Filed: August 29, 2023
`
`
`Filed on behalf of ecobee Technologies ULC
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`_______________
`
`Case No. IPR2022-00969
`U.S. Patent No. 8,596,550 B2
`_______________
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF REGARDING
` COLLATERAL ESTOPPEL
`
`
`
`
`
`Filed on behalf of ecobee Technologies ULC
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`_______________
`
`Case No. IPR2022-00969
`U.S. Patent No. 8,596,550 B2
`_______________
`
`
`PETITIONER’S SUPPLEMENTAL BRIEF REGARDING
` COLLATERAL ESTOPPEL
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`
`
`I.
`
`II.
`
`Collateral Estoppel Prevents Relitigating Issues ............................................. 1
`
`III. This IPR Presents Issues Already Litigated and Adjudged by
`the Board .......................................................................................................... 3
`
`A.
`
`B.
`
`C.
`
`Estoppel Applies to EcoFactor’s “Thermal Gain”
`Argument ............................................................................................... 3
`
`Estoppel Applies to Whether Ehlers and Wruck Teach
`Comparing of Setpoints ......................................................................... 4
`
`Estoppel Applies to EcoFactor’s Arguments Concerning
`the Claimed Using and Calculating Steps ............................................. 5
`
`IV. Conclusion ....................................................................................................... 6
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Google LLC v. Hammond Development Int’l, Inc.,
`54 F.4th 1377 (Fed. Cir. 2022) ............................................................................. 3
`Mobile Tech, Inc. v. Invue Security Products Inc.,
`IPR2018-00481 (P.T.A.B. July 16, 2019) ........................................................ 2-3
`Ohio Willow Wood Co. v. Alps S., LLC,
`735 F.3d 1333 (Fed. Cir. 2013) ............................................................................ 3
`Papst Licensing GMBH & Co. v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) ............................................................................ 2
`SynQor, Inc. v. Vicor Corp.,
`988 F.3d 1341 (Fed. Cir. 2021) ........................................................................ 2, 5
`VirnetX Inc. v. Apple, Inc.,
`909 F.3d 1375 (Fed. Cir. 2018) ........................................................................ 1-3
`Other Authorities
`37 C.F.R. § 42.73 ............................................................................................... 1-2, 6
`
`
`
`ii
`
`
`
`Petitioner (“ecobee”) submits this brief on why collateral estoppel applies
`
`against Patent Owner (“EcoFactor”) as to the application of Ehlers and Wruck.
`
`I.
`
`Introduction
`
`The Board previously found that the challenged claims of U.S. Patent No.
`
`9,194,597 (“’597 patent”; Ex. 1025), which is a continuation of the ’550 patent,
`
`were obvious over the combination of Ehlers and Wruck—a combination at issue
`
`in this IPR. Google LLC and ecobee Technologies ULC v. EcoFactor, Inc.,
`
`IPR2022-00538, Paper 26 (P.T.A.B. August 1, 2023) (“’597 FWD” (Ex. 1026)
`
`and, generally, “’597 IPR”). Independent claims 1 and 9 of the ’597 patent recite
`
`features substantially identical to features in the claims of the ’550 patent. For
`
`instance, the accessing, using, calculating, and comparing steps in claim 9 of the
`
`’597 patent are substantially identical to corresponding functions recited in claim
`
`17 of the ’550 patent. Both patents share a common specification. See Ex. 1001;
`
`Ex. 1025. Collateral estoppel and estoppel under 37 C.F.R. § 42.73 apply because
`
`this IPR presents issues identical to ones decided in the ’597 IPR.
