UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`ECOBEE TECHNOLOGIES, ULC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2022-00983
`Patent No. 8,596,550
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

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`Table of Contents
`
`Introduction ............................................................................................................................. 1
`I.
`II. Background of the ‘550 Patent ............................................................................................... 2
`III. Level of a Person of Ordinary Skill in the Art (POSITA) ...................................................... 5
`IV. Claim Construction ................................................................................................................. 8
`V. Overview of the Asserted Prior Art ........................................................................................ 8
`A.
`Introduction to Ehlers ‘330 ................................................................................................. 8
`B.
`Introduction to Wruck ......................................................................................................... 9
`C.
`Introduction to Harter ....................................................................................................... 10
`VI. General Comments on the Petition and the Auslander Declaration ..................................... 10
`VII. Rebuttal To Allegations Regarding Obviousness ................................................................. 19
`A. Ground 1: The Combination of Ehlers ‘330 and Wruck Does Not Render Claims 1-16
`Unpatentable ............................................................................................................................. 19
`1. No Motivation to Combine Ehlers ‘330 and Wruck ..................................................... 19
`2. Claim Element [1c] – “using the stored data to predict a rate of change of temperatures
`inside the structure in response to at least changes in outside temperatures;” ...................... 21
`3. Claim element [1d] “calculating with one or more computer processors, scheduled
`programming of the thermostatic controller for one or more times based on the predicted
`rate of change, the scheduled programming comprising at least a first automated setpoint at
`a first time;” .......................................................................................................................... 31
`4. Claim element [1e] - “generating with one or more computer processors, a difference
`value based on comparing an actual setpoint at the first time for said thermostatic controller
`to the first automated setpoint for said thermostatic controller; detecting a manual change to
`the first automated setpoint by determining whether said actual setpoint and said first
`automated setpoint are the same or different based on said difference value; and” ............. 35
`5. Dependent Claims 2-8 ................................................................................................... 42
`6.
`Independent Claim 9 ..................................................................................................... 42
`7. Claim element [9c] ........................................................................................................ 42
`8. Claim element [9d] ....................................................................................................... 43
`9. Claim element [9e] ........................................................................................................ 43
`10.
`Dependent Claims 10-16 ........................................................................................... 44
`B. Ground 2: The Combination of Ehlers ‘330, Wruck, and Harter Does Not Render Claims
`9-16 Unpatentable ..................................................................................................................... 44
`1.
`Independent Claim 9 ..................................................................................................... 44
`2. Claim element [9c] ........................................................................................................ 45
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`3. Claim element [9d] ....................................................................................................... 45
`4. Claim element [9e] ........................................................................................................ 46
`5. Dependent Claims 10-16 ............................................................................................... 47
`VIII. Secondary considerations ...................................................................................................... 47
`IX. Conclusion ............................................................................................................................ 49
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`IPR2022-00983
`Patent No. 8,596,550
`
`Exhibits
`
`Description
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 20 (Ecobee’s Motion to Dismiss)
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 1 (Complaint)
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 18 (ecobee Opposition to Motion to Stay)
`Ecobee’s Disclosure of Initial Invalidity Contentions, March 17,
`2022 in Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323
`Ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March
`2, 2012), Dkt. 26 (Orde Denying Motion to Stay)
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`February 2, 2023, Deposition Transcripts of Dr. David
`Auslander, IPR2022-00983.
`Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC
`Control Systems, and Components Thereof, U.S. Int’l Trade
`Comm’n, 337-TA-1258 1258 Investigation, Order No. 18 -
`Construing the Terms of the Asserted Claims, at 1
`U.S. Pat. No. 7,130,719 (“Ehlers ’719”)
`
`
`
`Exhibit No.
`2001
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`2002
`
`2003
`
`2004
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`2005
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`2006
`2007
`2008
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`2009
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`2010
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`iii
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`IPR2022-00983
`Patent No. 8,596,550
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`I.
`
`Introduction
`
`The Petition challenges claims 1-16 of U.S. Patent No. 8,596,550 (Ex. 1001)
`
`under two grounds of unpatentability.
