Trials@uspto.gov
`571-272-7822
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`Paper 29
`Date: November 13, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ECOBEE TECHNOLOGIES ULC and GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2022-009831
`Patent 8,596,550 B2
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Dismissing Motion for Collateral Estoppel
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 IPR2022-00356 (Google LLC) has been joined with IPR2022-00983.
`Paper 17.
`
`
`
`
`571-272-7822
`
`Paper 29
`Date: November 13, 2023
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ECOBEE TECHNOLOGIES ULC and GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2022-009831
`Patent 8,596,550 B2
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Dismissing Motion for Collateral Estoppel
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 IPR2022-00356 (Google LLC) has been joined with IPR2022-00983.
`Paper 17.
`
`
`
`
`
`IPR2022-00983
`Patent 8,596,550 B2
`
`
`INTRODUCTION
`I.
`ecobee Technologies ULC and Google LLC (“Petitioner”) filed a
`Petition for inter partes review of claims 1–16 of U.S. Patent No. 8,596,550
`B2 (Ex. 1001, “the ’550 patent”). Paper 2 (“Pet.”). EcoFactor, Inc. (“Patent
`Owner”) filed a Preliminary Response opposing institution. Paper 7
`(“Prelim. Resp.”).
`We instituted an inter partes review of claims 1–16 of the ’550 patent
`on all grounds of unpatentability alleged in the Petition. Paper 8
`(“Institution Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 12,
`“PO Resp.”), Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 18, “PO Sur-reply”).
`An oral hearing was held on August 18, 2023, and the record contains
`a transcript of this hearing. Paper 28 (“Tr.”). After the hearing, Petitioner
`and Patent Owner filed Supplemental Briefs Regarding Collateral Estoppel.
`Papers 25, 27.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–16 of the ’550 patent are unpatentable. Petitioner’s
`request for collateral estoppel is dismissed as moot.
`
`
`A.
`
`BACKGROUND
`
`II.
`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
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`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); and
`(6) Certain Smart Thermostat Systems, Smart HVAC Systems, Smart
`HVAC Control Systems, And Components Thereof, Inv. No. 337-TA-1258
`(April 4, 2022) (“Certain Smart Thermostat Systems”). Pet. 69–70; Paper 5,
`1.
`
`We note that the ’550 patent is the subject of IPR2022-00969.
`
`
`B. Overview of the ’550 Patent (Ex. 1001)
`The ’550 patent is titled “System, Method and Apparatus for
`Identifying Manual Inputs to and Adaptive Programming of a Thermostat.”
`Ex. 1001, code (54). The ’550 patent describes a system and method for
`controlling climate control systems such as heating, ventilation, and air
`conditioning (HVAC) systems. Id. at code (57).
`According to the ’550 patent, programmable thermostats, which
`control HVAC systems, offer two types of advantages over non-
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`programmable devices. Ex. 1001, 1:18–20. First, “programmable
`thermostats can save energy . . . because they automate the process of
`reducing conditioning during times when the space is unoccupied, or while
`occupants are sleeping, and thus reduce energy consumption.” Id. at 1:21–
`25. Second, “programmable thermostats can also enhance comfort” and
`“allows homeowners to anticipate [a] desired result by programming a pre-
`conditioning of the home.” Id. at 1:26–38. For example, “if the homeowner
`gets out of bed at 7 AM, setting the thermostat to change from the overnight
`setpoint of 64 degrees to 70 at 6 AM can make the house comfortable when
`the consumer gets up.” Id. at 1:38–41.
`The ’550 patent, however, states “all of the advantages of a
`programmable thermostat depend on the match between the preferences of
`the occupant and the actual settings employed.” Ex. 1001, 1:45–47. “If the
`temperatures programmed into a thermostat do not accurately reflect the
`preferences of the occupants, those occupants are likely to resort to manual
`overrides of the programmed settings.” Id. at 1:64–67. “The need to correct
`the ‘mistakes’ of the thermostat is likely to annoy many users” and, “because
`people tend to overshoot the desired temperature when they make such
`manual changes, these overrides are likely to result in excessive heating and
`cooling, and thus unnecessary energy use.” Id. at 1:67–2:5. “That is, if a
`person feels uncomfortable on a summer afternoon when the setting is 73
`degrees, they are likely to change it to 68 or 69 rather than 71 or 72 degrees,
`even if 72 degrees might have made enough of a difference.” Id. at 2:5–8.
