IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ECOBEE, INC.,
`
`Plaintiff,
`
`C.A. No. 21-323-MN
`
`v.
`
`ECOFACTOR, INC.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`ECOBEE’S DISCLOSURE OF INITIAL INVALIDITY CONTENTIONS
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Revised Scheduling Order (Dkt. No. 29), Plaintiff ecobee Inc. (“ecobee”)
`
`hereby provides its initial invalidity contentions.
`
`ecobee’s invalidity contentions address U.S. Patent No. 8,019,567 (“the ’567 patent”); U.S.
`
`Patent No. 10,612,983 (“the ’983 patent”); U.S. Patent No. 8,596,550 (“the ’550 patent”); and U.S.
`
`Patent No. 8,886,488 (“the ’488 patent”) (collectively, “the asserted patents”). Defendant
`
`EcoFactor, Inc. (“EcoFactor”) asserts claims 1, 2, 5, 7, 15, 16, 19, and 20 of the ’567 patent, claims
`
`1-2, 5, 7-10, and 13-15 of the ’488 patent, claims 1-3, and 16-18 of the ’983 patent, and claims 1,
`
`5-7, 9, 13-15, and 17 of the ’550 patent (collectively, “the asserted claims”).
`
`II.
`
`GENERAL RESERVATIONS
`
`The contentions set forth below are initial contentions as required in the Revised
`
`Scheduling Order. ecobee reserves the right to revise or supplement these contentions in light of
`
`party and third-party discovery, Ecofactor’s infringement contentions, any claim construction
`
`order, review and analysis by expert witnesses, and further investigation and discovery regarding
`
`the defenses asserted by ecobee. For example, ecobee expressly reserves the right to amend these
`
`contentions after review of EcoFactor’s final infringement contentions, after issuance of a claim
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 1
`
`

`

`
`
`construction order, should EcoFactor provide any information that it failed to provide in its
`
`disclosures, or if EcoFactor amends its disclosures in any way. Further, because discovery is
`
`ongoing, ecobee reserves the right to revise, amend, and/or supplement the information provided
`
`herein, including identifying other bases of invalidity based on the identified and charted
`
`references, and also charting, and relying on additional references. Further, ecobee reserves the
`
`right to revise, amend, or supplement when EcoFactor provides additional discovery. Further,
`
`ecobee reserve the right to revise its ultimate contentions concerning the invalidity of the asserted
`
`claims, which may change depending upon further and ongoing investigation, the construction of
`
`the asserted claims and/or positions that EcoFactor or expert witnesses may take concerning claim
`
`construction, infringement, and/or invalidity issues.
`
`Prior art not included in this disclosure, whether known or not known to ecobee, may
`
`become relevant. In particular, ecobee is currently unaware of the extent, if any, to which
`
`EcoFactor will contend that limitations of the asserted claims are not disclosed in the prior art
`
`identified by ecobee. To the extent that such an issue arises, ecobee reserves the right to identify
`
`other prior art that would anticipate and/or render obvious the allegedly missing limitations of the
`
`claims, alone and/or in combination with identified or additional prior art. Further, ecobee reserves
`
`the right to rely on any prior art or item sought or to be sought from third parties that are solely
`
`within those third parties’ possession, custody, or control, and have not yet been produced during
`
`discovery. ecobee reserves the right to rely on any prior art found in the prosecution histories of
`
`the applications leading to the asserted patents or otherwise identified in connection with this
`
`litigation.
`
`To the extent that the following contentions reflect constructions of claim limitations
`
`consistent with or implicit in EcoFactor’s infringement allegations as set forth in the Counter-
`
`2
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 2
`
`

