DCT
1:22-cv-10049
ecobee Tech ULC v. EcoFactor Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ecobee Technologies ULC d/b/a ecobee (British Columbia, Canada)
- Defendant: EcoFactor, Inc. (California)
- Plaintiff’s Counsel: Goulston & Storrs PC; Venable LLP
- Case Identification: 1:22-cv-10049, D. Mass., 01/13/2022
- Venue Allegations: Plaintiff ecobee asserts venue is proper in the District of Massachusetts because Defendant EcoFactor previously filed a patent infringement action against ecobee in this same district, on the same patents, thereby purposefully directing its enforcement activities at the forum.
- Core Dispute: Plaintiff ecobee seeks a declaratory judgment that its smart thermostat products do not infringe four patents owned by Defendant EcoFactor related to HVAC system control and efficiency analysis.
- Technical Context: The lawsuit concerns smart thermostats, which use connectivity and advanced algorithms to optimize residential and commercial heating, ventilation, and air conditioning (HVAC) for energy efficiency and comfort.
- Key Procedural History: This declaratory judgment action follows extensive litigation between the parties. EcoFactor previously sued ecobee for infringement of the same patents in the District of Massachusetts ("Initial DMA Action") and the International Trade Commission ("ITC"). The ITC Administrative Law Judge (ALJ) found that ecobee did not infringe the ’497 Patent and that asserted claims of the ’497 and ’322 patents were invalid. This Initial Determination became a final determination when the full Commission declined review. EcoFactor appealed to the Federal Circuit but later voluntarily dismissed its appeal. After dismissing the original D. Mass. case, EcoFactor filed a new infringement suit in the Western District of Texas, prompting ecobee to file this action in the original Massachusetts forum.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-17 | Earliest Priority Date for '497 and '322 Patents |
| 2009-05-08 | Earliest Priority Date for '753 Patent |
| 2009-05-12 | Earliest Priority Date for '371 Patent |
| 2012-03-06 | U.S. Patent No. 8,131,497 Issues |
| 2013-04-16 | U.S. Patent No. 8,423,322 Issues |
| 2013-07-30 | U.S. Patent No. 8,498,753 Issues |
| 2018-07-10 | U.S. Patent No. 10,018,371 Issues |
| 2019-10-23 | EcoFactor files complaint at the ITC (the "1185 Investigation") |
| 2019-11-12 | EcoFactor files the "Initial DMA Action" in D. Mass. |
| 2020-01-15 | Initial DMA Action is stayed pending the ITC Investigation |
| 2020-11-27 | ITC ALJ terminates investigation with respect to '753, '322, and '371 patents |
| 2021-04-20 | ITC ALJ issues Initial Determination of non-infringement and invalidity ('497 Patent) |
| 2021-07-20 | ITC determination becomes final after Commission declines review |
| 2021-09-22 | EcoFactor appeals ITC decision to the U.S. Court of Appeals for the Federal Circuit |
| 2021-12-28 | EcoFactor voluntarily dismisses its Federal Circuit appeal |
| 2022-01-10 | EcoFactor voluntarily dismisses the Initial DMA Action in D. Mass. |
| 2022-01-10 | EcoFactor files a new infringement action in W.D. Texas |
| 2022-01-13 | ecobee files this Complaint for Declaratory Judgment in D. Mass. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,131,497 - “System and Method for Calculating the Thermal Mass of a Building,” issued March 6, 2012
The Invention Explained
- Problem Addressed: The patent describes that conventional programmable thermostats are limited because they do not account for a building’s unique thermal properties, or "thermal mass." A well-insulated house (high thermal mass) retains heat differently than a poorly insulated one (low thermal mass), affecting the optimal time to start heating or cooling to achieve a desired temperature, which has significant implications for energy use. ('497 Patent, col. 2:52-67).
- The Patented Solution: The invention proposes a networked system that calculates a value for a building's thermal mass or operational efficiency. It does so by using one or more processors to receive interior temperature measurements from the HVAC system's thermostat and exterior temperature measurements from an external source (e.g., an internet weather service). The system then calculates and relates the rates of temperature change inside the building (when the HVAC is on versus off) to the outside temperature, creating a thermal performance profile for that specific structure. ('497 Patent, Abstract; col. 4:1-17).
- Technical Importance: This approach allows for predictive and optimized HVAC control, enabling strategies like pre-cooling a high-thermal-mass home during off-peak energy pricing periods, thereby saving energy and cost without sacrificing comfort. ('497 Patent, col. 3:1-16).
Key Claims at a Glance
- The complaint contests infringement of limitations found in the patent's claims, which correspond to independent claim 1. (Compl. ¶30).
