IN THE UNITED STATE DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ECOBEE, INC.
`
`Plaintiff,
`
`v.
`
`ECOFACTOR, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`C.A. No. 1:21-CV-00323-MN
`
`[JURY TRIAL DEMANDED]
`
`ANSWER
`
`Defendant, EcoFactor, Inc., a Delaware corporation (“EcoFactor” or “Defendant”) through
`
`its undersigned counsel, hereby answers the Complaint for Declaratory Judgment filed by Plaintiff
`
`ecobee, Inc. (“Plaintiff” or “ecobee”) as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`EcoFactor admits that the Complaint purports to set forth a claim for Declaratory
`
`Judgment under Title 28 of the United States Code, but otherwise denies the allegations of
`
`Paragraph 1 of the Complaint.
`
`THE PARTIES
`
`2.
`
`3.
`
`Admitted.
`
`Admitted.
`
`JURISDICTION AND VENUE
`
`4.
`
`EcoFactor admits that the Complaint purports to set forth a claim for remedy under
`
`Titles 28 and 35 of the United States Code, but otherwise denies the allegations of Paragraph 4 of
`
`the Complaint.
`
`5.
`
`Admitted.
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`6.
`
`7.
`
`Admitted.
`
`EcoFactor admits that it has filed a complaint with the International Trade
`
`Commission (“ITC Complaint”), Docket No. 3535, claiming that ecobee has infringed the Patents-
`
`In-Suit, but otherwise denies the allegations of Paragraph 7 of the Complaint.
`
`8.
`
`EcoFactor denies the allegations of Paragraph 8 of the Complaint and avers that
`
`this district is not a convenient forum for the parties, witnesses, and the interests of justice, and
`
`this case should be transferred pursuant to 28 U.S.C. § 1404 to a different district court, such as
`
`the Western District of Texas Waco Division.
`
`FACTUAL BACKGROUND
`PATENTS-IN-SUIT
`
`9.
`
`Admitted.
`
`10.
`
`Admitted.
`
`11.
`
`Admitted.
`
`12.
`
`Admitted.
`
`DISPUTE BETWEEN ECOBEE AND ECOFACTOR
`CONCERNING THE PATENTS-IN-SUIT
`
`13.
`
`Admitted.
`
`14.
`
`EcoFactor admits that an actual and justiciable controversy exists between ecobee
`
`and EcoFactor concerning whether ecobee infringes one or more claims of any of the Patents-In-
`
`Suit and that ecobee now seeks a declaratory judgment, but otherwise denies the allegations of
`
`Paragraph 14 of the Complaint.
`
`COUNT I:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’567 PATENT
`
`15.
`
`EcoFactor incorporates by reference the responses as set forth in paragraphs 1
`
`through 14 of this Answer as if fully set forth herein.
`
`16.
`
`Admitted.
`
` 2
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`17.
`
`Admitted.
`
`18.
`
`Denied.
`
`19.
`
`Denied.
`
`COUNT II:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’983 PATENT
`
`20.
`
`EcoFactor incorporates by reference the responses as set forth in paragraphs 1
`
`through 19 of this Answer as if fully set forth herein.
`
`21.
`
`Admitted.
`
`22.
`
`Admitted.
`
`23.
`
`Denied.
`
`24.
`
`Denied.
`
`COUNT III:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’550 PATENT
`
`25.
`
`EcoFactor incorporates by reference the responses as set forth in paragraphs 1
`
`through 24 of this Answer as if fully set forth herein.
`
`26.
`
`Admitted.
`
`27.
`
`Admitted.
`
`28.
`
`Denied.
`
`29.
`
`Denied.
`
`COUNT IV:
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’488 PATENT
`
`30.
`
`EcoFactor incorporates by reference the responses as set forth in paragraphs 1
`
`through 29 of this Answer as if fully set forth herein.
`
`31.
`
`Admitted.
`
`32.
`
`Admitted.
`
`33.
`
`Denied.
`
` 3
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`34.
`
`Denied.
