DCT
6:20-cv-00075
EcoFactor Inc v. Google LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: EcoFactor, Inc. (California)
- Defendant: Google LLC (Delaware)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: 6:20-cv-00075, W.D. Tex., 06/17/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant has transacted business, committed acts of infringement, and maintains at least one regular and established place of business within the Western District of Texas, citing a corporate office in Austin.
- Core Dispute: Plaintiff alleges that Defendant’s Google Nest Learning Thermostat products and associated services infringe four patents related to intelligent and networked HVAC energy management.
- Technical Context: The technology concerns the use of data analytics, network connectivity, and sensor inputs to optimize residential HVAC systems for energy efficiency and user comfort, a central field in the smart home market.
- Key Procedural History: The complaint alleges that Plaintiff EcoFactor, and Defendant Google communicated regarding EcoFactor’s patent portfolio in 2015 and 2018. It also alleges that Google cited the asserted patents as relevant prior art during the prosecution of its own patent applications, which may be presented as evidence of pre-suit knowledge. Subsequent to the filing of this complaint, all claims of U.S. Patent No. 10,534,382 were cancelled in an Inter Partes Review proceeding.
Case Timeline
| Date | Event |
|---|---|
| 2007-09-17 | Earliest Priority Date for ’488 and ’327 Patents |
| 2008-07-14 | Earliest Priority Date for ’492 and ’382 Patents |
| 2012-05-15 | U.S. Patent No. 8,180,492 Issues |
| 2013-04-02 | U.S. Patent No. 8,412,488 Issues |
| 2014-05-27 | U.S. Patent No. 8,738,327 Issues |
| 2015-01-01 | EcoFactor and Google communications mentioned (within 2015 timeframe) |
| 2018-01-01 | EcoFactor and Google communications mentioned (within 2018 timeframe) |
| 2020-01-14 | U.S. Patent No. 10,534,382 Issues |
| 2020-06-17 | Complaint Filed |
| 2024-02-01 | IPR Certificate issues cancelling all claims of ’382 Patent |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,180,492 - “System and method for using a networked electronic device as an occupancy sensor for an energy management system”
- Patent Identification: U.S. Patent No. 8,180,492, issued on May 15, 2012. (Compl. ¶10).
The Invention Explained
- Problem Addressed: The patent describes the shortcomings of conventional programmable thermostats, which are often difficult to use and fail to account for irregular occupancy schedules, leading to wasted energy. (’492 Patent, col. 2:36-61). It further notes that hardware-based occupancy sensors (e.g., motion detectors) can be costly to install and are often ineffective if poorly placed. (’492 Patent, col. 3:1-15).
- The Patented Solution: The invention proposes using activity on networked electronic devices—such as a personal computer or an internet-enabled television—as a proxy for determining that a structure is occupied. A remote server monitors this activity (e.g., keystrokes, remote control use) and, upon detecting it, can automatically adjust the thermostat from an energy-saving "unoccupied" setpoint to a more comfortable "occupied" setpoint, sometimes after prompting the user for confirmation. (’492 Patent, Abstract; col. 4:22-44).
- Technical Importance: This method provided a software-based approach to infer home occupancy for energy management without requiring the installation of new, dedicated hardware like a distributed motion sensor system. (Compl. ¶3).
Key Claims at a Glance
- The complaint asserts independent claim 10. (Compl. ¶15).
- Essential elements of claim 10 include:
- A system with a thermostat having at least a first (non-occupied) and second (occupied) temperature setpoint.
- One or more networked electronic devices with a graphic user interface that receive user input, where "activity" on these devices indicates the thermostat setpoint should change.
- An application on a computer processor that determines if the devices are in use.
- The application determines if a user has indicated a preference to be prompted before a setpoint change.
- The application prompts the user, providing notice that the thermostat is in a non-occupied setting and asking whether to keep that setting or change it.
- The application receives input from the user to keep the first (non-occupied) setpoint.
- The thermostat is kept at the first setpoint based on this input.
- The complaint alleges infringement of "one or more claims" of the patent, reserving the right to assert others. (Compl. ¶11).
U.S. Patent No. 8,412,488 - “System and method for using a network of thermostats as tool to verify peak demand reduction”
- Patent Identification: U.S. Patent No. 8,412,488, issued on April 2, 2013. (Compl. ¶25).