`
`However, this Petition demonstrates a fundamental misunderstanding of the
`
`Ehlers ‘330 reference and its teachings regarding thermal gain. Thermal gain is the
`
`addition of thermal heat, not the increase of an inside temperature. Thus, the Ehlers
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`‘330 reference and its system teach away from the claimed invention of the ‘550
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`patent. Petitioner and its expert ignore this, and instead use improper hindsight to
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`create the claims of the ‘550 patent out of the prior art.
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`Petitioner and its expert further fail to show that the combination of Ehlers
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`‘330 and Wruck teaches calculating automated setpoints. Ehlers ‘330 shows ramping
`
`and recovery time, but not calculating automated setpoints. Petitioner and its expert
`
`fail to map what in Ehlers ‘330 they consider the “automated setpoint at a first time”
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`as claimed by the ‘550 patent. Further, there is no comparison of setpoints in Ehlers
`
`‘330 or Wruck. Because this comparison is the reason for allegedly combining
`
`Ehlers ‘330 and Wruck, Petitioner has failed to provide a motivation to combine
`
`these two references.
`
`Finally, Petitioner’s expert, Dr. David Auslander, formerly worked with
`
`EcoFactor when it was gathering data and information related to temperature
`
`changes in homes. This work was similar to the technology of the ‘550 patent. Dr.
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`IPR2022-00983
`Patent No. 8,596,550
`Auslander even wrote the forward to a document EcoFactor prepared regarding the
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`analysis of this data, thus demonstrating the satisfying of a long-felt need and praise
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`of the invention.
`
`For these reasons, Petitioner has failed to demonstrate that the claims of the
`
`‘550 patent are invalid.
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`II. Background of the ‘550 Patent1
`
`The inventors of the ’550 patent are John Steinberg, Scott Hublou, and Leo
`
`Cheung, and the ’550 patent claims priority to Provisional Application No.
`
`61/215,999 filed on May 12, 2009. The ’550 patent is entitled “System, method and
`
`apparatus for identifying manual inputs to and adaptive programming of a
`
`thermostat.” The ’550 patent was issued after the USPTO cited and considered
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`numerous prior art references. See, e.g., Ex. 1001, Pages 1 and 2 of the ’550 patent.
`
`The ’550 patent teaches “[s]ystems and methods are disclosed for
`
`incorporating manual changes to the setpoint for a thermostatic controller into long-
`
`term programming of the thermostatic controller. For example, one or more of the
`
`exemplary systems compares the actual setpoint at a given time for the thermostatic
`
`controller to an expected setpoint for the thermostatic controller in light of the
`
`scheduled programming. A determination is then made as to whether the actual
`
`setpoint and the expected setpoint are the same or different. Furthermore, a manual
`
`
`1 See generally Ex. 2006, ¶¶12-16.
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`IPR2022-00983
`Patent No. 8,596,550
`change to the actual setpoint for the thermostatic controller is compared to
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`previously recorded setpoint data for the thermostatic controller. At least one rule is
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`then applied for the interpretation of the manual change in light of the previously
`
`recorded setpoint data.” Ex. 1001, Abstract; see also, e.g., Figs. 1-10.
`
`The ’550 patent recognized that “the advantages of a programmable
`
`thermostat depend on the match between the preferences of the occupants and the
`
`actual settings employed. If, for example, the thermostat is set to warm up the house
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`on winter mornings at 7 AM, but the homeowner gets up at 5:30, the homeowner is
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`likely to be dissatisfied. If a homeowner has programmed her thermostat to cool
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`down the house at 5 PM each afternoon based on the assumption that she will come
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`home at 6 PM, but her schedule changes and she begins to arrive home at 4:30 each
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`day, she is likely to be uncomfortable and either make frequent manual changes or
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`go through the generally non-intuitive process of reprogramming the thermostat to
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`match her new schedule. Because the limited interface on most thermostats, that
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`process may take considerable effort, which leads many users to avoid
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`reprogramming their thermostats for long periods or even to skip doing so entirely.”
`
`Ex. 1001, 1:18-2:8.
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`“It would therefore be advantageous to have a means for adapting to signaling
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`from occupants in the form of manual temperature changes and incorporating the
`
`information contained in such gestures into long-term programming. It would also
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`Patent No. 8,596,550
`be desirable to take into account both outside weather conditions and the thermal
`
`characteristics of individual homes in order to improve the ability to dynamically
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`achieve the best possible balance between comfort and energy savings.” Id. at 2:9-
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`17.