`
`PLAINTIFF’S PRAYER FOR RELIEF
`
`35.
`
`EcoFactor denies the allegations and prayer for relief sought by Plaintiff.
`
`AFFIRMATIVE DEFENSES
`
`36.
`
`By and for its affirmative defenses, EcoFactor states as follows:
`
`FIRST AFFIRMATIVE DEFENSE
`
`(Failure To State A Claim)
`
`37.
`
`The Complaint, and the claims for relief therein, fails to state any claim upon which
`
`relief can be granted.
`
`SECOND AFFIRMATIVE DEFENSE
`
`(Improper Venue)
`
`38.
`
`This district is not a convenient forum for the parties, witnesses, and the interests
`
`of justice, and this case should be transferred pursuant to 28 U.S.C. § 1404 to a different district
`
`court, such as the Western District of Texas Waco Division.
`
`THIRD AFFIRMATIVE DEFENSE
`
`(Unclean Hands)
`
`39.
`
`Plaintiff’s claims are barred (in whole or in part) by the doctrine of unclean hands.
`
`FOURTH AFFIRMATIVE DEFENSE
`
`(Laches)
`
`40.
`
`Plaintiff’s claims are barred (in whole or in part) by the doctrine of laches.
`
`FIFTH AFFIRMATIVE DEFENSE
`
`(Waiver)
`
`41.
`
`Plaintiff’s claims are barred (in whole or in part) by the doctrine of waiver.
`
` 4
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`SIXTH AFFIRMATIVE DEFENSE
`
`(Estoppel)
`
`42.
`
`Plaintiff’s claims are barred (in whole or in part) by the doctrine of estoppel.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`(Infringement)
`
`43.
`
`Plaintiff has infringed and continues to infringe U.S. Patent No. 8,019,567 (the
`
`“’567 patent”); U.S. Patent No. 10,612,983 (the “’983 patent”); U.S. Patent No. 8,596,550 (the
`
`“’550 patent”); and U.S. Patent No. 8,886,488 (the “’488 patent”) (collectively the “Patents-In-
`
`Suit”) by making, using, offering for sale, and/or importing products into the United States that
`
`embody or use the inventions claimed in the Patents-In-Suit.
`
`44.
`
`Plaintiff has been and is inducing infringement of the Patents-In-Suit by actively
`
`and knowingly inducing others to make, use, sell, offer for sale, or import products into the United
`
`States that embody or use the inventions claimed in the Patents-In-Suit.
`
`45.
`
`Plaintiff has been contributorily infringing and is continuing to contributorily
`
`infringe the Patents-In-Suit by selling or offering to sell products in the United States, knowing
`
`them to be especially made or especially adapted for practicing the invention of the Patents-In-
`
`Suit.
`
`EIGHTH AFFIRMATIVE DEFENSE
`
`(Validity)
`
`46.
`
`The Patents-In-Suit are not invalid.
`
`NINTH AFFIRMATIVE DEFENSE
`
`(Enforceability)
`
`47.
`
`The Patents-In-Suit are not unenforceable.
`
` 5
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`COUNTERCLAIMS FOR PATENT INFRINGEMENT
`
`48.
`
`Counterclaim Plaintiff, EcoFactor, Inc., a Delaware corporation (“EcoFactor” or
`
`“Counterclaim Plaintiff”) through its undersigned counsel, for its counterclaims against
`
`Counterclaim Defendant ecobee, Inc. (“Counterclaim Defendant”), alleges as follows:
`
`INTRODUCTION
`
`49.
`
`These counterclaims arise from Counterclaim Defendant’s unlawful infringement
`
`of the following United States patents owned by EcoFactor: U.S. Patent No. 8,019,567 (the “’567
`
`patent”); U.S. Patent No. 10,612,983 (the “’983 patent”); U.S. Patent No. 8,596,550 (the “’550
`
`patent”); and U.S. Patent No. 8,886,488 (the “’488 patent”) (collectively the “Patents-In-Suit”).
