UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner
`____________
`
`IPR2022-00538
`Patent No. 9,194,597
`____________
`
`PATENT OWNER’S RESPONSE
`
`ECOBEE Exhibit 1028
`ECOBEE v. ECOFACTOR
`IPR2022-00983
`
`

`

`Table of Contents
`
`I.
`
`INTRODUCTION ....................................................................................................... 1
`
`II. BACKGROUND OF THE ‘597 PATENT .................................................................. 2
`
`III. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART (POSITA) ............. 4
`
`IV. CLAIM CONSTRUCTION ......................................................................................... 7
`
`V. OVERVIEW OF THE ASSERTED PRIOR ART ...................................................... 8
`
`A. Introduction to Ehlers ‘330 Prior Art Reference ...................................................... 8
`
`B.
`
`Introduction to Wruck Prior Art Reference .............................................................. 9
`
`VI. PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘597 PATENT .. 10
`
`A. Petitioner’ Expert Misunderstands the Teachings of Ehlers ‘330 .......................... 10
`
`B. Claim Element [1d] - “using the stored data to predict changes in temperature
`inside the structure in response to at least changes in outside temperatures” ............... 19
`
`C. Claim Element [1e] - “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” ....................................................................... 25
`
`D. Claim Element [1h]: generating with the at least one computer, a difference value
`based on comparing at least one of the 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 setpoint and first automated setpoint are the same or different
`based on the difference value. ....................................................................................... 28
`
`E. Dependent Claims 2-8 ............................................................................................ 30
`
`F.
`
`Independent Claim 9 .............................................................................................. 30
`
`1. Claim [9e] – “calculating scheduled programming of setpoints in the
`thermostatic controller based on the predicted rate of change, the scheduled
`programming comprising at least a first automated setpoint at a first time and a
`second automated setpoint at a second time to control the heating ventilation and air
`conditioning system” .................................................................................................. 31
`G. Dependent Claims 10-16 ........................................................................................ 33
`
`
`
`i
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`

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`H. Independent Claim 17 ............................................................................................ 33
`
`I. Dependent Claims 18-24 ........................................................................................ 34
`
`J. Factor 4 weighs against institution, as there is overlap between this IPR and the
`district court case. .......................................................................................................... 34
`
`K. Factor 5 weighs against institution, as Petitioner is a Respondent in the parallel
`district court case. .......................................................................................................... 36
`
`L. Factor 6 weighs against institution. ........................................................................ 36
`
`M. Summary Regarding Fintiv Factors ....................................................................... 37
`
`VII. CONCLUSION .......................................................................................................... 38
`
`
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`ii
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`IPR2022-00538
`Patent No. 9,194,597
`
`Exhibits
`
`Description
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 30, 2021), Dkt. 1 (Complaint)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. Aug. 3, 2021), Dkt. 30 (Joint Case Management
`Statement)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 7, 2022), Dkt. 72 (Amended Scheduling Order)
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 13, 2022), Dkt. 73 (Amended Scheduling
`Order)
`Google’s Oct. 19, 2021, Invalidity Contentions in Google, LLC
`f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220 (N.D. Cal.)
`“Silicon Valley’s Home Court: Patent Trends in the Northern
`District of California.” White & Case Newsflash (Mar. 18,
`2020).
`U.S. Patent No. 10,018,371
`Expert Declaration of John A. Palmer
`Curriculum Vitae of John A. Palmer
`April 6, 2021, Deposition Transcript of Mr. Rajenda Shah,
`IPR2021-01218.
`337-TA-1258 International Trade Commission Investigation,
`Order No. 18 - Construing the Terms of the Asserted Claims
`October 10, 2022, Deposition Transcript of Mr. Rajenda Shah,
`IPR2022-00538.
`October 13, 2022, Deposition Transcript of Mr. Rajenda Shah,
`IPR2022-00473.
`
`
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`2009
`2010
`
`2011
`
`2012
`
`2013
`
`
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`iii
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`IPR2022-00538
`Patent No. 9,194,597
`
`I.
`
`INTRODUCTION
`
`The Petition challenges claims 1-24 of U.S. Patent No. 9,194,597 (the ‘597
`
`patent) (Ex. 1001) under one ground of unpatentability.
`
`However, this challenge 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
`
`‘330 reference and its system teach away from the claimed invention of the ‘597
`
`patent. Petitioner and its expert ignore this, and instead use improper hindsight to
`
`create the claims of the ‘597 patent out of the prior art.