- Independent Claim 1 requires:
- A system for calculating a value for operational efficiency of an HVAC system.
- At least one HVAC control system that receives temperature measurements from a first location.
- One or more processors that receive outside temperature measurements from a source other than the HVAC system.
- The processors are configured to calculate rates of temperature change at the first location when the HVAC is "on".
- The processors are further configured to calculate rates of temperature change at the first location when the HVAC is "off".
- The processors relate the calculated "on" and "off" rates of change to the outside temperature measurements.
U.S. Patent No. 8,423,322 - “System and Method for Evaluating Changes in the Efficiency of an HVAC System,” issued April 16, 2013
The Invention Explained
- Problem Addressed: The patent notes that HVAC system efficiency can degrade over time due to various issues (e.g., clogged filters, refrigerant leaks), but diagnosing the specific cause is difficult as the primary symptom is simply higher energy consumption. ('322 Patent, col. 3:36-50).
- The Patented Solution: The invention is a system for diagnosing HVAC problems by evaluating changes in operational efficiency over time. Processors receive inside and outside temperature data, as well as the operational status of the HVAC system (on/off). This data is compared against the system's own historical performance and, critically, against the performance of other HVAC systems in a network to identify anomalies and their likely causes. ('322 Patent, Abstract; col. 4:37-52).
- Technical Importance: This technology moves beyond simple temperature control to provide a remote diagnostic service, using comparative data analytics to identify specific hardware problems that a homeowner or technician might otherwise miss. ('322 Patent, col. 4:53-67).
Key Claims at a Glance
- The complaint seeks a declaratory judgment of non-infringement of the '322 Patent's claims but does not quote specific limitations. (Compl. ¶34-39). Independent claim 1 is representative of the core invention.
- Independent Claim 1 requires:
- A system for evaluating changes in operational efficiency of an HVAC system over time.
- Receiving temperature and status data from an HVAC control system in a first structure.
- Receiving outside temperature data from another source.
- Comparing the inside and outside temperatures over time.
- Using a database of historical temperature measurements from the first structure.
- Comparing a current performance to a past performance to determine if operational efficiency has decreased.
U.S. Patent No. 8,498,753 - “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” issued July 30, 2013
- Technology Synopsis: This patent describes a system for "just-in-time" climate control. It uses a structure's determined thermal characteristics and performance data to calculate the precise moment to activate the HVAC system to reach a desired target temperature at a future target time, thereby minimizing energy waste from starting too early or comfort loss from starting too late. (’753 Patent, Abstract).
- Asserted Claims: The complaint seeks a declaratory judgment of non-infringement as to the patent generally. (Compl. ¶40-45).
- Accused Features: The "ecobee Accused Products" are alleged by EcoFactor to infringe. (Compl. ¶24, 42).
U.S. Patent No. 10,018,371 - “System, Method and Apparatus for Identifying Manual Inputs to and Adaptive Programming of a Thermostat,” issued July 10, 2018
- Technology Synopsis: This patent discloses a system that intelligently adapts a thermostat's programming. It detects when a user manually overrides a pre-set schedule, interprets that override in light of contextual data (e.g., weather, time of day, historical overrides), and applies rules to determine if the override represents a permanent change in preference that should be incorporated into the long-term schedule. (’371 Patent, Abstract; col. 1:49-61).
- Asserted Claims: The complaint seeks a declaratory judgment of non-infringement as to the patent generally. (Compl. ¶46-51).
- Accused Features: The "ecobee Accused Products" are alleged by EcoFactor to infringe. (Compl. ¶24, 48).
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "ecobee Accused Products" as ecobee's line of smart thermostats, including the "ecobee3, ecobee3 lite, ecobee4, and Ecobee SmartThermostat with Voice Control." (Compl. ¶10, 16, 23).
