Trials@uspto.gov
`571-272-7822
`
`Paper 26
`Date: August 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC and
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2022-005381
`Patent 9,194,597 B2
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`1 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
`proceeding.
`
`ECOBEE Exhibit 1026
`ECOBEE v. ECOFACTOR
`IPR2022-00969
`
`
`571-272-7822
`
`Paper 26
`Date: August 1, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC and
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2022-005381
`Patent 9,194,597 B2
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`DECISION
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`1 IPR2022-01461 (ecobee Technologies ULC) has been joined with this
`proceeding.
`
`ECOBEE Exhibit 1026
`ECOBEE v. ECOFACTOR
`IPR2022-00969
`
`
`
`IPR2022-00538
`Patent 9,194,597 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`On a Petition (Paper 1 (“Pet.”)) from Google LLC, we instituted an
`inter partes review of claims 1–24 (the “challenged claims”) of U.S. Patent
`9,194,597 B2 (Ex. 1001, “the ’597 patent”). Paper 7 (“Dec.”).
`Patent Owner, EcoFactor, Inc., filed a Response (Paper 10, “PO
`Resp.”), Petitioner2 filed a Reply (Paper 14, “Reply”), and Patent Owner
`filed a Sur-reply (Paper 15, “Sur-reply”). An oral hearing was held on May
`11, 2023, and a copy of the transcript was entered into the record. Paper 25
`(“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
`patentability of the claims on which we instituted trial. Having reviewed the
`arguments of the parties and the supporting evidence, we determine that
`Petitioner has shown, by a preponderance of the evidence, that the
`challenged claims are unpatentable.
`Related Matters
`B.
`The parties identify the following related district court litigation:
`Google, LLC v. EcoFactor, Inc., No. 4:21-cv-03220 (N.D. Cal.); and
`EcoFactor, Inc. v. ecobee, Inc., No. 6:21-cv-00428 (W.D. Tex.). Pet. 5;
`Paper 4, 2 (Patent Owner’s Mandatory Notices); Paper 21 (Joint Notice
`Regarding Co-pending Litigation). Petitioner also notes that it “is in the
`process of filing petitions for inter partes review challenging all claims of
`
`
`2 Google LLC and ecobee Technologies ULC.
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`2
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`IPR2022-00538
`Patent 9,194,597 B2
`the other three patents [involved in the Google v. EcoFactor litigation
`referenced supra].” Pet. 72–73.
`The ’597 Patent
`C.
`The ’597 patent is entitled “System, Method and Apparatus for
`Identifying Manual Inputs to and Adaptive Programming of a Thermostat.”
`Ex. 1001, code (54). The ’597 patent explains that programmable
`thermostats can “enhance comfort as compared to manually changing
`setpoints using a non-programmable thermostat,” but “[i]f the temperatures
`programmed into a thermostat do not accurately reflect the preferences of
`the occupants, those occupants are likely to resort to manual overrides of the
`programmed settings.” Id. at 1:25–28, 1:60–2:8. Techniques disclosed in the
`’597 patent detect manual changes to the setpoint for a thermostatic
`controller and then incorporate those manual changes into the long-term
`programming of the thermostatic controller. Id., Abstr.
`The ’597 patent explains that most thermostats do not record manual
`inputs locally, and also do not recognize or transmit the fact that a manual
`override has occurred. Id. at 5:45–48. Moreover, frequent changes in
`setpoints may be automatically initiated by thermostat algorithms, making it
`difficult to infer a manual override from the mere fact that a setpoint has
`changed. Id. at 5:47–53. Figure 7, reproduced below, illustrates a method for
`detecting the occurrence of a manual override. Id. at 5:54–55.
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`
`At step 1002 illustrated in Figure 7, a server associated with the thermostat
`(e.g., a thermostat management server) retrieves setpoint data used to infer
`the occurrence of a manual override from one or more databases. Id. at 3:61–
`63, 5:55–6:19. At step 1004, the server retrieves any scheduled automated
`setpoint changes. Id. Such changes may include algorithmic changes
`intended to reduce energy consumption. Id.
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`At step 1006, the server calculates the setpoint difference. Id. At step
`1008, the server calculates the scheduled setpoint difference. Id. At step
`1010, the server evaluates and sums all active algorithms and other server-
`initiated strategies to determine their net effect on the setpoint. Id. For
`example, if one algorithm has increased setpoint by 2 degrees as a short-term
`energy savings measure, but another algorithm has decreased the setpoint by
`one degree to compensate for expected subjective reactions to weather
`conditions, the net algorithmic effect is +1 degree. Id.