`

`
`
`Complaint or its initial infringement contentions, no inference is intended nor should any be drawn
`
`that ecobee agrees with EcoFactor’s infringement allegations or claim interpretations, and ecobee
`
`expressly reserves the right to contest such allegations. ecobee offers such contentions in response
`
`to EcoFactor’s infringement allegations as set forth in the Counter-Complaint and without
`
`prejudice to any position that ecobee may ultimately take as to any claim construction issues.
`
`Specifically, ecobee bases these initial invalidity contentions at least in part upon the claim scope
`
`and certain claim constructions that are implicitly or explicitly asserted by EcoFactor, and nothing
`
`herein should be construed or represented as evidencing any express or implied agreement with
`
`any of EcoFactor’s claim construction or infringement positions.
`
`ecobee intends to rely on admissions concerning the scope of the prior art relevant to the
`
`asserted patents found in, inter alia: the asserted patents and related patents and/or patent
`
`applications; the patent prosecution histories for the asserted patents and related patents and/or
`
`patent applications (including all prior art cited therein); any deposition testimony of the named
`
`inventors on the asserted patents and related patents and/or patent applications in this matter or
`
`any other matter; evidence and testimony relating to the level of ordinary skill in the art; and the
`
`papers filed and any evidence submitted by EcoFactor in connection with this matter.
`
`ecobee’s claim charts cite to particular teachings and disclosures of the prior art as applied
`
`to features of the asserted claims. However, persons having ordinary skill in the art generally may
`
`view an item of prior art in the context of other publications, literature, products, and
`
`understanding. As such, the cited portions are only examples, and ecobee reserves the right to rely
`
`on uncited portions of the prior art references and on other publications, expert testimony, and
`
`other evidence as aids in understanding and interpreting the cited portions, as providing context
`
`thereto, and as additional evidence that the prior art discloses a claim limitation or any of the
`
`3
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 3
`
`

`

`
`
`asserted claims as a whole. ecobee further reserves the right to rely on uncited portions of the prior
`
`art references, other publications, and testimony, including expert testimony, to establish bases for
`
`combinations of certain cited references that render the asserted claims obvious.
`
`The references discussed in the claim charts may disclose the elements of the asserted
`
`claims explicitly and/or inherently, and/or they may be relied upon to show the state of the art in
`
`the relevant timeframe. The suggested obviousness combinations are provided in addition to
`
`and/or in the alternative to ecobee’s anticipation contentions and are not to be construed to suggest
`
`that any reference included in the combinations is not by itself anticipatory. The combinations of
`
`prior art references referred to in these invalidity contentions are exemplary. ecobee reserves the
`
`right to rely on any combination of prior art references to the extent that such prior art references
`
`are identified in ecobee’s initial contentions or final contentions served in accordance with the
`
`Revised Scheduling Order. The rationale or motivations to combine the prior art references
`
`identified in these invalidity contentions are also exemplary. As discovery is ongoing, ecobee
`
`reserves the right to amend or supplement the rationale or motivation to combine the prior art
`
`references identified in these initial contentions.
`
`The following discussion and appendices provide exemplary prior art citations and
`
`obviousness positions. The citations and discussion in the charts are organized by claim (and claim
`
`limitation) for convenience, but each limitation or claim section applies to the larger context of
`
`each claim, to any related dependent or independent claims, as well as all claims containing similar
`
`limitations or elements. For example, citations as to any recited limitation, step, or component in
`
`the claims apply wherever each such limitation, step, or component is repeated elsewhere in the
`
`claim or asserted patents. Where ecobee cites to a particular drawing or figure in the attached
`
`claim charts, the citation encompasses the description of the drawing or figure, as well as any text
`
`4
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 4
`
`

`

`
`
`associated with the drawing or figure. Similarly, where ecobee cites to particular text concerning
`
`a drawing or figure, the citation encompasses that drawing or figure as well as any other text
`
`associated with the drawing or figure. Relatedly, certain portions of patent or other prior art
`
`disclosures build upon other disclosures, even if they are referred to as a separate or alternative
`
`embodiment. Thus, ecobee’s citations to structures or functions incorporate by reference all
`
`disclosures to related structures or functions, including any additional detail provided as to the
`
`operation or design of those structures or functions.
`
`Discovery of the named inventors is ongoing. ecobee reserve the right to assert that the
`
`asserted claims are invalid under 35 U.S.C. § 102(f) if they obtain evidence that one or more of
`
`the named inventors should not have been named as an inventor, or that one or more persons who
`
`should have been named as an inventor was not named. In either event, ecobee will supplement
`
`their contentions to address the misjoinder and/or non-joinder of inventors by, inter alia,
`
`identifying the persons who should not have been named inventors (or who should have been
`
`named) and describing the relevant facts and circumstances.
`
`ecobee also reserve the right to challenge any of the claim terms herein under 35 U.S.C.
`
`§ 112 beyond the grounds outlined in their responses to interrogatories related to invalidity,
`
`including by arguing that they are indefinite, not supported by the written description, or not
`
`enabled. Nothing stated herein shall be construed as a waiver of any argument available under 35
`
`U.S.C. §§ 101, 102, 103, and/or 112.
`
`III.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`
`A person having ordinary skill in the art (“PHOSITA”) at the time of the alleged invention
`
`of the asserted patents would have had 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
`
`5
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 5
`
`