`
`The ’550 patent describes various embodiments to address the shortcomings
`
`of prior art systems. For example, Fig. 7 illustrates an example for detecting the
`
`occurrence of a manual override event. Id. at Fig. 7, 5:54-6:30; see also, e.g., Id. at
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`2:50-5:53, 6:30-8:5.
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`IPR2022-00983
`Patent No. 8,596,550
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`
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`III. Level of a Person of Ordinary Skill in the Art (POSITA)
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`Petitioner and Dr. Auslander assert that a person of ordinary skill in the art
`
`(“POSITA”) for the ‘550 patent is someone having “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
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`(ii) relevant industry experience. Additional relevant industry experience may
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`Patent No. 8,596,550
`compensate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002,
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`¶¶23-25).
`
`Although Dr. Palmer, Patent Owner’s expert, meets the requirements of a
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`POSITA under Petitioner’s definition, Patent Owner disagrees with it. Ex. 2006, ¶26.
`
`Rather, a POSITA would have a bachelor’s degree in engineering, computer science,
`
`or a comparable field, with 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. Id. This understanding is based on Dr. Palmer’s experience, as well as the
`
`claim construction ruling in the ITC investigation captioned Smart Thermostat
`
`Systems, Smart HVAC Systems, Smart HVAC Control Systems, and Components
`
`Thereof, U.S. Int’l Trade Comm’n, 337-TA-1258 (the 1258 Investigation”). Both
`
`Petitioner and Patent Owner were parties to the 1258 Investigation, and the claim
`
`construction ruling involved the ‘550 patent. Ex. 2009, 1258 Investigation, Order
`
`No. 18 - Construing the Terms of the Asserted Claims, at 1. In the 1258
`
`Investigation, the Administrative Law Judge (“ALJ”) determined that “a bachelor’s
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`degree in engineering, computer science, or a comparable field, with 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.” Ex. 2009, at 8.
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`Patent No. 8,596,550
`Notably, both Petitioner and Dr. Auslander were involved in the 1258 Investigation
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`and were aware of the ALJ’s holding. Ex. 2008, February 2, 2023, Deposition
`
`Transcripts of Dr. David Auslander, IPR2022-00983, at 17:21-18:14. Despite this
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`knowledge, neither Petitioner nor Dr. Auslander factored this decision into their
`
`analysis nor informed the Patent Trial and Appeals Board of this decision. Id. at
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`18:7-18.
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`As an example of a flaw in Petitioner’s proposed definition of a POSITA, it
`
`should be noted that a building energy management system, as the phrase is
`
`generally applied, describes a complex implementation of multiple sensors,
`
`processors, actuators, and other components and devices integrated into a large
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`commercial building or multiplicity of buildings such as on a campus. Ex. 2006,
`
`¶28. The building energy management system will generally control not only the
`
`HVAC system but also other power consumers such as elevators, escalators,
`
`lighting, and other equipment. By contrast, the subject matter of the ‘550 patent is
`
`focused on residential and similar smaller-scale structures that do not require the
`
`sophistication of controls that are integral to typical building energy management
`
`systems. Id. Moreover, Dr. Auslander agreed in his deposition that “people that use
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`[building energy management]controls, such as a building manager … [would be] a
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`person having professional experience in building energy management controls.”
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`Ex. 2008, 17:13-20.
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`Patent No. 8,596,550
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`IV. Claim Construction
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`The claim terms of the ‘550 patent should be given their plain and ordinary
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`meaning. Ex. 2006, ¶31. Petitioner and Dr. Auslander have applied the claim
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`constructions from the 1258 Investigation for this IPR. Pet. at 12-13; Ex. 1002, ¶¶41-
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`42. For purposes of this Patent Owner’s Response, the same constructions as used
`
`by Dr. Auslander in his declaration have been applied. Ex. 2006, ¶32.
`
`V. Overview of the Asserted Prior Art2
`
`A.
`
`Introduction to Ehlers ‘330
`
`U.S. Patent Application Publication 2004/0117330, entitled “System and
`
`Method for Controlling Usage of a Commodity,” is listed with Gregory A. Ehlers,
`
`James H. Turner, Joseph Beaudet, Ronald Strich, and George Loughmiller as
`
`Inventors. Ex. 1004. Ehlers ‘330 was filed on July 28, 2003, but never issued as a
`
`patent.