`At step 1012, the server calculates the value for M, where M is equal
`to the difference between actual setpoints dA, less the difference between
`scheduled setpoints dS, less the aggregate of algorithmic change sC. Id. at
`6:20–30. At step 1014, the server evaluates the difference—if the difference
`equals zero, the server concludes that no manual override has occurred;
`however, if the difference is non-zero, the server concludes that a manual
`override has occurred, and at step 1016, the server logs the override to the
`database(s). Id.
`After a manual override has been recognized, it can be used to either
`make short-term changes to the thermostat, or to alter long-term changes to
`interpretive rules and to setpoint scheduling for the thermostat. Id. at 2:37–
`42. Figure 8, reproduced below, illustrates a process of interpreting manual
`overrides and making short-term thermostat changes in response thereto. Id.
`at 2:37–42, 6:31–32.
`
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`Patent 9,194,597 B2
`
`
`After a manual override is detected (step 1102 in Figure 8), the server
`retrieves rules (step 11043), contextual data (step 1106), and recent historical
`override data (step 1108). Id. at 6:31–60, Fig. 8. The retrieved rules include,
`for example, weather and time-related inferences such as: “if heating
`setpoint change is scheduled from ‘away’ to ‘home’ within . . . 2 hours after
`detected override, and override increases setpoint by at least 2 degrees, then
`change to ‘home’ setting.” Id. at 6:52–60. The “[contextual data] may
`
`
`3 There appears to be typographical errors between Figure 8 and the
`descriptive text (Ex. 1001, 6:31–60) related to the labeling of steps 1104,
`1106, and 1108. We refer here to the steps as labeled in Figure 8.
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`include current and recent weather conditions, current and recent inside
`temperatures, etc.” Id. at 6:34–36. The historical override data includes any
`“override data from the period preceding the specific override being
`evaluated that has not yet been evaluated by and incorporated into the long-
`term programming and rules engines.” Id. at 6:42–51.
`At step 1110, the server applies the rules to the override and
`determines which rule, if any, should be applied as a result of the override,
`and in step 1112, the server determines whether to alter the current setpoint
`as a result of applying the rules in step 1110. Id. If a setpoint change is
`indicated, then the server transmits the setpoint change to the thermostat
`(step 1114), and records that change to database(s) (step 1116). Id.
`The ’597 patent further explains that, in order to ensure that both the
`stored rules for interpreting manual thermostat overrides and the thermostat
`programming itself continue to most accurately reflect the intentions of the
`occupants, the server periodically reviews both the rules used to interpret
`overrides and the thermostat setpoint scheduling employed. Id. at 7:3–43.
`Illustrative Claim
`D.
`Of the challenged claims, claims 1, 9, and 17 are independent and
`claim 1 is illustrative:
`1. A method for detecting manual changes to the setpoint for a
`thermostatic controller comprising:
`providing a thermostatic controller operatively connected
`to a heating ventilation and air conditioning system, the
`temperature set point of the heating ventilation and air
`conditioning system being manually changeable;
`accessing stored data comprising a plurality of internal
`temperature measurements taken within a structure and a
`plurality of outside temperature measurements;
`
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`IPR2022-00538
`Patent 9,194,597 B2
`using the stored data to predict changes in temperature
`inside the structure in response to at least changes in outside
`temperatures;
`calculating with at least one computer, scheduled
`programming of the thermostatic controller for one or more times
`to control the heating ventilation and air conditioning system, the
`scheduled programming comprising at least a first automated
`setpoint at a first time;
`thermostatic controller, actual
`the
`recording, with
`setpoints of the heating ventilation and air condition system;
`communicating the actual setpoints from the one or more
`thermostatic controllers to the at least one computer;
`generating with the at least one computer, a difference
`value based on comparing at least one of the an [sic] actual
`setpoints at the first time for the thermostatic controller to the
`first automated setpoint for the thermostatic controller;
`detecting a manual change to the first automated setpoint
`by determining whether the at least one of the actual setpoints
`and the first automated setpoint are the same or different based
`on the difference value; and
`logging the manual change to a database.
