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 SUPPLEMENTAL BRIEFING REGARDING
`COLLATERAL ESTOPPEL
`
`
`
`
`
`
`
`
`
`____________
`
`
`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 SUPPLEMENTAL BRIEFING REGARDING
`COLLATERAL ESTOPPEL
`
`
`
`
`
`
`
`
`
`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Collateral Estoppel Does Not Attach Until There Is a Final Decision .............. 1
`III. Collateral Estoppel Does Not Apply Because the ‘538 FWD Has Not Been
`Affirmed, Nor Has EcoFactor Waived Its Appeal Rights ........................................ 3
`IV. The Issues in the ‘538 IPR Are Different from the Issues in This IPR ............. 4
`V. ecobee’s Waiver Argument Is Meritless ............................................................ 5
`VI. Conclusion ......................................................................................................... 6
`
`
`
`i
`
`
`
`Table of Authorities
`
`Cases
`Martin v. Dep’t of Justice,
`488 F.3d 446 (D.C. Cir. 2007) .............................................................................. 3
`MaxLinear, Inc. v. CF CRESPE LLC,
`880 F.3d 1373 (Fed. Cir. 2018) ..................................................................... 1, 2, 4
`Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc.,
`924 F.3d 1243 (Fed. Cir. 2019) ......................................................................... 3, 4
`VirnetX Inc. v. Apple, Inc.,
`909 F.3d 1375 (Fed. Cir. 2018) ............................................................................. 5
`XY, LLC v. Trans Ova Genetics,
`890 F.3d 1282 (Fed. Cir. 2018) ............................................................................. 2
`Statutes
`35 U.S.C. § 142 ......................................................................................................... 1
`37 C.F.R. § 42.73 ...................................................................................................... 1
`37 C.F.R. § 90.3 ........................................................................................................ 1
`
`
`
`ii
`
`
`
`Patent Owner EcoFactor, Inc. (“EcoFactor”) respectfully submits this brief to
`
`explain why collateral estoppel cannot apply to the application of Ehlers and Wruck
`
`in IPR2022-00983.
`
`I.
`
`Introduction
`
`In support of its assertion that collateral estoppel applies in the current IPR,
`
`Petitioner ecobee technologies ULC (“ecobee”) cites to the Board’s Final Written
`
`Decision (“‘538 FWD”) in IPR2022-00538 (“‘538 IPR”) that the claims of U.S.
`
`Patent No. 9,194,597 (“‘597 patent”) were obvious over the combination of Ehlers
`
`and Wruck. Ex. 1026. However, the ‘538 FWD in IPR2022-00538 issued on August
`
`1, 2023. And EcoFactor has 63 days in which to file an appeal from the ‘538 FWD
`
`in the ’538 IPR. 35 U.S.C. § 142; 37 C.F.R. § 90.3. Thus, the ‘538 FWD is not a
`
`final decision, and collateral estoppel cannot attach until the issues presented in the
`
`’538 FWD are either affirmed on appeal or EcoFactor waives its appeal rights.1
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`II. Collateral Estoppel Does Not Attach Until There Is a Final Decision
`
`Under Federal Circuit case law, an IPR decision does not have preclusive
`
`effect until that decision is either affirmed or the parties waive their appeal rights.
`
`See MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018)
`
`(holding that a decision of the PTAB that was appealed to the Federal Circuit only
`
`
`1 ecobee also asserts that EcoFactor is somehow estopped under 37 C.F.R. § 42.73.
`However, this regulation does not apply to EcoFactor in this proceeding, and ecobee
`does not provide any explanation or analysis to the contrary in its brief.
`
`
`
`1
`
`
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`“became final” for the purpose of collateral estoppel when the Federal Circuit
`
`affirmed it). Like the present case, the patent at issue in MaxLinear was involved in
`
`three IPR proceedings: the ‘592 IPR, the ‘728 IPR, and the ‘615 IPR. In the ‘728
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`and ‘615 IPRs, the Board found claims 1, 17 and 20 unpatentable. Id. at 1375-76.
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`However, in the ‘592 IPR (the one at issue in MaxLinear), the Board found claims
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`1-4, 6-9, and 16-21 to not be unpatentable. Id. at 1375. While MaxLinear’s appeal
`
`of the decision in the ‘592 IPR was pending, the Federal Circuit affirmed the findings
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`of invalidity of claims 1, 17, and 20 in the ‘728 and ‘615 IPRs. Id. In addressing
`
`the’592 IPR appeal, the Federal Circuit began by stating:
`
`In the '728 and '615 IPRs, the Board held that claims 1, 17, and 20,
`involved in this proceeding, were unpatentable. Those decisions have
`subsequently been affirmed by this court. Both parties agree that those
`prior decisions, having been affirmed by our court, are binding in this
`proceeding, as a matter of collateral estoppel, and they could hardly
`argue otherwise.
