by a desired time.” Reply at 15. While Petitioner cites to various portions of Ehlers
`
`in support of this assertion, none actually support this proposition, as there is no
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`disclosure in Ehlers of intermediate setpoints that are calculated automatically.
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`Petitioner’s arguments are non-sensical, as they allege an automated setpoint is
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`calculated because “reaching 72° F. by 6pm may require setting the temperature to
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`that temperature by 5pm.” Reply at 16. However, 72 degrees F. was set by the user.
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`Thus, changing the time would not be changing the temperature. Petitioner’s
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`citations to Dr. Palmer’s testimony do not correct this, as these citations involve
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`either a hypothetical questions about generic systems, not about Ehlers (Ex. 1022,
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`37:19-39:4), or about how ramping generally works in Ehlers (Ex. 1022, 63:18-
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`64:18).
`
`Finally, Petitioner attempts to use a particular statement from the ‘550 patent
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`to support their invalidity analysis. Reply at 16. But nowhere does Petitioner provide
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`
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`15
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`IPR2022-00969
`Patent No. 8,596,550
`any analysis linking this statement to the claims at issue. Petitioner further argues
`
`that EcoFactor is “silent as to an example [from the ‘550 patent] corresponding to
`
`this claim element.” Reply at 16. But this improperly attempts to use the teaching of
`
`the ‘550 patent against it. The question is whether ramping, as used in Ehlers,
`
`involves calculating an automated setpoint. It does not.
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`5.
`
`Comparing the One or More Automated Setpoints
`Associated with Said Scheduled Setpoint
`Programming with Said Actual Setpoint
`Programming
`Petitioner argues that “Ehlers’ system learns from user preferences by
`
`detecting manual changes to the setpoint” and that “Ehlers does not state that it learns
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`from user adjustment only when those adjustments are to the user’s own settings.”
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`Reply, 16-17. But as noted above, Ehlers does not teach calculating automated
`
`setpoints. Therefore, there can be no comparison of an automated setpoint with a
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`scheduled setpoint. At best, Dr. Auslander alleges that Ehlers “detect when a user
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`has made a manual change to a setpoint” and that Ehlers learns what temperatures
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`the user prefers. Ex. 1002, ¶124. But there is nothing indicating that the comparison
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`involves a user’s actual setpoint and a setpoint calculated by a computer. Ex. 2006,
`
`¶89.
`
`Petitioner acknowledges “Ehlers description of
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`learning from user
`
`adjustments is not directly tied to the use of predictive models to minimize HVAC
`
`runtimes” but then asserts that “the same could be said of the ‘550 patent.” Reply at
`
`
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`16
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`IPR2022-00969
`Patent No. 8,596,550
`17. But Petitioner’s bare statement without more does not establish that a POSITA,
`
`looking at Ehlers, would have made this combination.
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`6. Wruck
`Petitioner relies on Wruck for allegedly “show[ing] a common way for
`
`detecting such changes [in a setpoint] – determining the difference between the
`
`scheduled setting and the actual setting.” Reply at 18. Petitioner then argues that
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`“[t]o detect the change, Wruck’s system determines the ‘Delta value’ between the
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`actual setpoint and the scheduled setpoint. If the ‘Delta value’ is greater than zero,
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`Wruck determines that a change has been made.” Id.
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`Petitioner cites to numerous portions of Wruck to support its position.
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`However, not a single one of those citations explains what the “Delta Value” in
`
`Wruck means. The only reference to “Delta Value” in the entire disclosure of Wruck
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`is found in table 28, the relevant part of which is shown below, with highlighting
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`added:”
`
`
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`17
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`

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`IPR2022-00969
`Patent No. 8,596,550
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`
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`Ex. 1002, ¶126.
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`But again, Wruck never explains what the “Delta value” is. Ex. 2006, ¶94.
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`And nowhere does either Petitioner or Dr. Auslander cite to anything in Wruck that
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`provides such an explanation. Pet. at 44-45; Ex. 1002, ¶¶126-128; Reply at 18-19.
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`This is not surprising, as “Delta value” is a single entry in a large data Table 28:
`
`
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`18
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`