`Ex. 1001, 8:8–38.
`
`
`II. ANALYSIS
`A. Grounds of Unpatentability
`Petitioner asserts the following ground of unpatentability (Pet. 6),
`supported by the declaration of Rajendra Shah (Ex. 1002):
`
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`35 U.S.C. §
`103(a)4
`
`Reference(s)/Basis
`Ehlers, 5 Wruck6
`
`Claim(s) Challenged
`1–24
`
`Legal Standards
`B.
`Petitioner bears the burden to demonstrate unpatentability. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015).
`A claim is unpatentable as obvious under 35 U.S.C. § 103(a) if “the
`differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to
`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of
`obviousness based on underlying factual determinations, including (1) the
`scope and content of the prior art; (2) any differences between the prior art
`and the claims; (3) the level of skill in the art; and (4) when in evidence,
`objective indicia of obviousness or nonobviousness. See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`We apply these principles to the Petition’s challenges.
`
`
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`We refer to the pre-AIA version of § 103.
`5 U.S. Patent Pub. 2004/0117330 A1, pub. June 17, 2004 (Ex. 1004,
`“Ehlers”).
`6 U.S. Patent Pub. 2005/0040250 A1, pub. Feb. 24, 2005 (Ex. 1005,
`“Wruck”).
`
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`Level of Ordinary Skill in the Art
`C.
`Petitioner argues that the level of skill of a person of ordinary skill in
`the art (“POSA”):
`encompassed a (1) Bachelor’s degree in engineering, computer
`science, or a comparable field of study, and (2) at least five years
`of (i) professional experience in building energy management
`and controls, or (ii) relevant industry experience. Additional
`relevant industry experience may compensate for lack of formal
`education or vice versa.
`Pet. 21 (citing Ex. 1002 ¶ 27).
`Patent Owner argues that a person having ordinary skill in the art
`would have “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.” PO Resp. 5 (citing Ex. 2008 ¶ 26). Patent Owner
`further argues that an Administrative Law Judge adopted that formulation in
`a proceeding involving a related patent. Id. at 5–6 (citing Ex. 2011).
`The parties’ positions on the level of ordinary skill in the art are
`substantially similar and both parties agree that the level of skill is not
`determinative to the outcome of the case. Tr. 7:3–7 (Petitioner), 30:8–12
`(Patent Owner).
`The ’597 patent is directed to systems and methods involving
`thermostatic controllers. See Ex. 1001, 8:8–9 (claim 1), 9:40–41 (claim 17).
`The parties’ listed experience for one of skill in the art (“building energy
`management and controls” or “temperature controls, embedded control
`systems, electronic thermostats, or HVAC controls”) appear equally relevant
`and interchangeable when considering the ’597 patent. Further, the parties
`
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`do not identify any difference in skill sets between 2–3 years’ or at least 5
`years’ experience.
`For consistency’s sake, we adopt Patent Owner’s level of skill. See
`Ex. 2011 (In re Certain Smart Thermostat Sys., Smart HVAC Sys., Smart
`HVAC Control Sys., and Components Thereof, 337-TA-1258, Order No. 18,
`8 (ITC Sept. 1, 2021) (noting with regard to a related patent that
`“Professional experience in a more specialized area, even if for a shorter
`time (as Complainant contends), seems more appropriate than a more
`general area of experience having no direct connection to the relevant
`technology . . . . Therefore, a person of ordinary skill in the art at the time of
`the invention would have had 2–3 years’ experience in temperature controls,
`embedded control systems, electronic thermostats, or HVAC controls, or
`similarly relevant industry experience . . . .”). However, as previously stated,
`the level of skill is not determinative to the outcome of the case.
`D. Claim Construction
`In inter partes review, we construe claims using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. § 282(b), including construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b) (2021).
`Petitioner states that “[a] prior ITC investigation [(see Ex. 2011))],”
`for a related patent, addressed a phrase similar to a phrase in claim 1, which
`Petitioner describes as an “apparent construction.” Pet. 11–12 (citing
`Ex. 1017, 396–402). It is not clear what Petitioner means by an apparent
`construction. Petitioner does not lay out a construction for this phrase. Id.
`
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`Patent Owner argues that “[t]he claim terms of the ’597 patent should
`be given their plain and ordinary meaning.” PO Resp. 8 (citing Ex. 2008
`¶ 32).