`
`II. Collateral Estoppel Prevents Relitigating Issues
`
`Collateral estoppel (issue preclusion) prevents relitigating issues. VirnetX
`
`Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018). Issue preclusion applies
`
`to Board decisions in IPRs. Papst Licensing GMBH & Co. v. Samsung Elecs. Am.,
`
`Inc., 924 F.3d 1243, 1250-51 (Fed. Cir. 2019). A party is collaterally estopped
`
`1
`
`
`
`
`from relitigating an issue if “(1) a prior action presents an identical issue; (2) the
`
`prior action actually litigated and adjudged that issue; (3) the judgment in that prior
`
`action necessarily required determination of the identical issue; and (4) the prior
`
`action featured full representation of the estopped party.” VirnetX Inc., 909 F.3d at
`
`1377; see SynQor, Inc. v. Vicor Corp., 988 F.3d 1341, 1353 (Fed. Cir. 2021)
`
`(“essentially” the same issue); Mobile Tech, Inc. v. Invue Security Products Inc.,
`
`IPR2018-00481, Paper 29 at 9-10 (P.T.A.B. July 16, 2019). Per the rules, Board
`
`decisions have preclusive effect upon issuance. See 37 C.F.R. §§ 42.73(a)
`
`(“A judgment, except in the case of a termination, disposes of all issues that were,
`
`or by motion reasonably could have been, raised and decided”) and 42.73(d)
`
`(explaining that “[a] patent owner is precluded from taking action inconsistent with
`
`the adverse judgment” of the Board and listing non-limiting examples); see
`
`SynQor, 988 F.3d at 1351 (“Factual determinations made by the expert agency
`
`entrusted by Congress to make those determinations—and to make them finally—
`
`need not be endlessly reexamined.”).
`
`Patent claims need not be identical for collateral estoppel to apply. Rather,
`
`collateral estoppel requires that the issues of patentability that were previously
`
`litigated be identical, and applies as long as “the differences between the
`
`unadjudicated patent claims and adjudicated patent claims do not materially alter
`
`the question of invalidity.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
`
`2
`
`
`
`
`1342 (Fed. Cir. 2013); see also Google LLC v. Hammond Development Int’l, Inc.,
`
`54 F.4th 1377, 1381 (Fed. Cir. 2022). “[A] party may be bound not simply by the
`
`ultimate conclusion (e.g., unpatentability of a claim), but by any subsidiary factual
`
`determinations that were actually litigated and essential to the judgment.” Mobile
`
`Tech, Inc., IPR2018-00481, Paper 29 at 18. A key factor in determining if “issues”
`
`are identical under collateral estoppel is whether “there [is] a substantial overlap
`
`between the evidence or argument … advanced in the second proceeding and that
`
`advanced in the first.” Id.
`
`III. This IPR Presents Issues Already Litigated and Adjudged by the Board
`
`The ’597 IPR involves the same combination—Ehlers and Wruck—applied
`
`in the same manner against substantially identical claim elements. The identical
`
`issues include: (1) the meaning of Ehler’s use of “thermal gain”; (2) that Ehlers
`
`and Wruck teach or suggest comparing setpoints; (3) the application of the prior art
`
`to specific functions common to both patents. See VirnetX, 909 F.3d at 1377.
`
`EcoFactor is represented by the same counsel in both IPRs. See Ex. 1026, 39.
`
`A. Estoppel Applies to EcoFactor’s “Thermal Gain” Argument
`
`The Board rejected EcoFactor’s attempt to characterize Ehler’s discussion of
`
`“thermal gain” as pertaining to energy absorption rather than the rate change of
`
`temperatures inside a structure in response to changes in outside temperatures. Ex.
`
`1026, 16-24, 27-30; see, e.g., Ex. 1025, claim 9; Ex. 1001, claim 17. Indeed, the
`
`3
`
`
`
`
`Board rejected EcoFactor’s interpretation of Figs. 3D, 3E, and 3G and paragraph
`
`255 in Ehlers, which interpretations are identical in this IPR. Ex. 1026, 19-20; ’550
`
`POR (Paper 12), 12-21. The Board’s ruling on the thermal gain issue in ’597 IPR
`
`was a primary basis for the ruling against EcoFactor. Ex. 1026, 16-24, 27-30. Thus,
`
`estoppel applies to the Board’s rejection of EcoFactor’s “thermal gain” argument.
`
`B.
`
`Estoppel Applies to Whether Ehlers and Wruck Teach
`Comparing of Setpoints
`
`In the Ehlers-Wruck combination in the ’597 IPR, Wruck was relied upon to
`
`teach the claimed comparison of an automated setpoint and an actual setpoint. Ex.
`
`1026, 34-35; ’597 IPR, Petition, Paper 1 (Ex. 1027), 51-52, 63-64. Petitioner in the
`
`’597 IPR argued that such a comparison of an automated setpoint and an actual
`
`setpoint would have been obvious (i) in general, based on Ehlers, and (ii) in view
`
`of Wruck’s specific teaching of using such a “Delta value” to compare setpoints.
