Filed on behalf of: ecobee Technologies ULC
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`ECOBEE TECHNOLOGIES ULC,
`Petitioner,
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`v.
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`ECOFACTOR, INC.,
`(record) Patent Owner.
`________________
`
`IPR2022-01461
`U.S. Patent No. 9,194,597
`________________
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`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,194,597
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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
`________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,194,597
`
`
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`
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`
`I.
`II.
`III.
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST .............................................................................................. iii
`TABLE OF AUTHORITIES .......................................................................... v
`MANDATORY NOTICES ............................................................................ vi
`A.
`Lead and Backup Counsel ......................................................... vi
`B.
`Real-Parties-In-Interest ............................................................. vi
`C.
`Notice of Related Matters ......................................................... vi
`D.
`Service Information ................................................................... vi
`E.
`Payment of Fees ....................................................................... vii
`GROUNDS FOR STANDING ............................................................. 1
`STATEMENT OF PRECISE RELIEF REQUESTED ........................ 1
`INTRODUCTION ................................................................................ 1
`A.
`’597 Patent .................................................................................. 1
`IV. CLAIM CONSTRUCTION ................................................................. 6
`V. GROUND 1—OBVIOUSNESS OVER EHLERS ’330 IN
`VIEW OF KNOWLEDGE OF A POSITA AND WRUCK ................ 8
`A.
`Effective Prior Art Dates ............................................................ 8
`B.
`Overview of the Ground ............................................................. 9
`1.
`Overview of Ehlers ’330 .................................................. 9
`2.
`Overview of Wruck ........................................................ 12
`3.
`Overview of the Combination ........................................ 14
`Rationale (Motivation) Supporting Obviousness ..................... 16
`C.
`D. Graham Factors ........................................................................ 16
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`U.S. Patent No. 9,194,597
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`E.
`Reasonable Expectation of Success ......................................... 17
`Analogous Art .......................................................................... 17
`F.
`Claim Mapping ......................................................................... 18
`G.
`INSTITUTION UNDER 35 U.S.C. § 314 ........................................ 67
`VI.
`VII. CONCLUSION ................................................................................... 69
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`EXHIBIT LIST
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`Description
`
`U.S. Patent No. 9,194,597 (“the ’597 patent”)
`
`Declaration of Rajendra Shah
`
`C.V. of Rajendra Shah
`
`U.S. Patent App. Pub. 2004/0117330 (“Ehlers ’330”)
`
`U.S. Patent App. Pub. 2005/0040250 (“Wruck”)
`
`Excerpt from The Industrial Electronics Handbook, Irwin, J.D. ed.
`CRC Press and IEEE Press, 1997, pp. 59-60.
`
`Horan, T, Control Systems and Applications for HVAC/R, Prentice-
`Hall, Inc., 1997.
`
`Levenhagen, J, HVAC Control and Systems, McGraw-Hill, Inc.,
`1993.
`
`File History of Application No. 14/082,675
`
`U.S. Patent No. 8,751,186 (“the ’186 patent”)
`
`Exhibit number not used
`
`U.S. Patent No. 6,789,739 (“Rosen”)
`
`Exhibit
`No.
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013 WO 2007/128783 A1 (“McNulty”)
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`1014
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`1015
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`1016
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`U.S. Patent App. Pub. 2005/0171645 (“Oswald”)
`
`U.S. Patent No. 5,934,554 (“Charles”)
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`U.S. Patent No. 6,029,092 (“Stein”)
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`iii
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`IPR2022-01461
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`ITC Inv. No. 337-TA-1185, Public Version of April 20, 2021
`Initial Determination
`
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Answer (July 13, 2021)
`
`Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal.), Scheduling Order (August 11, 2021)
`
`Security People, Inc. v. Ojmar US, LLC, 14-cv-04968-HSG (N.D.
