Filed on behalf of: ecobee Technologies ULC
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`(record) Patent Owner.
`________________
`
`IPR2022-01461
`U.S. Patent No. 9,194,597
`________________
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`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2022-00538
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`(record) Patent Owner.
`________________
`
`IPR2022-01461
`U.S. Patent No. 9,194,597
`________________
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2022-00538
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .................................................................................... ii
`I.
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`II.
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`III. REASONS FOR REQUESTED RELIEF ....................................................... 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`The Motion for Joinder is Timely ......................................................... 3
`C.
`The Factors Weighs in Favor of Granting the Motion for
`Joinder .............................................................................................................. 4
`1.
`Joinder with the Google IPR Is Appropriate .............................. 4
`2.
`Petitioner Does Not Propose New Grounds ............................... 5
`3.
`Joinder Will Not Negatively Impact the Trial
`Schedule ...................................................................................... 5
`Procedures to Simplify Briefing and Discovery ......................... 6
`4.
`IV. CONCLUSION ................................................................................................ 8
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`i
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`IPR2022-01461
`U.S. Patent No. 9,194,597
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Central Security Group – Nationwide, Inc. d/b/a Alert360 v. Ubiquitous
`Connectivity, LP,
`IPR2019-01610, Paper 12 (Feb. 26, 2020) .............................................. 3, 4, 5, 7
`
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper 12 (Jun. 1, 2017) ............................................................. 1
`
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper 11 (Oct. 15, 2015) .................................................. 4, 5, 6
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`Statutes
`35 U.S.C. § 315(c) .................................................................................................1, 3
`
`Rules
`37 C.F.R. § 42.1(b) ................................................................................................1, 5
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`37 C.F.R. § 42.122(b) ............................................................................................1, 3
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`37 C.F.R. § 42.22 ....................................................................................................... 1
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`
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`
`
`ii
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`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`ecobee Technologies ULC (“ecobee”) respectfully submits this Motion for
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`I.
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`Joinder, with a Petition (“the Petition”) for inter partes review of U.S. Patent No.
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`9,194,597 (“the ’597 patent”), filed concurrently herewith.
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Petitioner
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`requests institution of an inter partes review and joinder with Google Inc. v.
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`EcoFactor, Inc., IPR2022-00538 (“the Google IPR”), which the Board instituted
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`on August 3, 2022, concerning the same claims (1-24) of the ’597 patent at issue in
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`the current Petition. This request is being submitted within the one-month time
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`limit set forth in 37 C.F.R. § 42.122(b).
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`Petitioner submits that the request for joinder is consistent with the policy
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`objectives surrounding inter partes reviews, as it is the most expedient way “to
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`secure the just, speedy, and inexpensive resolution of every proceeding.” See 37
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`C.F.R. § 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC.,
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`IPR2017-00512, Paper 12 at 5-6 (Jun. 1, 2017). The present Petition and the
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`Google IPR Petition are substantively identical with respect to the asserted ground,
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`based on the same prior art combination and supporting evidence, and asserted
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`against the same claims. Further, upon joining the Google IPR, Petitioner will act
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`as an “understudy” and will not assume an active role unless Google ceases to
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`participate in the instituted IPR. Accordingly, the proposed joinder will not unduly
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`1
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`complicate the Google IPR nor adversely impact its schedule. As such, the
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`requested joinder will promote judicial efficiency in determining the patentability
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`of the ’597 patent without prejudice to Patent Owner. Moreover, Petitioner has
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`spoken with Google’s counsel of record in IPR2022-00538, and Google does not
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`oppose this requested joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`The ’597 patent is being asserted in the following litigations: (i)
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`EcoFactor, Inc. v. ecobee, Inc., 6-21-cv-00428 (W.D. Tex.); and (ii)
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`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
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`(N.D. Cal.).
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`2.
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`Google filed a Petition for inter partes review of claim 1-24 of the
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`’597 patent on February 3, 2022. The Board instituted review of the
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`’597 patent as to all claims and all grounds on August 3, 2022 in
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`IPR2022-00538.
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`3.
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`The present Petition asserts the same grounds of unpatentability
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`against the same claims, and relies on the same expert declaration and
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`evidence as asserted and relied upon on in the Google IPR.
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`2
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`III. REASONS FOR REQUESTED RELIEF
`A. Legal Standard
`The Board may grant a motion for joining an inter partes review petition
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`with another inter partes review proceeding. 35 U.S.C. § 315(c). A petitioner may
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`request joinder up to one month after the institution date of the proceeding to
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`which joinder is requested, without prior authorization. 37 C.F.R. § 42.122(b). The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`simplified. Central Security Group – Nationwide, Inc. d/b/a Alert360 v. Ubiquitous
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`Connectivity, LP, IPR2019-01610, Paper 12 at 6 (Feb. 26, 2020).
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`B.
`The Motion for Joinder is Timely
`Pursuant to 37 C.F.R. § 42.122(b), joinder can be requested without prior
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`authorization no later than one month after the institution date of the proceeding to
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`which joinder is requested. This motion is being filed no later than one month from
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`the August 3, 2022 institution date of IPR2022-00538. This motion is timely.
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`3
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`
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`C. The Factors Weighs in Favor of Granting the Motion for Joinder
`All four factors weigh in favor of granting the motion for Petitioner. The
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`Petition is substantively identical to the petition in the Google IPR. Petitioner does
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`not present any new grounds of unpatentability. Additionally, as all issues are
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`substantively identical and Petitioner will act as an “understudy,” “joinder will
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`result in the just, speedy, and inexpensive resolution of the instant Petition”.
