Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Date: June 6, 2023
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 7
`Date: June 6, 2023
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`I.
`
`INTRODUCTION
`
`Google LLC (“Petitioner”) filed (1) a Petition for inter partes review
`
`(Paper 1, “Pet.”) of claims 1–16 of U.S. Patent No. 8,596,550 B2 (Ex. 1001,
`
`“the ’550 patent”) and (2) a Motion for Joinder (Paper 2, “Mot.”) to ecobee
`
`Technologies ULC v. EcoFactor, Inc., IPR2022-00983 (“the ecobee IPR”).
`
`We instituted an inter partes review in the ecobee IPR on November 15,
`
`2022. Ecobee IPR, Paper 8. EcoFactor, Inc. (“Patent Owner”) did not file a
`
`Patent Owner Preliminary Response or an Opposition to Petitioner’s Motion
`
`for Joinder in this proceeding.
`
`We have authority to institute an inter partes review if “the
`
`information presented in the petition . . . and any response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
`
`(2018).
`
`After considering the Petition, the Motion for Joinder, and evidence of
`
`record, we grant Petitioner’s request to institute an inter partes review of
`
`claims 1–16 of the ’550 patent and Motion for Joinder to IPR2022-00983.
`
`
`
`A.
`
`Real Parties-in-Interest
`
`II. BACKGROUND
`
`As required by 37 C.F.R. § 42.8(b)(1), each party identifies the real
`
`party-in-interest. Petitioner identifies itself as the real party-in-interest.
`
`Pet. 67. Patent Owner identifies itself as a real party-in-interest. Paper 5, 1.
`
`
`
`2
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`B.
`
`Related Proceedings
`
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner and Patent Owner
`
`identify the judicial or administrative matters that would affect or be affected
`
`by a decision in this proceeding. Petitioner and Patent Owner state the ’550
`
`patent is the subject matter of:
`
`(1) Emerson Electric Co. v. EcoFactor, Inc., 1-21-cv-00317 (D. Del.
`
`March 1, 2021);
`
`(2) Google, LLC v. EcoFactor, Inc., 3-21-cv-01468 (N.D. Cal. March
`
`1, 2021);
`
`(3) ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March 2,
`
`2021);
`
`(4) Carrier Global Corp. v. EcoFactor, Inc., 1-21-cv-00328 (D. Del.
`
`March 3, 2021);
`
`(5) EcoFactor, Inc. v. Google, LLC, 6-22-cv-00350 (W.D. Tex. April
`
`1, 2022);
`
`(6) Certain Smart Thermostat Systems, Smart HVAC Systems, Smart
`
`HVAC Control Systems, And Components Thereof, Inv. No. 337-TA-1258
`
`(April 4, 2022) (Initial Determination) (“Certain Smart Thermostat
`
`Systems”);
`
`(7) ecobee Technologies ULC v. EcoFactor, Inc., IPR2022-00969
`
`(involving the ’550 patent);
`
`(8) ecobee Technologies ULC v. EcoFactor, Inc., IPR2022-00983
`
`(involving the ’550 patent); and
`
`(9) Google LLC v. EcoFactor, Inc., IPR2023-00355 (involving the
`
`’550 patent). Pet. 67–68; Paper 5, 1.
`
`
`
`3
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`C.
`
`Asserted Grounds
`
`Petitioner relies upon the following evidence:
`
`(1) U.S. Patent Publication 2004/0117330, published June 17, 2004
`
`(Ex. 1004, “Ehlers”);
`
`(2) U.S. Patent Publication 2005/0040250, published February 24,
`
`2005 (Ex. 1005, “Wruck”);
`
`(3) U.S. Patent 7,784,704 B2 (Ex. 1019, “Harter”).
`
`Petitioner challenges the patentability of claims 1–16 of the ʼ550
`
`patent claims on the following grounds (Pet. 11):
`
`Ground Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
`1
`1–16
`103(a)
`Ehlers, Wruck
`2
`9–16
`103(a)
`Ehlers, Wruck, Harter
`
`
`
`III.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as the one on which we instituted review in the ecobee IPR.
`
`Compare Pet. 12–66, with ecobee IPR, Paper 8 at 7. Indeed, Petitioner
`
`contends that the Petition
`
`introduces the same arguments and the same grounds raised in
`the existing ecobee IPR (i.e., challenges the same claims of the
`same patent, relies on the same expert declaration, and is based
`on the same grounds and combinations of prior art submitted in
`the granted ecobee Petition). Although there are minor
`differences related to the mandatory notices and grounds for
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’550 patent claims priority to an application filed before
`this date, our citations to 35 U.S.C. § 103 in this Decision are to its pre-AIA
`version. Our decision is not impacted, however, by which version of the
`statute applies.
`
`4
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`standing, there are no substantive changes to the facts, citations,
`evidence, or arguments relied upon to assert unpatentability of
`the claims relative to the ecobee Petition.
`
`Mot. 7. Exhibit 1023, a redlined comparison of the petitions in this
`
`proceeding and the ecobee IPR, confirm that the challenges are substantively
`
`identical.
`
`Patent Owner did not file a Preliminary Response.
`
`For the same reasons set forth in our institution decision in the ecobee
`
`IPR, we determine that the information presented in the Petition shows a
`
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`
`16 of the ’550 patent are unpatentable. See ecobee IPR, Paper 8, 14–30.