`

`
`
`energy management and controls, or (ii) relevant industry experience. Additional relevant industry
`
`experience may compensate for lack of formal education or vice versa.
`
`IV.
`
`IDENTIFICATION OF RELEVANT PRIOR ART
`
`ecobee identifies the following prior art references that anticipate and/or render obvious
`
`the asserted claims of the asserted patents. The following patents and publications are prior art
`
`under at least 35 U.S.C. §§ 102(a), (b), (e), (f), and/or (g).1 Whether a prior art reference
`
`anticipates or renders obvious the asserted claims may depend upon claim construction. ecobee
`
`has identified each prior art patent by its inventor, title, number, country of origin, date of filing,
`
`date of issue, and, where applicable, the relevant priority date. Each prior art publication is
`
`identified by its title, date of publication, and, where feasible, author and publisher. For prior art
`
`under 35 U.S.C. § 102(b), ecobee has identified the item offered for sale or publicly used or known,
`
`the date by which the offer or use took place or the information became known, and the identity
`
`of the person or entity which made the use or which made and received the offer, or the person or
`
`entity which made the information known or to whom it was made known, to the full extent
`
`currently known.
`
`A.
`
`Priority Dates
`
`’567 patent: Based on the information reasonably available to ecobee, the priority date for
`
`the ’567 patent is September 16, 2008, the filing date of application No. 12/211,690, the application
`
`which led to the ’567 patent. EcoFactor bears the burden of showing on a claim-by-claim basis
`
`that it is entitled to a priority date earlier than September 16, 2008. EcoFactor has not done so,
`
`including in any of its Interrogatory responses served to date. If EcoFactor demonstrates that any
`
`of the asserted claims of the ’567 patent are entitled to a priority date before September 16, 2008,
`
`
`1 Unless otherwise indicated, all citations are to the pre-AIA provisions of Title 35 of the U.S. Code.
`
`6
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 6
`
`

`

`
`
`then ecobee reserve the right to identify additional prior art references which anticipate or make
`
`obvious the asserted claims of the ’567 patent.
`
`’488 patent: Based on the information reasonably available to ecobee, the priority date for
`
`the ’488 patent is September 16, 2008, the filing date of application No. 12/211,733, the parent
`
`application of the ’488 patent. EcoFactor bears the burden of showing on a claim-by-claim basis
`
`that it is entitled to a priority date earlier than September 16, 2008, including the filing date and
`
`description of the alleged inventions claimed in the ’488 patent in any earlier provisional
`
`application. EcoFactor has not done so, including in any of its Interrogatory responses served to
`
`date. If EcoFactor demonstrates that any of the asserted claims of the ’488 patent are entitled to a
`
`priority date before September 16, 2008, then ecobee reserve the right to identify additional prior
`
`art references which anticipate or make obvious the asserted claims of the ’488 patent.
`
`’983 patent: Based on the information reasonably available to ecobee, the priority date for
`
`the ’983 patent is September 16, 2008, the filing date of application No. 12/221,690, the parent
`
`application of the ’983 patent. EcoFactor bears the burden of showing on a claim-by-claim basis
`
`that it is entitled to a priority date earlier than September 16, 2008, including the filing date and
`
`description of the alleged inventions claimed in the ’983 patent in any earlier provisional
`
`application. EcoFactor has not done so, including in any of its Interrogatory responses served to
`
`date. If EcoFactor demonstrates that any of the asserted claims of the ’983 patent are entitled to a
`
`priority date before September 16, 2008, then ecobee reserve the right to identify additional prior
`
`art references which anticipate or make obvious the asserted claims of the ’983 patent.
`
`’550 patent: Based on the information reasonably available to ecobee, the priority date for
`
`the ’550 patent is May 11, 2010, the filing date of application No. 12/778,052, the application
`
`which led to the ’550 patent. EcoFactor bears the burden of showing on a claim-by-claim basis
`
`7
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 7
`
`