Functionality and Market Context
- The complaint, being an action for declaratory judgment of non-infringement, focuses on what the accused products allegedly do not do. It asserts that the ecobee products do not practice, and do not induce or contribute to others practicing, the limitations of the EcoFactor patents. (Compl. ¶30, 37, 43, 49). The products are positioned in the consumer and commercial smart home market, where devices use sensors, internet connectivity, and learning algorithms to automate and optimize energy usage for HVAC systems. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’497 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (as contested by ecobee) | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for calculating a value for the operational efficiency of a heating, ventilation, and air conditioning (HVAC) system comprising: | ecobee asserts its products do not calculate a "value for the operational efficiency" of an HVAC system as claimed. | ¶30 | col. 13:30-33 |
| one or more processors that receive outside temperature measurements from at least one source other than said HVAC system; | ecobee asserts its products do not receive outside temperature measurements from a source "other than said HVAC system" in the manner claimed. | ¶30 | col. 13:40-43 |
| wherein said one or more processors are configured to calculate one or more rates of change in temperature at said first location for periods during which the status of the HVAC system is ‘on’ and wherein said one or more processors are further configured to calculate one or more rates of change in temperature...for periods during which the status...is ‘off’, and to relate said calculated rates of change to said outside temperature measurements. | ecobee asserts its products do not perform the specific claimed calculations of temperature change rates during "on" and "off" periods and do not relate them to outside temperatures. | ¶30 | col. 13:44-54 |
’322 Patent Infringement Allegations
- The complaint does not provide specific, quoted claim limitations for its non-infringement argument regarding the ’322 Patent. It states that the accused products do not practice the claims' limitations and incorporates by reference non-infringement arguments made in the prior ITC investigation. (Compl. ¶37). The dispute likely centers on whether the general performance monitoring of the ecobee products meets the specific requirements of the '322 Patent's claims for evaluating efficiency decreases over time relative to historical and peer-system data.
Identified Points of Contention
- Scope Questions: A central question for the ’497 Patent is whether the general thermal modeling performed by the accused ecobee thermostats—a common feature of smart thermostats—falls within the scope of the more specific "calculating a value for the operational efficiency" as claimed in the patent.
- Technical Questions: What specific calculations, if any, do the ecobee products perform regarding HVAC "on" versus "off" cycles, and how do they relate that data to outside temperature? The case may require a deep dive into the accused products' algorithms to determine if there is a technical match to the '497 Patent's claim limitations. For the '322 Patent, a key question will be whether the accused products perform the comparative analysis against their own history and other systems to diagnose efficiency degradation, as the patent requires.
V. Key Claim Terms for Construction
- The Term: "calculating a value for the operational efficiency" (from '497 Patent, Claim 1)
- Context and Importance: This term is the stated purpose of the claimed system, and ecobee's lead non-infringement argument is that its products do not perform this function. (Compl. ¶30). The resolution of the case may depend on whether this term is construed broadly to cover any algorithmic assessment of a home's thermal behavior, or narrowly to require a specific, quantified output representing efficiency or thermal mass.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses discerning the "signature" of different problems from HVAC cycle times, which could support a construction where any analytical output that characterizes system performance is a "value." ('497 Patent, col. 3:47-51). The overall goal is described as optimizing energy use, a general purpose shared by all smart thermostats. ('497 Patent, col. 3:17-24).
- Evidence for a Narrower Interpretation: The patent repeatedly links "operational efficiency" to the calculation of "effective thermal mass." ('497 Patent, Abstract; col. 9:1-3). The detailed description includes a flowchart for calculating a "Thermal Mass Index." ('497 Patent, Fig. 11, step 1112). This suggests that the "value" is not just any metric, but a specific index of thermal performance derived from the claimed "on" and "off" rate-of-change calculations.
VI. Other Allegations
- Indirect Infringement: EcoFactor's original ITC complaint alleged indirect infringement. (Compl. ¶16). In this action, ecobee seeks a declaration that it does not directly or indirectly infringe, asserting its products do not "induce others to practice, or contribute to others practicing" the patented methods. (Compl. ¶30, 33). The complaint does not detail the factual basis for EcoFactor's inducement theory.
- Willful Infringement: The complaint does not state that EcoFactor has alleged willfulness. However, the extensive litigation history detailed by ecobee, including the prior ITC and district court actions, establishes that ecobee has been aware of the patents and EcoFactor's infringement contentions for years, which would be a primary factual basis for any future willfulness claim by EcoFactor. (Compl. ¶16-23).
VII. Analyst’s Conclusion: Key Questions for the Case
- A foundational issue for the court will be one of procedural posture and persuasive authority: What weight, if any, should be given to the ITC’s final determination of non-infringement and invalidity? While not legally binding on the district court for validity, the detailed factual and legal analysis from a specialized tribunal on the very same patents and products could be highly influential on the question of infringement.
- The central technical dispute appears to be a question of definitional scope and functional equivalence: Do the adaptive learning and thermal modeling algorithms common to modern smart thermostats (the accused functionality) perform the specific, multi-step methods claimed by the EcoFactor patents (e.g., "calculating a value for operational efficiency" by relating "on" and "off" temperature-change rates to outside weather)? The outcome will likely depend on whether the court views the patents as claiming a specific technical implementation or as attempting to cover the broader, more fundamental concept of a "learning" thermostat.