DCT
6:20-cv-00078
EcoFactor,
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: EcoFactor, Inc. (California)
- Defendant: ecobee, Inc. (Canada)
- Plaintiff’s Counsel: Russ August & Kabat
- Case Identification: 6:20-cv-00078, W.D. Tex., 01/31/2020
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign corporation subject to suit in any district and has transacted business in the Western District of Texas, for example by partnering with Austin Energy and targeting advertisements to customers in the district.
- Core Dispute: Plaintiff alleges that Defendant’s smart thermostat and sensor products infringe four patents related to intelligent energy management for HVAC systems.
- Technical Context: The technology involves using data from networked devices, sensors, and external sources like weather reports to intelligently control a building's HVAC system for improved energy efficiency and occupant comfort.
- Key Procedural History: The complaint does not allege any pre-suit litigation or administrative proceedings. However, an Inter Partes Review (IPR) certificate for U.S. Patent No. 10,534,382, one of the patents-in-suit, indicates that all claims (1-20) were cancelled as of February 1, 2024, a development that may be dispositive for the infringement count related to that patent.
Case Timeline
| Date | Event |
|---|---|
| 2007-08-03 | 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 |
| 2020-01-14 | U.S. Patent No. 10,534,382 Issues |
| 2020-01-31 | Complaint Filed |
| 2024-02-01 | Claims 1-20 of U.S. Patent No. 10,534,382 Cancelled via IPR |
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
The Invention Explained
- Problem Addressed: Conventional programmable thermostats are difficult to program and rely on fixed schedules, making them ineffective at saving energy when occupants’ schedules change. Using a single motion sensor is also inadequate for reliably detecting occupancy in an entire home (’492 Patent, col. 1:51-67, col. 2:1-17).
- The Patented Solution: The invention proposes using activity on existing networked electronic devices, such as personal computers or internet-enabled televisions, as a proxy for home occupancy. A remote server monitors user interactions with these devices (e.g., keystrokes, cursor movement) and automatically instructs a connected thermostat to switch between energy-saving "unoccupied" and comfort-focused "occupied" temperature setpoints (’492 Patent, Abstract; col. 3:21-42).
- Technical Importance: This approach sought to create a more dynamic and intelligent home energy management system that could adapt to real-time occupancy without requiring installation of new, dedicated hardware like a multi-room motion sensor network (Compl. ¶2-3).
Key Claims at a Glance
- The complaint asserts independent claim 10 (’492 Patent, col. 9:1-10:11; 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, where activity on these devices indicates the thermostat setpoint should change.
- A networked application that determines if the devices are in use and, in response, if the thermostat is set to the non-occupied setpoint.
- The application determines if a user has a preference for being prompted before an automatic change to the occupied setpoint.
- The application prompts the user with an electronic notice about the non-occupied status and asks whether to keep that setpoint or change it.
- The application receives input from the user to keep the non-occupied setpoint and maintains that setpoint based on the input.
- The complaint does not explicitly reserve the right to assert dependent claims for the ’492 Patent.
U.S. Patent No. 8,412,488 - System and method for using a network of thermostats as tool to verify peak demand reduction
The Invention Explained
- Problem Addressed: Utilities offering demand response programs, which provide incentives for customers to reduce energy usage during peak times, lack a reliable and cost-effective way to verify that residential customers have actually turned off their HVAC systems as requested (’488 Patent, col. 2:46-63).
- The Patented Solution: The invention describes a server-based system that verifies compliance. The server uses historical data, current outside temperature, and other factors to create a thermal model of a house and predict its rate of temperature change. By comparing this prediction to the actual temperature data reported by the thermostat during a demand response event, the system can determine if the HVAC system was actually turned off (’488 Patent, Abstract; col. 4:1-14).
- Technical Importance: This method provided a data-driven tool for utilities to confirm demand response participation without requiring the installation of expensive hardware like dedicated smart meters at each residence (Compl. ¶3).
Key Claims at a Glance
- The complaint asserts independent claim 1 (’488 Patent, col. 9:26-49; Compl. ¶29).
- Essential elements of claim 1 include:
- A system for monitoring an HVAC system's operational status.
- At least one HVAC control system in a structure that receives inside temperature measurements.
- One or more processors that receive outside temperature measurements from a source other than the HVAC system.
- The processors compare inside and outside temperatures over time to derive an estimation for the rate of change of the inside temperature.
- The processors compare a recorded inside temperature with the estimation to determine whether the HVAC system is on or off.
