UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Patent No. 9,194,597
`
`DECLARATION OF RAJENDRA SHAH
`
`1
`
`GOOGLE 1002
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 1
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Patent No. 9,194,597
`
`DECLARATION OF RAJENDRA SHAH
`
`1
`
`GOOGLE 1002
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 1
`
`
`
`TABLE OF CONTENTS
`ENGAGEMENT AND COMPENSATION ................................................... 4
`QUALIFICATIONS ........................................................................................ 4
`SUMMARY OF OPINIONS ........................................................................... 6
` MATERIALS REVIEWED ............................................................................ 7
` UNDERSTANDING OF THE RELEVANT LAW ........................................ 8
`A. Anticipation ........................................................................................... 8
`B.
`Obviousness ........................................................................................... 8
` LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12
` RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS ....... 12
` TECHNICAL INTRODUCTION ................................................................. 13
`A.
`The ’597 Patent Disclosure ................................................................. 13
` CLAIM INTERPRETATION ....................................................................... 18
`A.
`BACKGROUND ON CLAIM INTERPRETATION ......................... 18
`B.
`CLAIM INTERPRETATION OF THE ’597 PATENT ..................... 19
` GROUND 1: Claims 1-24 Are Obvious Over Ehlers ’330 in view of the
`knowledge of a POSITA and Wruck. ................................................. 20
`Effective Prior Art Dates of Ehlers ’330 and Wruck .......................... 21
`Overview of the Combination ............................................................. 21
`1.
`Overview of Ehlers ’330. .......................................................... 21
`2.
`Overview of Wruck ................................................................... 25
`3.
`Overview of the Combination ................................................... 27
`Rationale (Motivation) Supporting Obviousness ................................ 29
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`A.
`B.
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`C.
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`ECOBEE V. ECOFACTOR
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`D.
`Reasonable Expectation of Success .................................................... 29
`Analogous Art ..................................................................................... 29
`E.
`Claim Mapping .................................................................................... 30
`F.
` OATH
`80
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`IPR2022-00969
`Exhibit 2012
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`ENGAGEMENT AND COMPENSATION
`1. My name is Rajendra Shah. (Ex. 1003). I have been retained by Google
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`LLC for the purpose of providing my opinion with respect to the unpatentability of
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`U.S. Pat. No. 9,194,597 (“the ’597 patent”). I am being compensated for my time
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`in preparing this declaration at my standard hourly rate, and my compensation is not
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`dependent upon my opinions or the outcome of the proceedings. My curriculum
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`vitae is attached as Ex. 1003.
`
` QUALIFICATIONS
`I am currently the Principal at AnalyzRS LLC, a company providing,
`2.
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`among other things, consulting services for the HVAC industry. I have been
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`employed in this position since 2016.
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`3.
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`I consider myself to have significant knowledge and experience in
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`Heating, Ventilating and Air Conditioning (“HVAC”) systems, with particular
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`knowledge relating to associated technology integration, control algorithms,
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`modeling and simulation, and data analytics. I have significant knowledge and
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`experience relating to the optimization of the operational efficiency of HVAC
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`systems. My current Curriculum Vitae is attached as Exhibit 1003, and summarizes
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`my qualifications.
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`4.
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`Prior to my work for AnalyzRS LLC, I was employed at United
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
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`Technologies Carrier Corporation in Indianapolis, Indiana from 1991 to 2016.
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`During my career at Carrier, my work focused on the design and development of
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`HVAC systems and associated technologies. From 1991 to 2000, I was employed
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`as a Senior Program Manager for Advanced Systems at Carrier. While in that
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`position, I had responsibility for the launch of new product categories, including two
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`stage air conditioners and heat pumps, variable speed fan coils, digital thermostats,
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`multi zone controls, expandable filters, and fresh air ventilators.
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`5.
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`From 2000 to 2008 I was employed as an Engineering Manager for
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`Systems Development. In that role I designed and managed the design of premium
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`air conditioners, heat pumps, indoor fan coils, advanced thermostats, multi-zone
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`controls and indoor air quality products. In particular, my team developed Carrier’s
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`Infinity® HVAC system, which was originally launched in 2004, and which went
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`on to be a highly successful product.