`Cal.), Order (May 29, 2015)
`
`United States District Courts — National Judicial Caseload Profile,
`June 2022, available at https://www.uscourts.gov/statistics-
`reports/analysis-reports/federal-court-management-statistics
`
`EcoFactor, Inc. v. Ecobee, Inc., 6:21-CV-00428-ADA (W.D.
`Tex.), Dkt. 31 (Scheduling Order) (March 1, 2022)
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`EcoFactor, Inc. v. Ecobee, Inc., 6:21-CV-00428-ADA (W.D.
`Tex.), Dkt. 41 (Order Granting Joint Motion to Consolidate
`Actions) (July 25, 2022)
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`1024
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`Google’s Petition in IPR2022-00538
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`TABLE OF AUTHORITIES
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`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) ................................. 67
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2020-00854, Paper 9 (Oct. 28, 2020) ........................................................... 68
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (Sept. 6, 2017) .......................................................... 69
`Weber, Inc. v. Provisur Technologies, Inc.,
`IPR2019-01467, Paper 7 (Feb. 14, 2020) ............................................................. 9
`Wyers v. Master Lock Co.,
`616 F.3d 1231 (Fed. Cir. 2010) ......................................................................... 18
`Statutes
`35 U.S.C. § 315(b) ..................................................................................................... 1
`Pre-AIA 35 U.S.C. § 103(a) ...................................................................................... 8
`Other Authorities
`Memorandum for the Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court
`Litigation, issued June 21, 2022 .................................................................. 67, 68
`Rules
`37 C.F.R. §42.100(b) ................................................................................................ 6
`37 C.F.R. § 42.101(b) ................................................................................................ 1
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`MANDATORY NOTICES
`A. Lead and Backup Counsel
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`IPR2022-01461
`U.S. Patent No. 9,194,597
`
`
`Lead Counsel
`Justin J. Oliver
`Reg. No. 44,986
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5423
`Facsimile: 202-344-8300
`JOliver@Venable.com
`
`Backup Counsel
`Stephen K. Yam
`Reg. No. 64,927
`VENABLE LLP
`600 Massachusetts Avenue, NW
`Washington, D.C. 20001
`Telephone: 202-721-5429
`Facsimile: 202-344-8300
`SYam@Venable.com
`
`
`B. Real-Parties-In-Interest
`
`The real-parties-in-interest for this petition are ecobee Technologies ULC,
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`ecobee Ltd., and Generac Holdings Inc.
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`C. Notice of Related Matters
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`The ’597 patent is currently at issue in the following proceedings:
`
` Google LLC v. EcoFactor, Inc., IPR2022-00538 (instituted August
`3, 2022) (“Google IPR”);
`
` EcoFactor, Inc. v. ecobee, Inc., 6-21-cv-00428 (W.D. Tex. April 28,
`2021) (“W.D.Tex. Litigation”); and
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` Google, LLC f/k/a Google Inc. v. EcoFactor, Inc., 4-21-cv-03220
`(N.D. Cal. April 30, 2021).
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`D.
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`Service Information
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`Please address all correspondence to the lead counsel at the addresses shown
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`vi
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`above. Petitioner consents to electronic service by email at:
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`ecobee-IPRs@Venable.com
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`E.
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`Payment of Fees
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`The required fees are submitted herewith in accordance with 37 C.F.R. §§
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`42.103(a) and 42.15(a). If any additional fees are due during this proceeding, the
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`Office is authorized to charge such fees to Deposit Account No. 22-0261. Any
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`overpayment or refund of fees may also be deposited in this Deposit Account.
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`vii
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`IPR2022-01461
`U.S. Patent No. 9,194,597
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`Petitioner respectfully requests inter partes review of claims 1-24 of U.S.
`
`Patent No. 9,194,597 (“’597 patent”).
`
`I.