`We determine that no terms need to be construed. See Realtime Data,
`LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required
`to construe ‘only those terms . . . that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Relative Credibility of Experts
`E.
`Petitioner argues that Mr. Shah has significantly more experience than
`Dr. Palmer and that we “should take the relative experience of the experts
`into account when assessing their credibility.” Reply 8–9 (quoting Tr. of
`Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015)).
`Patent Owner argues that “Dr. Palmer’s experience, and his opinions in this
`matter, are equally valuable as those of Mr. Shah.” PO Sur-reply 2–3.
`We decline to find Dr. Palmer less credible based solely on the
`relative experience of the witnesses. There is no dispute that both of the
`witnesses are at least as skilled as a person having ordinary skill in the art.
`See Ex. 1002 ¶ 28; Ex. 1003 (CV of Mr. Shah); Ex. 2008 ¶ 26; Ex. 2009
`(CV of Dr. Palmer). Therefore, both Mr. Shah and Dr. Palmer may give
`expert testimony. See Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th
`1369, 1376–77 (Fed. Cir. 2022) (“To offer expert testimony from the
`perspective of a skilled artisan in a patent case—like for claim construction,
`validity, or infringement—a witness must at least have ordinary skill in the
`art.”).
`
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`We see nothing in Mr. Shah’s greater experience that would give him
`greater insight as to what a person having ordinary skill in the art—as
`opposed to someone with significantly more experience—would find
`obvious. Petitioner does not identify a single patent case in which a court has
`discounted the testimony of an expert based on the relative experience of the
`two experts. Although Petitioner directs us to Illumina (see Pet. 8), the issue
`in that non-precedential decision was whether the PTAB committed
`reversible error by not resolving the dispute as to the level of ordinary skill
`in the art, not the relative weight to be given to qualified experts. See
`Illumina, 620 F. App’x at 921–22.
`Instead, in judging the credibility of experts, we focus on whether the
`witness offers corroboration for his opinions, provides opinions that are
`consistent with the prior art, and the witness’ cross-examination testimony.
`35 U.S.C. § 103(a) – Ehlers, Wruck
`F.
`Petitioner argues that the combination of Ehlers and Wruck renders
`obvious claims 1–24. Pet. 13–72. Patent Owner disagrees. See PO Resp. 10–
`34. For the reasons expressed below, we determine that Petitioner has
`proven, by a preponderance of the evidence, that claims 1–24 are
`unpatentable.
`Ehlers
`1.
`Ehlers is titled “System and Method for Controlling Usage of a
`Commodity.” Ex. 1004, code (54). Ehlers describes “managing delivery of
`energy from a distribution network to one or more sites.” Id. at Abstr. Figure
`1B of Ehlers, reproduced below, illustrates an energy management system.
`Id. ¶¶ 20, 72.
`
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`
`
`Figure 1B of Ehlers illustrates a customer site 1.04, and a utility 1.06 that
`generates and/or transmits electricity to the customer site. Id. ¶¶ 59–60. A
`gateway node 1.10D at the customer site communicates with a utility control
`system. Id. ¶ 72. The customer site 1.04 can include a number of systems
`that use electricity and communicate with the gateway, such as an electricity
`meter, a water heater, and an advanced thermostat device 1.30D. Id. ¶ 76.
`The customer is able to monitor and control the devices through user
`interface 1.14 and the utility may also monitor the devices and control their
`usage of electricity. Id. ¶¶ 69, 77–78. In this way, the utility may implement
`a Power Supply Program designed to alleviate or reduce energy demand
`during peak periods. Id.
`Figure 3B of Ehlers, reproduced below, is a block diagram of an
`advanced thermostat device. Id. ¶¶ 28, 229.
`
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`
`Advanced thermostat device 1.30D in Figure 3B is part of a temperature and
`environmental sensing and control system 3.08, with thermostat 1.30D being
`a node having a node processor, a memory and a two-way communications
`channel. Id. ¶ 229. Thermostat 1.30D is coupled to sensors 3.10 adapted to
`sense one or more parameters related to indoor or outdoor air quality
`(temperature, humidity, etc.). Id. ¶ 237. Thermostat 1.30D may also receive
`external information through gateway node 1.10D, such as the local weather
`forecast. Id. Based on this data and information, thermostat 1.30D controls
`other devices 1.08 (such as a HVAC system) to manage air quality. Id.