`
`Ex. 1026, 33-37; Ex. 1027, 19-20, 25, 34-35, 50-54; ’597 IPR, POR, Paper 10 (Ex.
`
`1028), 9-10, 28-33. Those arguments are virtually identical to the comparison
`
`arguments in the present petition. See ’550 Petition (Paper 1), 17-19, 43-46.
`
`Thus, EcoFactor had a full and fair opportunity to dispute that the setpoint
`
`comparison is taught or suggested by Wruck, as combined with Ehlers. The Board
`
`actually adjudged (as an essential consideration of the patentability of independent
`
`claims 1 and 9) that the combination taught the claimed feature of comparing an
`
`automated setpoint and an actual setpoint. Ex. 1025, claims 1, 9; see Ex. 1001,
`4
`
`
`
`
`claim 17. Specifically, the Board concluded in the ’597 IPR “that the combination
`
`of Ehlers and Wruck teaches or suggests this element of claim 1.” Ex. 1026, 36-37.
`
`Importantly, in the ’597 IPR, EcoFactor did not dispute that Wruck’s Delta
`
`value met the requirements of the claims (or that Wruck’s teaching on this point
`
`could be combine with Ehlers). See Ex. 1028, 28-33. Thus, in the ’597 IPR, the
`
`Board’s reliance on Wruck for this issue cannot be appealed by EcoFactor.
`
`Consequently, estoppel attaches. SynQor, 988 F.3d at 1351 (Fed. Cir. 2021)
`
`(explaining that estoppel attaches when a party had a fair opportunity to rebut an
`
`issue but “declined” to do so); see also id. at 1355 (explaining that new arguments
`
`or evidence, presented later, do not preclude estoppel).
`
`C. Estoppel Applies to EcoFactor’s Arguments Concerning the
`Claimed Using and Calculating Steps
`
`In the present IPR, EcoFactor challenges whether Ehlers describes or
`
`suggests the using and calculating functions of the independent claims. ’550 POR,
`
`23-28. Independent claims 1 and 9 of the ’597 patent recite using and calculating
`
`steps virtually identical to the corresponding functions of claim 17 of the ’550
`
`patent. While the Board’s basis for finding that these steps are taught and/or
`
`suggested by Ehlers rests mainly on rejecting the “thermal gain” argument, the
`
`Board also rejected other arguments by EcoFactor that mimic arguments made in
`
`this IPR. See Ex. 1026, 27-32. The Board ruled that the argument concerning
`
`whether the prediction in Ehlers relates to when the HVAC system is on or off is
`5
`
`
`
`
`irrelevant to the claim requirements. Ex. 1026, 27-28; see ’550 POR, 23-27. The
`
`Board also rejected EcoFactor’s argument that the calculation of a setpoint does
`
`not involve a prediction. Ex. 1026, 28; see ’550 POR, 27-28. The Board rejected
`
`EcoFactor’s argument that Ehlers does not teach or suggest a first automated
`
`setpoint at a first time. Ex. 1026, 31-32; see ’550 POR, 34-37. Thus, estoppel also
`
`attaches to the identical issues presented in this IPR, given the full and fair
`
`adjudication of such issues.
`
`IV. Conclusion
`
`For the reasons explained above, collateral estoppel and estoppel under 37
`
`C.F.R. § 42.73 prevent EcoFactor from relitigating (1) the meaning of Ehler’s use
`
`of “thermal gain”; (2) that Ehlers and Wruck teach or suggest the setpoint
`
`comparison; (3) the application of Ehlers to the claimed using and calculating
`
`functions. Accordingly, the Board should find claims 17-23 of the ’550 patent
`
`unpatentable.
`
`
`
`6
`
`
`
`
` Dated: August 29, 2023
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Justin J. Oliver/
`Justin J. Oliver
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Facsimile: 202-344-8300
`Email: JOliver@Venable.com
`
`
`
`
`
`7
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing Petitioner’s
`
`Supplemental Brief Regarding Collateral Estoppel and accompanying exhibits
`
`were served on this date, via electronic mail upon the following attorneys of record
`
`for the Patent Owner:
`
`pwang@raklaw.com
`jlink@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
`DATED: August 29, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Justin J. Oliver/
`Justin J. Oliver
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Facsimile: 202-344-8300
`Email: JOliver@Venable.com
`
`
`
`8
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