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`Central Security, IPR2019-01610, Paper 12 at 8; see LG v. Memory Integrity,
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`LLC., IPR2015-01353, Paper 11 at 6 (Oct. 15, 2015) (granting motion for joinder
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`where petitioner requested an “understudy” role). Moreover, the briefing and
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`discovery will be simplified by resolving all issues in a single proceeding.
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`Accordingly, joinder is appropriate.
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`1.
`Joinder with the Google IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in [an] existing
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`proceeding.” Central Security, IPR2019-01610, Paper 12 at 6 (internal citations
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`omitted). Here, joinder with the Google IPR is appropriate because the present
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`Petition introduces the same arguments and the same grounds raised in the existing
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`Google IPR (i.e., challenges the same claims of the same patent, relies on the same
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`expert declaration, and is based on the same grounds and combinations of prior art
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`submitted in the granted Google Petition). Although there are minor differences
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`4
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`related, e.g., to the mandatory notices and grounds for standing, there are no
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`substantive changes to the facts, citations, evidence, or arguments relied upon to
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`assert unpatentability of the claims relative to the Google Petition. Ex. 1024.
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`Because these proceedings are substantively identical, good cause exists for
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`joining this proceeding with the Google IPR so that the Board, consistent with 37
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`C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of the present Petition and Google’s Petition in a single proceeding, as
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`compared with two separate proceedings.
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`2.
`Petitioner Does Not Propose New Grounds
`As noted above, the Petition challenges the same claims of the ’597 patent,
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`relying on the same expert declaration, and on the same grounds and combinations
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`of prior art submitted in the Google Petition. See LG, IPR2015-01353, Paper 11 at
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`5-6 (granting institution of IPR and motion for joinder where petitioner relied “on
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`the same prior art, same arguments, and same evidence, including the same expert
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`and a substantively identical declaration”); see also Central Security, IPR2019-
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`01610, Paper 12 at 8 (granting motion for joinder where the Petitions challenge the
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`same claims on the same grounds using the same prior art).
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`3.
`Joinder Will Not Negatively Impact the Trial Schedule
`Joinder should have no meaningful impact on the Google IPR trial schedule
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`because the present Petition presents no new issues or grounds of unpatentability.
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`5
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`See LG, IPR2015-01353, Paper 11 at 6 (granting IPR and motion for joinder where
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`“joinder should not necessitate any additional briefing or discovery from Patent
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`Owner beyond that already required in [the original IPR]”). Further, Petitioner
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`explicitly consents to the existing IPR2022-00538 trial schedule. There are no new
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`issues for the Board to address, and Patent Owner will not be required to present
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`any additional responses or arguments upon joinder. It is noted that in the Google
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`IPR, the Patent Owner’s Preliminary Response contained only Fintiv arguments.
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`Presumably, Patent Owner has already been actively analyzing the same grounds
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`presented in the present Petition in connection with its Patent Owner’s Response in
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`the Google IPR.
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`Accordingly, joinder with the Google IPR does not unduly burden or
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`negatively impact the trial schedule.
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`4.
`Procedures to Simplify Briefing and Discovery
`Petitioner explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Petitioner explicitly agrees, upon joining the
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`Google IPR, that the following conditions shall apply so long as the current lead
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`petitioner in IPR2022-00538 remains an active party:
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`a) Petitioner shall not make any substantive filings and shall be bound
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`by the filings of Google, unless a filing concerns termination and
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`settlement;
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`6
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`b) Petitioner shall not present any argument or make any presentation
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`at oral hearing;
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`c) Petitioner shall not seek to cross-examine or defend the cross-
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`examination of any witness; and
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`d) Petitioner shall not seek discovery from Patent Owner.
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`See, e.g., Central Security, IPR2019-01610, Paper 12 at 8 (“Petitioner avers
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`it will take an ‘understudy’ role in the [joined] IPR by consolidating all filings,
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`refraining from advancing new arguments, binding itself to any discovery
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`agreements, and limiting its deposition time to the time already allotted . . .. Thus,
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`joinder would result in the just, speedy, and inexpensive resolution of the instant
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`Petition as well as the petition filed in the [joined] IPR.”). Unless and until Google
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`ceases to participate in the instituted IPR proceeding, Petitioner will not assume an
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`active role.
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`Thus, by Petitioner accepting an “understudy” role, Patent Owner and the
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`current petitioner in the Google IPR can comply with the existing trial schedule
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`without requiring any duplicative efforts by the Board or the Patent Owner. These
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`steps will minimize any potential complications or delay that potentially may result
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`by joinder. Petitioner is further amenable to any other reasonable conditions the
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`Board deems necessary.
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`7
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`IV. CONCLUSION
`Based on the factors discussed above, Petitioner respectfully requests that
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`the Board grant the Petition and grant this motion for joinder with the Google IPR.
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`
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`Date: September 2, 2022
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`Respectfully submitted,
`By: /Justin J. Oliver/
`Reg. No. 44,986
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Counsel for Petitioner ecobee
`Technologies ULC
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`8
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Motion for Joinder to
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`Inter Partes Review IPR2022-00538, was served on this date on the official
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`correspondence address for the patent shown in USPTO Patent Center via
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`FEDERAL EXPRESS next business day delivery:
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`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
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`A courtesy copy of this document was also provided to counsel of record for
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`Patent Owner in IPR2022-00538 via email correspondence to the following
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`recipients:
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`
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`Date: September 2, 2022
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`pwang@raklaw.com
`jlink@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`rak_ecofactor@raklaw.com
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`Respectfully submitted,
`By: /Justin J. Oliver/
`Reg. No. 44,986
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Counsel for Petitioner ecobee
`Technologies ULC
`
`
`
`9
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