`
`Petitioner and its expert further fail to show that the combination of Ehlers
`
`‘330, the knowledge of a person of ordinary skill in the art (“POSITA”), 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” as claimed
`
`by the ‘597 patent.
`
`Finally, Petitioners mapping of various claim limitations is inconsistent.
`
`Petitioner points to certain features of Ehlers ‘330 as being the “automated setpoint
`
`at a first time” for claim element [1e], but points to entirely different features of
`
`Ehlers ‘330 as being the “setpoint at the first time” for claim element [1h].
`
`
`
`1
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`

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`IPR2022-00538
`Patent No. 9,194,597
`For these reasons, Petitioner has failed to demonstrate that the claims of the
`
`‘597 patent are invalid.
`
`II. BACKGROUND OF THE ‘597 PATENT1
`
`The inventors of the ’597 patent are John Steinberg, Scott Hublou, and Leo
`
`Cheung, and the ’597 patent claims priority to US application 12/778/052, and
`
`Provisional Application No. 61/215,999 filed on May 12, 2009. The ’597 patent is
`
`entitled “System, method and apparatus for identifying manual inputs to and
`
`adaptive programming of a thermostat.” The ’597 patent was issued after the USPTO
`
`cited and considered numerous prior art references. See, e.g., Ex. 1001, pages 1-3.
`
`The ’597 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
`
`change to the actual setpoint for the thermostatic controller is compared to
`
`previously recorded setpoint data for the thermostatic controller. At least one rule is
`
`
`1 See generally Ex. 2008, ¶¶12-16.
`
`
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`2
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`IPR2022-00538
`Patent No. 9,194,597
`then applied for the interpretation of the manual change in light of the previously
`
`recorded setpoint data.” Ex. 1001, at Abstract; see also, e.g., Figs. 1-10.
`
`The ’597 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
`
`on winter mornings at 7 AM, but the homeowner gets up at 5:30, the homeowner is
`
`likely to be dissatisfied. If a homeowner has programmed her thermostat to cool
`
`down the house at 5 PM each afternoon based on the assumption that she will come
`
`home at 6 PM, but her schedule changes and she begins to arrive home at 4:30 each
`
`day, she is likely to be uncomfortable and either make frequent manual changes or
`
`go through the generally non-intuitive process of reprogramming the thermostat to
`
`match her new schedule. Because the limited interface on most thermostats, that
`
`process may take considerable effort, which leads many users to avoid
`
`reprogramming their thermostats for long periods or even to skip doing so entirely.”
`
`Ex. 1001, 1:45-60.
`
`The ‘597 patents further states that it “would therefore be advantageous to
`
`have a means for adapting to signaling from occupants in the form of manual
`
`temperature changes and incorporating the information contained in such gestures
`
`into long-term programming. It would also be desirable to take into account both
`
`outside weather conditions and the thermal characteristics of individual homes in
`
`
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`3
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`IPR2022-00538
`Patent No. 9,194,597
`order to improve the ability to dynamically achieve the best possible balance
`
`between comfort and energy savings.” Id. at 2:9-17.
`
`The ‘597 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
`
`2:50-5:53, 6:30-8:5.
`
`
`III. LEVEL OF A PERSON OF ORDINARY SKILL IN THE ART
`
`(POSITA)
`
`
`
`4
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`

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`IPR2022-00538
`Patent No. 9,194,597
`Petitioner and Mr. Shah assert that a person of ordinary skill in the art
`
`(“POSITA”) for the ‘597 patent is someone having “at least (1) a Bachelor’s degree
`
`in engineering, computer science, or a comparable field of study, and (2) five years
`
`of (i) professional experience in building energy management and controls, or (ii)
`
`relevant industry experience. Additional relevant industry experience may
`
`compensate for lack of formal education or vice versa.” Pet. at 21 (citing Ex. 1002,
`
`¶¶26-28). Further, Mr. Shah testified that a “person who knows how thermostats
`
`functions and can be made to function to control the HVAC system” would be a
`
`person with experience in building energy management and controls. Ex. 2010, April
`
`6, 2021, Deposition Transcripts of Mr. Rajenda Shah, IPR2021-01218 (“Shah Dep.
`
`Tr.”) at 28:25-29:5. This is incorrect. Ex. 2008, ¶26.