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`6.
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`From 2008 to 2016 I held the title of Engineering Fellow, Systems and
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`Controls. I was one of the first eight Fellows selected to what was Carrier’s top
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`engineering position out of thousands of engineers worldwide. While in this
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`position, I worked to develop Carrier’s Infinity® Touch Control system with internet
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`connectivity, which was first launched in 2012. This product received the Dealer
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`Design Gold award from industry magazine ACHR News in 2013 and has continued
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`to be a top-selling product for Carrier.
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`5
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
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`7.
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`Beginning in 1984, I was employed as Project Manager for
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`Electronically Commutated (Brushless DC) Motors at General Electric (GE)
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`Motors. While employed in this role, I developed and launched GE’s new line of
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`brushless DC variable speed motors targeted at residential heating and air
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`conditioning applications.
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`8.
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`Beginning in 1977, I was employed by United Technologies Electronic
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`Controls as a Project Engineer for Control Design. In this position, I designed high
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`volume electronic controls, including electronic circuit design and microprocessor
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`software, for appliances and heating and air conditioning systems.
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`9.
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`I am a named inventor on at least 50 patents, with applications still
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`pending. My patents primarily relate to the field of HVAC technology.
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`10.
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`I hold a Bachelor’s degree in Electrical Engineering from the Indian
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`Institute of Technology, Bombay, India, which I obtained in 1975. I also obtained a
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`Master’s degree in Electrical Engineering, Ohio State University, Columbus, Ohio
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`in 1977 and a Master’s degree in Business Administration from the University of St
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`Francis, Fort Wayne, Indiana in 1983.
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` SUMMARY OF OPINIONS
`In my opinion, claims 1-24 are obvious over Ehlers ’330 in view of the
`11.
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`knowledge of a person of ordinary skill in the art and Wruck, as set forth in Ground
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`1.
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`6
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 6
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` MATERIALS REVIEWED
`In forming my opinions, I have relied on my knowledge of the field and
`12.
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`my experience, and have specifically reviewed the following exhibits:
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`Exhibit No.
`1001
`1004
`1005
`1006
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`1007
`
`1008
`
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`
`Description
`U.S. Patent No. 9,194,597 (“the 597 patent”).
`U.S. Patent Publication 2004/0117330 (“Ehlers ’330”).
`U.S. Patent Pub. 2005/0040250 A1 (“Wruck”).
`Excerpt from The Industrial Electronics Handbook, Irwin, J.D.
`ed. CRC Press and IEEE Press, 1997, pp. 59-60.
`Horan, T, Control Systems and Applications for HVAC/R,
`Prentice-Hall, Inc., 1997.
`Levenhagen, J, HVAC Control and Systems, McGraw-Hill, Inc.,
`1993.
`File History of Application No. 14/082,675.
`U.S. Patent No. 8,751,186 B2 (“the ’186 patent”)
`Exhibit number not used.
`U.S. Patent. No. 6,789,739 (“Rosen”).
`WO 2007/128783 A1 (“McNulty”)
`U.S. Pat. App. Pub. 2005/0171645 (“Oswald”).
`U.S. Patent. No. 5,943,544 (“Charles”).
`U.S. Patent. No. 6,029,092 (“Stein”).
`ITC Inv. No. 337-TA-1185, Public Version of April 20, 2021
`Initial Determination
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`7
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`1018
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`1019
`
`1020
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`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Answer (July 13, 2021).
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Scheduling Order (August 11, 2021).
`Security People, Inc. v. Ojmar US, LLC, 14-cv-04968-HSG
`(N.D. Cal.), Order (May 29, 2015).
`
`
`
` UNDERSTANDING OF THE RELEVANT LAW
`I have the following understanding of the applicable law:
`13.
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`A. Anticipation
`I understand that a claim in an issued patent can be unpatentable if it is
`14.
`
`anticipated. I understand that “anticipation” means that there is a single prior art
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`reference that discloses every element of the claim, arranged in the way required by
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`the claim.