`Thus, the ’550 patent explains that it would be desirable to have a
`system and methods which may adapt to the occupants’ manual temperature
`changes and incorporate the information contained in such gestures into
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`long-term programming and which accounts for both outside weather
`conditions and the thermal characteristics of individual homes in order to
`improve the ability to dynamically achieve the best possible balance
`between comfort and energy savings. Ex. 1001, 2:9–17. To achieve these
`goals, the ’550 patent discloses systems and methods for incorporating
`manual changes to the setpoint for a thermostatic controller into long-term
`programming of the thermostatic controller. Id. at code (57). It discloses
`servers 106 which log the temperature readings from inside each house and
`the timing and duration of air conditioning cycles, and databases 300 which
`contain a history of the thermal performance of each house. Id. at 5:21–25.
`According to the ’550 patent, this performance data allows “server 106 to
`calculate an effective thermal mass for each such structure –– that is, the
`speed with the temperature inside a given building will change in response
`to changes in outside temperatures.” Id. at 5:22–29. Because the server will
`also log these inputs against other inputs including time of day, humidity,
`etc., the ’550 patent explains that “the server will be able to predict, at any
`given time on any given day, the rate at which inside temperature should
`change for given inside and outside temperatures.” Id. at 5:30–34.
`According to the ’550 patent, this performance data also permits
`server 106 to calculate and automate setpoints and schedule future set point
`changes to reduce energy consumption, etc. Ex. 1001, 5:54–6:3; see also,
`e.g., id. at 5:63–6:1 (stating “for time0 the setpoint as scheduled by server
`106 according to the standard setpoint programming (S0), and for time0 the
`setpoint as scheduled by server 106 according to the standard setpoint
`programming (S-1). In step 1004, the server retrieves any additional
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`automated setpoint changes C that have been scheduled for the thermostat by
`server 106.”).
`The ’550 patent explains that its system 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” and “a
`determination is then made as to whether the actual setpoint and the
`expected setpoint are the same or different.” Ex. 1001, code (57).
`“Furthermore, a manual change to the actual setpoint for the thermostatic
`controller is compared to previously recorded setpoint data for the
`thermostatic controller.” Id. “At least one rule is then applied for the
`interpretation of the manual change in light of the previously recorded
`setpoint data.” Id.
`
`C.
`
`Illustrative Claims
`As mentioned above, Petitioner challenges claims 1–16 of the ’550
`patent. Claims 1 and 9 are independent claims and are reproduced below.2
`[1a] A method for detecting manual changes to the setpoint for
`a thermostatic controller comprising:
`[1b] accessing stored data comprising a plurality of
`internal temperature measurements taken within a structure and
`a plurality of outside temperature measurements relating to
`temperatures outside the structure;
`[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;
`[1d] calculating with one or more computer processors,
`scheduled programming of the thermostatic controller for one
`
`2 For ease of reference, we use Petitioner’s claim numbering scheme, added
`in brackets. See Pet. 23–42.
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`or more times based on the predicted rate of change, the
`scheduled programming comprising at least a first automated
`setpoint at a first time;
`[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
`[1f] logging said manual change to a database associated
`with the thermostatic controller.
`Ex. 1001, 8:7–30.
`[9a] A method for incorporating manual changes to the
`setpoint for a thermostatic controller into long-term
`programming of said thermostatic controller comprising:
`[9b] accessing stored data comprising a plurality of
`internal temperature measurements taken within a structure and
`a plurality of outside temperature measurements relating to
`temperatures outside the structure;
`[9c] using the stored data to predict a rate of change of
`temperatures inside the structure in response to at least changes
`in outside temperatures;
`[9d] 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;
`[9e] comparing the 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;
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`[9f] changing the second automated setpoint at the
`second time based on at least one rule for the interpretation of
`said manual change.