The Invention Explained
- Problem Addressed: The patent identifies the difficulty utilities face in verifying residential compliance with peak demand reduction (PDR) programs. Unidirectional communication systems cannot confirm that a customer's HVAC system has actually been turned down or off. (’488 Patent, col. 2:50-60).
- The Patented Solution: The invention describes a system where networked thermostats report inside temperature data to a remote server, which also ingests outside temperature data. By creating a thermal model of the structure, the server can derive an "estimation for the rate of change in inside temperature" and compare this prediction to the actual temperature change reported by the thermostat. This comparison allows the system to determine if the HVAC is truly on or off, thereby verifying PDR compliance. (’488 Patent, Abstract; col. 3:24-46).
- Technical Importance: This technology offered a data-driven method for utilities to verify PDR participation without requiring the installation of expensive advanced metering infrastructure (AMI), or "smart meters," at each residence. (’488 Patent, col. 1:15-2:3).
Key Claims at a Glance
- The complaint asserts independent claim 1. (Compl. ¶30).
- Essential elements of claim 1 include:
- A system for monitoring an HVAC system's operational status.
- An HVAC control system that receives temperature measurements from inside a structure.
- One or more processors that receive outside temperature measurements from a different source.
- The processors compare inside and outside temperatures over time to derive an estimation for the rate of change in the inside temperature.
- The processors compare a recorded inside temperature with said estimation to determine whether the HVAC system is on or off.
- The complaint asserts infringement of "one or more claims," reserving the right to assert others. (Compl. ¶26).
U.S. Patent No. 8,738,327 - “System and method for using a network of thermostats as tool to verify peak demand reduction”
- Patent Identification: U.S. Patent No. 8,738,327, issued on May 27, 2014. (Compl. ¶39).
Technology Synopsis
This patent is related to the ’488 Patent and describes a system for controlling an HVAC system's operational status. Remote servers communicate with a thermostat over a network, receiving inside temperature data from the thermostat and outside temperature data from external sources. The servers use this data to estimate the rate of change in the structure's internal temperature and can send a signal to the thermostat to change its setting, for example, to reduce electricity demand in response to a demand reduction request. (’327 Patent, Abstract; Claim 1).
Asserted Claims
The complaint alleges infringement of "one or more claims," with infringement allegations mapping to a system claim. (Compl. ¶¶40, 44-47).
Accused Features
The accused features include the Nest system's thermostat, its communication with remote servers, its use of external weather data, and its ability to operate in modes like "Early-On," "Home/Away Assist," and "Eco mode" to manage energy consumption. (Compl. ¶¶44-47).
U.S. Patent No. 10,534,382 - “System and method for using a wireless device as a sensor for an energy management system”
- Patent Identification: U.S. Patent No. 10,534,382, issued on January 14, 2020. (Compl. ¶53).
Technology Synopsis
This patent is related to the ’492 Patent and describes a system where processors, located remotely from the thermostat's memory, execute instructions to control an HVAC system. The system receives first data from at least one sensor in the building and second data from an external source via a network connection. Based on this data, the system determines if the building is occupied and controls the HVAC system accordingly, storing historical values of the data to inform its operation. (’382 Patent, Abstract; Claim 1). Note: On February 1, 2024, subsequent to the filing of the complaint, an Inter Partes Review Certificate was issued cancelling all claims (1-20) of the ’382 Patent. (IPR2021-00054, IPR2021-01052).
Asserted Claims
The complaint alleges infringement of "one or more claims," with infringement allegations mapping to a system claim. (Compl. ¶¶54, 58-66).
Accused Features
The accused features include the Nest system’s architecture, comprising memory, processors, sensors, and network connectivity to receive external data to determine occupancy and control the HVAC system, as well as its ability to store historical data for features like "Energy History." (Compl. ¶¶59-66).
III. The Accused Instrumentality
Product Identification
The complaint identifies "all generations of the Google Nest Learning Thermostat and all versions and variations thereof" as the "Accused Instrumentalities." (Compl. ¶11).
Functionality and Market Context
- The complaint alleges the Accused Instrumentalities are smart thermostats that control a building's HVAC system by learning user preferences and using sensor and external data to optimize energy use. (Compl. ¶¶13, 18). Key functionalities cited include "Auto-Schedule," which learns from user adjustments; "Home/Away Assist," which uses sensor and phone location data to detect occupancy and switch to an energy-saving "Eco" temperature; and "Early-On," which calculates when to start heating or cooling to reach a scheduled temperature on time by using weather data and learned thermal properties of the home. (Compl. ¶¶13, 18, 19, 32). An annotated image from Google's support materials depicts the Nest circuit board as the "HVAC control system" and the device's display showing "Temperature measurement." (Compl. p. 20).