`

`
`
`that it is entitled to a priority date earlier than May 11, 2010, including the filing date and
`
`description of the alleged inventions claimed in the ’550 patent in any earlier provisional
`
`application. EcoFactor has not done so, including in any of its Interrogatory responses served to
`
`date. If EcoFactor demonstrates that any of the asserted claims of the ’550 patent are entitled to a
`
`priority date before May 11, 2010, then ecobee reserves the right to identify additional prior art
`
`references which anticipate or make obvious the asserted claims of the ’550 patent.
`
`B.
`
`Prior Art Patent Publications
`
`ecobee contends that the asserted claims are invalid under 35 U.S.C. §§ 102 and/or 103
`
`based on the following prior art patent publications. These patent publications constitute prior art
`
`under 35 U.S.C. § 102, and their patent numbers, countries of origin, and dates of publication
`
`and/or issue are included on the face of those documents. ecobee reserves the right to supplement
`
`this list as it learns in the course of discovery of other prior art patent publications that would
`
`anticipate and/or render the asserted claims obvious.
`
`ecobee hereby incorporates by reference all prior art patent publications previously
`
`identified by ecobee in its Answer to the Counter-Complaint, all patent publications identified on
`
`the face of the asserted patents, all patent publications previously identified in connection with
`
`U.S. International Trade Commission Investigation No. 337-TA-1258, and any additional patent
`
`publications identified herein.
`
`C.
`
`Prior Art Non-Patent Publications
`
`ecobee contends that the asserted claims are invalid under 35 U.S.C. §§ 102 and/or 103
`
`based on the following published works of prior art. These publications constitute prior art under
`
`35 U.S.C. § 102, and their titles, authors, publishers, and dates of publication are included on the
`
`face of those documents. In addition to the references listed below, ecobee hereby discloses as
`
`prior art publications all references disclosed below in Section IV.D (regarding on sale/public use),
`
`8
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 8
`
`

`

`
`
`such as press releases, user manuals, and other related documentation about such prior art products.
`
`ecobee reserves the right to supplement this list as it learns in the course of discovery of other
`
`references, prior art public use, and/or sale that would anticipate and/or render the asserted claims
`
`obvious.
`
`ecobee hereby incorporates by reference all prior art non-patent publications previously
`
`identified by ecobee in its Answer to the Counter-Complaint, all non-patent publications identified
`
`on the face of the asserted patents, all non-patent publications previously identified in connection
`
`with U.S. International Trade Commission Investigation No. 337-TA-1258, and any additional
`
`patent publications identified herein.
`
`D.
`
`Prior Art Items and/or Knowledge
`
`To the extent EcoFactor alleges that the ecobee3, ecobee4, ecobee3 lite and/or ecobee
`
`SmartThermostat with Voice Control infringe any asserted claims, those claims are invalid as
`
`anticipated by prior use, prior sale, and/or prior publications of the ecobee EB-STAT-02 Smart
`
`Thermostat. For the avoidance of doubt, ecobee believes that the ecobee3, ecobee4, ecobee3 lite,
`
`and ecobee SmartThermostat with Voice Control do not infringe any asserted claim. But to the
`
`extent EcoFactor contends that these products infringe the asserted claims, the claims are invalid.
`
`See, e.g., Upsher-Smith Labs., Inc.., 412 F.3d at 1322 (“A century-old axiom of patent law holds
`
`that a product ‘which would literally infringe if later in time anticipates if earlier.’”). Moreover,
`
`to the extent EcoFactor alleges that the ecobee3, ecobee4, ecobee3 lite and/or ecobee
`
`SmartThermostat with Voice Control infringe any asserted claim, any remaining claims of the
`
`patents-in-suit that are not asserted against these products are also anticipated or obvious in light
`
`of the ecobee EB-STAT-02 Smart Thermostat.
`
`Moreover, upon information and belief, thermostat products commercialized by
`
`Honeywell International Inc., Resideo Technologies, Inc., and/or Carrier Global Corporation also
`
`9
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 9
`
`