`Ex. 1001, 8:50–9:6.
`
`D.
`
`Evidence and 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”); and
`(3) U.S. Patent 7,784,704 B2 (Ex. 1019, “Harter”).
`Petitioner submits declarations from Dr. David M. Auslander
`(Exs. 1002, 1023). Patent Owner submits a declaration from Dr. John A.
`Palmer. Ex. 2006.
`Petitioner challenges the patentability of claims 1–16 of the ʼ550
`patent claims on the following grounds (Pet. 12):
`Ground Claim(s) Challenged 35 U.S.C. §3
`1
`1–16
`103(a)
`2
`9–16
`103(a)
`
`We briefly summarize the prior art references below.
`
`
`
`Reference(s)/Basis
`Ehlers, Wruck
`Ehlers, Wruck, Harter
`
`
`3 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.
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`Overview of Ehlers (Ex. 1004)
`1.
`Ehlers is a U.S. patent application titled “System and Method for
`Controlling Usage of a Commodity.” Ex. 1004, code (54). Ehlers describes
`a system and method for managing delivery of energy from a distribution
`network to a building or other site. Id. at code (57). Ehlers’ system collects
`and stores information relevant to the temperature and other HVAC
`conditioning of a building. Id. ¶ 88.
`Ehlers’ thermostat contains various scheduled temperature setpoints
`for the HVAC system, which are manually changeable by a user. Ex. 1004
`¶¶ 12, 116, 153–160. A user can also “override” a scheduled setpoint. Id.
`¶¶ 116, 156, Fig. 4C.
`Ehlers’ system tracks and learns the thermal gain characteristics of the
`home. In order to predict how long it will take for the HVAC system to heat
`or cool the building from one setpoint to another, it uses the rates of change
`in temperatures by calculating the rate at which inside temperature changes
`at any given outside temperature (“thermal gain rate”) for a given setpoint.
`Ex. 1004 ¶¶ 253–254, 256, 295, Fig. 3D. Ehlers uses this thermal gain rate
`to “compute[] the required effective set point offset needed to keep the
`HVAC cycle run time at [a] specified trigger level.” Id. ¶ 256. By using the
`effect that the thermal gain rate has on HVAC run time, Ehlers’ system
`determines what future setpoint would minimize run time. Id.
`Ehlers also teaches detecting and implementing a user’s manual
`changes to a setpoint. Ex. 1004 ¶¶ 242 (“the system 3.08 manages comfort
`for the customer site 1.04 by learning from the user’s inputs or adjustments
`to the system 3.08 to change or modify indoor air temperature”), 243
`(controls are “modified as needed based on the user’s changes to the set
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`point at the thermostat 1.30D” and that a “control algorithm [] learn[s] the
`user’s individual preferences and over time, eliminat[es] the need for the site
`1.04 occupant to make any changes”).
`
`Ehlers and “Thermal Gain Rate”
`2.
`Underlying a large portion of the dispute between the parties is what
`does the phrase “thermal gain rate” in Ehlers refer to. See PO Resp. 1, 12–
`19; Pet. Reply 3–12; Tr. 5:14–22, 6:8–16, 10:16–11:21 (Petitioner); Tr.
`43:4–44:7 (Patent Owner). Accordingly, we address this dispute before
`applying the prior art to the claim limitations.
`Petitioner argues that “thermal gain rate” in Ehlers is a measure of the
`rate of change of inside temperature. See Pet. 29–37; Pet. Reply 3–12; Tr.
`6:10–12. According to Petitioner, it is measured when the HVAC is off.
