`571-272-7822
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`Paper 7
`Date: June 6, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2023-00356
`Patent 8,596,550 B2
`
`
`Before SCOTT B. HOWARD, PAUL J. KORNICZKY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`KORNICZKY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
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`
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`
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`
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`IPR2023-00356
`Patent 8,596,550 B2
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`I.
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`INTRODUCTION
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`Google LLC (“Petitioner”) filed (1) a Petition for inter partes review
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`(Paper 1, “Pet.”) of claims 1–16 of U.S. Patent No. 8,596,550 B2 (Ex. 1001,
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`“the ’550 patent”) and (2) a Motion for Joinder (Paper 2, “Mot.”) to ecobee
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`Technologies ULC v. EcoFactor, Inc., IPR2022-00983 (“the ecobee IPR”).
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`We instituted an inter partes review in the ecobee IPR on November 15,
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`2022. Ecobee IPR, Paper 8. EcoFactor, Inc. (“Patent Owner”) did not file a
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`Patent Owner Preliminary Response or an Opposition to Petitioner’s Motion
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`for Joinder in this proceeding.
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`We have authority to institute an inter partes review if “the
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`information presented in the petition . . . and any response . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a)
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`(2018).
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`After considering the Petition, the Motion for Joinder, and evidence of
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`record, we grant Petitioner’s request to institute an inter partes review of
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`claims 1–16 of the ’550 patent and Motion for Joinder to IPR2022-00983.
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`
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`A.
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`Real Parties-in-Interest
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`II. BACKGROUND
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`As required by 37 C.F.R. § 42.8(b)(1), each party identifies the real
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`party-in-interest. Petitioner identifies itself as the real party-in-interest.
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`Pet. 67. Patent Owner identifies itself as a real party-in-interest. Paper 5, 1.
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`2
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`IPR2023-00356
`Patent 8,596,550 B2
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`B.
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`Related Proceedings
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`As required by 37 C.F.R. § 42.8(b)(2), Petitioner and Patent Owner
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`identify the judicial or administrative matters that would affect or be affected
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`by a decision in this proceeding. Petitioner and Patent Owner state the ’550
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`patent is the subject matter of:
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`(1) Emerson Electric Co. v. EcoFactor, Inc., 1-21-cv-00317 (D. Del.
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`March 1, 2021);
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`(2) Google, LLC v. EcoFactor, Inc., 3-21-cv-01468 (N.D. Cal. March
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`1, 2021);
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`(3) ecobee, Inc. v. EcoFactor, Inc., 1-21-cv-00323 (D. Del. March 2,
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`2021);
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`(4) Carrier Global Corp. v. EcoFactor, Inc., 1-21-cv-00328 (D. Del.
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`March 3, 2021);
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`(5) EcoFactor, Inc. v. Google, LLC, 6-22-cv-00350 (W.D. Tex. April
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`1, 2022);
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`(6) Certain Smart Thermostat Systems, Smart HVAC Systems, Smart
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`HVAC Control Systems, And Components Thereof, Inv. No. 337-TA-1258
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`(April 4, 2022) (Initial Determination) (“Certain Smart Thermostat
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`Systems”);
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`(7) ecobee Technologies ULC v. EcoFactor, Inc., IPR2022-00969
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`(involving the ’550 patent);
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`(8) ecobee Technologies ULC v. EcoFactor, Inc., IPR2022-00983
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`(involving the ’550 patent); and
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`(9) Google LLC v. EcoFactor, Inc., IPR2023-00355 (involving the
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`’550 patent). Pet. 67–68; Paper 5, 1.
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`3
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`IPR2023-00356
`Patent 8,596,550 B2
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`C.
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`Asserted Grounds
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`Petitioner relies upon the following evidence:
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`(1) U.S. Patent Publication 2004/0117330, published June 17, 2004
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`(Ex. 1004, “Ehlers”);
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`(2) U.S. Patent Publication 2005/0040250, published February 24,
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`2005 (Ex. 1005, “Wruck”);
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`(3) U.S. Patent 7,784,704 B2 (Ex. 1019, “Harter”).
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`Petitioner challenges the patentability of claims 1–16 of the ʼ550
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`patent claims on the following grounds (Pet. 11):
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`Ground Claim(s) Challenged 35 U.S.C. §1 Reference(s)/Basis
`1
`1–16
`103(a)
`Ehlers, Wruck
`2
`9–16
`103(a)
`Ehlers, Wruck, Harter
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`
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`III.
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`INSTITUTION OF INTER PARTES REVIEW
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`The Petition in this proceeding asserts the same grounds of
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`unpatentability as the one on which we instituted review in the ecobee IPR.
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`Compare Pet. 12–66, with ecobee IPR, Paper 8 at 7. Indeed, Petitioner
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`contends that the Petition
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`introduces the same arguments and the same grounds raised in
`the existing ecobee IPR (i.e., challenges the same claims of the
`same patent, relies on the same expert declaration, and is based
`on the same grounds and combinations of prior art submitted in
`the granted ecobee Petition). Although there are minor
`differences related to the mandatory notices and grounds for
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`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the ’550 patent claims priority to an application filed before
`this date, our citations to 35 U.S.C. § 103 in this Decision are to its pre-AIA
`version. Our decision is not impacted, however, by which version of the
`statute applies.
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`4
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`IPR2023-00356
`Patent 8,596,550 B2
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`standing, there are no substantive changes to the facts, citations,
`evidence, or arguments relied upon to assert unpatentability of
`the claims relative to the ecobee Petition.
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`Mot. 7. Exhibit 1023, a redlined comparison of the petitions in this
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`proceeding and the ecobee IPR, confirm that the challenges are substantively
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`identical.