- The complaint does not explicitly reserve the right to assert dependent claims for the ’488 Patent.
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, "System and method for using a network of thermostats as tool to verify peak demand reduction," issued May 27, 2014 (Compl. ¶37).
- Technology Synopsis: Continuing the technology of the ’488 Patent, this patent describes a system where remote servers control a thermostat to implement a demand reduction request. The servers receive inside and outside temperature data, use it to estimate the rate of temperature change, and send signals to the thermostat to change its settings to reduce electricity demand (’327 Patent, Abstract; Compl. ¶42, ¶44-45).
- Asserted Claims: The complaint alleges infringement of one or more claims; the allegations in the complaint appear to map most closely to independent claim 11 (Compl. ¶42).
- Accused Features: The complaint accuses the Ecobee system’s server-based architecture, which receives outside temperature from the internet, communicates with the thermostat, and allows users to implement energy-saving settings and schedules (Compl. ¶42-45).
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, "System and method for using a wireless device as a sensor for an energy management system," issued January 14, 2020 (Compl. ¶50).
- Technology Synopsis: Continuing the technology of the ’492 Patent, this patent claims a system for controlling an HVAC system based on data from sensors and external network connections. A processor receives data from at least one sensor (measuring a characteristic of the building) and second data from an external source via the Internet, using this information to determine occupancy and control the HVAC system (’382 Patent, Abstract; Compl. ¶56-61). The system can be controlled via a remote mobile interface (Compl. ¶60). As noted, all claims of this patent were subsequently cancelled in an IPR proceeding (’382 Patent, IPR Certificate).
- Asserted Claims: The complaint alleges infringement of one or more claims; the allegations appear to map most closely to independent claim 1 (Compl. ¶55-56).
- Accused Features: The Ecobee system is accused based on its use of processors, memory, sensors for building characteristics (e.g., occupancy, temperature), and internet connectivity to receive external data (e.g., weather) to control HVAC operation (Compl. ¶56-63).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Defendant’s ecobee3, ecobee3 lite, ecobee4, Ecobee SmartThermostat, and Ecobee SmartSensor products (Compl. ¶11).
Functionality and Market Context
- The accused products comprise a system of smart thermostats and networked remote sensors designed to manage a building’s HVAC system (Compl. ¶11, ¶16). The system uses data from its sensors to detect occupancy and temperature in different rooms (Compl. ¶16, ¶18).
- The thermostats connect to the internet via Wi-Fi to communicate with Ecobee’s remote servers and to receive external data, such as local weather reports (Compl. ¶31, ¶43). This information is used by features such as "Smart Recovery" and "Smart Home/Away" to predict heating/cooling needs and automatically adjust HVAC operation for energy efficiency (Compl. ¶17, ¶32).
- Users can interact with the system through a graphical user interface on the thermostat itself or via a mobile application, allowing them to set schedules, define comfort settings, and remotely control the system (Compl. ¶17, ¶60). The complaint includes a screenshot from the Ecobee mobile application showing a weekly schedule with different "Home" and "Sleep" activity periods (Compl. p. 21).
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 |
|---|---|---|---|
| A system for altering the setpoint on a thermostat ... comprising: 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 in said structure. | The Accused Instrumentalities provide different temperature setpoints for "Home" (occupied) and "Away" (non-occupied) modes. | ¶16 | col. 9:2-8 |
| one or more electronic devices having at least a graphic user interface ... 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 Ecobee system uses networked SmartSensors to detect occupancy, which indicates a need to change the temperature setpoint. The thermostat and mobile app provide the graphical user interface. | ¶17 | col. 9:9-21 |
| an 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. | The Ecobee application uses data from its sensors to determine if the building is occupied or unoccupied and, if unoccupied, sets the thermostat to the "Away" (first) temperature setpoint. | ¶18 | col. 9:25-32 |
| said application prompting said one or more users ... [and] provides electronic notice ... whether to keep said first temperature setpoint or change to said second temperature setpoint; and wherein said application ... receives input from said one or more users to keep said first HVAC temperature setpoint... | The complaint alleges that the application allows a user to receive notice of occupancy from a non-participating sensor and provides the user input to override the preset "Away" setting. | ¶19 | col. 9:36-col. 10:9 |
Identified Points of Contention:
- Scope Questions: Claim 10 requires "one or more electronic devices having at least a graphic user interface" where "activity" on such devices indicates occupancy. The patent specification exemplifies these devices as PCs and TVs (’492 Patent, col. 5:3-13). The complaint’s theory appears to read this limitation on the Ecobee SmartSensor. This raises the question of whether a purpose-built sensor, which detects occupancy but does not itself have a GUI for user interaction like keystrokes or cursor movement, meets this claim limitation.