`
`EcoFactor owns all right, title, and interest in each of the Patents-In-Suit.
`
`50.
`
`EcoFactor is a privately held company, having its principal place of business at 441
`
`California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was founded in 2006 and is
`
`headquartered in Palo Alto, California. EcoFactor is a leader in smart home energy management
`
`services. EcoFactor delivers smart home energy management services that improve energy
`
`efficiency, reduce energy bills, and vastly increase demand response efficacy – all while
`
`maintaining consumer comfort. EcoFactor’s patented big-data analytics and machine learning
`
`algorithms collect and process massive amounts of residential data – including home
`
`thermodynamics, family comfort preferences and schedules, plus external data such as weather –
`
`to continually monitor, adapt and learn for optimum energy savings. The company provides
`
`homeowners significant cost savings and energy usage benefits. EcoFactor’s award-winning
`
`service has been offered through channel partners such as utilities, energy retailers, broadband
`
`service providers, and HVAC companies.
`
`51.
`
`EcoFactor transformed how homes use energy by applying advanced analytics to
`
`connected devices in the home. EcoFactor developed a suite of software known as the “EcoFactor
`
` 6
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`Platform” that incorporates EcoFactor’s patented data analytics and machine learning algorithms,
`
`as well as EcoFactor’s award-winning smart HVAC control technologies. The EcoFactor Platform
`
`is software that runs on servers, including cloud servers, in the United States, and provides service
`
`to customers in the United States. The source code of the EcoFactor Platform, including for
`
`example the platform, quant, and mobile application source code, that comprises the EcoFactor
`
`Platform was designed by, created by, and is continuously maintained and improved by EcoFactor
`
`employees working in the United States. The EcoFactor Platform actively manages thermostats
`
`on occupants’ behalf in intelligent ways that improve comfort while helping them save time,
`
`energy, and money. Utilities, home service providers, and homeowners rely on EcoFactor for
`
`demand response, energy efficiency, and HVAC performance monitoring services. The EcoFactor
`
`Platform includes the software that practices EcoFactor’s patents on these features. For example,
`
`the EcoFactor Platform includes EcoFactor’s patented techniques for monitoring the health and
`
`performance of HVAC systems over time, smart thermostat scheduling to improve energy savings
`
`and optimize comfort for occupants, and thermodynamic modeling of the user’s home and HVAC
`
`system to enable dynamic pre-cooling and pre-heating to further improve comfort, save energy, or
`
`both, by creating comfortable schedules that also shift energy usage out of periods of peak energy
`
`demand.
`
`52.
`
`The patented innovations at issue in this action were invented by EcoFactor
`
`engineers and researchers. EcoFactor has played a significant role in the development and
`
`advancement of such improvements to energy management technology—and the domestic market
`
`for them. EcoFactor has expended tens of millions of dollars of research and development and
`
`technical services and support in the United States. In recent years, an explosion of imported
`
`products that infringe EcoFactor’s innovative Patents-In-Suit has significantly eroded EcoFactor’s
`
`market standing. This infringement action is about several patented improvements to smart
`
` 7
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`thermostat systems, smart HVAC systems, and smart HVAC control systems—which took years
`
`of research and millions of dollars in U.S. investments to develop, and which are infringed by
`
`Defendant’s accused products.
`
`PARTIES
`
`53.
`
`Counterclaim Plaintiff EcoFactor is a privately held company, having its principal
`
`place of business at 441 California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was
`
`founded in 2006 and is headquartered in Palo Alto, California. EcoFactor is the sole owner of all
`
`right, title, and interest in each Patent-In-Suit.
`
`54.
`
`Counterclaim Defendant ecobee, Inc. is a Canadian corporation with its principal
`
`place of business at 25 Dockside Drive, Suite 700, Toronto, ON M5A 0B5, Canada.
`
`JURISDICTION AND VENUE
`
`55.