`

`
`
`existed before the priority date of each respective asserted patent, to the extent they practiced the
`
`asserted claims.
`
`Furthermore, ecobee contends that the asserted claims are invalid under 35 U.S.C. §§ 102
`
`and/or 103 based on prior art items embodying any alleged inventions or structures described in,
`
`and/or any knowledge disclosed by or referred to in, any of the prior art patents or prior art
`
`publications identified above in Sections IV.B and IV.C. Because ecobee has not yet completed
`
`discovery in this case, ecobee reserves the right to supplement this disclosure with facts,
`
`documents, or other information learned at a later point through third-party discovery or further
`
`investigation.
`
`E.
`
`Prior Art Under 35 U.S.C. §§ 102(f) and 102(g)
`
`Because ecobee has not yet completed discovery in this case, ecobee reserves the right to
`
`supplement this disclosure with facts, documents, or other information learned at a later point
`
`through discovery or further investigation.
`
`V.
`
`STATEMENT OF ANTICIPATION AND OBVIOUSNESS
`
`ecobee contends that the prior art references identified in ecobee’s contentions anticipate
`
`or render obvious the asserted claims. ecobee attaches Appendices A-1 to A-10; B-1 to B-13; C-
`
`1 to C-11; and D-1 to D-12; which provide exemplary disclosures showing how the prior art
`
`anticipates and/or renders obvious the asserted claims. The charts identify primary references, and
`
`in some cases, secondary references and obviousness contentions.
`
`A. Anticipation
`
`Single items of prior art that anticipate the asserted claims are cited and described in the
`
`claim charts attached hereto as Appendices A-1 to A-10; B-1 to B-13; C-1 to C-11; and D-1 to D-
`
`12, each of which describes anticipation of one or more claims of the asserted patents by a primary
`
`reference. These claim charts provide citations to portions of the above references, illustrating
`
`10
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 10
`
`

`

`
`
`how the prior art explicitly discloses every element of the asserted claims. To the extent any
`
`element is not provided by an expressly enabling disclosure by the referenced prior art, all elements
`
`of the asserted claims would still be the inherent result of putting into practice the systems and
`
`methods described by the prior art referenced herein, as set forth below.
`
`B.
`
`Obviousness
`
`In addition to the discussion above, and to the extent not anticipated, the asserted claims
`
`are invalid under 35 U.S.C. § 103 as being obvious to a person having ordinary skill in the art of
`
`the relevant technology. Items of prior art that render obvious the asserted claims are cited and
`
`described in the claim charts attached hereto as Appendices A-1 to A-10; B-1 to B-13; C-1 to C-
`
`11; and D-1 to D-12. ecobee also identifies exemplary secondary references and obviousness
`
`combinations in Appendices A-1 to A-10; B-1 to B-13; C-1 to C-11; and D-1 to D-12. In the event
`
`a particular primary reference identified in Appendices A-1 to A-10; B-1 to B-13; C-1 to C-11;
`
`and D-1 to D-12 does not anticipate one of the asserted claims, the reference, alone or in
`
`combination with one or more of the exemplary secondary references identified in any those
`
`Appendices renders the claim obvious. The identification of certain combinations of prior art does
`
`not exclude other combinations and is without prejudice to ecobee’s right to rely on additional
`
`specific combinations as well as to detail and explain such combinations.
`
`In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court emphasized that
`
`inventions arising from ordinary innovation, ordinary skill, or common sense should not be
`
`patentable. Id. at 420–21, 427. A patent claim may be obvious if the combination of elements
`
`was obvious to try or if there existed at the time of the invention a known problem for which there
`
`was an obvious solution encompassed by the patent’s claims. When a work is available in one
`
`field of endeavor, design incentives and other market forces can prompt variations of it, either in
`
`the same field or a different one. If a person of ordinary skill can implement a predictable variation,
`
`11
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 11
`
`