`See Ex. 1023 ¶ 13; Pet. Reply 7 (Ehlers’ “Fig. 3D shows the tracking of
`inside temperatures as they approach warmer outside temperatures, when the
`system cycles off from given setpoints (i.e., from a particular setpoint, the
`system switches off and the inside temperature begins to rise).”). For
`support of its understanding, Petitioner focuses on Ehlers Figures 3D, 3E,
`and 3G and the description in paragraphs 253 through 256.
`Patent Owner argues that “thermal gain rate” in Ehlers does not refer
`to a measure of the rate of change of the inside temperature. See PO Resp.
`1, 12–19; PO Sur-reply 3–12. Instead, Patent Owner argues that it is the rate
`that energy is absorbed. See PO Resp. 12 (citing Ex. 2006 ¶ 38); PO Sur-
`reply 3; Tr. 44:1–4. For support of its understanding, Patent Owner, like
`Petitioner, focuses on Ehlers Figures 3D, 3E, and 3G and the description in
`paragraphs 253 through 256.
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`
`We begin our analysis with Ehlers Figure 3D, reproduced below.
`
`
`
`Ehlers Figure 3D is a graph illustrating “an exemplary economic and
`comfort management control strategy.” Ex. 1004 ¶ 29. Figure 3D shows a
`graph showing the indoor set point (temperature) versus time.
`The first set point for which data is available is 72 degrees F. The
`three trends illustrated as lines 3.12A, 3.12B, and 3.12C plot the thermal rate
`of gain in the site 1.04 for different outside temperatures. On the day
`represented by line 3.12A the outside temperature was 99 degrees F. On the
`day represented by line 3.12B, the outside temperature was 90 degrees F.
`On the day represented by line 3.12C, the outside temperature was 77
`degrees F. The next set point for which data is illustrated is the set point of
`76 degrees F. The three trends shown as lines 3.14A, 3.14B, and 3.14C
`illustrate the thermal rate of gain in the home 2.18 for the same outside
`temperatures plotted in the 3.12A, 3.12B, 3.12C data points. Ex. 1004
`
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`¶ 253. Ehlers describes this graph as a “thermal gain table” and it “show[s]
`the impact the set point versus outside temperature differential has over the
`thermal gain rate in the home.” Ex. 1004 ¶ 253. In the scenario illustrated
`in Figure 3D, the HVAC system is off. Ex. 1023 ¶¶ 13–15; Ex. 2006 ¶ 62.
`There appears to be little dispute between the parties as to what is
`being shown in Figure 3D. Both experts testify that “[t]he lines appear to
`reflect temperatures rather than rates of energy increase.” Ex. 2006 ¶ 39; see
`also Ex. 1023 ¶¶ 13–14. We agree with Petitioner that “the ‘rate of thermal
`gain,’ or ‘thermal gain rate,’ in Ehlers is ‘the rate of change in temperature
`inside the structure (for a given outside temperature), which is depicted by
`the slope of the lines depicted in Figure 3D,’” which is “the difference
`between inside temperature measurements divided by the span of time
`between the measurements.” Ex. 1002 ¶ 91 (citing Ex. 1004 ¶¶ 253, 256,
`Fig. 3E, Fig. 3G (depicting use of “thermal gain rate per hour”)). “[T]he
`data in Fig 3D illustrates the thermal gain rate from a specific starting
`temperature and for a single, specific outside temperature when the HVAC
`system is OFF.” Ex. 2006 ¶ 64; see also Ex. 1023 ¶¶ 13–14. Stated
`differently, Figure 3D graphs the change of temperature over time based on
`a given starting internal temperature (set point) and an external temperature.
`Because Ehlers states that these lines “plot the thermal rate of gain” and
`“illustrate the rate of thermal gain” (Ex. 1004 ¶ 253), a person having
`ordinary skill in the art would recognize that the slope of the line is the
`thermal gain rate. See Ex. 1002 ¶ 91. That is, the slope of the line, which
`represents the thermal gain rate, is the rate of change of the internal
`temperature over time during periods in which the HVAC is turned off.