`
`Id. at 1376 (emphasis added). Thus, the MaxLinear Court made clear that it was
`
`affirmance on appeal that made the prior decisions final for purposes of collateral
`
`estoppel when it stated that “the ‘728 IPR became final” only after it was
`
`“affirmed.” Id. at 1377. Therefore, an affirmance of the ‘538 FWD by the Federal
`
`Circuit is necessary for collateral estoppel to apply. See XY, LLC v. Trans Ova
`
`Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018) (holding that “an affirmance of an
`
`invalidity finding, whether from a district court or the Board, has a collateral estoppel
`
`effect on all pending or co-pending actions”).
`
`
`
`2
`
`
`
`Alternatively, collateral estoppel could apply if EcoFactor were to waive its
`
`right to appeal the ‘538 FWD. In Papst Licensing GMBH & Co. KG v. Samsung
`
`Elecs. Am., Inc., three patents (the ‘144 patent, the ‘746 patent, and the ‘437 patent)
`
`that share the same specification and common claim terms were the subject of three
`
`different IPRs. 924 F.3d 1243, 1249 (Fed. Cir. 2019). The Board in the ‘437 patent
`
`IPR (which was at issue in Papst Licensing) found claims 1-38 and 43-45 (but not
`
`claims 39-42) to be unpatentable. Six weeks before that decision, the Board issued
`
`two other final written decisions that found the claims unpatentable in the ‘144 patent
`
`IPR and the ‘746 patent IPR. Id. Papst initially appealed both of those decisions, but
`
`then voluntarily dismissed its appeals in the ‘144 patent IPR and the ‘746 patent IPR.
`
`“Those decisions therefore became final.” 924 F.3d at 1249 (citing Martin v. Dep’t
`
`of Justice, 488 F.3d 446, 451-52, 454-55 (D.C. Cir. 2007) (voluntary dismissal of
`
`appeal creates preclusion based on the predicate opinion)). Thus, if a party has not
`
`abandoned its appeal rights, there is no collateral estoppel.
`
`Therefore, collateral estoppel does not occur in an IPR proceeding until either
`
`the final written determination is affirmed, or the parties waive their rights to appeal.
`
`III. Collateral Estoppel Does Not Apply Because the ‘538 FWD Has Not
`Been Affirmed, Nor Has EcoFactor Waived Its Appeal Rights
`The ‘538 FWD has not been affirmed, and EcoFactor has not waived its right
`
`to appeal that decision. The ‘538 FWD issued on August 1, 2023. EcoFactor’s has
`
`until October 3, 2023, to file its appeal. Thus, the ‘538 FWD has not been affirmed
`
`
`
`3
`
`
`
`by the Federal Circuit, nor has EcoFactor waived its right to appeal. Therefore,
`
`collateral estoppel does not apply. See MaxLinear, Inc. v. CF CRESPE LLC, 880
`
`F.3d 1373, 1376 (Fed. Cir. 2018) (holding that a decision of the PTAB that was
`
`appealed to the Federal Circuit only “became final” for the purpose of collateral
`
`estoppel when the Federal Circuit affirmed it); Papst Licensing GMBH & Co. KG v.
`
`Samsung Elecs. Am., Inc., 924 F.3d 1243, 1249 (Fed. Cir. 2019) (indicating IPR
`
`decisions became final when appeals were voluntarily dismissed).
`
`IV. The Issues in the ‘538 IPR Are Different from the Issues in This IPR
`
`Beyond the fact that collateral estoppel cannot apply at this stage, the estoppel
`
`ecobee seeks would be improper. The issues presented in the ‘538 IPR are not
`
`identical to those in the present IPR. Here, ecobee’s Petition bases its theory of
`
`invalidity on the obviousness analysis of Dr. Auslander. See, e.g., Pet. at 13; see also
`
`Ex. 1002. But in the ‘538 IPR, the Petition’s theory of invalidity was based on Mr.
`
`Shah’s analysis.2 Ex. 2012, ¶47. Moreover, Dr. Auslander’s analysis was based on
`
`Ehlers in view of Wruck. Ex. 1002, ¶44. This is different from Mr. Shah’s analysis
`
`in the ‘538 IPR, which was based on Ehlers in view of the knowledge of a person
`
`of ordinary skill in the art (“POSITA”) and Wruck. Ex. 2012, ¶47. Thus, ecobee is
`
`using a different obviousness combination in this IPR than was used in the ‘538 IPR.