`
`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. Ex. 2008, ¶26.This understanding is based on my own experience. It is also
`
`based on 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 are parties to the 1258
`
`
`
`5
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`IPR2022-00538
`Patent No. 9,194,597
`Investigation, and the claim construction ruling involved U.S. Patent No. 8,596,550
`
`(the “‘550 patent”). Ex. 2011, 1258 Investigation, Order No. 18 - Construing the
`
`Terms of the Asserted Claims, at 1. The ‘597 patent claims priority to the ‘550
`
`patent. Ex. 1001. In the 1258 Investigation, the Administrative Law Judge (“ALJ”)
`
`determined that “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.” Ex. 2011, at 8. Notably, although the ALJ’s holding occurred on September
`
`1, 2021, Mr. Shah was not aware of this decision nor did he factor it into his opinions.
`
`Ex. 2012, October 10, 2022, Deposition Transcripts of Mr. Rajenda Shah, IPR2022-
`
`00538, at 17:12-19:13.
`
`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
`
`commercial building or multiplicity of buildings such as on a campus. Ex. 2008,
`
`¶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 ‘597 patent is
`
`
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`6
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`IPR2022-00538
`Patent No. 9,194,597
`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, Mr. Shah agreed that “a person who knows how the
`
`thermostats function and can be made to function to control the HVAC system, that
`
`sort of person would have experience in building energy management and controls.”
`
`Ex. 2010, Shah Dep. Tr., 28:25-29:5.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner states that the ITC investigation captioned Smart HVAC Systems
`
`and Components Thereof 337-TA-1185 involved U.S. Pat. No. 10,018,371, and that
`
`claim 9 of the ‘371 patent recites a limitation similar to the “detecting manual
`
`change” limitation of the ‘597 patent. Pet. at 11-12. The Initial Determination from
`
`the 1185 investigation was provided as Exhibit 1017 to the Petition. However, the
`
`Initial Determination provided is heavily redacted, particularly at pages 396-402,
`
`which were cited by Petitioner and Mr. Shah. Ex. 2008, ¶31. Thus, it is difficult to
`
`verify the accuracy of the statement that “EcoFactor argued that the ‘detecting a
`
`manual setpoint change’ limitation was met when the relevant 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.” Pet. at 12, see also, Ex. 1002, at ¶45.
`
`When asked about this statement in his deposition, Mr. Shah was unable to identify
`
`
`
`7
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`

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`IPR2022-00538
`Patent No. 9,194,597
`where in the Initial Determination from the 1185 investigation that provided support.
`
`Ex. 2012, October 10, 2022, Deposition Transcripts of Mr. Rajenda Shah, IPR2022-
`
`00538, at 23:22-24:15. Instead, he noted that “there are a lot of redactions on this”
`
`Initial Determination and admitted that he had never seen the unredacted document.
`
`Id.
`
`Nevertheless, the claim terms of the ‘597 patent should be given their plain
`
`and ordinary meaning. Ex. 2008, ¶32.
`
`V. OVERVIEW OF THE ASSERTED PRIOR ART2
`
`A.
`
`Introduction to Ehlers ‘330 Prior Art Reference
`
`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. Ehlers ‘330 was filed on July 28, 2003, and published on June 17, 2004.
`
`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
`
`specific tools to quantify and/or graphically illustrate the savings that were or could
`
`
`2 See generally Ex. 2008, ¶¶46-50.
`
`
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`8
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`IPR2022-00538
`Patent No. 9,194,597
`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 to the server through the internet.
`
`B.
`
`Introduction to Wruck Prior Art Reference
`
`U.S. Patent Application Publication 2004/0040250, entitled “Transfer of
`
`Controller Customizations” is listed with Richard A. Wruck as the Inventor. Wruck
`
`was filed on July 28, 2003 and published on February 24, 2005.
`
`Wruck is directed toward a thermostatic controller for air management. Ex.
`
`1005, ¶0002. Wruck describes various configuration tools to allow a user to
`
`
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`9
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`IPR2022-00538
`Patent No. 9,194,597
`configure, adjust and set a programmable thermostat and transfer configuration
`
`information among the various configuration tools. Id.
`
`VI. PATENTABILITY OF THE CHALLENGED CLAIMS OF THE ‘597
`
`PATENT
`
`Petitioner and Mr. Shah allege that the combination of Ehlers ‘330, the
`
`knowledge of a POSITA, and Wruck, renders obvious claims 1-24 of the ‘597 patent.
