Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 1 of 9 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. _______________
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`)))))))))
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`ECOBEE, INC.,
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`Plaintiff,
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`v.
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`ECOFACTOR, INC.,
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`Defendant.
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`COMPLAINT FOR DECLARATORY JUDGMENT
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`
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`Plaintiff ecobee, Inc. (“ecobee”), by its attorneys, files this Complaint against Defendant
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`EcoFactor, Inc. (“EcoFactor”) and alleges as follows:
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`NATURE OF THE ACTION
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`1. This is an action for declaratory judgment of non-infringement of U.S. Patent Nos.
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`8,019,567 (the “’567 patent”), 10,612,983 (the “’983 patent”), 8,596,550 (the “’550 patent”), and
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`8,886,488 (the “’488 patent”) (collectively, the “Patents-In-Suit”, attached as Exhibits 1-4,
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`respectively) against EcoFactor, pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201-
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`02, and the patent laws of the United States, 35 U.S.C. § 1 et seq., and for other relief the Court
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`deems just and proper.
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`THE PARTIES
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`2. Plaintiff ecobee, Inc. is a Canadian corporation with its principal place of business at 25
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`Dockside Drive, Suite 700, Toronto, ON M5A 0B5, Canada.
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`3. Upon information and belief, Defendant EcoFactor, Inc. is a privately held company
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`organized and existing under the laws of the state of Delaware, having its principal place of
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`business at 441 California Avenue, Number 2, Palo Alto, California 94306
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 1
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 2 of 9 PageID #: 2
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`JURISDICTION AND VENUE
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`4. ecobee files this complaint against EcoFactor pursuant to the patent laws of the United
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`States, Title 35 of the United States Code, with a specific remedy sought based upon the laws
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`authorizing actions for declaratory judgment in the federal courts of the United States, 28 U.S.C.
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`§§ 2201 and 2202, and under the patent laws of the United States, 35 U.S.C. §§ 1-390.
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`5. This Court has subject matter jurisdiction over this action, which arises under the United
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`States’ patent laws, pursuant to 28 U.S.C. §§ 1331, 1338(a), and 2201(a).
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`6. This Court has personal jurisdiction over EcoFactor, which, on information and belief, is
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`incorporated within this district.
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`7. A substantial controversy of sufficient immediacy and reality exists between the parties
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`to warrant the issuance of a declaratory judgment. EcoFactor has filed a complaint with the
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`International Trade Commission (“ITC”), Docket No. 3535, claiming that ecobee (among other
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`defendants) has infringed the Patents-In-Suit because ecobee designed, developed, manufactured,
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`tested, used, offered for sale, sold, and/or imported “smart thermostats, smart HVAC systems,
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`smart HVAC control systems, and components thereof.” A true and correct copy of EcoFactor’s
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`public ITC complaint is attached as Exhibit 5. The products accused in the ITC Investigation are
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`the ecobee3 lite and the ecobee SmartThermostat with Voice Control (“Accused Products”).
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`ecobee denies infringement of the claims of the Patents-In-Suit. An actual and justiciable
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`controversy therefore exists under 28 U.S.C. §§ 2201-2202 between ecobee and EcoFactor as to
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`whether ecobee is infringing or has infringed the Patents-In-Suit.
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`8. Venue is proper in this judicial district based on 28 U.S.C. § 1391(b)–(c).
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`2
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 2
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 3 of 9 PageID #: 3
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`FACTUAL BACKGROUND
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`PATENTS-IN-SUIT
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`9. U.S. Patent No. 8,019,567 (the “’567 patent”), entitled “System and Method for
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`Evaluating Changes in the Efficiency of an HVAC System” and attached hereto as Exhibit 1,
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`states on its cover that it was issued on September 13, 2011 to named inventors John Steinberg
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`and Scott Hublou. On information and belief, the ’567 patent is currently assigned to EcoFactor.
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`10. U.S. Patent No. 10,612,983 (the “’983 patent”), entitled “System and Method for
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`Evaluating Changes in the Efficiency of an HVAC System” and attached hereto as Exhibit 2,
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`states on its face that it was issued on April 7, 2020 to named inventors John Steinberg and Scott
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`Hublou. On information and belief, the ’983 patent is currently assigned to EcoFactor.
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`11. U.S. Patent No. 8,596,550 (the “’550 patent”), entitled “System, Method and Apparatus
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`for Identifying Manual Inputs to and Adaptive Programming of a Thermostat” and attached
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`hereto as Exhibit 3, states on its cover that it was issued on December 3, 2013 to named
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`inventors John Steinberg, Scott Hublou and Leo Cheung. On information and belief, the ’550
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`patent is currently assigned to EcoFactor.
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`12. U.S. Patent No. 8,886,488 (the “’488 patent”), entitled “System and Method for
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`Calculating the Thermal Mass of a Building” and attached hereto as Exhibit 4, states on its face
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`that it was issued on November 11, 2014 to named inventors John Steinberg and Scott Hublou.