`
`This court has original jurisdiction over EcoFactor’s counterclaims pursuant to 28
`
`U.S.C. §§ 1331 and 1338(a) because they arise under the patent laws of the United States, Title 35
`
`of the United States Code, and supplemental jurisdiction over EcoFactor’s counterclaims pursuant
`
`to 28 U.S.C. § 1367(a) because the counterclaims are so related to the Counterclaim Defendant’s
`
`claims that they form part of the same case or controversy under Article III of the United States
`
`Constitution.
`
`56.
`
`This is not a convenient forum for the parties, witnesses, and the interests of justice,
`
`but to the extent the Court finds differently, venue for these counterclaims is appropriate under 28
`
`U.S.C. §§ 1391(b) and 1400(b).
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE
`
`57.
`
`The products accused of infringing (“Accused Products”) one or more of the
`
`Patents-In-Suit are smart thermostat systems, smart HVAC systems, smart HVAC control systems,
`
`and all components (including accessories) thereof offered for sale by the Counterclaim Defendant.
`
` 8
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`58.
`
`The Accused Products include thermostat systems that connect to and control an
`
`HVAC system, they include smart HVAC systems, and they include components of such systems
`
`such as, for example, hubs, panels, and remote sensors. These thermostat devices communicate
`
`over a network with other devices and systems offered by the Counterclaim Defendant. The
`
`Accused Products connect to the network managed by the Counterclaim Defendant via the
`
`Internet. For example, the Accused Products connect to Counterclaim Defendant’s networked
`
`servers and data centers, online interfaces, and related accessories.
`
`59. When connected as designed, the Accused Products form a smart thermostat
`
`system, smart HVAC system, and/or smart HVAC control system. Counterclaim Defendant’s
`
`smart thermostat systems are “smart” because they are designed to connect to Counterclaim
`
`Defendant’s servers and data centers (including, e.g., cloud-based servers and backend support),
`
`related online interfaces (including, e.g., mobile apps and web portals), and related accessories
`
`(e.g., remote temperature sensors), upon importation. Further, Counterclaim Defendant’s smart
`
`thermostat systems are “smart” because they support and are marketed as providing features to
`
`end users that analyze thermostat and HVAC system data gathered by the smart thermostat
`
`systems.
`
`60.
`
`The Accused Products constitute the “frontend” of the smart thermostat system,
`
`smart HVAC system, and/or smart HVAC control system. Such smart thermostat devices can be
`
`programmed using the servers and the network maintained by Counterclaim Defendant and which
`
`form the “backend” for the smart thermostat. Such smart thermostat systems can be programmed
`
`remotely with a web or mobile application offered by Counterclaim Defendant. The web or mobile
`
`application communicates with the smart thermostat via computer servers or data centers managed
`
`by the Counterclaim Defendant, who sells and imports the smart thermostat. Counterclaim
`
`Defendant allows an end user to use a web or mobile application on a mobile phone, tablet, laptop,
`
` 9
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`or other computing device to control the smart thermostat systems, such as by adjusting
`
`temperature settings.
`
`61.
`
`These smart thermostat systems also communicate data using the network. For
`
`example, Counterclaim Defendant’s smart thermostat systems send and receive temperature data
`
`and/or temperature settings using the network.
`
`62.
`
`Counterclaim Defendant’s Accused Products are designed and specially made and
`
`adapted to infringe claims of the Patents-In-Suit and to embody a material part of the claimed
`
`inventions. The Accused Products are installed and used in the United States according to
`
`Counterclaim Defendant’s design and instructions. Counterclaim Defendant has knowledge as
`
`well as notice of its infringement of each of the Patents-In-Suit at least as of the date of the ITC
`
`Complaint. Counterclaim Defendant knowingly induces and encourages the use of the Accused
`
`Products in the United States in a manner that infringes the asserted claims of the Patents-In-Suit.