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`Ex. 1023 ¶¶ 11, 13–14. Therefore, Petitioner’s definition of thermal gain
`rate is consistent with Ehlers Figure 3D.
`Petitioner’s definition is also consistent with the description of
`“thermal gain rate” elsewhere. For example, Ehlers states that Figure 3F
`shows “the rate of thermal gain per hour would be set at 3 degrees F. per
`hour.” Ex. 1004 ¶ 255. That is, Ehlers specifically states that thermal rate
`gain is a measure of the change of internal temperature over time. See 1004
`¶ 255; Ex. 1023 ¶ 10. And, because it is discussing an increase in the
`internal temperature, this means that the HVAC is cycled off at that time.
`See Ex. 1023 ¶ 13–14.
`We cannot reconcile Patent Owner’s definition of thermal rate gain
`with the description of Figure 3D or the example in paragraph 255. As
`discussed above, Ehlers states that Figure 3D “plot[s] the thermal rate of
`gain” and “illustrate[s] the rate of thermal gain.” Ex. 1004 ¶ 253. As the
`lines plot temperature over time, the lines do not show the rate that energy is
`absorbed over time. Instead, as discussed above, it shows the rate of
`temperature change over time while the HVAC system is off. See also
`Ex. 1002 ¶¶ 91; Ex. 1023 ¶ 13–14.
`Moreover, Patent Owner’s definition is inconsistent with the
`statement in paragraph 255 discussed above, which clearly equates the
`thermal gain rate with a measure of change of temperature over time. See
`Ex. 1004 ¶ 255 (“For the maximum savings setting, the dead band in this
`example would be raised to 3 degrees F. and the rate of thermal gain per
`hour would be set at 3 degrees F. per hour.”).
`Accordingly, we determine that “thermal gain rate” means the rate of
`temperature change over time while the HVAC system is off.
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`Patent Owner makes a number of arguments disputing Petitioner’s
`understanding of thermal gain rate. For the reasons set forth below, we
`disagree with those arguments.
`Patent Owner argues that “the phrase ‘thermal gain rate’ is well
`understood by a [person having ordinary skill in the art] to be the rate at
`which energy is absorbed.” PO Resp. 12 (citing Ex. 2006 ¶ 38). But the
`only evidence Patent Owner cites is the conclusory statement of Dr. Palmer
`repeating the Response without any citation. See Ex. 2006 ¶ 38. Because
`Dr. Palmer’s testimony does not provide any evidentiary support, we find it
`not credible and give it no weight. See Xerox Corp. et al. v. Bytemark, Inc.,
`IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential)
`(holding that a conclusory declaration is entitled to little weight when it is a
`substantial restatement of the party’s arguments without any additional
`supporting evidence or reasoning); 37 C.F.R. § 42.65(a) (“Expert testimony
`that does not disclose the underlying facts or data on which the opinion is
`based is entitled to little or no weight.”). Moreover, it is inconsistent with
`the use of “thermal gain rate” discussed in paragraph 255, which clearly uses
`the phrase to refer to the rate of temperature change over time.
`Patent Owner also argues that its understanding of thermal gain rate in
`Ehlers is consistent with Ehlers Figures 3D, 3E, and 3G. See PO Resp. 12–
`19; PO Sur-reply 3–11. We agree that there is some support for Patent
`Owner’s understanding in Figures 3E and 3G. However, we cannot look at
`Figures 3E and 3G in isolation. Instead, we must also consider whether
`Patent Owner’s interpretation is consistent with Ehlers’ Figure 3D. And, for
`the reasons discussed above, it is not. Instead, as Petitioner and
`Dr. Auslander persuasively argue, Figure 3D clearly demonstrates that
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`thermal gain rate in Figure 3D refers to the rate of change of the internal
`temperature.