`Ehlers explains that system 3.08 learns from the user’s inputs or
`adjustments to the system to change or modify indoor air temperature. Id.
`¶ 242. The system can then monitor and control temperature and humidity
`levels. Id.
`For example, if the customer initially sets the thermostat at 72° F, the
`system maintains a relationship between the temperature and humidity level
`sensed, and, as the humidity level of the home rises in summer, the effective
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`setpoint is automatically lowered to maintain a consistent level of comfort.
`Id. ¶ 243. “[T]he system 2.18 may have to lower the effective set point from
`that established by the customer by 3 degrees F. for every 10% of relative
`humidity that is sensed to retain the comfort level in the site.” Id.
`Ehlers and “Thermal Gain Rate”
`2.
`Underlying a large portion of the dispute between the parties is what
`does the phrase “thermal gain rate” in Ehlers refer to. See PO Resp. 10–19;
`Reply 8–14; Tr. 8:5–22:16 (Petitioner), 30:14–41:20 (Patent Owner).
`Accordingly, we address this dispute before applying the prior art to the
`claim limitations.
`Petitioner argues that “thermal gain rate” in Ehlers is a measure of the
`rate of change of inside temperature. See Pet. 34–38; Reply 9–15; Tr. 9:6–
`12. According to Petitioner, it is measured when the HVAC is off. See Reply
`10 (“Ehlers ’330 teaches calculating the rate at which temperature inside a
`structure changes over time at different outside temperatures when the
`HVAC system is ‘OFF,’ as illustrated in Figure 3D.” (emphases added)). For
`support of its understanding, Petitioner focuses on Ehlers Figures 3D, 3E,
`and 3G and their description in paragraphs 253 through 256.
`Patent Owner argues that “thermal gain rate” in Ehlers does not refer
`to a measure of the rate of change of the inside temperature. See PO Resp.
`10–19; PO Sur-reply 4–13; Tr. 30:14–15. Instead, Patent Owner argues that
`it is the rate that energy is absorbed. See PO Resp. 11 (citing Ex. 2008 ¶ 37);
`Tr. 30:16–17. Patent Owner relies on the same portions of Ehlers as
`Petitioner does.
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`We begin our analysis with Ehlers Figure 3D, reproduced below.
`
`
`
`Ehlers Figure 3D is a graph illustrating “an exemplary economic and
`comfort management control strategy.” Ex. 1004 ¶ 29. Figure 3D shows a
`graph showing the indoor set point (temperature) versus time.
`The first set point for which data is available is 72 degrees F. The
`three trends illustrated as lines 3.12A, 3.12B, and 3.12C plot the
`thermal rate of gain in the site 1.04 for different outside
`temperatures. On the day represented by line 3.12A the outside
`temperature was 99 degrees F. On the day represented by line
`3.12B, the outside temperature was 90 degrees F. On the day
`represented by line 3.12C, the outside temperature was 77
`degrees F. The next set point for which data is illustrated is the
`set point of 76 degrees F. The three trends shown as lines 3.14A,
`3.14B, and 3.14C illustrate the thermal rate of gain in the home
`2.18 for the same outside temperatures plotted in the 3.12A,
`3.12B, 3.12C data points.
`Ex. 1004 ¶ 253. Ehlers describes this graph as a “thermal gain table” and it
`“show[s] the impact the set point versus outside temperature differential has
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`over the thermal gain rate in the home.” Ex. 1004 ¶ 253. In the scenario
`illustrated in Figure 3D, the HVAC system is off. Ex. 1002 ¶ 92; Ex. 2008
`¶ 54.
`
`There appears to be little dispute between the parties as to what is
`being shown in Figure 3D. Both experts testify that “[t]he lines appear to
`reflect temperatures rather than rates of energy increase.” Ex. 2008 ¶ 38; see
`also Ex. 1021 ¶ 7 (“The x axis of Figure 3D represents time in minutes and
`the y axis of Figure 3D represents temperature in degrees Fahrenheit.”);
`Ex. 1002 ¶ 93. And a person having ordinary skill in the art would recognize
`that “that the thermal gain rate is related to the slope of the line (which
`would be rate of change of temperature).” Ex. 2008 ¶ 38; see also Ex. 1021
`¶ 7 (“Each of the lines depicted in Figure 3D thus represents “rates” at which
`the temperature (y axis) in the structure changes over time (x axis).”); Ex.