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`On information and belief, the ’488 patent is currently assigned to EcoFactor.
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`DISPUTE BETWEEN ECOBEE AND ECOFACTOR
`CONCERNING THE PATENTS-IN-SUIT
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`13. On February 25, 2021, EcoFactor filed the ITC Complaint alleging that ecobee, among
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`others, purportedly infringes certain claims of the Patents-In-Suit. Exhibit 5 (ITC Complaint) ¶¶
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`76, 90-96. In the ITC Complaint, EcoFactor identifies as ecobee Accused Products the ecobee3
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`3
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 3
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 4 of 9 PageID #: 4
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`lite and the ecobee SmartThermostat with Voice Control. Exhibit 5 (ITC Complaint) ¶ 90.
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`EcoFactor’s ITC Complaint further alleges that ecobee infringes “either literally or pursuant to
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`the doctrine of equivalents, and either directly or indirectly under a theory of inducement or
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`contributory infringement.” Id.
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`14. Accordingly, an actual and justiciable controversy exists between ecobee and EcoFactor
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`concerning whether ecobee infringes one or more claims of any of the Patents-In-Suit. ecobee
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`now seeks a declaratory judgment that ecobee does not infringe the claims of the Patents-In-Suit.
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`COUNT I:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’567 PATENT
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`15. ecobee hereby restates and incorporates by reference the allegations set forth in
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`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
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`16. EcoFactor claims to own all right, title, and interest in the ’567 patent by assignment.
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`17. In its ITC complaint, EcoFactor alleges that ecobee directly and indirectly infringes the
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`’567 patent. See, e.g., Ex. 5 ¶ 93.
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`18. ecobee and its Accused Products do not include, practice, induce others to practice, or
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`contribute to others practicing at least the following limitations of the claims of the ’567 patent:
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`“evaluating changes in the operational efficiency of an HVAC system over time,” “at least one
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`HVAC control system,” “receiv[ing] temperature measurements from at least a first structure,”
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`“receiv[ing] status of [an] HVAC system,” “receiv[ing] measurements of outside temperatures,”
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`“compar[ing] said temperature measurements from said first structure,” “compar[ing[ the inside
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`temperature of said first structure and the outside temperature over time to derive an estimation
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`for the rate of change in inside temperature of said first structure,” “compar[ing] an inside
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`temperature recorded inside the first structure with said estimation for the rate of change in
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`inside temperature of said first structure to determine whether the operational efficiency of the
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`4
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 4
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 5 of 9 PageID #: 5
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`HVAC system has decreased over time,” “analyz[ing[ the changes in the operational efficiency
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`over time to suggest a cause of degradation,” “compar[ing] [] temperature measurements from
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`[a] first HVAC system and [a] second HVAC system and said outside temperature measurements
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`over time to determine the relative efficiency of the first HVAC system and the second HVAC
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`system,” “comparing with one or more processors said temperature measurements from said first
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`structure with outside temperature measurements over time to derive expected temperature
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`measurements of a rate of change in inside temperature,” and “compar[ing] an inside temperature
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`recorded inside the first structure with said expected temperature measurements to determine
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`whether the operational efficiency of the HVAC system has decreased.”
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`19. ecobee is entitled to a judgment declaring that ecobee does not directly or indirectly
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`infringe any asserted claims of the ’567 patent, either literally or under the doctrine of
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`equivalents.
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`COUNT II:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’983 PATENT
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`20. ecobee hereby restates and incorporates by reference the allegations set forth in
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`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
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`21. EcoFactor claims to own all right, title, and interest in the ’983 patent by assignment.
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`22. In its ITC complaint, EcoFactor alleges that ecobee directly and indirectly infringes the
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`’983 patent. See, e.g., Ex. 5 ¶ 94.
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`23. ecobee and its Accused Products do not include, practice, induce others to practice, or
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`contribute to others practicing at least the following limitations of the claims of the’983 patent:
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`“predict[ing], based at least in on the first data from the sensor, the second data from the network
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`connection, and the first temperature setpoint, the time necessary for the HVAC system to
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`operate in order to reach the temperature value by the time value,” “analyzing the stored
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`5
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 5
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 6 of 9 PageID #: 6
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`historical values of the first data and second data,” and “calculat[ing] a performance
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`characteristic of the HVAC system based at least on the historical values of the first data and
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`second data.”
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`24. ecobee is entitled to a judgment declaring that ecobee does not directly or indirectly
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`infringe any asserted claims of the ’983 patent, either literally or under the doctrine of
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`equivalents.
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`COUNT III:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’550 PATENT
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`25. ecobee hereby restates and incorporates by reference the allegations set forth in
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`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
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`26. EcoFactor claims to own all right, title, and interest in the ’550 patent by assignment.
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`27. In its ITC complaint, EcoFactor alleges that ecobee directly and indirectly infringes the
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`’550 patent. See, e.g., Ex. 5 ¶ 95.