`
`GROUNDS FOR STANDING
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`Petitioner hereby certifies that the patent for which review is sought is
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`available for inter partes review, and that the Petitioner is not barred or estopped
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`from requesting an inter partes review on the grounds identified in the petition. In
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`this regard, as this Petition is accompanied by a Motion for Joinder, the time limit
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`under 37 C.F.R. § 42.101(b) and 35 U.S.C. § 315(b) does not apply.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioner respectfully requests that claims 1-24 of the ’597 patent be canceled
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`based on the following ground:
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`Ground 1: Claims 1-24 are obvious over Ehlers ’330 in view of the
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`knowledge of a POSITA and Wruck.
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`III.
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`INTRODUCTION
`A.
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`’597 Patent
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`The ’597 patent (with an earliest-possible benefit date of 2009) relates
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`generally to controls for climate control systems, such as heating and cooling
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`systems (“HVAC systems”). (Ex. 1001, Abstract, 1:18-2:18, 3:48-67, 4:8-32)(Ex.
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`1002, ¶31). HVAC systems have, for decades, been controlled by thermostats. (Ex.
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`1001, 1:18-2:17)(Ex. 1002, ¶32). Thermostats are typically wall-mounted units with
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`an internal temperature sensor, and which allow a user to set a target temperature.
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`(Ex. 1002, ¶32). The target temperature, or “setpoint,” is compared against the
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`actual temperature, and the HVAC system switched on or off in an attempt to
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`maintain the setpoint temperature. (Ex. 1002, ¶32).
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`The ’597 patent states that “programmable thermostats have been available
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`for more than 20 years” (Ex. 1001, 1:18-19) and that:
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`“[p]rogrammable thermostats offer two types of advantages as compared
`to non-programmable devices.
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`[¶] On the one hand, programmable thermostats can save energy in large
`part 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.
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`[¶] On the other hand, programmable thermostats can also enhance
`comfort as compared to manually changing setpoints using a non-
`programmable thermostat. For example, during the winter, a homeowner
`might manually turn down the thermostat from 70 degrees F. to 64
`degrees when going to sleep and back to 70 degrees in the morning. A
`programmable thermostat allows homeowners to anticipate the desired
`result by programming a pre-conditioning of the home. So, 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.”
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`(Ex. 1001, 1:19-44)(Ex. 1002, ¶33).
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`According to the ’597 patent, however, “all of the advantages of a
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`programmable thermostat depend on the match between the preferences of the
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`occupants and the actual settings employed.” (Ex. 1001, 1:45-47)(Ex. 1002, ¶34).
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`The ’597 patent explains that “[i]f the temperatures programmed into a thermostat
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`do not accurately reflect the preferences of the occupants, those occupants are likely
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`to resort to manual overrides of the programmed settings.” (Ex. 1001, 1:64-66)(Ex.
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`1002, ¶34).
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`The ’597 patent suggests improving typical thermostat function by “adapting
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`to signaling from occupants in the form of manual temperature changes and
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`incorporating
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`the
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`information contained
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`in such gestures
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`into
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`long-term
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`programming.” (Ex. 1001, 2:10-12)(Ex. 1002, ¶35). In other words, the ’597 patent
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`suggests detecting user-initiated manual changes to temperature settings (e.g.,
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`setpoints) and then using information regarding those changes to make changes to
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`long-term programming of a thermostat. (Ex. 1002, ¶35). It also suggests using
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`inside temperature, outside temperature, and other factors to purportedly calculate
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`and take into account the building’s thermal characteristics. (Ex. 1001, 2:12-17,
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`5:17-34)(Ex. 1002, ¶35). As the ’597 patent notes, such calculations might involve
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`the rate at which an HVAC system heats or cools a building. (Ex. 1001, 5:5-40,
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`3:48-67, claim 9)(Ex. 1002, ¶35).
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`The difference between the indoor and outdoor temperature was well known
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`in the prior art to affect the rate at which a building loses or gains heat. (See, e.g.,
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`Ex. 1007, Book p. 200; Ex. 1008, Book p. 281)(Ex. 1002, ¶36). For example, on a
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`hot summer afternoon, a building will gain heat (incur a rise in temperature) faster
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`than on a cool day, placing greater demand on the air conditioning system on a hot
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`day. (Ex. 1002, ¶36). Similarly, on a cold winter day, the building will lose heat
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`more quickly than on a warmer day, placing greater demand on the heating system.