`Patent Owner also argues “if ‘thermal gain rate’ meant ‘rate of change
`of temperature,’ then the illustrations of Fig. 3E and Fig. 3G would indicate
`that the temperature was continuously increasing by 1 to 3 degrees per hour,
`for a total of nearly 42 [degrees] F. over the 24-hour period, regardless of the
`operation of the HVAC.” PO Resp. 18 (citing Ex. 2006 ¶ 44); see also PO
`Resp. 14–16 (arguing thermal gain rate in Figure 3E cannot be a change of
`internal temperature because the temperature does not change); PO
`Resp. 16–18 (making a similar argument with regard to Figure 3G); PO Sur-
`reply 6–11. According to Patent Owner, that is “directly contrary to
`Ehlers[’] own usage.” PO Resp. 18.
`Patent Owner’s argument does not account for how a HVAC system
`operates. During normal operation, a HVAC system cycles on and off to
`maintain a fairly constant inside temperature. Ex. 1023 ¶ 20 (citing
`Ex. 1022, 20:2–22:22, 23:19–22; 107:16–109:18). As Dr. Auslander
`explains, “[i]f the setpoint is 72 degrees F., the HVAC system may cycle on
`when the temperature rises to 73 degrees F., stay on until the temperature
`drops to 71 degrees F., cycle off, and then repeat that cycle when the
`temperature again reaches 73 degrees F.” Id. A person of ordinary skill in
`the art would have understood that, while the temperature is kept fairly
`constant (within a narrow band), the system is cycling on and off, and during
`the off cycle, the temperature inside the structure rises at approximately the
`predicted rate of thermal gain. Id. ¶ 21.
`Similarly, a person of ordinary skill in the art would have understood
`that, in Ehlers’ Figs. 3E and 3G, the thermal gain rate is that “learned”
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`information that predicts what will happen at any given point of time for a
`given setpoint and a given outside temperature, when the system cycles off.
`Ex. 1023 ¶ 24 (citing Ex. 1004 ¶¶ 253–256). Patent Owner’s suggestion that
`this thermal gain rate would indicate a continual increase in inside
`temperature over 24 hours straight, even with the HVAC operating normally
`to maintain the setpoint, is not logical given the disclosure in Ehlers. Id.
`The skilled artisan would know that normally operating HVAC systems
`cycle on and off such that the inside temperatures is kept within a narrow
`band, which is also explicitly described in Ehlers with respect to Figs. 3E
`and 3G. Id. (citing Ex. 1004 ¶¶ 254–256; Ex. 1001, 5:9–12 (stating that
`when an HVAC system “turns on[] the inside temperature stays constant”)).
`Ehlers’ Figures 3E and 3G show that the system is operating normally (i.e.,
`cycling on and off at runtime rates), as opposed to staying on 100% of the
`time, which would happen if the inside temperature was continuously rising.
`Id.
`
`Accordingly, for the reasons set forth above, we find, consistent with
`Petitioner’s understanding, that Ehlers uses the term “thermal gain rate” to
`mean the rate of change of inside temperature when the HVAC system is
`off.
`
`
`Overview of Wruck (Ex. 1005)
`3.
`Wruck is a U.S. patent application titled “Transfer of Controller
`Customizations.” Ex. 1005, code (54). Wruck describes a system that
`allows a personal digital assistant (PDA) or wireless device to control,
`configure, set, and adjust programmable thermostats of air management
`systems. Id. at code (57), ¶¶ 2–5. It permits the user to control the set point
`
`16
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`and temporarily override scheduled setpoints. See, e.g., id. ¶¶ 5, 14–15, 104.
`If the user’s temporary setpoint is entered, and the difference between the
`temporary setpoint and other temperature setpoints is not equal to zero, the
`temporary setpoint may be is displayed. Id. at Table 28, ¶ 110.
`
`
`Overview of Harter (Ex. 1019)
`4.
`Harter is a U.S. patent titled “Self-Programmable Thermostat.”
`Ex. 1019, code (54). Harter is directed to a “hybrid manual/programmable
`thermostat” that allows users to manually enter temperature settings, where
`the thermostat “learns a user’s manual temperature setting habits and
`eventually programs itself accordingly.” Id. at code (57). The thermostat
`can be programmed with a schedule to permit automatic setpoint
`adjustments, where the thermostat “automatically switches from a
`programmed mode to a manual mode simply by manually entering a new
`desired setpoint temperature.” Id. at 2:9–11.