`
`See, e.g., Pet. at 6, 13; Ex. 1002 at ¶47. This is incorrect. Ex. 2008, ¶51.
`
`A.
`
`Petitioner’ Expert Misunderstands the Teachings of Ehlers ‘330
`
`In his declaration dated January 31, 2022, Mr. Rajendra Shah expressed his
`
`opinions regarding the “unpatentability” of the ‘597 patent. However, these
`
`opinions demonstrate a misunderstanding of the teachings of Ehlers ‘330.
`
`Of particular note is the phrase “thermal gain” which Mr. Shah references
`
`frequently from the Ehlers reference and relies on heavily throughout his report. Ex.
`
`2008, ¶34. Mr. Shah introduces his position as follows: “Ehlers ‘330 also teaches
`
`using a rate of changes (sic) 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…” Ex. 1002, at ¶55. Shah further
`
`expresses “In my opinion, the ‘rate of thermal gain,’ ‘thermal rate of gain,’ or
`
`‘thermal gain rate’ in Ehlers ‘330 is the rate of changes in temperature inside the
`
`
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`10
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`IPR2022-00538
`Patent No. 9,194,597
`structure.” Ex. 1002 at ¶93. In other words, rather than interpret Ehlers’ phrase
`
`“thermal gain rate” as it would be understood by a person having ordinary skill in
`
`the art and as it is used intrinsically by Ehlers ‘330 in his specification, Mr. Shah
`
`applies impermissible hindsight in view of the ‘597 patent to define Ehlers’ ‘330
`
`phrase “thermal gain rate” as “a rate of change of temperature.” W.L. Gore &
`
`Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“[i]t is
`
`difficult but necessary that the decision maker forget what he or she has been taught
`
`. . . about the claimed invention and cast the mind back to the time the invention was
`
`made (often as here many years), to occupy the mind of one skilled in the art.”); see
`
`also Ex. 2008, ¶35.
`
`The phrase “rate of change of temperature” is well understood to mean the
`
`specific change of temperature over a specific time period. Ex. 2008, ¶36.
`
`Similarly, the phrase “thermal gain rate” is well understood by a POSITA the
`
`rate at which energy is absorbed. Ex. 2008, ¶37. That is, thermal gain is specifically
`
`referring to the absorption of energy, for example by sunlight irradiating a house or
`
`by convective and conductive 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. Id. For example, Ehlers ‘330 discloses that “the
`
`system 3.08 tracks and learns about the thermal gain characteristics of the home
`
`2.18… With reference to Fig. 3D, a thermal gain table for two set points is
`
`
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`11
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`IPR2022-00538
`Patent No. 9,194,597
`illustrated.” Ex. 1004 ¶253 (emphasis added). There is some confusion about the
`
`content of Fig. 3D, illustrated below, due to incongruities between the text (which
`
`refers to Fig. 3D as a table instead of a graph) and the figure. Ex. 2008, ¶37.
`
`
`
`The figure shows a horizontal axis spanning a little over 2 hours, and a vertical
`
`axis labeled “Indoor Setpoint” with values apparently corresponding to degrees
`
`Fahrenheit. Ex. 2008, ¶38. The lines appear to reflect temperatures rather than rates
`
`of energy increase, and no axis or label quantifies the “thermal gain.” If read
`
`literally, Ehlers ‘330’s description would indicate that the thermal gain rate would
`
`be a continuously increasing value between 72 and 80 (units unspecified), but this is
`
`not consistent with other discussion in Ehlers. A POSITA would infer that Ehlers
`
`
`
`12
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`IPR2022-00538
`Patent No. 9,194,597
`‘330’s intent is to show that the thermal gain rate is related to the slope of the line
`
`(which would be rate of change of temperature), but the figure and text do not so
`
`state explicitly, and nothing in Ehlers ‘330 states that it is the slope of the line. To
`
`properly interpret Fig. 3D requires reading the subsequent paragraph. Ex. 2008, ¶38.
`
`Ehlers ‘330 continues his explanation of thermal gain as follows: “The second
`
`step is to learn the operational run characteristics of the HVAC system as a function
`
`of the thermal gain. Since the outside temperature varies continuously during a
`
`typical day, the rate of thermal gain and the HVAC run times also vary in accordance
`
`with these changes. Fig. 1E (sic) illustrates a typical day showing plot lines for the
`
`thermal gain rate and the associated HVAC run time.” Ex. 1004, ¶254. Unlike Fig.