`1002 ¶ 93. “[T]he data in Fig 3D discloses the changes in inside temperature
`from a specific starting temperature and for a single, specific outside
`temperature when the HVAC system is OFF.” Ex. 2008 ¶ 59; see also
`Ex. 1002 ¶¶ 92–93; Ex. 1021 ¶¶ 6–7. Stated differently, Figure 3D graphs
`the change of temperature over time based on a given starting internal
`temperature (set point) and an external temperature. Because Ehlers states
`that these lines “plot the thermal rate of gain” and “illustrate the rate of
`thermal gain,” (Ex. 1004 ¶ 253) a person having ordinary skill in the art
`would recognize that the slope of the line—which Dr. Palmer admits is the
`rate of change of temperature over time (Ex. 2008 ¶ 38)—is the thermal gain
`rate. See Ex. 1002 ¶¶ 92–93. That is, the slope of the line, which represents
`the thermal gain rate, is the rate of change of the internal temperature over
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`time during periods in which the HVAC is turned off. Therefore, Petitioner’s
`definition of thermal gain rate is consistent with Ehlers Figure 3D.
`Petitioner’s definition is also consistent with the description of
`“thermal gain rate” elsewhere. For example, Ehlers states that Figure 3F
`shows “the rate of thermal gain per hour would be set at 3 degrees F. per
`hour.” Ex. 1004 ¶ 255. That is, Ehlers specifically states that thermal rate
`gain is a measure of the change of internal temperature over time. See id.
`¶ 255; Ex. 1021 ¶ 7. And, because it is discussing an increase in the internal
`temperature, that means that the HVAC is cycled off at that time. See
`Ex. 1021 ¶ 16.
`We cannot reconcile Patent Owner’s definition of thermal rate gain
`with the description of Figure 3D or the example in paragraph 255. As
`discussed above, Ehlers states that Figure 3D “plot[s] the thermal rate of
`gain” and “illustrate[s] the rate of thermal gain.” Ex. 1004 ¶ 253. As the
`lines plot temperature over time, the lines do not show the rate that energy is
`absorbed over time. Instead, as discussed above, it shows the rate of
`temperature change over time while the HVAC system is off. See also
`Ex. 1002 ¶ 93.
`Moreover, Patent Owner’s definition is inconsistent with the
`statement in paragraph 255 discussed above, which clearly equates the
`thermal gain rate with a measure of change of temperature over time. See
`Ex. 1004 ¶ 255 (“For the maximum savings setting, the dead band in this
`example would be raised to 3 degrees F. and the rate of thermal gain per
`hour would be set at 3 degrees F. per hour.”).
`Accordingly, we find that “thermal gain rate” means the rate of
`temperature change over time while the HVAC system is off.
`
`19
`
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`IPR2022-00538
`Patent 9,194,597 B2
`Patent Owner makes a number of arguments disputing Petitioner’s
`understanding of thermal gain rate. For the reasons set forth below, we
`disagree with those arguments.
`Patent Owner argues that “the phrase ‘thermal gain rate’ is well
`understood by a [person having ordinary skill in the art] to be the rate at
`which energy is absorbed.” PO Resp. 11 (citing Ex. 2008 ¶ 37). But the only
`evidence Patent Owner cites is the conclusory statement of Dr. Palmer
`repeating the Response without any citation. See Ex. 2008 ¶ 37. Because Dr.
`Palmer’s testimony does not provide any evidentiary support, we find it not
`credible and give it no weight. See Xerox Corp. et al. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022) (precedential) (holding that
`a conclusory declaration is entitled to little weight when it is a substantial
`restatement of the party’s arguments without any additional supporting
`evidence or reasoning); 37 C.F.R. 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”). Moreover, it is inconsistent with the use of “thermal
`gain rate” discussed in paragraph 255, which clearly uses the phrase to refer
`to the rate of temperature change over time.
`Patent Owner also argues that its understanding of thermal gain rate in
`Ehlers is consistent with Ehlers Figures 3D, 3E, and 3G. See PO Resp. 11–
`18; PO Sur-reply 5–7. We agree that there is some support of Patent
`Owner’s understanding in Figures 3E and 3G. However, we cannot look at
`Figures 3E and 3G in isolation. Instead, we must also consider whether
`Patent Owner’s interpretation is consistent with Ehlers Figure 3D. And, for
`the reasons discussed above, it is not. Instead, as Petitioner and Mr. Shah
`
`20
`
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`IPR2022-00538
`Patent 9,194,597 B2
`persuasively argue, Figure 3D clearly demonstrates that thermal gain rate in
`Figure 3D refers to the rate of change of the internal temperature.