`
`Accordingly, we institute an inter partes review on all of the challenged
`
`claims.
`
`
`
`IV. GRANT OF MOTION FOR JOINDER
`
`We instituted trial in the ecobee IPR on November 15, 2022. ecobee
`
`IPR, Paper 8. Petitioner filed the Petition and Motion for Joinder on
`
`December 15, 2022. Because joinder was requested no later than one month
`
`after trial was instituted in the ecobee IPR, Petitioner’s Motion for Joinder is
`
`timely. See 37 C.F.R. § 42.122(b) (2022).
`
`The statutory provision governing joinder in inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads:
`
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`5
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3)
`
`explain what impact (if any) joinder would have on the trial schedule for the
`
`existing review; and (4) address specifically how briefing and discovery may
`
`be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
`
`4 (PTAB Apr. 24, 2013).
`
`The Petition asserts the same unpatentability grounds on which we
`
`instituted review in the ecobee IPR. See Mot. 3, 7. Specifically, Petitioner
`
`presents “the same arguments and the same grounds raised in the existing
`
`ecobee IPR (i.e., challenges the same claims of the same patent, relies on the
`
`same expert declaration, and is based on the same grounds and combinations
`
`of prior art submitted in the granted ecobee Petition).” Id. at 7. Indeed, the
`
`Petition is nearly a “carbon copy” of the petition filed by the petitioner in the
`
`ecobee IPR. See id.; Ex. 1023 (a redlined comparison of the petitions in this
`
`proceeding and the ecobee IPR). Thus, this inter partes review does not
`
`present any ground or matter not already at issue in the ecobee IPR.
`
`If joinder is granted, Petitioner anticipates participating in the
`
`proceeding in a limited capacity absent termination of the ecobee IPR
`
`petitioner as a party. Mot. 3–4; see also id. at 9–10. Petitioner states that it
`
`“will act as an ‘understudy’ and will not assume an active role unless the
`
`current petitioner ceases to actively prosecute the instituted IPR.” Id. at 3–4.
`
`Because Petitioner expects to participate only in a limited capacity,
`
`Petitioner submits that “the proposed joinder will not unduly complicate the
`
`ecobee IPR nor adversely impact its schedule. As such, the requested
`
`joinder will promote judicial efficiency in determining the Patentability of
`
`6
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`
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`IPR2023-00356
`Patent 8,596,550 B2
`
`the ‘550 patent without prejudice to Patent Owner.” Id. at 4. Petitioner
`
`further indicates that ecobee does not oppose the request joinder. Id..
`
`Patent Owner did not file an opposition to the motion for joinder.
`
`We agree with Petitioner that joinder with the ecobee IPR is
`
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`
`Motion for Joinder.
`
`
`
`V. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–16 of the ’550 patent is instituted in IPR2023-00356;
`
`FURTHER ORDERED that the Motion for Joinder with IPR2022-
`00983 is granted, and Petitioner is joined as a party to IPR2022-00983;
`
`FURTHER ORDERED that all further filings by Petitioner and Patent
`Owner, except for those which concern a request for rehearing of this
`decision, shall be made only in IPR2022-00983;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds and
`claims for trial in IPR2022-00983 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2022-00983 (Paper 9) remains unchanged, subject to
`any changes already made by stipulation between Patent Owner and ecobee
`Technologies ULC (“ecobee”);
`
`FURTHER ORDERED that, subsequent to joinder, Petitioner is
`bound by every paper filed by and every representation made by ecobee in
`IPR2022-00983, except for papers and representations regarding settlement
`between ecobee and Patent Owner;
`
`FURTHER ORDERED that Petitioner shall make no filing and take
`no action in the joined proceeding unless (1) ecobee settles with Patent
`
`7
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`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`Owner and a Motion to Terminate ecobee from the joined proceeding has
`been filed, or (2) the filing is a motion to terminate the proceeding with
`respect to Petitioner, a settlement agreement between Petitioner and Patent
`Owner, or a request to keep settlement agreement separate under 37 C.F.R.
`§ 42.74(c);
`
`FURTHER ORDERED that Petitioner shall not receive any direct,
`cross examination, or redirect time beyond that permitted for ecobee alone,
`under either 37 C.F.R. § 42.53 or any agreement between ecobee and Patent
`Owner;
`
`FURTHER ORDERED that the case caption in IPR2022-00983 shall
`be changed in accordance with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2022-00983.
`
`
`8
`
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`FOR PETITIONER:
`
`Matthew A. Smith
`Elizabeth Laughton
`SMITH BALUCH LLP
`smith@smithbaluch.com
`laughton@smithbaluch.com
`
`
`FOR PATENT OWNER:
`
`Philip X. Wang
`Jonathan Link
`Reza Mirzaie
`Kristopher Davis
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jlink@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`
`
`
`
`
`
`
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`9
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`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ECOBEE TECHNOLOGIES ULC and GOOGLE LLC,
`Petitioners,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2022-00983
`Patent 8,596,550 B22
`
`
`
`
`
`
`
`
`
`
`
`
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`1 Google LLC was joined as a party to this proceeding via a Motion for
`Joinder in IPR2023-00356.
`
`10
`
`
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