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`28. ecobee and its Accused Products do not include, practice, induce others to practice, or
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`contribute to others practicing at least the following limitations of the claims of the ’550 patent:
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`“detecting manual changes to the setpoint for a thermostatic controller,” “using the stored data to
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`predict a rate of change of temperatures inside the structure in response to at least changes in
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`outside temperatures,” “calculating [] scheduled programming of setpoints in the thermostatic
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`controller based on the predicted rate of change,” “generating with one or more computer
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`processors, a difference value based on comparing an actual setpoint at the first time for said
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`thermostatic controller to the first automated setpoint for said thermostatic controller,” “detecting
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`a manual change to the first automated setpoint by determining whether said actual setpoint and
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`said first automated setpoint are the same or different based on said difference value,” “[a]
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`method for incorporating manual changes to the setpoint for a thermostatic controller into long-
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`6
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 6
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 7 of 9 PageID #: 7
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`term programming of said thermostatic controller,” “compar[ing] the actual setpoint at the first
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`time for said thermostatic controller to the first automated setpoint for said thermostatic
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`controller,” and “detecting a manual change to the first automated setpoint by determining
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`whether said actual setpoint and said automated setpoint are the same or different.”
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`29. ecobee is entitled to a judgment declaring that ecobee does not directly or indirectly
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`infringe any asserted claims of the ’550 patent, either literally or under the doctrine of
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`equivalents.
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`COUNT IV:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’488 PATENT
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`30. ecobee hereby restates and incorporates by reference the allegations set forth in
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`paragraphs 1 through 14 of this Complaint as if fully set forth herein.
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`31. EcoFactor claims to own all right, title, and interest in the ’488 patent by assignment.
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`32. In its ITC complaint, EcoFactor alleges that ecobee directly and indirectly infringes the
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`’488 patent. See, e.g., Ex. 5 ¶ 96.
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`33. ecobee and its Accused Products do not include, practice, induce others to practice, or
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`contribute to others practicing at least the following limitations of the claims of the ’488 patent:
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`“calculating a value for the operational efficiency of [an HVAC] system,” “at least one HVAC
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`control system,” “computer hardware that is configured to receive outside temperature
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`measurements,” “calculat[ing] [] one or more predicted rates of change in said inside temperature
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`measurements at said first location based on the status of the HVAC system,” “relat[ing] said one
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`or more predicted rates of change to said outside temperature measurements,” and “compar[ing]
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`[] at least one predicted temperature based on the one or more predicted rates of change with an
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`actual inside temperature measurement.”
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`7
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 7
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 8 of 9 PageID #: 8
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`34. ecobee is entitled to a judgment declaring that ecobee does not directly or indirectly
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`infringe any asserted claims of the ’488 patent, either literally or under the doctrine of
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`equivalents.
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`ecobee respectfully requests this Court grant relief as follows:
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`PRAYER FOR RELIEF
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`A. Declaring that ecobee does not directly or indirectly infringe any claim of the’567
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`patent, either literally or under the doctrine of equivalents;
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`B. Declaring that ecobee does not directly or indirectly infringe any claim of the’983
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`patent, either literally or under the doctrine of equivalents;
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`C. Declaring that ecobee does not directly or indirectly infringe any claim of the’550
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`patent, either literally or under the doctrine of equivalents;
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`D. Declaring that ecobee does not directly or indirectly infringe any claim of the’488
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`patent, either literally or under the doctrine of equivalents;
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`E. Declaring that judgment be entered in favor of ecobee and against EcoFactor on
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`ecobee’s claims;
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`F. Order that this case is “exceptional” pursuant to 35 U.S.C. § 285 entitling ecobee to an
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`award of its reasonable and necessary attorneys’ fees, expenses, and costs, and pre-judgment
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`interest thereon;
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`G. Order awarding ecobee its costs of suit incurred in this action; and
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`H. Granting to ecobee such other and further relief as this Court deems just and proper.
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`8
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 8
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`

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`Case 1:21-cv-00323-MN Document 1 Filed 03/02/21 Page 9 of 9 PageID #: 9
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`OF COUNSEL:
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`Timothy Carroll
`Steven Lubezny
`Catherine N. Taylor
`DENTONS US LLP
`233 South Wacker Drive, Suite 5900
`Chicago, IL 60606
`Tel: (312) 876 8000
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`Manny J. Caixeiro
`DENTONS US LLP
`601 South Figueroa Street, Suite 2500
`Los Angeles, CA 90017
`Tel: (213) 623-9300
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`Dated: March 2, 2021
`7073479 / 51061
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`Respectfully submitted,
`POTTER ANDERSON & CORROON LLP
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`By: /s/ David E. Moore
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Joseph D. Farris (#6657)
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`jfarris@potteranderson.com
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`Attorneys for Plaintiff ecobee, Inc.
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`9
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2002
`Page 9
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