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`Patent Owner did not file a Preliminary Response.
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`For the same reasons set forth in our institution decision in the ecobee
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`IPR, we determine that the information presented in the Petition shows a
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`reasonable likelihood that Petitioner would prevail in showing that claims 1–
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`16 of the ’550 patent are unpatentable. See ecobee IPR, Paper 8, 14–30.
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`Accordingly, we institute an inter partes review on all of the challenged
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`claims.
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`IV. GRANT OF MOTION FOR JOINDER
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`We instituted trial in the ecobee IPR on November 15, 2022. ecobee
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`IPR, Paper 8. Petitioner filed the Petition and Motion for Joinder on
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`December 15, 2022. Because joinder was requested no later than one month
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`after trial was instituted in the ecobee IPR, Petitioner’s Motion for Joinder is
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`timely. See 37 C.F.R. § 42.122(b) (2022).
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`The statutory provision governing joinder in inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads:
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`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`5
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`IPR2023-00356
`Patent 8,596,550 B2
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`A motion for joinder should (1) set forth reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3)
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`explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may
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`be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at
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`4 (PTAB Apr. 24, 2013).
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`The Petition asserts the same unpatentability grounds on which we
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`instituted review in the ecobee IPR. See Mot. 3, 7. Specifically, Petitioner
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`presents “the same arguments and the same grounds raised in the existing
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`ecobee IPR (i.e., challenges the same claims of the same patent, relies on the
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`same expert declaration, and is based on the same grounds and combinations
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`of prior art submitted in the granted ecobee Petition).” Id. at 7. Indeed, the
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`Petition is nearly a “carbon copy” of the petition filed by the petitioner in the
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`ecobee IPR. See id.; Ex. 1023 (a redlined comparison of the petitions in this
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`proceeding and the ecobee IPR). Thus, this inter partes review does not
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`present any ground or matter not already at issue in the ecobee IPR.
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`If joinder is granted, Petitioner anticipates participating in the
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`proceeding in a limited capacity absent termination of the ecobee IPR
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`petitioner as a party. Mot. 3–4; see also id. at 9–10. Petitioner states that it
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`“will act as an ‘understudy’ and will not assume an active role unless the
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`current petitioner ceases to actively prosecute the instituted IPR.” Id. at 3–4.
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`Because Petitioner expects to participate only in a limited capacity,
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`Petitioner submits that “the proposed joinder will not unduly complicate the
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`ecobee IPR nor adversely impact its schedule. As such, the requested
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`joinder will promote judicial efficiency in determining the Patentability of
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`6
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`IPR2023-00356
`Patent 8,596,550 B2
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`the ‘550 patent without prejudice to Patent Owner.” Id. at 4. Petitioner
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`further indicates that ecobee does not oppose the request joinder. Id..
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`Patent Owner did not file an opposition to the motion for joinder.
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`We agree with Petitioner that joinder with the ecobee IPR is
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`appropriate under the circumstances. Accordingly, we grant Petitioner’s
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`Motion for Joinder.
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`V. ORDER
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`In consideration of the foregoing, it is hereby:
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`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–16 of the ’550 patent is instituted in IPR2023-00356;
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`FURTHER ORDERED that the Motion for Joinder with IPR2022-
`00983 is granted, and Petitioner is joined as a party to IPR2022-00983;
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`FURTHER ORDERED that all further filings by Petitioner and Patent
`Owner, except for those which concern a request for rehearing of this
`decision, shall be made only in IPR2022-00983;
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`FURTHER ORDERED that, subsequent to joinder, the grounds and
`claims for trial in IPR2022-00983 remain unchanged;
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`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2022-00983 (Paper 9) remains unchanged, subject to
`any changes already made by stipulation between Patent Owner and ecobee
`Technologies ULC (“ecobee”);
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`FURTHER ORDERED that, subsequent to joinder, Petitioner is
`bound by every paper filed by and every representation made by ecobee in
`IPR2022-00983, except for papers and representations regarding settlement
`between ecobee and Patent Owner;
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`FURTHER ORDERED that Petitioner shall make no filing and take
`no action in the joined proceeding unless (1) ecobee settles with Patent
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`7
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`IPR2023-00356
`Patent 8,596,550 B2
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`Owner and a Motion to Terminate ecobee from the joined proceeding has
`been filed, or (2) the filing is a motion to terminate the proceeding with
`respect to Petitioner, a settlement agreement between Petitioner and Patent
`Owner, or a request to keep settlement agreement separate under 37 C.F.R.
`§ 42.74(c);
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`FURTHER ORDERED that Petitioner shall not receive any direct,
`cross examination, or redirect time beyond that permitted for ecobee alone,
`under either 37 C.F.R. § 42.53 or any agreement between ecobee and Patent
`Owner;
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`FURTHER ORDERED that the case caption in IPR2022-00983 shall
`be changed in accordance with the attached example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2022-00983.
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`8
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`IPR2023-00356
`Patent 8,596,550 B2
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`FOR PETITIONER:
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`Matthew A. Smith
`Elizabeth Laughton
`SMITH BALUCH LLP
`smith@smithbaluch.com
`laughton@smithbaluch.com
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`FOR PATENT OWNER:
`
`Philip X. Wang
`Jonathan Link
`Reza Mirzaie
`Kristopher Davis
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jlink@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
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`9
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`IPR2023-00356
`Patent 8,596,550 B2
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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 and GOOGLE LLC,
`Petitioners,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2022-00983
`Patent 8,596,550 B22
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`1 Google LLC was joined as a party to this proceeding via a Motion for
`Joinder in IPR2023-00356.
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`10
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