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`15.
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`I understand that an anticipating prior art reference must disclose each
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`of the claim elements expressly or inherently. I understand that “inherent”
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`disclosure means that the claim element, although not expressly described by the
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`prior art reference, must necessarily be present based on the disclosure. I understand
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`that a mere probability that the element is present is not sufficient to qualify as
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`“inherent disclosure.”
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`B. Obviousness
`I understand that a claim in an issued patent can be unpatentable if it is
`16.
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`
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`8
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`ECOBEE V. ECOFACTOR
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`Exhibit 2012
`Page 8
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`obvious. Unlike anticipation, obviousness does not require that every element of the
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`claim be in a single prior art reference. Instead, it is possible for claim elements to
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`be described in different prior art references, so long as there is motivation or
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`sufficient reasoning to combine the references, and a reasonable expectation of
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`success in achieving what is set forth in the claims.
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`17.
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`I understand that a claim is unpatentable for obviousness if the
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`differences between the claimed subject matter and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the alleged invention
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`was made to a person having ordinary skill in the art to which said subject matter
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`pertains.
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`18.
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`I understand, therefore, that when evaluating obviousness, one must
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`consider obviousness of the claim “as a whole”. This consideration must be from
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`the perspective of the person of ordinary skill in the relevant art, and that such
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`perspective must be considered as of the “time the invention was made.”
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`19. The level of ordinary skill in the art is discussed in ¶¶26-28 below.
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`20. The relevant time frame for obviousness, the “time the invention was
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`made”, is discussed in ¶¶29-30, below.
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`21.
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`I understand that in considering the obviousness of a claim, one must
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`consider four things. These include the scope and content of the prior art, the level
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`of ordinary skill in the art at the relevant time, the differences between the prior art
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`
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`Exhibit 2012
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`and the claim, and any “secondary considerations.”
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`22.
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`I understand that “secondary considerations” include real-world
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`evidence that can tend to make a conclusion of obviousness either more probable or
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`less probable. For example, the commercial success of a product embodying a claim
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`of the patent could provide evidence tending to show that the claimed invention is
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`not obvious. In order to understand the strength of the evidence, one would want to
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`know whether the commercial success is traceable to a certain aspect of the claim
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`not disclosed in a single prior art reference (i.e., whether there is a causal “nexus” to
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`the claim language). One would also want to know how the market reacted to
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`disclosure of the invention, and whether commercial success might be traceable to
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`things other than innovation, for example the market power of the seller, an
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`advertising campaign, or the existence of a complex system having many features
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`beyond the claims that might be desirable to a consumer. One would also want to
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`know how the product compared to similar products not embodying the claim. I
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`understand that commercial success evidence should be reasonably commensurate
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`with the scope of the claim, but that it is not necessary for a commercial product to
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`embody the full scope of the claim.
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`23. Other kinds of secondary considerations are possible. For example,
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`evidence that the relevant field had a long-established, unsolved problem or need
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`that was later provided by the claimed invention could be indicative of non-
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`10
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`ECOBEE V. ECOFACTOR
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`obviousness. Evidence that others had tried, but failed to make an aspect of the
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`claim might indicate that the art lacked the requisite skill to do so. Evidence of
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`copying of the patent owner’s products before the patent was published might also
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`indicate that its approach to solving a particular problem was not obvious. Evidence
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`that the art recognized the value of products embodying a claim, for example, by
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`praising the named inventors’ work, might tend to show that the claim was non-
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`obvious.
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`24.
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`I further understand that prior art references can be combined where
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`there is an express or implied rationale to do so. Such a rationale might include an
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`expected advantage to be obtained, or might be implied under the circumstances.
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`For example, a claim is likely obvious if design needs or market pressures existing
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`in the prior art make it natural for one or more known components to be combined,
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`where each component continues to function in the expected manner when combined
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`(i.e., when there are no unpredictable results). A claim is also likely unpatentable
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`where it is the combination of a known base system with a known technique that can
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`be applied to the base system without an unpredictable result. In these cases, the
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`combination must be within the capabilities of a person of ordinary skill in the art.
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`25.