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`The focus and substance of Ehlers ‘330 is the management of energy delivery
`
`from a distribution network such as the interconnected power grid or a natural gas
`
`distribution system. Specifically, it contemplates energy cost savings in applications
`
`where energy costs vary with time according to utility specified constraints, with
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`specific tools to quantify and/or graphically illustrate the savings that were or could
`
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`2 See generally Ex. 2006, ¶¶47-52.
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`Patent No. 8,596,550
`be achieved relative to a baseline condition. The application of Ehlers ‘330 is
`
`illustrated, for example, in Figure 1B:
`
`The Ehlers ‘330 system includes a customer graphical user interface that connects
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`
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`to the server through the internet.
`
`B.
`
`Introduction to Wruck
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`U.S. Patent Application Publication 2004/0040250, entitled “Transfer of
`
`Controller Customizations” is listed with Richard A. Wruck as the Inventor. Wruck
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`was filed on July 28, 2003 and published on February 24, 2005. Ex. 1005.
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`Wruck is directed toward “controllers and particularly to thermostats and the
`
`control of air management systems. More particularly, it pertains to the use of
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`configuration tools for configuring, setting and adjusting of programmable
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`Patent No. 8,596,550
`thermostats of air management systems, and the transfer of configuration
`
`information among the configuration tools.” Ex. 1005, ¶0002. Unlike Ehlers ‘330,
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`Wruck focuses on various configuration tools to simplify the transfer of information
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`of user inputs to simplify the programming of the thermostat or other control system
`
`rather than changing the control system operation for improved efficiency or energy
`
`cost savings.
`
`C.
`
`Introduction to Harter
`
`U.S. Patent 7,784,704, entitled “Self-Programmable Thermostat” is listed
`
`with Robert J. Harter as the Inventor. Harter was filed on February 9, 2007, and
`
`issued on August 31, 2010. Ex. 1019.
`
`Harter is directed to a method for automatically programming a manual
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`programmable thermostat. Ex. 1019, 2:47-48. Harter compares the manually entered
`
`setpoint temperature with the with a particular zone’s actual temperature to control
`
`the HVAC system. Id. 2:55-63.
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`VI. General Comments on the Petition and the Auslander Declaration
`
`In his declaration dated May 5, 2022, Dr. Auslander expressed his opinions
`
`regarding the “unpatentability” of the ‘550 patent. Some inaccuracies and
`
`mischaracterizations were observed in his introductory comments and his analyses
`
`that are addressed here. Ex. 2006, ¶33.
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`Patent No. 8,596,550
`Dr. Auslander asserts that “Ehlers was not of record during the prosecution of
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`the application leading to the ’550 patent, although a different Ehlers (U.S. Pat. No.
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`7,130,719 (“Ehlers ’719”)), from a different patent family and having a different
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`disclosure, was cited.” Pet. at 14; Ex. 1002, ¶47. But this is demonstrably inaccurate,
`
`as the disclosure in Ehlers ‘330 is identical to the disclosure in Ehlers ‘719. Compare
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`Ex. 1004 (Ehlers ‘330) with Ex. 2010 (Ehlers ‘719). Ehlers’ 330 and Ehlers ‘719
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`both claim priority to “continuation of application No. 10/402,370, filed on March
`
`28, 2003.” Id. Both Ehlers ‘330 and Ehlers ‘719 contain the same 18 sheets of
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`drawings and the same substantive disclosure. Ex. 2006, ¶34. Despite providing
`
`these opinions in his report, Dr. Auslander admitted is his deposition that he never
`
`actually compared Ehlers ‘330 and Ehlers ‘719. Ex. 2008, 19:17-19.
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`Thus, while Ehlers ‘719 was not expressly discussed by the Examiner during
`
`the prosecution of the ‘550 patent, it is clearly wrong to imply that the Examiner did
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`not have the teachings of Ehlers ‘330 before them when examining and issuing the
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`‘550 patent. Ex. 2006, ¶35. It is presumed that the Examiner considered the
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`teachings of Ehlers ‘330 (via Ehlers ‘719 patent) when concluding that the claims of
`
`the ‘550 patent were patentable. 37 C.F.R. 1.104(A)(1) (“On taking up an application
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`for examination or a patent in a reexamination proceeding, the examiner shall make
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`a thorough study thereof and shall make a thorough investigation of the available
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`prior art relating to the subject matter of the claimed invention.”)(Emphasis added).