`
`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. 2008, ¶39. Specifically, the
`
`graph has a horizontal axis with units of hours illustrating a full day period. The left
`
`vertical axis is clearly labeled as “HVAC Runtime %” with units ranging from 10%
`
`to 80%. The right vertical axis is labeled “Thermal Gain Rate Per Hour” with no
`
`units specified, but a scale from 0 to 4, with actual values plotted between 1 and just
`
`under 3. Id.
`
`
`
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`13
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`
`
`This clearly illustrates that in the middle of the night the thermal gain is low,
`
`but still positive, presumably because it is in a climate where overnight lows are still
`
`above the desired temperature setpoint, and the thermal gain is nearly three times
`
`greater in the afternoon hours. Ex. 2008, ¶40. However, the thermal gain cannot be
`
`interpreted as being a rate of temperature change because Ehlers ‘330 expressly
`
`states that “it should be noted here that the set point of the system 3.08 was set at a
`
`fixed point for the entire day and the use of humidity sensing and control of humidity
`
`levels were not introduced into the illustration so that the graphical plots depict a
`
`normal home with a normal HVAC control thermostat.” Ex. 1005, ¶254. A normal
`
`thermostat with a constant temperature will not allow a significant temperature
`
`excursion, as affirmed by the plot of HVAC Run% which increases when the greater
`
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`14
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`IPR2022-00538
`Patent No. 9,194,597
`rate of 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. Ex. 2008, ¶40. Indeed, Mr. Shah admitted that this is the correct
`
`interpretation of Ehlers ‘330, saying “So whatever heat is being absorbed from the
`
`outside, the cooling of the HVAC system matches it in order to keep the inside
`
`temperature almost the same at the set point. That’s what this graph [Figure 3E] is
`
`showing.” Ex. 2013 28:7-11. Such an interpretation is not consistent with Mr.
`
`Shah’s opinion that thermal gain rate is the same as rate of change of temperature.
`
`Ex. 2008, ¶40.
`
`The distinction between the thermal gain rate and the rate of change of
`
`temperature is further illustrated in Ehlers ‘330’s discussion of his Fig. 3G. Ex. 2008,
`
`¶41.
`
`
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`15
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`IPR2022-00538
`Patent No. 9,194,597
`
`
`
`Ehlers explains:
`
` “For this example, the set point of the thermostat is 72 degrees F. and
`
`the allowed variation selected by the customer is 4 degrees F. making
`
`the acceptable range for indoor temperature from 72 degrees F. to 76
`
`degrees F… for this example it is assumed that the customer has set
`
`the base line trigger to be set when the HVAC units run time reaches
`
`33%. In the early morning when it is cool, the system 3.08 in this
`
`example will be operating at a cycle rate of 10%. As the outside
`
`temperature rises, the thermal gain on the home 2.18 is monitored
`
`along with the HVAC cycle rate on a continuous basis. The rise in the
`
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`16
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`IPR2022-00538
`Patent No. 9,194,597
`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.
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`IPR2022-00538
`Patent No. 9,194,597
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`Thus, Mr. Shah’s usage of Ehlers ‘330’s phrase “thermal gain rate,” as he
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`applies it in arguing against the validity of the ‘597 patent, is directly contrary to
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`Ehlers ‘330’s own usage. Ex. 2008, ¶43. Further illustrating the error of Mr. Shah’s
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`misconstruction is the fact that if “thermal gain rate” meant “rate of change of
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`temperature,” then the illustrations of Fig. 3E and Fig. 3G would indicate that the
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`temperature was continuously increasing by 1 to 3 degrees per hour, for a total of
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`nearly 42 degrees F. over the 24-hour period, regardless of the operation of the
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`HVAC operation. Id.
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`Thus, Mr. Shah is incorrect in his opinion that Ehlers ‘330’s “thermal gain
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`rate” is the same as the “rate of change of temperature” of Patent ‘597. Ex. 2008,
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`Patent No. 9,194,597
`¶44. The specific implications of Mr. Shah’s misconstruction will be discussed in
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`greater detail below.
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`B. Claim Element [1d] - “using the stored data to predict changes in
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`temperature inside the structure in response to at least changes in
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`outside temperatures”
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`Petitioner and Mr. Shah assert that “Ehlers ‘330’s system 3.08 us[es] the
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`stored data, including outside temperatures, to derive a thermal gain rate, which
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`represents a rate of changes in temperatures inside the structure (e.g., a home).”3 Pet.
