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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ECOBEE TECHNOLOGIES ULC
`Petitioner
`v.
`
`ECOFACTOR, INC.
`Patent Owner
`Patent No. 8,596,550
`IPR2022-00983
`
` PETITIONER’S PETITION RANKING AND EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
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`
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`U.S. Patent No. 8,596,550
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`I.
`
`Introduction
`Petitioner ecobee Technologies ULC. (“Petitioner” or “ecobee”) filed two
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`Petitions (IPR2022-00969 and IPR2022-00983), for Inter Partes Review (IPR) of
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`U.S. Patent No. 8,596,550 (“the ’550 patent”), on May 5, 2022. As instructed in
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`the Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)
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`(“CTPG”), Petitioner submits this Paper to provide (1) a ranking of petitions in the
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`order in which it wishes the Board to consider the merits; and (2) a succinct
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`explanation of the differences between the petitions, why the issues addressed by
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`the differences are material, and why the Board should exercise its discretion to
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`institute an additional petition if it identifies one petition that satisfies Petitioner’s
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`burden under 35 U.S.C. § 314(a). (CTPG at 59-60.)
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`II. Ranking
`Rank
`Petition
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`Claims
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`IPR2022-00969
`
`17-23
`
`Primary References Unique Secondary
`Reference
`Boait
`
`Ehlers and Ols
`
`1
`
`2
`
`
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`IPR2022-00983
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`1-16
`
`Ehlers
`
`Harter
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`III. Succinct Explanation of Differences
`The ’550 patent includes a total of 23 claims, of which 3 are independent.
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`Independent claims 1 and 9 are method claims, while independent claim 17 is an
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`apparatus claim. Petition 1 (IPR2022-00969) challenges the apparatus claims, i.e.,
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`claims 17-23, and presents just two grounds. Petition 2 (IPR2021-00983)
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`2
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`
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`U.S. Patent No. 8,596,550
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`challenges the method claims, i.e., claims 1-16, and also presents two grounds, the
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`second of which differs from the second ground of Petition 1.
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`IV. Materiality of the Differences
`Claim 17 is a dense apparatus claim with a number of limitations. Claim 17
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`and various claims depending therefrom were asserted against ecobee in an ITC
`
`investigation (Certain Smart Thermostat Systems, Smart HVAC Systems, Smart
`
`HVAC Control Systems, And Components Thereof, Inv. No. 337-TA-1258 (April 4,
`
`2022) (Initial Determination). Claim 17 recites, in part, processors configured to
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`compare one or more automated setpoints of an HVAC system with actual
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`setpoints (e.g., to determine if a user has changed a programed setpoint). The
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`manner of the comparison, the result of comparison, and the purpose of the
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`comparison are not addressed in claim 17. Instead, claim 17 recites, e.g., numerous
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`databases.
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`Independent claims 1 and 9 were not ultimately asserted in the ITC
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`investigation against ecobee. Independent claim 1 recites a method for detecting
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`manual changes to setpoint for a thermostatic controller. Unlike claim 17, claim 1
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`recites a specific calculation of a “difference value” between an actual setpoint and
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`an automated setpoint. The difference value is then used in an additional step to
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`make a determination. Similarly, claim 9 recites a method for incorporating manual
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`changes to a setpoint for a thermostatic controller. In the method, the detection of a
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`3
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`U.S. Patent No. 8,596,550
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`“manual change” of a first automated setpoint to an actual setpoint is made by
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`determining whether the setpoints “are the same or different.” Claim 9 also
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`involves a second automated setpoint (having a second time as compared to the
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`first automated setpoint). The second automated setpoint is changed based on a
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`rule for interpretation of the manual change. Thus, claims 1 and 9 recite different
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`methods for making determinations of differences in automated setpoints and
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`actual setpoints, and using the same.
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`The density of the recitations in claim 17, as well as the differences in the
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`recitations in claims 1 and 9, make it difficult to apply just two grounds against
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`each of the claims in a single petition. In particular, with respect to independent
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`claim 9 (and its dependent claims), an additional reference is used to address the
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`“at least one rule,” as compared to the grounds in Petition 1, applied against claims
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`17-23. Also, Petition 1 relies upon the Ols and Boait references, which are not
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`applied in Petition 2. Consequently, Petitioner presents two different petitions so
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`as to be able to fully address the different issues and different prior art relevant to
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`the different sets of independent claims.
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`V. The PTAB Should Exercise its Discretion to Institute an Additional
`Petition
`Under SAS, a decision to institute an IPR must cover all claims challenged in
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`a petition. (See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).) Thus, should
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`the Board determine that Petitioner has met its burden under 35 U.S.C. § 314(a) for
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`4
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`U.S. Patent No. 8,596,550
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`at least one of the claims in a petition, the Board must institute IPR of all of the
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`claims. Thus, it is critical for a petitioner to be able to fully address the issues for
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`each claim at issue.
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`Here, the density of independent apparatus claim 17 and distinction of
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`independent method claims 1 and 9, with respect to their focus specific manners of
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`calculation of differences and the uses for those calculations, makes it difficult to
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`address all of the claims in a fulsome manner in a single petition, even when
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`limiting the number of actual grounds. Thus, splitting the arguments into two
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`different Petitions seeks to avoid an inequitable result.
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`Also, given the different analyses addressed above, the proposed grounds in
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`the two Petitions are not redundant or duplicative. Of the three different
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`combinations presented across the two different petitions, only one ground uses the
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`same prior art. And even that ground applies the prior art differently to account for
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`the differences between the apparatus and method claims. Further, Petitioner
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`submits that instituting two IPRs would not place a substantial or unnecessary
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`burden on the Board (or the patent owner), and would not raise fairness, timing,
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`and efficiency concerns.
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`Therefore, Petitioner requests that the Board consider and institute IPRs on
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`both Petitions.
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`5
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`
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`Date: May 5, 2022
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`
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`
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`U.S. Patent No. 8,596,550
`
`/Justin J. Oliver /
`Reg. No. 44,986
`Justin J. Oliver
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`
`Counsel for Petitioner ecobee
`Technologies ULC
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`6
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`U.S. Patent No. 8,596,550
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Petitioner’s Petition
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`Ranking was served by Federal Express on May 5, 2022, on the Patent Owner’s
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`counsel of record at the United States Patent and Trademark Office having the
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`following address:
`
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`
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`Date: May 5, 2022
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`
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`/Justin J. Oliver/ (Reg. No. 44,986)
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`7
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