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`I understand that when considering obviousness, one must not refer to
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`teachings in the specification of the patent itself. One can, however, refer to portions
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`of the specification admitted to being prior art, including the “BACKGROUND”
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`11
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`section. Furthermore, a lack of discussion in the patent specification concerning
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`how to implement a disclosed technique can support an inference that the ability to
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`implement the technique was within the ordinary skill in the prior art.
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`
` LEVEL OF ORDINARY SKILL IN THE ART
`In my opinion, the relevant art was that of heating, ventilation, and air
`26.
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`conditioning (“HVAC”) control and building automation. (Ex. 1001, Abstract, 3:48-
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`67, 4:8-17).
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`27.
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`In my opinion, the level of ordinary skill encompassed a person with at
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`least a (1) Bachelor’s degree in engineering, computer science, or a comparable field
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`of study, and (2) at least five years of (i) professional experience in building energy
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`management and controls, or (ii) relevant industry experience. In my opinion,
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`additional relevant industry experience may compensate for lack of formal education
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`or vice versa.
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`28.
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`I believe I would meet this definition, and would have met this
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`definition in the relevant timeframe. My testimony is offered from this perspective,
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`even if it does not specifically refer to the perspective of a person of ordinary skill
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`in the art in every instance.
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` RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS
`I understand that obviousness must be evaluated “at the time of the
`29.
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`invention.” From the cover pages of the ’597 patent, I can see that the first
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`12
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`provisional application for a patent was filed in the United States on May 12, 2009.
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`30. For the purpose of this declaration, I will analyze obviousness in the
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`time frame immediately prior to this date, although my testimony is usually
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`applicable to a longer period of time before May 12, 2009. My testimony is directed
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`to this timeframe, even if I do not always use a past tense.
`
` TECHNICAL INTRODUCTION
`A. The ’597 Patent Disclosure
`31. The ’597 patent is one of a family of patents directed to controlling
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`HVAC systems. The ’597 patent at-issue (with an earliest-possible benefit date of
`
`2009) relates generally to controls for climate control systems, such as heating and
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`cooling systems (“HVAC systems”). (Ex. 1001, Abstract, 1:18-2:18, 3:48-67, 4:8-
`
`32).
`
`32. HVAC systems have, for decades, been controlled by thermostats. (Ex.
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`1001, 1:18-2:17). Thermostats are typically wall-mounted units that have an internal
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`temperature sensor, and which allow a user to set a target temperature. The target
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`temperature, or “setpoint,” is compared against the actual temperature, and the
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`HVAC system switched on or off in an attempt to maintain the setpoint temperature.
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`33. The ’597 patent states that “programmable thermostats have been
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`available for more than 20 years.” (Ex. 1001, 1:18-19). According to the ’597
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`patent,
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`
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`13
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`“[p]rogrammable thermostats offer two types of advantages as
`compared to non-programmable devices.
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`[¶] On the one hand, programmable thermostats can save energy in
`large part because
`they automate
`the process of reducing
`conditioning during times when the space is unoccupied, or while
`occupants are sleeping, and thus reduce energy consumption.
`
`[¶] On the other hand, programmable thermostats can also enhance
`comfort as compared to manually changing setpoints using a non-
`programmable thermostat. For example, during the winter, a
`homeowner might manually turn down the thermostat from 70
`degrees F. to 64 degrees when going to sleep and back to 70 degrees
`in the morning. . . . A programmable thermostat allows homeowners
`to anticipate the desired result by programming a pre-conditioning of
`the home. So, for example, if the homeowner gets out of bed at 7
`AM, setting the thermostat to change from the overnight setpoint of
`64 degrees to 70 at 6 AM can make the house comfortable when the
`consumer gets up.”
`
`(Ex. 1001, 1:19-44).
`
`34. According to the ’597 patent, however, “all of the advantages of a
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`programmable thermostat depend on the match between the preferences of the
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`occupants and the actual settings employed.” (Ex. 1001, 1:45-47). The ’597 patent
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`explains that “[i]f the temperatures programmed into a thermostat do not accurately
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`reflect the preferences of the occupants, those occupants are likely to resort to
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`manual overrides of the programmed settings.” (Ex. 1001, 1:64-66).