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`In addition, of particular note is Petitioner and Dr. Auslander’s reference to
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`“thermal gain” frequently from the Ehlers reference and the heavy reliance on that
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`phrase. However, the use, and misapplication, of this phrase is extensive in the
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`Petition and Dr. Auslander’s declaration. Ex. 2006, ¶36.
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`Dr. Auslander introduces his position as follows: “Ehlers ’330 also teaches
`
`using the rate of change of inside temperature, including calculating the rate at which
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`inside temperature changes at any given outside temperature (i.e. the “thermal gain
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`rate”) for a given setpoint, in order to predict how long it will take for the HVAC
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`system to heat or cool the building from one setpoint to another.” Ex. 1002, at ¶54.
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`In other words, rather than interpret Ehlers’ phrase “thermal gain rate” as it would
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`be understood by a person having ordinary skill in the art and as it is used
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`intrinsically by Ehlers in his specification, Dr. Auslander applies impermissible
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`hindsight in view of the ‘550 patent to define Ehlers’ phrase “thermal gain rate” as
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`“a rate of change of temperature.” Ex. 2006, ¶37.
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`The phrase “thermal gain rate” is well understood by a POSITA to be the rate
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`at which energy is absorbed—which is not the rate of change in indoor temperature.
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`Ex. 2006, ¶38. That is, thermal gain is specifically referring to the absorption of
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`energy, for example by sunlight irradiating a house or by convective and conductive
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`heat transfer into the house from the warm outside air into the walls. While it may
`
`influence the temperature of the structure, it is not synonymous with the temperature.
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`For example, Ehlers discloses that “the system 3.08 tracks and learns about the
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`thermal gain characteristics of the home 2.18… With reference to Fig. 3D, a thermal
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`gain table for two set points is illustrated.” Ex. 1004 ¶253 (emphasis added). There
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`is some confusion about the content of Fig. 3D, illustrated below, due to
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`incongruities between the text (which refers to Fig. 3D as a table instead of a graph)
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`and the figure. Ex. 2006, ¶38.
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`
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`The figure shows a horizontal axis spanning a little over 2 hours, and a vertical
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`axis labeled “Indoor Setpoint” with values apparently corresponding to degrees
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`Fahrenheit. Ex. 2006, ¶39. The lines appear to reflect temperatures rather than rates
`
`of energy increase, and no axis or label quantifies the “thermal gain.” If read
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`Patent No. 8,596,550
`literally, Ehlers’ description would indicate that the thermal gain rate would be a
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`continuously increasing value between 72 and 80 (units unspecified), but this is not
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`consistent with other discussion in Ehlers. Id. To properly interpret Fig. 3D requires
`
`reading the subsequent paragraph.
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`Ehlers ‘330 continues his explanation of thermal gain as follows: “The second
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`step is to learn the operational run characteristics of the HVAC system as a function
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`of the thermal gain. Since the outside temperature varies continuously during a
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`typical day, the rate of thermal gain and the HVAC run times also vary in accordance
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`with these changes. Fig. 1E (sic) illustrates a typical day showing plot lines for the
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`thermal gain rate and the associated HVAC run time.” Ex. 1004, ¶254. Unlike Fig.
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`3D, Fig. 3E, copied below, is much clearer and is also consistent with the definition
`
`of thermal gain as the absorption of thermal energy. Ex. 2006, ¶40. Specifically, the
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`graph has a horizontal axis with units of hours illustrating a full day period. The left
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`vertical axis is clearly labeled as “HVAC Runtime %” with units ranging from 10%
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`to 80%. The right vertical axis is labeled “Thermal Gain Rate Per Hour” with no
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`units specified, but a scale from 0 to 4, with actual values plotted between 1 and just
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`under 3. Ex. 1004, ¶254.