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`at 34; see also Ex. 1002, ¶92. This is incorrect. Ex. 2008, ¶52.
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`As an initial matter, Mr. Shah errs in his assertion that “thermal gain rate []
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`represents a rate of change in temperatures inside the structure,” as discussed in
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`detail above. Ex. 2008, ¶53.
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`Furthermore, Mr. Shah recognizes that information presented in Fig. 3D of
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`Ehlers ‘330 only relates to changes in temperature when the HVAC system is OFF.
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`Ex. 1002, ¶92. Thus, the “thermal gain rates” qualitatively illustrated in Fig. 3D are
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`only for a building with an HVAC system turned OFF. Ex. 2008, ¶54. It does not
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`provide thermal gain rates for a building when the HVAC system is ON and
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`functioning. Furthermore, it does not provide information about changes in
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`temperature under conditions when the HVAC system is actively cooling. Id.
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`3 All emphasis is in the original unless otherwise stated.
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`Patent No. 9,194,597
`As can be seen in Fig. 3D, the thermal gain rates in a building differ based on
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`number of characteristics and features. Ex. 2008, ¶55. For example, the initial set
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`point of the temperature causes different thermal gain rates, as can be seen below.
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`
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`Ex. 1004, Fig. 3D; ¶253. In another example, different outdoor temperatures (as
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`shown by lines 3.12A, 3.12B, and 3.12C) result in different thermal gain rates. Id. at
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`¶253. What Petitioner and Mr. Shah Ehlers ‘330 both ignore is that the HVAC
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`system being turned ON and functioning will not necessarily affect the thermal gain
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`rate, as illustrated in Fig. 3E and Fig. 3G, discussed above, while it will significantly
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`impact the rate of change of temperature. Ex. 2008, ¶55. However, in his deposition,
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`Mr. Shah claimed that the HVAC system being turned ON and functioning will alter
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`IPR2022-00538
`Patent No. 9,194,597
`the thermal gain rate of a building. Ex. 2012, October 10, 2022, Deposition
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`Transcripts of Mr. Rajenda Shah, IPR2022-00538, at 28:3-23.
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`In addition, Ehlers ‘330 is not predicting changes in inside temperature in
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`response to changes in outside temperature. Ex. 2008, ¶56. Instead, Ehlers ‘330
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`determines the thermal gain of the building under only certain conditions. Ex. 1004,
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`¶253, Fig. 3D. This involves, as Mr. Shah admits, turning the HVAC off and then
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`measuring how much the inside temperature increases over time when at a certain
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`outside temperature. Ex. 1002, ¶92. There is no discussion in Ehlers ‘330, and
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`neither Petitioner nor Mr. Shah identify one, of predicting changes in inside
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`temperatures based on changes in outdoor temperatures. Ex. 2008, ¶56.
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`First, Shah asserts that “the thermal gain rate is used to predict changes in
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`temperature inside the structure in response to at least changes in outside
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`temperatures when it is used to determine a new offset temperature in order to save
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`energy.” Ex. 1002 ¶96. However, calculating a setpoint is not a prediction, it is
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`developing an instruction for the control system. Ex. 2008, ¶57. In this case it is
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`using thermal gain data (which is not a rate of change of inside temperature as
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`discussed previously) and a user specified HVAC cycle runtime to direct the control
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`system to change a setpoint. A setpoint is a prediction only insofar as one might
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`expect that when a thermostat receives a setpoint it will eventually control the HVAC
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`system to achieve that temperature. Furthermore, while the thermal gain rate is
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`indexed by outside temperature, nothing in Ehlers contemplates prediction of inside
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`temperatures based on changes in outside temperature. Id.
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`Petitioner and Mr. Shah also assert that “Ehlers ‘330 uses thermal gain rates
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`to control inside temperature in a manner that balances occupant comfort with
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`energy savings.” Pet. at 41; Ex. 1002, ¶99. But the teachings cited in support describe
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`that “the user [is] to pick from a plurality of economic options offered by the
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`system.” Ex. 1004, ¶255. This includes the user selecting the set point as well as
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`providing “the number of degrees from the set point that the customer would make
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`available to the system 3.08.” Id. Based on the customer’s inputs, as well as the
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`historic data, the system operates the HVAC system. Ex. 2008, ¶58. Thus, the system
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`is not predicting a change in inside temperature based on the change in outside
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`temperatures, but rather is merely setti