`
`Counterclaim Defendant infringes the Patents-In-Suit directly, through making, using, selling,
`
`and/or offering for sale the Accused Products. Counterclaim Defendant also infringes the Patents-
`
`In-Suit indirectly, both for example through contributory infringement as well as through induced
`
`infringement. The infringement of the Patents-In-Suit is also attributable to Counterclaim
`
`Defendant. Counterclaim Defendant and/or users of the Accused Products direct and control use
`
`of the Accused Products to perform acts that result in infringement the Patents-In-Suit,
`
`conditioning benefits on participation in the infringement and establishing the timing and manner
`
`of the infringement.
`
` 10
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`COUNT I
`
`INFRINGEMENT OF U.S. PATENT NO. 8,019,567
`
`63.
`
`EcoFactor realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`64.
`
`The ’567 patent, titled “system and method for evaluating changes in the efficiency
`
`of an HVAC system,” issued on September 13, 2011. (Ex. 1 (’567 patent).) Inventors of the ’567
`
`patent are John Douglas Steinberg and Scott Douglas Hublou. The ’567 patent is based on U.S.
`
`Pat. App. No. 12/211,690 filed on September 16, 2008. The ’567 patent claims priority to
`
`Provisional App. No. 60/994,011, filed on September 17, 2007. The expiration date of the ’567
`
`patent is October 21, 2029. A true and correct copy of the ’567 Patent is attached as Exhibit 1.
`
`65.
`
`On information and belief, Counterclaim Defendant makes, uses, offers for sale,
`
`sells, and/or imports certain products (“Accused Products”), such as the ecobee3 lite and ecobee
`
`SmartThermostat with Voice Control, including device-side and cloud-based features thereof, and
`
`related accessories (e.g., ecobee SmartSensor), that directly infringe, literally and/or under the
`
`doctrine of equivalents, claims of the ’567 Patent.
`
`66.
`
`The infringement of the ’567 Patent is also attributable to Counterclaim Defendant.
`
`Counterclaim Defendant and/or users of the Accused Products direct and control use of the
`
`Accused Products to perform acts that result in infringement of the patent, conditioning benefits
`
`on participation in the infringement and establishing the timing and manner of the infringement.
`
`67.
`
`Counterclaim Defendant also knowingly and intentionally induces infringement of
`
`claims of the ’567 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service
`
`of the ITC Complaint, Counterclaim Defendant has had knowledge of the ’567 Patent and the
`
`infringing nature of the Accused Products. Despite this knowledge of the ’567 Patent,
`
`Counterclaim Defendant continues to actively encourage and instruct its customers and end users
`
` 11
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`(for example, through user manuals and online instruction materials on its website) to use the
`
`Accused Products in ways that directly infringe the ‘567 Patent. Counterclaim Defendant does so
`
`knowing and intending that its customers and end users will commit these infringing acts.
`
`Counterclaim Defendant also continues to make, use, offer for sale, sell, and/or import the Accused
`
`Products, despite its knowledge of the ’567 Patent, thereby specifically intending for and inducing
`
`its customers to infringe the ’567 Patent through the customers’ normal and customary use of the
`
`Accused Products.
`
`68.
`
`Counterclaim Defendant has also infringed, and continue to infringe, claims of the
`
`’567 Patent by offering to commercially distribute, commercially distributing, making, and/or
`
`importing the Accused Products, which are used in practicing the process, or using the systems, of
`
`the patent, and constitute a material part of the invention. Counterclaim Defendant knows the
`
`components in the Accused Products to be especially made or especially adapted for use in
`
`infringement of the patent, not a staple article, and not a commodity of commerce suitable for
`
`substantial noninfringing use. Accordingly, Counterclaim Defendant has been, and currently is,
`
`contributorily infringing the ’567 Patent, in violation of 35 U.S.C. § 271(c).
`
`69.
`
`The Accused Products satisfy all claim limitations of claims of the ‘567 Patent. A
`
`claim chart comparing claim elements of the ’567 Patent to representative Accused Products, is
`
`attached as Exhibit 2.
`
`70.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Counterclaim Defendant has injured EcoFactor and is liable for
`
`infringement of the ’567 Patent pursuant to 35 U.S.C. § 271.
`
`71.