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`
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`This clearly illustrates that in the middle of the night (e.g. hours 0-3 and 22-
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`24) the thermal gain is low, but still positive, which a POSITA would reasonably
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`understand to be because it is in a climate where overnight lows are still above the
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`desired temperature setpoint, and the thermal gain is nearly three times greater in the
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`afternoon hours. Ex. 2006, ¶41. However, the thermal gain cannot be interpreted as
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`being a rate of inside temperature change because Ehlers expressly states that “it
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`should be noted here that the set point of the system 3.08 was set at a fixed point for
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`the entire day and the use of humidity sensing and control of humidity levels were
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`not introduced into the illustration so that the graphical plots depict a normal home
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`with a normal HVAC control thermostat.” Ex. 1004, ¶254. A normal thermostat with
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`a constant temperature will not allow a significant temperature excursion, as
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`IPR2022-00983
`Patent No. 8,596,550
`affirmed by the plot of HVAC Run% which increases when the greater rate of
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`thermal energy is being absorbed by the structure, in order to hold the temperature
`
`constant, and lowers when the energy absorbed by the structure is at a lower rate.
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`Ex. 2006, ¶41.
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`The distinction between the thermal gain rate and the rate of change of
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`temperature is further illustrated in Ehlers’ discussion of his Fig. 3G. Ex. 2006, ¶42.
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`
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`Ehlers explains:
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`“For this example, the set point of the thermostat is 72 degrees F. and
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`the allowed variation selected by the customer is 4 degrees F. making
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`the acceptable range for indoor temperature from 72 degrees F. to 76
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`degrees F… for this example it is assumed that the customer has set
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`the base line trigger to be set when the HVAC units run time reaches
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`33%. In the early morning when it is cool, the system 3.08 in this
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`example will be operating at a cycle rate of 10%. As the outside
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`temperature rises, the thermal gain on the home 2.18 is monitored
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`along with the HVAC cycle rate on a continuous basis. The rise in the
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`outside temperature causes the HVAC cycle time to increase as
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`illustrated in Fig. 3E. As the system 3.08 reaches the trigger level of
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`33% cycle run time, the base line is established and the system 3.08
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`computes the required effective set point offset needed to keep the
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`HVAC cycle run time at the specified trigger level of 33%. By
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`adjusting the effective set point upward, the system 3.08 is able to
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`maintain the HVAC run time at the predetermined trigger level up to
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`the point that the thermal gain rise rate exhausts the allowed
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`temperature variant allowed for the site 1.04… Fig. 3G illustrates this
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`scenario assuming that the thermal gain of the site 1.04 does not
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`exhaust the allowed temperature variant for the site 1.04.”
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`Ex. 1004 ¶254. In other words, Fig. 3G has nearly the same thermal gain plot as Fig.
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`3E, as illustrated below in the superposition of the two plots, but allows indoor
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`temperature to change by up to 4 oF. Ex. 2006, ¶43.
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`
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`Thus, Dr. Auslander’s usage of Ehlers’ phrase “thermal gain rate” is directly
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`contrary to Ehlers’ own usage. Ex. 2006, ¶44. Further illustrating the incorrectness
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`of Dr. Auslander’s misconstruction is the fact that if “thermal gain rate” meant “rate
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`of change of temperature,” then the illustrations of Fig. 3E and Fig. 3G would
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`indicate that the temperature was continuously increasing by 1 to 3 degrees per hour,
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`for a total of nearly 42 oF. over the 24-hour period, regardless of the operation of the
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`HVAC equipment. Id.
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`Thus, Dr. Auslander is incorrect in his opinion that Ehlers’ “thermal gain rate”
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`is the same as the “rate of change of temperature” of Patent ‘550. Ex. 2006, ¶45. The
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`specific implications of Dr. Auslander’s misconstruction will be discussed in greater
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`detail below.
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`VII. Rebuttal To Allegations Regarding Obviousness
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`Petitioner and Dr. Auslander’s opinions regarding the patentability of the ‘550
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`patent, rely on two grounds that include one issued patent and two published patent
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`applications: U.S. patent application 2004/0117330 (“Ehlers ‘330”), U.S. patent
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`application 2006/0040250 (“Wruck”), and U.S. patent No. 7,784,704 (“Harter”).
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`See, e.g., Pet. at 13, 56; Ex. 1002 at ¶¶44, 150.