- The complaint asserts that these products are part of Google's Nest division and are commercially important in the smart home market. (Compl. ¶5).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,180,492 Infringement Allegations
| Claim Element (from Independent Claim 10) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| at least one thermostat having at least a first temperature setpoint associated with a non-occupied structure, and at least a second temperature setpoint associated with the existence of occupants... | The Nest thermostat has different temperature setpoints for when the home is occupied (e.g., Heat/Cool mode) versus unoccupied (e.g., Eco Temperatures). | ¶16 | col. 5:48-54 |
| one or more electronic devices having at least a graphic user interface comprising a display wherein said electronic devices receive input from one or more users... | The Google Nest mobile application on a smartphone provides a GUI that allows users to alter setpoints and modes. A screenshot from the Google Nest mobile application shows a circular dial for adjusting the target temperature. | ¶17, p. 7 | col. 5:55-59 |
| ...wherein activity of one or more networked electronic devices indicates whether said thermostat should be changed from said first temperature setpoint to said second temperature setpoint. | The complaint alleges that activity on a networked smartphone, such as its location data being used by Home/Away Assist, indicates whether the thermostat should switch from an "away" (Eco) setpoint to a "home" setpoint. | ¶17 | col. 6:13-18 |
| an application comprising one or more computer processors...wherein said application determines whether said one or more electronic devices are in use and in response, whether said thermostat is set to said first temperature setpoint that indicates said structure is not occupied. | A smartphone running the Nest application provides location information to a remote application that determines if the user is home, which in turn determines if the thermostat should be set to an unoccupied (Eco) temperature setpoint. | ¶18 | col. 6:23-29 |
| said application determining that said one or more users has previously indicated a preference that said user's input be obtained before automatically changing said first HVAC temperature setpoint...[and] prompting said one or more users... | The Nest system allows users to disable auto-scheduling and modify Home/Away Assist settings, allegedly requiring user input to switch between modes. A screenshot from the Nest app settings shows controls for "Home/Away Assist." | ¶19, p. 10 | col. 6:31-45 |
| wherein said application in response to said prompting, receives input from said one or more users to keep said first HVAC temperature setpoint; and wherein said thermostat is kept at said first temperature setpoint based upon said input... | The complaint alleges that when auto-scheduling is disabled, a user can provide input through the mobile app to keep the thermostat in an away/Eco state even when the system might otherwise switch to an occupied state. | ¶19 | col. 6:46-51 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the phrase "activity of one or more networked electronic devices" can be construed to cover the use of passive data, such as a smartphone's location as used by Home/Away Assist, when the patent specification primarily describes active user inputs like "cursor movement, keystrokes or other user interface actions." (’492 Patent, col. 6:10-12).
- Technical Questions: The complaint alleges that disabling auto-scheduling fulfills the "prompting" and "receiving input" limitations. A question for the court will be whether a one-time setting configuration (disabling a feature) constitutes the interactive "prompting" and responsive "input" sequence described in the claim, which the patent specification illustrates as a real-time dialog box. (’492 Patent, FIG. 6).
U.S. Patent No. 8,412,488 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [a] system for monitoring the operational status of an HVAC system comprising: at least one HVAC control system associated with a first structure that receives temperature measurements from at least a first structure... | The Accused Instrumentalities include a Nest thermostat that contains an HVAC control system (circuit board) and receives temperature measurements from inside the building. | ¶31 | col. 9:8-14 |
| one or more processors that receive measurements of outside temperatures from at least one source other than said HVAC system. | The Nest thermostat system receives outside temperature and other weather data from the internet, a source other than the HVAC system itself. | ¶32 | col. 9:15-17 |
| wherein said one or more processors compares the inside temperature of said first structure and the outside temperature over time to derive an estimation for the rate of change in inside temperature of said first structure in response to outside temperature... | The "Early-On" feature allegedly calculates how long it will take to heat or cool a home by comparing internal and external temperatures, which the complaint asserts is deriving an estimation for the rate of change. A graph from Google's support materials illustrates how the 'Early-On' feature adjusts heating start times based on whether the weather is cold or mild. | ¶33, p. 19 | col. 9:18-23 |
| and wherein said one or more processors compare an inside temperature recorded inside the first structure with said estimation...to determine whether the first HVAC system is on or off. | The complaint alleges the Accused Instrumentalities use the calculated rate of change of inside temperature to determine when to turn the HVAC system on or off to meet a scheduled setpoint. | ¶33 | col. 9:24-28 |
- Identified Points of Contention:
- Scope Questions: The patent is titled and described in the context of verifying "peak demand reduction." A question for the court may be whether the claims, when read in light of the specification, are limited to the context of PDR verification, or if they can read on a feature like "Early-On," which is marketed for user comfort and scheduling. (’488 Patent, Title; col. 1:1-4).