`
`As a result of Counterclaim Defendant’s infringement of the ’567 Patent, EcoFactor
`
`is entitled to monetary damages in an amount adequate to compensate for Counterclaim
`
` 12
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`Defendant’s infringement, but in no event less than a reasonable royalty for the use made of the
`
`invention by Counterclaim Defendant, together with interest and costs as fixed by the Court.
`
`72.
`
`Counterclaim Defendant’s infringing activities have injured and will continue to
`
`injure EcoFactor, unless and until this Court enters an injunction prohibiting further infringement
`
`of the ’567 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
`COUNT II
`
`INFRINGEMENT OF U.S. PATENT NO. 10,612,983
`
`73.
`
`EcoFactor realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`74.
`
`The ’983 patent, titled “system and method for evaluating changes in the efficiency
`
`of an HVAC system,” issued on April 7, 2020. (Ex. 3 (’983 patent).) Inventors of the ’983 patent
`
`are John Douglas Steinberg and Scott Douglas Hublou. The ’983 patent is based on U.S. Pat. App.
`
`No. 16/374,083 filed on April 3, 2019. The ’983 patent claims priority to Provisional App. No.
`
`60/994,011, filed on September 17, 2007. The expiration date of the ’983 patent is September 16,
`
`2028. A true and correct copy of the ’983 Patent is attached as Exhibit 3.
`
`75.
`
`On information and belief, Counterclaim Defendant makes, uses, offers for sale,
`
`sells, and/or imports certain products (“Accused Products”), such as the ecobee3 lite and ecobee
`
`SmartThermostat with Voice Control, including device-side and cloud-based features thereof, and
`
`related accessories (e.g., ecobee SmartSensor), that directly infringe, literally and/or under the
`
`doctrine of equivalents, claims of the ’983 Patent.
`
`76.
`
`The infringement of the ’983 Patent is also attributable to Counterclaim Defendant.
`
`Counterclaim Defendant and/or users of the Accused Products direct and control use of the
`
` 13
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`Accused Products to perform acts that result in infringement of the patent, conditioning benefits
`
`on participation in the infringement and establishing the timing and manner of the infringement.
`
`77.
`
`Counterclaim Defendant also knowingly and intentionally induces infringement of
`
`claims of the ’983 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service
`
`of the ITC Complaint, Counterclaim Defendant has had knowledge of the ’983 Patent and the
`
`infringing nature of the Accused Products. Despite this knowledge of the ’983 Patent,
`
`Counterclaim Defendant continues to actively encourage and instruct its customers and end users
`
`(for example, through user manuals and online instruction materials on its website) to use the
`
`Accused Products in ways that directly infringe the ’983 Patent. Counterclaim Defendant does so
`
`knowing and intending that its customers and end users will commit these infringing acts.
`
`Counterclaim Defendant also continues to make, use, offer for sale, sell, and/or import the Accused
`
`Products, despite its knowledge of the ’983 Patent, thereby specifically intending for and inducing
`
`its customers to infringe the ’983 Patent through the customers’ normal and customary use of the
`
`Accused Products.
`
`78.
`
`Counterclaim Defendant has also infringed, and continue to infringe, claims of the
`
`’983 Patent by offering to commercially distribute, commercially distributing, making, and/or
`
`importing the Accused Products, which are used in practicing the process, or using the systems, of
`
`the patent, and constitute a material part of the invention. Counterclaim Defendant knows the
`
`components in the Accused Products to be especially made or especially adapted for use in
`
`infringement of the patent, not a staple article, and not a commodity of commerce suitable for
`
`substantial noninfringing use. Accordingly, Counterclaim Defendant has been, and currently is,
`
`contributorily infringing the ’983 Patent, in violation of 35 U.S.C. § 271(c).
`
` 14
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`79.
`
`The Accused Products satisfy all claim limitations of claims of the ‘983 Patent. A
`
`claim chart comparing claim elements of the ’983 Patent to representative Accused Products, is
`
`attached as Exhibit 4.