`

`
`
`Section 103 likely bars its patentability. Id. at 417. The Court stated that courts should “look to
`
`interrelated teachings of multiple patents; the effects of demands known to the design community
`
`or present in the marketplace; and the background knowledge possessed by a person having
`
`ordinary skill in the art, all in order to determine whether there was an apparent reason to combine
`
`the known elements in the fashion claimed by the patent at issue.” Id. at 418. KSR does not
`
`mandate evidence of a motivation or suggestion to combine prior art references. See TGIP, Inc. v.
`
`AT&T Corp., 527 F. Supp. 2d 561, 580-81 (E.D. Tex. 2007). “[A] court can take account of the
`
`inferences and creative steps that a person of ordinary skill in the art would employ” to resolve the
`
`question of obviousness. KSR, 550 U.S. at 418.
`
`1. Combinations of References Detailed in Appendices
`
`Based on all of these considerations, as further detailed in Appendices A-1 to A-10; B-1 to
`
`B-13; C-1 to C-11; and D-1 to D-12, persons of ordinary skill in the art would have combined the
`
`teachings of the prior art references discussed and charted in those Appendices. The combinations
`
`of these references would have rendered obvious to one of ordinary skill in the art the subject
`
`matter of the asserted claims. The references identified in Appendices A-1 to A-10; B-1 to B-13;
`
`C-1 to C-11; and D-1 to D-12 are analogous prior art to the subject matter of the asserted claims
`
`and, for at least the reasons set forth below, are properly combinable. Because these prior art
`
`references exist within a single field of art, particularly one in which individuals in the field often
`
`shared and/or collaborated on their work, it would have been obvious for a person of skill in the
`
`art to look from one piece of prior art to another in order to find any missing functionality they
`
`desired to implement. Therefore, these references provide interrelated teachings and one of
`
`ordinary skill would look to the concepts in any of these references when seeking to solve the
`
`problems purportedly addressed by the asserted patents. It would have been within the ability of
`
`a person having ordinary skill in the art (“PHOSITA”) to combine any of the references identified
`
`12
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 12
`
`

`

`
`
`in Appendices A-1 to A-10; B-1 to B-13; C-1 to C-11; and D-1 to D-12. A PHOSITA would have
`
`a reasonable expectation of success combining any of the references identified in Appendices A-
`
`1 to A-10; B-1 to B-13; C-1 to C-11; and D-1 to D-12 because it only involves the predictable use
`
`of prior art elements according to their established functions.
`
`In addition, it would have obvious to combine any of the prior art in Appendices A A-1 to
`
`A-10; B-1 to B-13; C-1 to C-11; and D-1 to D-12 because all of these references relate to devices
`
`and methods of using well-known methods to model and interact with HVAC systems, as well as
`
`other limitations disclosed in the asserted claims, in routine and predictable ways. For example,
`
`U.S. Patent No. 5,395,042 discloses a system that “controls the HVAC equipment, always
`
`collecting and recording temperature-vs.-time data about the enclosed space and using this data to
`
`continuously maximize energy savings by running the HVAC equipment at minimal levels when
`
`the space is not occupied, while being prepared to return the temperature to the user set point or to
`
`the minimum temperature range around the user set point within the specified recovery time.” U.S.
`
`Patent No. 5,395,042, at 3:16–24.
`
`As an example, U.S. Patent No. 5,555,927 discloses “[a]n adaptive recovery method for a
`
`setback thermostat using the intersection of the space temperature with a sloped recovery
`
`temperature line which approximates the change in temperature as a function of time during
`
`recovery of the temperature controlled space from a setback temperature, to determine the time at
`
`which recovery to the occupancy temperature should begin.” U.S. Patent No. 5,555,927, at
`
`Abstract. U.S. Patent No. 5,555,927 further discloses that “[t]he use of a ramp-based
`
`determination of the proper recovery start time takes into account the current temperature of the
`
`space, the current outdoor air temperature, the recovery rate during the previous recovery period,
`
`and the thermal time constants.” Id. at 3:1–5.
`
`13
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 13
`
`