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`35. The ’597 patent suggests improving typical thermostat function by
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`“adapting to signaling from occupants in the form of manual temperature changes
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`and incorporating the information contained in such gestures into long-term
`
`programming.” (Ex. 1001, 2:10-12). In other words, the ’597 patent suggests
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`detecting user-initiated manual changes to temperature settings (e.g., setpoints) and
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`then using information regarding those changes to make changes to long-term
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`programming of a thermostat. It also suggests using inside temperature, outside
`
`temperature, and other factors to purportedly calculate and take into account the
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`building’s thermal characteristics. (Ex. 1001, 2:12-17, 5:17-34). As the ’597 patent
`
`notes, such calculations might involve the rate at which an HVAC system heats or
`
`cools a building. (Ex. 1001, 5:5-40, 3:48-67, claim 9).
`
`36. The difference between the indoor and outdoor temperature was well
`
`known in the prior art to affect the rate at which a building loses or gains heat. (See,
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`e.g., Ex. 1007, Book p. 200; Ex. 1008, Book p. 281). For example, on a hot summer
`
`afternoon, a building will gain heat (incur a rise in temperature) faster than on a cool
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`day, placing greater demand on the air conditioning system on a hot day. Similarly,
`
`on a cold winter day, the building will lose heat more quickly than on a warmer day,
`
`placing greater demand on the heating system. By extension, the apparent ability of
`
`the HVAC system to change the temperature of the house (and thus affect the rate
`
`
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`15
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`of change of temperature) was known to depend on the outside temperature.
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`37. One common prior art application of this principle relates to “setback
`
`and recovery” schedules. Such schedules change the setpoint of a thermostat at
`
`different times of day, in order to save energy when the building is unoccupied. For
`
`example, a workplace thermostat could be programmed during the winter to have a
`
`daytime (8 AM to 5 PM) setpoint of 70 F, and an evening setpoint of 50 F (when the
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`building is expected to be unoccupied). Allowing the building to cool down to 50 F
`
`in the evening is called “setback”, while heating the building back up to 70 F in the
`
`morning is called “recovery.”
`
`38. The ’597 patent has three independent claims. Exemplary independent
`
`claim 1 of the ’597 patent reads as follows:
`
`“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;
`
`using the stored data to predict changes in temperature inside the
`structure in response to at least changes in outside temperatures;
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`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;
`
`recording, with the thermostatic controller, actual 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, claim 1).
`
`39. As I set forth in detail below, in my opinion, the elements of the ’597
`
`patent’s claims were obvious over the prior art. As EcoFactor’s own patents
`
`acknowledge, it was well-understood that the ability of an HVAC system to cool a
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 17
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`structure depended on the outside temperature and the “thermal mass” of the
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`structure. (See, e.g., Ex. 1010, 2:54-3:6). It was also known how to detect user-
`
`initiated manual changes to setpoints and to learn from those changes in order to
`
`improve thermostat programming and reduce the need for users to make manual set
`
`point adjustments.
`
` CLAIM INTERPRETATION
`A. BACKGROUND ON CLAIM INTERPRETATION
`I understand that it is sometimes necessary or useful for claim terms in
`40.
`
`a patent to be further explained or interpreted (“construed”). I understand that in the
`
`present proceeding, the Board applies the same claim construction standard used by
`
`District Courts in actions involving the validity or infringement of a patent. This
`
`involves construing claim terms in accordance with the ordinary and customary
`
`meaning of such terms, as understood by one of ordinary skill in the art, in light of
`
`the claim language, the technical disclosure of the patent (i.e. the specification) and
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`the prosecution history or “file history” of correspondence with the United States
`
`Patent and Trademark Office (USPTO) pertaining to the patent.
`
`41.
`
`I further understand that the file history of a parent patent application
`
`can be relevant to the claim construction of claim terms appearing in patents that
`
`have descended from that parent application.
`
`42.