`
`80.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Counterclaim Defendant has injured EcoFactor and is liable for
`
`infringement of the ’983 Patent pursuant to 35 U.S.C. § 271.
`
`81.
`
`As a result of Counterclaim Defendant’s infringement of the ’983 Patent, EcoFactor
`
`is entitled to monetary damages in an amount adequate to compensate for Counterclaim
`
`Defendant’s infringement, but in no event less than a reasonable royalty for the use made of the
`
`invention by Counterclaim Defendant, together with interest and costs as fixed by the Court.
`
`82.
`
`Counterclaim Defendant’s infringing activities have injured and will continue to
`
`injure EcoFactor, unless and until this Court enters an injunction prohibiting further infringement
`
`of the ’983 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
`COUNT III
`
`INFRINGEMENT OF U.S. PATENT NO. 8,596,550
`
`83.
`
`EcoFactor realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`84.
`
`The ’550 patent, titled “system, method, and apparatus for identifying manual
`
`inputs to and adaptive programming of a thermostat,” issued on December 3, 2013. (Ex. 4 (’550
`
`patent).) Inventors of the ’550 patent are John Douglas Steinberg, Scott Douglas Hublou, and Leo
`
`Cheung. The ’550 patent is based on U.S. Pat. App. No. 12/778,052 filed on May 11, 2010. The
`
`‘550 patent claims priority to Provisional App. No. 61/215,999, filed on May 12, 2009. The
`
` 15
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`expiration date of the ’550 patent is September 23, 2032. A true and correct copy of the ’550 Patent
`
`is attached as Exhibit 5.
`
`85.
`
`On information and belief, Counterclaim Defendant makes, uses, offers for sale,
`
`sells, and/or imports certain products (“Accused Products”), such as the ecobee3 lite and ecobee
`
`SmartThermostat with Voice Control, including device-side and cloud-based features thereof, and
`
`related accessories (e.g., ecobee SmartSensor), that directly infringe, literally and/or under the
`
`doctrine of equivalents, claims of the ’550 Patent.
`
`86.
`
`The infringement of the ’550 Patent is also attributable to Counterclaim Defendant.
`
`Counterclaim Defendant and/or users of the Accused Products direct and control use of the
`
`Accused Products to perform acts that result in infringement of the patent, conditioning benefits
`
`on participation in the infringement and establishing the timing and manner of the infringement.
`
`87.
`
`Counterclaim Defendant also knowingly and intentionally induces infringement of
`
`claims of the ’550 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service
`
`of the ITC Complaint, Counterclaim Defendant has had knowledge of the ’550 Patent and the
`
`infringing nature of the Accused Products. Despite this knowledge of the ’550 Patent,
`
`Counterclaim Defendant continues to actively encourage and instruct its customers and end users
`
`(for example, through user manuals and online instruction materials on its website) to use the
`
`Accused Products in ways that directly infringe the ’550 Patent. Counterclaim Defendant does so
`
`knowing and intending that its customers and end users will commit these infringing acts.
`
`Counterclaim Defendant also continues to make, use, offer for sale, sell, and/or import the Accused
`
`Products, despite its knowledge of the ’550 Patent, thereby specifically intending for and inducing
`
`its customers to infringe the ’550 Patent through the customers’ normal and customary use of the
`
`Accused Products.
`
` 16
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`88.
`
`Counterclaim Defendant has also infringed, and continue to infringe, claims of the
`
`’550 Patent by offering to commercially distribute, commercially distributing, making, and/or
`
`importing the Accused Products, which are used in practicing the process, or using the systems, of
`
`the patent, and constitute a material part of the invention. Counterclaim Defendant knows the
`
`components in the Accused Products to be especially made or especially adapted for use in
`
`infringement of the patent, not a staple article, and not a commodity of commerce suitable for
`
`substantial noninfringing use. Accordingly, Counterclaim Defendant has been, and currently is,
`
`contributorily infringing the ’550 Patent, in violation of 35 U.S.C. § 271(c).
`
`89.