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`(Ex. 1002, ¶36). By extension, the apparent ability of the HVAC system to change
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`the temperature of the house (and thus affect the rate of change of temperature) was
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`known to depend on the outside temperature. (Ex. 1002, ¶36).
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`One common prior art application of this principle relates to “setback and
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`recovery” schedules. Such schedules change the setpoint of a thermostat at different
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`times of day, in order to save energy when the building is unoccupied. (Ex. 1002,
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`¶37). For example, a workplace thermostat could be programmed during the winter
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`to have a daytime (8 AM to 5 PM) setpoint of 70 F, and an evening setpoint of 50 F
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`(when the building is expected to be unoccupied). Allowing the building to cool
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`down to 50 F in the evening is called “setback”, while heating the building back up
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`to 70 F in the morning is called “recovery.” (Ex. 1002, ¶37).
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`The ’597 patent has three independent claims. (Ex. 1002, ¶37). Exemplary
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`independent claim 1 of the ’597 patent reads:
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`“1. A method for detecting manual changes to the setpoint for a
`thermostatic controller comprising:
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`providing a thermostatic controller operatively connected to a heating
`ventilation and air conditioning system, the temperature set point
`of the heating ventilation and air conditioning system being
`manually changeable;
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`accessing stored data comprising a plurality of internal temperature
`measurements taken within a structure and a plurality of outside
`temperature measurements;
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`using the stored data to predict changes in temperature inside the
`structure in response to at least changes in outside temperatures;
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`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;
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`recording, with the thermostatic controller, actual setpoints of the
`heating ventilation and air condition system;
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`communicating the actual setpoints from the one or more thermostatic
`controllers to the at least one computer;
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`generating with the at least one computer, a difference value based on
`comparing at least one of the an [sic] actual setpoints at the first
`time for the thermostatic controller to the first automated setpoint
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`for the thermostatic controller;
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`detecting a manual change to the first automated setpoint by
`determining whether the at least one of the actual setpoints and
`the first automated setpoint are the same or different based on the
`difference value; and
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`logging the manual change to a database.”
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`(Ex. 1001, claim 1)(Ex. 1002, ¶38).
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`As set forth in detail below, the elements of the ’597 patent’s claims were
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`obvious over the prior art. As EcoFactor’s own patents acknowledge, it was well-
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`understood that the ability of an HVAC system to cool a structure depended on the
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`outside temperature and the “thermal mass” of the structure. (See, e.g., Ex. 1010,
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`2:54-3:6)(Ex. 1002, ¶39). It was also known how to detect user-initiated manual
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`changes to setpoints and to learn from those changes in order to improve thermostat
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`programming and reduce the need for users to make manual setpoint adjustments.
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`(Ex. 1002, ¶39).
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`IV. CLAIM CONSTRUCTION
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`“In an inter partes review proceeding, a claim of a patent…shall be construed
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`using the same claim construction standard that would be used to construe the claim
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`in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. §42.100(b).
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`Claim constructions have not issued in either of the co-pending district court
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`actions.
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`A prior ITC investigation addressed related U.S. Patent No. 10,018,371 (“the
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`’371 patent”). (Ex. 1017). Claim 9 of the ’371 patent recites a limitation similar to
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`the “detecting a manual change” limitation of the ’597 patent. The two claim
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`limitations are shown below, side-by-side, with the differences denoted in blue:
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`“detecting a manual change to the first
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`“detecting a manual change to the first
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`automated setpoint by determining
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`automated setpoint by determining
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`whether the at least one of the actual
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`whether the at least one of the actual
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`setpoints and
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`the
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`first automated
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`setpoints and
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`the
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`first automated
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`setpoint are the same or different….”