`
`I understand that certain “extrinsic” evidence, such as dictionaries or
`
`
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`18
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`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 18
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`
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`other prior art, can sometimes be useful to understand the meaning of a claim term.
`
`However I understand that where there is a conflict between any such extrinsic
`
`evidence and the patent and patent’s prosecution history, the latter control.
`
`B. CLAIM INTERPRETATION OF THE ’597 PATENT
`I understand that no claim construction orders have been issued for the
`43.
`
`’597 patent.
`
`44.
`
`I understand that a prior International Trade Commission (“ITC”)
`
`investigation addressed related U.S. Pat. No. 10,018,371 (“the ’371 patent”). (Ex.
`
`1017). Claim 9 of the ’371 patent recites a limitation similar to the “detecting a
`
`manual change” limitation of the ’597 patent. The two claim limitations are shown
`
`below, side-by-side, with the differences denoted in blue:
`
`“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....”
`
`’371 patent, claim 9
`
`(Ex. 1017, pp. 369-370)
`
`“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....”
`’597 patent, claim 1
`
`
`
`45.
`
`I understand that in the ITC proceeding, EcoFactor argued that the
`
`“detecting a manual setpoint change” limitation was met when the relevant
`
`
`
`19
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 19
`
`
`
`comparison was carried out, regardless of whether the system had previously
`
`detected a setpoint change, and regardless of whether the system could retrieve
`
`complete manual setpoint change information from its memory. I understand that
`
`the ITC ultimately found that the accused product met the “detecting a manual
`
`setpoint change” limitation of claim 1. (Ex. 1017, pp. 396-402).
`
`46.
`
`In this proceeding, I apply the ITC’s apparent construction of the
`
`“detecting a manual change to the first automated setpoint” limitation.
`
` GROUND 1: CLAIMS 1-24 ARE OBVIOUS OVER EHLERS ’330 IN
`VIEW OF THE KNOWLEDGE OF A POSITA AND WRUCK.
`In my opinion, claims 1-24 are obvious under pre-AIA 35 U.S.C. §
`47.
`
`103(a) over U.S. Pat. App. Pub. 2004/0117330 (“Ehlers ’330”)(Ex. 1004) in view
`
`of the knowledge of a person of ordinary skill in the art (“POSITA”) and U.S. Pat.
`
`Pub. 2005/0040250 A1 (“Wruck”)(Ex. 1005).
`
`48.
`
`I understand that Wruck was not of record during the prosecution of
`
`the application leading to the ’597 patent. I also understand that Ehlers ’330 was
`
`not of record during the prosecution of the application leading to the ’597 patent,
`
`although a similar patent to Ehlers ’330, U.S. Pat. No. 7,130,719 (“Ehlers ’719”)
`
`was cited in a 194-reference IDS. (Ex. 1009, p. 300). I note that the Ehlers ’719
`
`patent was never discussed on the record by the Examiner or Applicant.
`
`
`
`
`
`20
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 20
`
`
`
`A. Effective Prior Art Dates of Ehlers ’330 and Wruck
`49. Ehlers ’330 is a U.S. patent application publication that was published
`
`on June 17, 2004 and I understand that it is thus prior art.
`
`50.
`
` Wruck is a U.S. patent application publication that was published on
`
`February 24, 2005 and I understand that it is thus prior art.
`
`B. Overview of the Combination
`In my opinion, Ehlers ’330 teaches or renders obvious all elements of
`51.
`
`the claims. I rely on Wruck and the knowledge of POSITA, however, to reinforce
`
`the obviousness of the limitations of the ’597 patent directed to “detecting a manual
`
`change” using a “difference value”, as I describe in more detail below.
`
`1. Overview of Ehlers ’330.
`In my opinion, Ehlers ’330 is similar to the ’597 patent. (Ex. 1004, Fig.
`52.