`
`Further, the ‘538 IPR argued that Ehlers taught generating an automated
`
`
`2 ecobee was joined as a party to the ‘538 IPR in IPR2022-01461. Ex. 1026, at 1.
`
`
`
`4
`
`
`
`setpoint, a point which EcoFactor disputed. Ex. 1028, at 25-28. The ‘538 IPR
`
`Petition never argued that Wruck taught an automated setpoint, but rather stated that
`
`“Wruck teaches determining whether a user’s manually-entered setpoint differs from
`
`a scheduled setpoint by forming a difference value.” Ex. 1027, at 51; see also Ex.
`
`2012, ¶116. In contrast, ecobee now argues in this IPR that “Wruck teaches that it
`
`was known to compare a user desired setpoint with a calculated setpoint in order to
`
`determine if the user has overridden the setpoint programming, and if the difference
`
`in setpoints is not equal to zero, display the temporary setpoint.” Pet. at 39 (emphasis
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`added); see also Ex. 1002, ¶105. Thus, ecobee is now arguing that Wruck teaches an
`
`automated setpoint, which is a different argument than was made in the ‘538 IPR.
`
`Thus, the ‘538 IPR and the present IPR use two different obviousness
`
`combinations and analyses, and present two different issues. Collateral estoppel can
`
`only apply when the “prior action presents an identical issue.” VirnetX Inc. v. Apple,
`
`Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018). As that standard is not met here, there is
`
`no collateral estoppel based on the ‘538 IPR.
`
`V.
`
`ecobee’s Waiver Argument Is Meritless
`
`Finally, while ecobee appears to concede that EcoFactor can appeal the
`
`thermal gain and setpoint calculation issues from the ‘538 IPR, ecobee wrongly
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`argues that EcoFactor waived and cannot appeal the issue of whether the Ehlers-
`
`Wruck combination teaches comparing a first automated setpoint at a first time with
`
`
`
`5
`
`
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`an actual setpoint. EcoFactor preserved arguments that the Ehlers-Wruck
`
`combination fails to teach the “difference value” limitations. See, e.g., Ex. 1026,
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`IPR2022-00538, Paper No. 26 (FWD) at 34-36. Indeed, the Board found in the ‘538
`
`IPR that the “Petition refers to the automated setpoints generally and does not refer
`
`to a particular example,” rejecting EcoFactor’s argument that “the Petition is
`
`deficient because it does not analyze detecting manual changes to the setpoint where
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`the setpoint is the calculated automated setpoint from the prior limitation”—which
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`EcoFactor argued was legally insufficient given the antecedent basis required by the
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`claim. Id.; see Ex. 1028, IPR2022-00538, Paper No. 10 (POR) at 24-25. EcoFactor
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`also disputed that the Petition showed “first automated setpoint at the first time,”
`
`arguing the Petition did not show a “setpoint comparison” involving this first
`
`automated setpoint. See Ex. 1026, at 32 (“Patent Owner argues that this example
`
`fails because the Petition is not sufficiently specific with which setpoint in Ehlers
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`Petitioner is relying on for the claimed ‘first automated setpoint,’ and that Petition
`
`has not identified the claimed ‘first time.’”). See Ex. 1028, at 26-27. As EcoFactor
`
`can appeal, there is no final decision and no estoppel.
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`VI. Conclusion
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`Thus, collateral estoppel based on the ‘538 FWD does not apply to this IPR.
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`The Board should analyze the merits of the parties’ arguments as set forth in the
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`briefing and oral argument and provide a final determination based on that analysis.
`
`
`
`6
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`
`
`
`Dated: September 7, 2023
`
`
`
`
`
`/s/ Philip X. Wang
`
`Respectfully submitted,
`
`Philip X. Wang (Reg. No. 74,621)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
`7
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on
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`September 7, 2023, by filing this document through the P-TACTS system as well as
`
`delivering a copy via electronic mail upon the following attorneys of record for the
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`Petitioner:
`
`Justin Oliver
`joliver@venable.com
`
`
`
`
`Dated: September 7, 2023
`
`
`
`
`
`
`
`/s/ Philip X. Wang
`
`
`
`Philip X. Wang (Reg. No. 74,621)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`rak_ecofactor@raklaw.com
`
`
`
`1
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`
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