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`setpoint are the same or different based
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`on the difference value….”
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`’597 patent, claim 1
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`’371 patent, claim 9
`(Ex. 1017, pp. 369-370)
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`In the ITC proceeding, EcoFactor argued that the “detecting a manual setpoint
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`change” limitation was met when the relevant comparison was carried out,
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`regardless of whether the system had previously detected a setpoint change, and
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`regardless of whether the system could retrieve complete manual setpoint change
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`information from its memory. The ITC ultimately found that the accused product
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`met the “detecting a manual setpoint change” limitation of claim 1. (Ex. 1017, pp.
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`396-402).
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`In this proceeding, Petitioner applies the ITC’s apparent construction of the
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`“detecting a manual change to the first automated setpoint” limitation. (Ex. 1002,
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`¶¶45-46).
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`V. GROUND 1—OBVIOUSNESS OVER EHLERS ’330 IN VIEW OF
`KNOWLEDGE OF A POSITA AND WRUCK
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`Claims 1-24 are obvious under pre-AIA 35 U.S.C. § 103(a) over U.S. Patent
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`App. Pub. 2004/0117330 (“Ehlers ’330”)(Ex. 1004) in view of the knowledge of a
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`person of ordinary skill in the art (“POSITA”) and U.S. Patent Pub. 2005/0040250
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`A1 (“Wruck”)(Ex. 1005).
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`A. Effective Prior Art Dates
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`Ehlers ’330 was published on June 17, 2004, and is therefore prior art under
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`pre-AIA 35 U.S.C. § 102(b).
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`Wruck was published on February 24, 2005 and is therefore prior art under
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`at least pre-AIA 35 U.S.C. § 102(b).
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`Wruck was not of record during the prosecution of the application leading to
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`the ’597 patent. Ehlers ’330 was not of record during the prosecution of the
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`application leading to the ‘597 patent, although a similar patent to Ehlers ’330, U.S.
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`Patent No. 7,130,719 (“Ehlers ’719”) was cited in a 194-reference IDS. (Ex. 1009,
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`p. 300). The Ehlers ’719 patent was never discussed on the record by the Examiner
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`or Applicant. See Weber, Inc. v. Provisur Technologies, Inc., IPR2019-01467, Paper
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`7 at 10 (Feb. 14, 2020) (Ex. 1002, ¶¶47-48).
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`B. Overview of the Ground
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`Ehlers ’330 teaches or renders obvious all elements of the claims, and could
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`be applied in a standalone §103 challenge. Wruck and the knowledge of POSITA
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`are cited, however, to reinforce the obviousness of the limitations directed to
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`“detecting a manual change” using a “difference value”, as described in more detail
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`below.
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`1. Overview of Ehlers ’330
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`Ehlers ’330 is similar to the ’597 patent. (Ex. 1004, Fig. 1B, ¶¶0072-0079,
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`0099)(Ex. 1002, ¶¶51-52). Shown below are Fig. 1B of Ehlers ’330 (left side),
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`compared with Fig. 2 of the ’597 patent (right side):
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` (Ex. 1004, Fig. 1B, ¶¶0072-0079)(Ex. 1002, ¶52). In both systems
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`there are
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`conditioned spaces having thermostats. (Ex. 1004, ¶0076)(Ex. 1001, 3:48-67, 4:8-
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`32)(Ex. 1002, ¶52). The thermostats in each system are connected to gateways,
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`specifically gateway 1.10D in Ehlers ’330 (Ex. 1004, ¶¶0061-0062) and gateways
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`112 in the ’597 patent (Ex. 1001, 3:48-67, 7:54-61)(Ex. 1002, ¶52). The gateways
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`connect the thermostats in each system over networks to servers. (Ex. 1004, ¶¶0072-
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`0073)(Ex. 1001, 3:48-67)(Ex. 1002, ¶52).