`
`1B, ¶¶0072-0079, 0099). Shown below are Fig. 1B of Ehlers ’330 (left side),
`
`compared with Fig. 2 of the ’597 patent (right side):
`
`
`
`21
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 21
`
`
`
`
`
`
`
`Ehlers ’330, Fig. 1B
`
`’597 patent, Fig. 2
`
`
`(Ex. 1004, Fig. 1B, ¶¶0072-0079). In both systems there are conditioned spaces
`
`having thermostats, specifically thermostat 1.30D in Ehlers ’330 (Ex. 1004, ¶0076)
`
`and thermostats 108 in the ’597 patent (Ex. 1001, 3:48-67, 4:8-32). The thermostats
`
`in each system are connected to gateways, specifically gateway 1.10D in Ehlers ’330
`
`(Ex. 1004, ¶¶0061-0062) and gateways 112 in the ’597 patent (Ex. 1001, 3:48-67,
`
`7:54-61). The gateways, in turn, connect the thermostats in each system over
`
`networks to servers. (Ex. 1004, ¶¶0072-0073)(Ex. 1001, 3:48-67).
`
`53. Both the system of Ehlers ’330 and that of the ’597 patent collect and
`
`store information relevant to the conditioning of a building. (Ex. 1004, ¶¶0088,
`
`0151, 0268-0309)(Ex. 1001, 4:33-42). In Ehlers ’330, for example:
`
`“[T]he system 1.02 may also include an advanced thermostat device
`1.30D. The system 1.02 may have the ability to sense the current
`22
`
`
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 22
`
`
`
`indoor temperature and could be enhanced to include at a
`minimum, humidity sensing, outside temperature, UV intensity,
`wind direction and speed, relative humidity, wet bulb thermometer,
`dew point and local weather forecast data or encoded signals as
`well as other analog or digital inputs used in the calculation of and
`maintenance of occupant comfort.”
`
`(Ex. 1004, ¶0088)(Emphasis added).
`
`54. Ehlers ’330’s thermostat contains various temperature set points for the
`
`HVAC system, which are manually changeable by a user. For example, a user may
`
`set a desired temperature set point for the thermostat 1.30D. (Ex. 1004, ¶¶0012,
`
`0013, 0153-0160, 0228, 0239, 0244, 0253-0256, 0278, 0281, 0308-0309, 0316-
`
`0324, 0320). A user can also “override” a scheduled setpoint. (Ex. 1004, ¶¶0116,
`
`0118, 0156, 0316, 0354, Fig. 4C).
`
`55. Ehlers ’330 also teaches using a rate of changes in temperatures inside
`
`the structure in response to at least changes in outside temperatures. For example,
`
`Ehlers ’330 teaches calculating the rate at which inside temperature changes at any
`
`given outside temperature (i.e. the “thermal gain rate”) for a given setpoint, in order
`
`to predict how long it will take for the HVAC system to heat or cool the building
`
`from one setpoint to another. (Ex. 1004, ¶¶0253-0254, 0256, 0295, Fig. 3D). Ehlers
`
`’330 can use this thermal gain rate to “compute[] the required effective set point
`
`offset needed to keep the HVAC cycle run time at [a] specified trigger level.” (Ex.
`
`
`
`23
`
`ECOBEE V. ECOFACTOR
`IPR2022-00969
`Exhibit 2012
`Page 23
`
`
`
`1004, ¶0256). Ehlers ’330 specifically determines what future setpoint would result
`
`in a thermal gain rate that would not increase the average HVAC run time and the
`
`controls the system accordingly. (Ex. 1004, ¶0256).
`
`56.
`
` Ehlers ’330 also teaches detecting and implementing a user’s manual
`
`changes to a setpoint. Ehlers ’330 explains that:
`
`“[i]n one aspect of the invention, the system 3.08 manages comfort
`for the customer site 1.04 by learning from the user’s inputs or
`adjustments to the system 3.08 to change or modify indoor air
`temperature.”
`
`(Ex. 1004, ¶0242)(Emphasis added)(See also Ex. 1004, ¶0243)(noting that controls
`
`are “modified as needed based on the user’s changes to the set point at the thermostat
`
`1.30D” and that a “control algorithm [] learn[s] the user’s individual preferences and
`
`over time, eliminat[es] the need for the site 1.04 occupant to make any changes”).
`
`57. Ehlers ’330 further teaches that its system performs “set point pattern
`
`chan
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