- Technical Questions: Does the "Early-On" feature's "Time-to-Temperature" calculation function in the same way as the claimed "estimation for the rate of change"? The complaint alleges they are the same, but a factual dispute may arise over whether the accused algorithm performs the specific comparison of a recorded temperature to a derived estimation to determine the HVAC "on or off" status, as required by the claim.
V. Key Claim Terms for Construction
For the ’492 Patent:
- The Term: "activity of one or more networked electronic devices" (Claim 10)
- Context and Importance: This term's definition is critical because it defines the trigger for the claimed energy management logic. The infringement theory hinges on whether the Nest system's method of using phone location and sensor data for its "Home/Away Assist" feature constitutes "activity" as contemplated by the patent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is broad, not specifying the type of "activity." The patent also mentions a desire to "detect occupancy without requiring the installation of additional hardware," which could support an interpretation that includes using existing data signals from devices like phones. (’492 Patent, col. 3:16-18).
- Evidence for a Narrower Interpretation: The specification repeatedly provides specific examples of activity, such as "keystrokes, cursor movement or other inputs" and use of a "television remote control," suggesting the term may be limited to direct, conscious user interaction with a device interface, rather than passive background data. (’492 Patent, col. 3:37-39; col. 6:58-60).
For the ’488 Patent:
- The Term: "determine whether the first HVAC system is on or off" (Claim 1)
- Context and Importance: This term is the stated purpose of the claimed comparison. The infringement dispute may turn on whether the accused "Early-On" feature performs its calculation to "determine" the on/off status of the HVAC system for PDR verification, or for a different purpose, such as comfort scheduling.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim suggests any determination of the on/off state based on the claimed comparison would infringe. Plaintiff may argue that in deciding when to turn the system on, the Nest algorithm inherently determines that it is currently off.
- Evidence for a Narrower Interpretation: The patent’s background, abstract, and detailed description frame the invention as a "tool to verify peak demand reduction." (’488 Patent, Title, Abstract). A court might be persuaded that "determine whether the... system is on or off" should be construed in this verification context—i.e., to confirm compliance with a PDR event—and not merely as part of a predictive scheduling calculation for user comfort.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all asserted patents. Inducement is based on allegations that Google provides instructions, user manuals, and marketing that actively encourage customers to use the accused features (e.g., Home/Away Assist, Early-On). (Compl. ¶¶13, 28, 42, 56). Contributory infringement is based on allegations that the Nest products are not staple articles of commerce and are especially adapted for use in an infringing manner. (Compl. ¶¶14, 29, 43, 57).
- Willful Infringement: The complaint alleges willful infringement for all asserted patents. The factual bases alleged are (1) direct communications between EcoFactor and Google in 2015 and 2018 regarding EcoFactor's patent portfolio, and (2) Google's repeated citation of the asserted patents as relevant prior art during the prosecution of its own patent applications, which the complaint posits establishes pre-suit knowledge of the patents and their relevance to Google's products. (Compl. ¶¶20, 34, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the concept of detecting home occupancy via user "activity" on a networked device, which the ’492 patent family exemplifies with direct computer or TV interaction, be construed to cover the accused system’s use of passive data streams like smartphone location for its Home/Away Assist feature?
- A key evidentiary question will be one of technical purpose and function: does the accused "Early-On" feature, designed for comfort-based scheduling, perform the specific thermal modeling and comparison claimed in the ’488 patent family, which the patents frame as a method for verifying compliance with utility-driven peak demand reduction events?
- A significant strategic question will be the impact of the ’382 patent’s invalidation: while three patents remain asserted, the post-filing cancellation of all claims of the ’382 patent in an IPR proceeding may influence arguments regarding the validity of the related ’492 patent and the overall strength and valuation of the case.