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`Both systems collect and store information relevant to the conditioning of a
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`building. (Ex. 1004, ¶¶0088, 0151, 0268-0309)(Ex. 1001, 4:33-42)(Ex. 1002, ¶53).
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`In Ehlers ’330, for example:
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`“[T]he system 1.02 may have the ability to sense the current indoor
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`temperature and could be enhanced to include at a minimum, humidity
`sensing, outside temperature, … dew point and local weather
`forecast data or encoded signals.”
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`(Ex. 1004, ¶0088)(Emphasis added)(Ex. 1002, ¶53).
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`Ehlers ’330’s thermostat contains various temperature set points for the
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`HVAC system, which are manually changeable by a user. (Ex. 1004, ¶¶0012, 0013,
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`0153-0160, 0228, 0239, 0244, 0253-0256, 0278, 0281, 0308-0309, 0316-0324,
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`0320). A user can also “override” a scheduled setpoint. (Ex. 1004, ¶¶0116, 0118,
`
`0156, 0316, 0354, Fig. 4C)(Ex. 1002, ¶54).
`
`Ehlers ’330 also teaches using rates of changes in 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, in order
`
`to predict how long it will take for the HVAC system to heat or cool the building
`
`from one setpoint to another. (Ex. 1004, ¶¶0253-0254, 0256, 0295, Fig. 3D)(Ex.
`
`1002, ¶55). Ehlers ’330 can use 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.” (Ex. 1004, ¶0256). Ehlers ’330 specifically determines what future
`
`setpoint would result in a thermal gain rate that would not increase the average
`
`HVAC run time and the controls the system accordingly. (Ex. 1004, ¶0256)(Ex.
`
`1002, ¶55).
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`Ehlers ’330 also teaches detecting and implementing a user’s manual changes
`
`to a setpoint. (Ex. 1002, ¶56). Ehlers ’330 explains that:
`
`“[i]n one aspect of the invention, 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.”
`
`(Ex. 1004, ¶0242)(Emphasis added)(See also Ex. 1004, ¶0243)(controls are
`
`“modified as needed based on the user’s changes to the set 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”)(Ex.
`
`1002, ¶56).
`
`Ehlers ’330 further teaches that its system performs “set point pattern change
`
`tracking,” in which the system tracks and learns from a user’s changes to setpoints.
`
`(Ex. 1004, ¶¶0268, 0308, 0309)(Ex. 1002, ¶57). Ehlers’330 thus discloses that its
`
`system detects manual changes to HVAC setpoints, and uses such changes to alter
`
`the HVAC setpoint control algorithms. (Ex. 1004, ¶¶0242-0243, 0268, 0308,
`
`0309)(Ex. 1002, ¶58).
`
`2. Overview of Wruck
`
`Wruck teaches a system that allows a wireless device such as a PDA to control
`
`a thermostat. (Ex. 1005, ¶¶0002-0005)(Ex. 1002, ¶59). The thermostat can be
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`12
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`U.S. Patent No. 9,194,597
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`programmed with a schedule to save energy, as shown, for example, in Figs. 9G and
`
`9I of Wruck:
`
`
`
` (Ex. 1005, Figs. 9G and 9I, ¶0098)(Ex. 1002, ¶59). As shown in the figures, the
`
`user can enter times of the day when periods of occupancy and non-occupancy begin
`
`(Fig. 9G and Fig. 9I), and associated heating and cooling setpoints. (Id.). Wruck
`
`thus teaches a system with “scheduled programming of the thermostatic controller”,
`
`similar to the scheduled programming of the ‘597 patent. (Ex. 1002, ¶59).
`
`Wruck further teaches that the user can temporarily override scheduled
`
`setpoints. (Ex. 1005, ¶¶0005, 0014-0015, 0104, 0125, 0150, 0198, 0231, Figs. 14s-
`
`14z, 20b, Tables 28, 31, 36)(Ex. 1002, ¶60). This can be accomplished, for example,
`
`by pressing the up and down keys on the thermostat. (Ex. 1005, Table 36, Table 38,
`
`items 96 and 97, ¶0150)(Ex. 1002, ¶60). Wruck thus teaches making manual
`
`
`13
`
`
`
`setpoint changes to scheduled setpoints. (Ex. 1002, ¶60).