`Patent Owner also argues “if ‘thermal gain rate’ meant ‘rate of change
`of temperature,’ then the illustrations of Fig. 3E and Fig. 3G would indicate
`that the temperature was continuously increasing by 1 to 3 degrees per hour,
`for a total of nearly 42 degrees F. over the 24-hour period, regardless of the
`operation of the HVAC.” PO Resp. 18 (citing Ex. 2008 ¶ 43); see also id. at
`14–15 (arguing thermal gain rate in Figure 3E cannot be a change of internal
`temperature because the temperature does not change); id. at 15–18 (making
`a similar argument with regard to Figure 3G); PO Sur-reply 6–10. According
`to Patent Owner, that is “directly contrary to Ehlers[’] own usage.” PO Resp.
`18.
`
`Patent Owner’s argument does not account for how an HVAC system
`operates. During normal operation, an HVAC system cycles on and off.
`Ex. 1021 ¶ 16. The percentage of time the system is on “increases or
`decreases to balance the thermal gain rate of the structure—e.g., to keep the
`net rate of change in indoor temperature over time at or close to zero.” Id.
`¶ 16. That is, in the cooling context, although there is a gain in temperature
`when the HVAC is off, this is balanced by a negative gain (or decrease) in
`temperature when the HVAC is on. Id. A person having ordinary skill in the
`art would recognize that the positive and negative gain balance to keep the
`internal temperature at or near the set point. Id. ¶¶ 16–17. “In other words,
`the HVAC system cycles ON and OFF to effectively balance out the overall
`full cycle average rate of change of inside temperature at or near zero.” Id.
`¶ 17; see also id. ¶¶ 16–21 (explaining how Figures 3E and 3F are consistent
`with Petitioner’s understanding of thermal gain rate). Thus, contrary to
`
`21
`
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`
`IPR2022-00538
`Patent 9,194,597 B2
`Patent Owner’s argument, applying Petitioner’s understanding of thermal
`gain rate will not result in an internal temperature of 100 degrees F. See PO
`Sur-reply 6.
`Patent Owner also argues that Petitioner ignores Mr. Shah’s admission
`that “his interpretation of the phrase ‘thermal gain’ may not have the
`meaning that he attributes to it in applying the language of Ehlers, saying
`‘The thermal gain rate[] depends on how you interpret the language.’”7 PO
`Sur-reply 5 (quoting Ex. 2013, 27:13–14) (alteration in original). According
`to Patent Owner, “[o]nly Dr. Palmer’s opinion is supported by the consistent
`and repeated disclosures in Ehlers, all of which confirm that the ‘thermal
`gain rate’ is not, and cannot be, a ‘predicted rate of change in temperature.’”
`Id.
`
`We do not agree. First, as discussed above, Dr. Palmer’s interpretation
`is not consistent with Ehlers. To the contrary, as discussed above, Dr.
`Palmer’s interpretation of thermal rate gain is inconsistent with Ehlers’
`description of Figure 3D and ignores the clear disclosure of paragraph 255.
`Second, Patent Owner takes Mr. Shah’s testimony out of context. As
`the very next sentence—a sentence that Patent Owner chose not to include in
`its Sur-reply—makes clear, Mr. Shah is testifying as to how Ehlers uses the
`term:
`
`Q. Okay. And you would agree that the thermal gain rate
`of a building is different when the HVAC system is on than when
`the HVAC system is off?
`MS. LAUGHTON: Objection. Form.
`
`
`7 Here and elsewhere, the parties refer to “Ehlers” as “Ehlers ’330.” We
`have modified all quotes to change “Ehlers ’330” to “Ehlers.”
`
`22
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`IPR2022-00538
`Patent 9,194,597 B2
`THE WITNESS: The thermal gain rate as -- depends on
`how you interpret the language. But the way Ehlers is looking at
`it, the thermal gain rate is the gain -- thermal gain from the
`outside to the inside based on, as we say, the outside and the
`inside temper
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