`Harter explains that “[a]fter several manual settings, microprocessor
`36 may learn the user’s preferred setpoint temperatures and timestamps them
`with the aid of a timer 38. With one or more learned setpoint temperatures
`and timestamps 48, microprocessor 36 can begin anticipating the user’s
`desires and automatically adjust the thermostat’s setpoint temperatures
`accordingly.” Ex. 1019, 3:19–25.
`Harter’s microprocessor “looks for patterns of manual setpoints,”
`where a
`daily pattern, for example, can be defined as three consecutive
`days in which a series of three similar manually entered
`setpoint temperatures (e.g., within a predetermined deviation of
`perhaps 2° F. or 5° F. of each other) have similar daily
`
`17
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`IPR2022-00983
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`
`
`timestamps 48 (e.g., each Y-value being within a predetermined
`deviation of perhaps 90 minutes of each other).
`Ex. 1019, 4:14–29. The microprocessor then assigns the daily pattern “a
`learned daily setpoint temperature and a learned daily time,” where for
`“future automatic settings, the [learned daily time] might allow [the]
`microprocessor . . . to activate the learned daily setpoint temperature before
`the user would normally want to adjust the setpoint.” Id.
`
`
`III. ANALYSIS
`
`A.
`
`Legal Standards
`Petitioner bears the burden of persuasion to prove unpatentability, by
`a preponderance of the evidence, of the claims challenged in the Petition.
`35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015).
`As mentioned above, Petitioner’s challenge is based on obviousness.
`Pet. 12. A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed invention and the prior art are such that the claimed
`invention as a whole would have been obvious before the effective filing
`date of the claimed invention to a person having ordinary skill in the art to
`which the claimed invention pertains. KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved based on
`underlying factual determinations including: (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in the record,
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`18
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`IPR2022-00983
`Patent 8,596,550 B2
`
`B.
`
`Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is “a prism or lens” through which
`we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
`hypothetical person presumed to have known the relevant art at the time of
`the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
`determining the level of ordinary skill in the art, we may consider certain
`factors, including the “type of problems encountered in the art; prior art
`solutions to those problems; rapidity with which innovations are made;
`sophistication of the technology; and educational level of active workers in
`the field.” Id.
`Petitioner states a person of ordinary skill in the art would have had “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 (ii) relevant industry
`experience. Additional relevant industry experience may compensate for
`lack of formal education or vice versa.” Pet. 21 (citing Ex. 1002 ¶¶ 23–25).
`Patent Owner states a person of ordinary skill in the art would have
`had “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.” PO Resp. 6 (citing Ex. 2006 ¶ 26).
`The ’550 patent is directed to a thermostat controller. See Ex. 1001,
`8:7–30 (claim 1). This aligns more closely with the level of skill proposed
`by Patent Owner — which focuses on thermostats and HVAC control
`
`19
`
`
`
`C.
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`
`systems — than the one proposed by Petitioner –– which focuses on energy
`management and controls. Compare Ex. 2006 ¶ 26, with Ex. 1002 ¶¶ 23–25.
`Accordingly, we adopt Patent Owner’s proposed definition. However, we
`consider the parties’ positions on the level of ordinary skill in the art to be
`substantially similar and our decision would be the same under either
`definition.
`
`Claim Construction
`In an inter partes review, the claims are construed using the same
`claim construction standard that would be used to construe the claim in a
`civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b) (2021).
`This claim construction standard includes construing the claim in accordance
`with the ordinary and customary meaning of such claims as understood by
`one of ordinary skill in the art. Id.; see also Phillips v. AWH Corp., 415 F.3d
`1303, 1312–13 (Fed. Cir. 2005). In construing claims in accordance with
`their ordinary and customary meaning, we consider intrinsic ev
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