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`U.S. Patent No. 9,194,597
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`
`Wruck further teaches detecting manual changes using a difference value, or
`
`“delta”. Specifically, Wruck teaches that if a temporary setpoint has been entered,
`
`it will be displayed on the thermostat if it is different from the scheduled setpoint, as
`
`shown in Table 28 of Wruck, reproduced in relevant part below, with highlighting
`
`added:
`
`
`
`(Ex. 1005, Table 28, ¶0110)(Ex. 1002, ¶61). Here, Wruck teaches to check whether
`
`the difference between the temporary setpoint and the scheduled setpoint is equal to
`
`zero, and if not, to display the temporary setpoint. (Ex. 1002, ¶61).
`
`3. Overview of the Combination
`
`As noted above, Ehlers ’330 is similar to the ’597 patent, and teaches or
`
`renders obvious all claims of the ’597 patent on its own. With specific reference to
`
`claim features directed to “detecting a manual change” using a “difference value”,
`
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`14
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`Ehlers ’330 already teaches generating an automatic thermostatic control schedule,
`
`having automated setpoints. (Ex.1004, ¶¶0231-0234, 0239)(Ex. 1002, ¶62). Ehlers
`
`’330 further teaches adjusting its schedule by “learning” from a user’s setpoint
`
`changes that depart from the schedule. For example, Ehlers ’330 teaches:
`
`“In one aspect of the invention, 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. This learning process alters the operation of the system
`3.08, freeing the customer from having to make changes to manage the
`indoor environmental condition.”
`
`(Ex. 1004, ¶0242)(Emphasis added)(Ex. 1002, ¶62).
`
`Based on Ehlers ’330 alone, it would have been obvious to determine a
`
`difference value based on comparing at least one of an actual setpoints at the first
`
`time for the thermostatic controller to the first automated setpoint for the
`
`thermostatic controller. (Ex. 1002, ¶63). This would have allowed the system to
`
`determine whether a manual change occurred, how far off the automated setpoints
`
`were from the user’s desired setpoint, and to eliminate cases where manual changes
`
`were made that resulted in no difference between the user’s setpoint and the
`
`automated setpoint (e.g. where the user increases and then decreases the setpoint by
`
`one degree). (Ex. 1002, ¶63). Forming a difference value simply means subtraction,
`
`which was well-understood in the relevant timeframe. (Ex. 1002, ¶63).
`
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`15
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`Furthermore, it would have been obvious based on the knowledge of a
`
`POSITA and Wruck to use a difference value between a user’s manually-entered
`
`setpoint and an automated setpoint to detect the manual setpoint change.
`
`Specifically, a POSITA would have understood from Ehlers ‘330 that it would be
`
`necessary to compare actual setpoints (which can be user-entered) with the
`
`automated setpoints in order to “learn[] from the user’s inputs or adjustments to the
`
`system 3.08 to change or modify indoor air temperature.” (Ex. 1004, ¶0242)(Ex.
`
`1002, ¶64). A POSITA further would have known that, in computer systems, a
`
`standard way to compare two numbers (e.g. two numerical setpoints) was by
`
`subtracting one from the other. (Ex. 1006, Book p. 60)(Ex. 1002, ¶64). Wruck
`
`provides an example of this by forming the difference value between a user-entered
`
`temporary setpoint and an automated setpoint. (Ex. 1005, Table 28)(Ex. 1002, ¶64).
`
`C. Rationale (Motivation) Supporting Obviousness
`
`A detailed explanation of the rationale supporting obviousness is provided
`
`below in the Claim Mapping section, under each claim element as appropriate.