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`A. Ground 1: The Combination of Ehlers ‘330 and Wruck Does Not
`Render Claims 1-16 Unpatentable
`Petitioner and Dr. Auslander allege that the combination of Ehlers ‘330 and
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`Wruck renders obvious claims 1-16 of the ‘550 patent. See, e.g., Pet. at 13; Ex. 1002
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`at ¶44. This is incorrect. Ex. 2006, ¶53.
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`1.
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`No Motivation to Combine Ehlers ‘330 and Wruck
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`Dr. Auslander states that “based on Ehlers ’330 alone, it would have been
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`obvious to determine a ‘difference value’ (as claimed) based on comparing an actual
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`setpoint (at a first time) to a first automated setpoint.” Ex. 1002, ¶63. He further
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`states that “a POSITA would have understood from Ehlers ’330 that comparing
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`entered and automated setpoints would be beneficial to the described ‘learning from
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`the user’s inputs or adjustments to the system 3.08 to change or modify indoor air
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`temperature.’” Ex. 1002, ¶64 (quoting Ex. 1004, ¶0242). Dr. Auslander then asserts
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`that “Wruck does just that.” Ex. 1002, ¶65.
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`But as noted below, Wruck does not do that. Ex. 2006, ¶55. There is no
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`teaching in Wruck of comparing two different setpoints. The only portion of Wruck
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`relied upon by Dr. Auslander in support of his conclusion is one entry in Table 28,
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`which states that “Display actual temporary setpoint if Delta value < > 0.” Ex. 1005,
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`¶110. There is no explanation anywhere in Wruck of what “Delta value” is or how
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`it is obtained. There is certainly no description, expressed or implied, of “Delta
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`value” being the comparison of two different setpoints. Thus, even if Ehlers ‘330
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`makes it obvious “to compare one or more automated setpoints associated with the
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`scheduled setpoint” (it does not), a POSITA would not look to Wruck because it
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`does not teach comparing two different setpoints. Ex. 2006, ¶55.
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`Moreover, despite Dr. Auslander’s suggestions otherwise, Wruck contains no
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`disclosure of calculating a setpoint. Ex. 2006, ¶56. Nowhere in his declaration does
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`Dr. Auslander actually cite to any teaching in Wruck of calculating a setpoint. This
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`is because there is no such teaching, as all of the setpoints disclosed in Wruck are
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`manually inputted. Thus, even if a POSITA really did understand “from Ehlers ’330
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`that comparing entered and automated setpoints would be beneficial to the described
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`‘learning from the user’s inputs or adjustments to the system 3.08 to change or
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`modify indoor air temperature’” (Ex. 1002 ¶64 (quoting Ex. 1004, ¶0242)), that
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`POSITA would not have consider Wruck as doing such a thing. Rather, a POSITA
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`would have considered Wruck different and therefore would not have combined
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`Ehlers ‘330 and Wruck in the manner offered by Dr. Auslander. Ex. 2006, ¶56.
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`2.
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`Claim Element [1c] – “using the stored data to predict
`a rate of change of temperatures inside the structure
`in response to at least changes in outside
`temperatures;”
`Petitioner and Dr. Auslander assert that “the ‘rate of thermal gain,’ or ‘thermal
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`gain rate,’ in Ehlers ’330 is the rate of change in temperature inside the structure (for
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`a given outside temperature), which is depicted by the slope of the lines depicted in
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`Figure 3D represents the difference between inside temperature measurements
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`divided by the span of time between the measurements.” Pet. at 31; see also Ex.
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`1002, ¶91. This is incorrect. Ex. 2006, ¶57.
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`As an initial matter, Dr. Auslander errs in his assertion that “thermal gain rate
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`[] is the rate of change in temperatures inside the structure,” as discussed in detail
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`above. Ex. 2006, ¶58. The “thermal gain rate” is not and cannot be interpreted as the
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`“rate of change in temperatures inside the structure.” Dr. Auslander’s assertion that
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`“thermal gain rate” means “rate of change in inside temperature” is incompatible
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`with Figure 3E and Figure 3G of Ehlers ‘330. If thermal gain rate were interpreted
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`to be synonymous with the rate of change in inside temperature, then these figures
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`would indicate that the te