`

`
`
`As another example, U.S. Patent No. 5,729,474 discloses a system that “is designed to
`
`monitor the operation and the effectiveness (efficiency) of an HVAC system.” U.S. Patent No.
`
`5,729,474, at 1:46–50. U.S. Patent No. 5,729,474 further discloses that “[a]s the rate of cooling
`
`or heating increases, thereby indicating a deterioration in the efficiency of the cooling/heating
`
`ability of the HVAC system, one or more signals for initiating corrective action are generated.”
`
`Id. at 2:3–7.
`
`As another example, U.S. Patent No. 6,216,956 discloses “the system of the invention
`
`would have the ability to sense an indoor temperature. In an enhanced embodiment, the system
`
`could sense at least humidity, outside temperature, UV intensity, wind direction and speed, relative
`
`humidity, wet bulb thermometer measurements, and dew point. The system also can accept and
`
`process inputs such as local weather forecast data, energy supply company pricing schemes, and
`
`user-entered parameters such as desired comfort levels and energy price cutoff points. Such sensed
`
`conditions and inputs are processed by a processor of the system, with software operating on the
`
`processor, to maintain environmental conditions and energy consumption level and cost within the
`
`user-defined levels.” U.S. Patent No. 6,216,956, at 2:52–65.
`
`As another example, U.S. Patent No. 6,789,739 discloses that “the thermostat system can
`
`use current weather information received from the first remote correspondent to determine and act
`
`if the received information is such that a second remote correspondent interfacing with a remotely
`
`controllable thermostat system should be contacted, and send directive information to suitably
`
`change the temperature (or other parameter) set point at the second remote site.” U.S. Patent No.
`
`6,789,739, at 2:32–39.
`
`As another example, U.S. Patent App. Pub. No. 2005/0171645 discloses “one or more
`
`temperature sensors for measuring the temperature inside the house; a source of information about
`
`14
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 14
`
`

`

`
`
`the temperature outside the house; a modelling means, which uses the inside and outside
`
`temperature measurements to derive a transient thermal model of the house, which can predict
`
`changes in the inside temperature on the basis of the information about the outside temperature
`
`and on the basis of the operation of heating and/or cooling electrical appliances identified as
`
`connected to the supply; means for comparing the derived transient thermal model with a reference
`
`transient thermal model; and means for warning a user of the system of poor thermal properties of
`
`the house or of poor efficiency of the connected heating and/or cooling electrical appliances when
`
`the derived model differs from the reference model by more than a predetermined limit.” U.S.
`
`Patent App. Pub. No. 2005/0171645 ¶ 24.
`
`As another example, U.S. Patent App. 2006/0185373 discloses “controllers for
`
`interactively controlling an HVAC system, and more particularly to an integrated system of HVAC
`
`controls for interactively controlling various components in the HVAC system.” ’373 App. at
`
`[0001]. The ’373 Application further discloses “two or more controllers are provided that are
`
`capable of detecting component operating parameters and communicating the operating parameter
`
`information to at least one other controller to enable confirming diagnostics for predicting potential
`
`component failure or required servicing.” Id. at [0005].
`
`As another example, U.S. Patent No. 4,660,759 discloses “providing a system which
`
`utilizes temperature drift and dead time in order to determine the optimum lead time as modified
`
`by the outdoor air temperature,” which includes a “data gathering panel 38 is connected to have
`
`an output for turning the temperature control system 46, as represented by FIG. 2, on and off and
`
`has as an input an outdoor air temperature sensor 47.” ’759 Patent at 2:19-25; 4:5-8. The ’759
`
`Patent further discloses “determining the optimum stop time of an air conditioning system within
`
`a building so that energy can be conserved by shutting down the temperature control system an
`
`15
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2004
`Page 15
`
`

`

`
`
`amount of lead time prior to end of occupancy of said building wherein said amount of lead time
`
`is arranged to confine space temperature within a comfort range as said space temperature drifts
`
`during said amount of lead time.” ’759 Patent at Abst.
`
`As anot