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`IPR2022-00969
`IPR2022-00969
`Patent No. 8,596,550
`Patent No. 8,596,550
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`TABLE 28
`
`Display
`Display Dependency
`
`Report
`Text Description
`FirmwareVersion: 0.0.19
`
`Comments
`
`ComVersion: 1
`ReProgrammerVersion:
`SubBaseID: T7350D, 3H3C
`CommunicatingSubBase: Yes
`RoomTemperature: 75 F.
`DischargeAirTemp: 105 F.
`configured
`Room RH: 33%
`configured
` OutdoorAir: 25 F
`configured
`§RemoteSetPtOffset: 2 F.
`configured
`value <>0Q TemporarySetPt: 76 F.
`
`value > 0
`
`BypassTime: 180 min
`
`value > 0
`
`HolidayDaysRemaining: 7
`TimeSchedule: OCC
`
`config.dischAirSensor
`config. humiditySensor
`config.oDAirSensor
`config.remoteSetPoint
`Display actual temporary
`setpoint if Delta value < > 0
`Total error reported by the
`control loop.
`Time until next scheduled
`change of occupancystate:
`
`Current scheduled occupancy
`state
`> OCC
`: UNOCC
`: BYPASS
`: STANDBY
`: OCCNUL
`
`wWNEO
`
`a c
`
`status1.nextState
`status1.occSensor
`
`status1.holiday
`
`status2.heatStgsOn configured§_HeatingStagesActive: 2
`Control = HeatPump
`configured
`§AuxHeatingStagesActive: 2
`status2.coolStgsOn
`configured
` CoolingStagesActive: 1
`SubBaseID = M
`status2.percentCmdHeat
`configured§HeatingOutput: 57%
`SubBaseID = M
`
`status2.percentCmdCool configured§CoolingOutput: 33%
`status2.outFan
`status2.outCool1
`status2.outCool2
`status2.outCool3
`status2.outAux
`status2.outHeat1
`Control = heatpump
`configured§O/BChangeoverOver: ON
`config. heatPump
`
`AP
`
`OZOZGIVICr<se<<
`
`PZZCPAAZAZZOSOSFUIrAGZ
`
`Thermostat Data
`
`version.major
`version.minor
`version. bug
`version.commVer
`version.rePgmrVer
`status3.subBaseType
`subBase.connected
`statusAnalog.spaceTemp
`statusAnalog.dischTemp
`statusAnalog.spaceHumidity
`statusAnalog.oDTemp
`statusAnalog.remoteStPtOffset
`statusAnalog.temporarySetPt
`status1.totalError
`
`status1.bypassTime
`status1.tuncos
`
`status1.DaysLeftKeypadHoliday
`status.currentState
`
`
`
`status2.outHeat2
`status2.outHeat3
`status2.effMode
`
`configured§OccSensor: 0 onfig.occSensor = 1
`
`FanStatus: ON
`status2.fan
`u>
`status2.auxRelay
`NotHeatPmp AND Subbase > 1
`configured|Economizer: ON
`config.auxOpMode = 1
`
`configured§HotGasDehumidification: config.auxOpMode = 2
`ON
`
`EffectiveMode: Cool
`
`Effective operating mode:
`0: OFF_MODE
`: COOL_MODE
`: HEAT_MODE
`: EMERG_HEAT_MODE
`: REHEAT
`: MANUAL
`: FACTORY_TEST
`
`WN
`ans
`
`
`
`
`
`19
`19
`
`

`

`IPR2022-00969
`Patent No. 8,596,550
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`
`
`Thus, Wruck provides no indication of what “Delta value” is, and nothing in
`
`Wruck requires that “Delta value” be the difference between user setpoint and
`
`calculated setpoint. Ex. 2006, ¶95. Indeed, Dr. Auslander, when asked in deposition,
`
`was unable to provide any support from the specification of Wruck for his
`
`conclusory assertion beyond the ambiguous note in Table 28. Ex. 2008, 23:1-19.
`
`Petitioner then supports its position by arguing that Dr. Palmer admitted that
`
`“‘Delta’ is known to mean ‘a change.’” Reply at 19. But even if Wruck intended
`
`“Delta” to mean a change, there is nothing in Wruck that indicates what is changed.
`
`As Dr. Palmer testified:
`
`There’s lots of different interpretations. I mean, it could be if there’s a
`
`change to occupancy -- one occupancy mode to another occupancy
`
`mode. If there's been a change from heating to cooling. If there's been
`
`
`
`20
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`

`

`IPR2022-00969
`Patent No. 8,596,550
`a change from temperature -- or from the active -- or HVAC
`
`equipment on versus HVAC equipment off. Wruck does not say what
`
`delta value is intended to mean in this context, and does not give
`
`anything in the body of his specification that elucidates that question.
`
`Ex. 1022, 135:18-136-6. Tellingly, neither Petitioner nor Dr. Auslander address this.
`
`C. Ols, Boait, and Wruck Does Not Render Claims 17-23
`Unpatentable
`Petitioner and Dr. Auslander allege that the combination of Ehlers ‘330,
`
`Wruck, and Harter renders obvious claims 9-16 of the ‘550 patent. See, e.g., Pet. at
`
`12, 56; Ex. 1002 at ¶150. This is incorrect. Ex. 2006, ¶98.
`
`1.
`
`There is No Motivation to Combine Ols and Boait
`
`Petitioner ignores the differences in the control system in Ols and Boiat in
`
`arguing that a POSITA would have been motivated to combine them. While Boiat
`
`does include one single reference to use in an “air based system” (Ex. 1007, 3:2-13),
`
`the entirety of the Boait disclosure is directed toward a water based heating and
`
`cooling system. Such as system would require control of water, rather than forced
`
`air, for environmental control. Petitioner and Dr.