`
`D. Graham Factors
`
`The level of ordinary skill encompassed 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
`
`
`16
`
`
`
`compensate for lack of formal education or vice versa. (Ex. 1002, ¶¶26-28).
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`U.S. Patent No. 9,194,597
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`
`The scope and content of the prior art are discussed throughout the Ground.
`
`The differences between the prior art and the claims are discussed in the
`
`“Overview of the Combination” and in the claim mapping, below.
`
`Petitioner is not aware of any secondary considerations that would make an
`
`inference of non-obviousness more likely.
`
`E. Reasonable Expectation of Success
`
`A POSITA in the relevant timeframe would have had a reasonable expectation
`
`of success in implementing the combination (as described with particularity below
`
`in the claim mapping section) of Ehlers ’330, the knowledge of a POSITA and
`
`Wruck. (Ex. 1002, ¶¶65-66). As Mr. Shah explains, the art was relatively
`
`predictable in the relevant timeframe (early 2009). (Ex. 1002, ¶66). A POSITA
`
`would have been able to make any necessary modifications to implement this
`
`Ground. (Ex. 1002, ¶66). This is discussed in more detail in the claim mapping
`
`section, where appropriate.
`
`F. Analogous Art
`
`Ehlers ’330 and Wruck are analogous art, because they are in the same field
`
`as the ’597 patent (building energy management and controls). (Ex. 1001, 1:18-
`
`2:17, 3:48-67, claim 1, preamble)(“A method for detecting manual changes to the
`
`setpoint for a thermostatic controller comprising….”)(Ex. 1004, Abstract, Title)(Ex.
`
`
`17
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`U.S. Patent No. 9,194,597
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`1005, Abstract, Title, ¶¶0002-0008)(Ex. 1002, ¶67). Furthermore, both references
`
`address several problems faced by the inventors—chiefly, control of building
`
`heating and cooling systems, implementation of setpoints, and control in view of
`
`outdoor temperature. (Ex. 1001, claim 1, Abstract, 1:18-2:17, 3:48-67, 4:62-
`
`5:42)(Ex. 1005, Abstract, ¶¶0062, 0120, 0183)(Ex. 1004, ¶¶0090, 0092, 0095, 0137,
`
`0141, 0145, 0147, 0167, 0182, 0204, 0239, 0244-0247, 0252-0256 and ¶¶0078-
`
`0082)(Ex. 1002, ¶68). See Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
`
`Cir. 2010).
`
`G. Claim Mapping
`
`This section maps the challenged claims to the relevant disclosures of Ehlers
`
`’330, the knowledge of a POSITA, and Wruck, where the claim text appears in bold-
`
`italics, and the relevant mapping follows the claim text. Petitioner has added
`
`numbering and lettering in brackets (e.g. 1[a], [1b]) to certain claim elements, to
`
`facilitate the discussion.
`
`Independent Claim 1
`
`“1[a]. A method for detecting manual changes to the setpoint for a
`thermostatic controller comprising:”
`
`Ehlers ’330 in view of the knowledge of a POSITA and Wruck renders
`
`obvious a method for detecting manual changes to the setpoint for a
`
`thermostatic controller. (Ex. 1002, ¶¶69-70).
`
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`18
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`First, Ehlers ’330 teaches a system that involves managing a thermostatic
`
`controller. The thermostatic controller is the thermostat of a house. (Ex. 1004,
`
`Abstract, ¶¶0090, 0092, 0191, 0084, 0190)(See also ¶¶0150, 0229, 0066, 0090,
`
`0138, 0141, 0150, 0192, 0204, 0254, 0263, Fig. 2E). The overall system including
`
`the thermostat is depicted in Figure 1B:
`
`(Ex. 1004, Fig. 1B)(Ex. 1002, ¶71). Another exemplary configuration of a portion
`
`
`
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`19
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`of Ehlers ’330’s system (system 3.08) is illustrated in Figure 3B, reproduced below:
`
`
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