`
`The Accused Products satisfy all claim limitations of claims of the ‘550 Patent. A
`
`claim chart comparing claim elements of the ’550 Patent to representative Accused Products, is
`
`attached as Exhibit 6.
`
`90.
`
`By making, using, offering for sale, selling and/or importing into the United States
`
`the Accused Products, Counterclaim Defendant has injured EcoFactor and is liable for
`
`infringement of the ’550 Patent pursuant to 35 U.S.C. § 271.
`
`91.
`
`As a result of Counterclaim Defendant’s infringement of the ’550 Patent, EcoFactor
`
`is entitled to monetary damages in an amount adequate to compensate for Counterclaim
`
`Defendant’s infringement, but in no event less than a reasonable royalty for the use made of the
`
`invention by Counterclaim Defendant, together with interest and costs as fixed by the Court.
`
`92.
`
`Counterclaim Defendant’s infringing activities have injured and will continue to
`
`injure EcoFactor, unless and until this Court enters an injunction prohibiting further infringement
`
`of the ’550 Patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or
`
`offers for sale that come within the scope of the patent claims.
`
` 17
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`COUNT IV
`
`INFRINGEMENT OF U.S. PATENT NO. 8,886,488
`
`93.
`
`EcoFactor realleges and incorporates by reference the foregoing paragraphs as if
`
`fully set forth herein.
`
`94.
`
`The ’488 patent, titled “system and method for calculating thermal mass of a
`
`building,” issued on November 11, 2014. (Ex. 7 (’488 patent).) Inventors of the ’488 patent are
`
`John Douglas Steinberg and Scott Douglas Hublou. The ’488 patent is based on U.S. Pat. App.
`
`No. 13/409,729 filed on March 1, 2012. The ’488 patent claims priority to Provisional App. No.
`
`60/994,011, filed on September 17, 2007. The expiration date of the ’488 patent is September 16,
`
`2028. A true and correct copy of the ’488 Patent is attached as Exhibit 7.
`
`95.
`
`On information and belief, Counterclaim Defendant makes, uses, offers for sale,
`
`sells, and/or imports certain products (“Accused Products”), such as the ecobee3 lite and ecobee
`
`SmartThermostat with Voice Control, including device-side and cloud-based features thereof, and
`
`related accessories (e.g., ecobee SmartSensor), that directly infringe, literally and/or under the
`
`doctrine of equivalents, claims of the ’488 Patent.
`
`96.
`
`The infringement of the ’488 Patent is also attributable to Counterclaim Defendant.
`
`Counterclaim Defendant and/or users of the Accused Products direct and control use of the
`
`Accused Products to perform acts that result in infringement of the patent, conditioning benefits
`
`on participation in the infringement and establishing the timing and manner of the infringement.
`
`97.
`
`Counterclaim Defendant also knowingly and intentionally induces infringement of
`
`claims of the ‘488 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service
`
`of the ITC Complaint, Counterclaim Defendant has had knowledge of the ’488 Patent and the
`
`infringing nature of the Accused Products. Despite this knowledge of the ’488 Patent,
`
`Counterclaim Defendant continues to actively encourage and instruct its customers and end users
`
` 18
`
`PETITIONER GOOGLE EX. 1013
`
`

`

`(for example, through user manuals and online instruction materials on its website) to use the
`
`Accused Products in ways that directly infringe the ’488 Patent. Counterclaim Defendant does so
`
`knowing and intending that its customers and end users will commit these infringing acts.
`
`Counterclaim Defendant also continues to make, use, offer for sale, sell, and/or import the Accused
`
`Products, despite its knowledge of the ’488 Patent, thereby specifically intending for and inducing
`
`its customers to infringe the ’488 Patent through the customers’ normal and customary use of the
`
`Accused Products.
`
`98.
`
`Counterclaim Defendant has also infringed, and continue to infringe, claims of the
`
`’488 Patent by offering to commercially distribute, commercially distributing, making, and/or
`
`importing the Accused Products