- Technical Questions: The claim requires a specific sequence where the application prompts a user with an electronic notice and receives input in response. The complaint alleges that user-set preferences and the ability to manually override settings satisfy this. A central question may be whether the general ability to override a setting is equivalent to the specific, interactive prompting process recited in the claim.
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 Ecobee thermostat is an HVAC control system that contains a sensor to measure the indoor room temperature. The complaint includes an image showing the thermostat displaying the current temperature. | ¶30 | col. 9:27-31 |
| one or more processors that receive measurements of outside temperatures from at least one source other than said HVAC system, | The accused thermostats use a Wi-Fi connection to receive local weather data from the internet. The complaint provides a screenshot of the thermostat display showing an external weather report. | ¶31 | col. 9:32-35 |
| 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... | The "Smart Recovery" feature allegedly compares internal and external temperatures to calculate the rate of change of the inside temperature. | ¶32 | col. 9:36-42 |
| 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 this calculation is used to determine when to turn the HVAC system on or off. | ¶32 | col. 9:43-49 |
Identified Points of Contention:
- Functional Mismatch: The claim recites using the temperature comparison to "determine whether the first HVAC system is on or off"—a monitoring or verification function, consistent with the patent's title of verifying demand reduction. The complaint alleges that Ecobee’s "Smart Recovery" feature performs this comparison to "determine when to turn the HVAC system on or off"—a predictive control function. This raises the question of whether the accused control function is the same as the claimed monitoring function.
V. Key Claim Terms for Construction
The Term: "electronic devices having at least a graphic user interface" (from ’492 Patent, Claim 10)
- Context and Importance: The viability of the infringement allegation for the ’492 patent may depend on the scope of this term. The complaint’s theory requires this term to read on the Ecobee SmartSensor. Practitioners may focus on whether this term is limited to general-purpose devices capable of complex user interaction (like a PC) or is broad enough to cover a specialized sensor that is part of a system that has a GUI.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The term itself does not explicitly limit the type of "electronic device," which could arguably encompass any networked component.
- Evidence for a Narrower Interpretation: The specification consistently describes these devices in the context of user-interactive computers and televisions, and the "activity" as "keystrokes, cursor movement or other inputs" (’492 Patent, col. 3:38-40). The claim itself further recites "cursor movement, keystrokes or other user interface actions." This language may support a narrower construction limited to devices where a user is actively engaged with a GUI.
The Term: "determine whether the first HVAC system is on or off" (from ’488 Patent, Claim 1)
- Context and Importance: The interpretation of this phrase is central to the dispute over the ’488 patent. The question is whether "determine" means to ascertain the current state of the system (monitoring) or to make a decision about a future state (control). The complaint alleges a control function, while the patent's specification and title suggest a monitoring/verification function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The word "determine" can carry the meaning of "to decide," which might support a control-based interpretation.
- Evidence for a Narrower Interpretation: The patent is titled "verify peak demand reduction," and the abstract and background focus entirely on the problem of verifying that an HVAC unit has been turned off during a demand response event (’488 Patent, Abstract; col. 2:46-63). This context suggests "determine" is used in the sense of ascertaining a fact—the current operational state of the HVAC system.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all four asserted patents. The inducement allegations are based on Defendant allegedly providing instructions, education, and support to distributors and end users on how to use the accused products in an infringing manner (Compl. ¶13, ¶27, ¶40, ¶53). The contributory infringement allegations are based on Defendant providing components known to be "especially made or especially adapted for use in infringement of the patent" (Compl. ¶14, ¶28, ¶41, ¶54).
- Willful Infringement: Willfulness is alleged for all four patents based on knowledge of the patents "from a date no later than the date of filing of this complaint" (Compl. ¶12, ¶26, ¶39, ¶52). This suggests the allegations are premised on post-suit knowledge rather than any alleged pre-suit notice.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "electronic devices having at least a graphic user interface," which is rooted in the ’492 patent’s examples of PCs and TVs, be construed to cover the accused purpose-built SmartSensor that detects occupancy and temperature but lacks its own interactive GUI?
- A key dispute will be one of functional purpose: does the accused Ecobee system’s predictive control feature, which uses temperature modeling to decide when to activate the HVAC system, perform the specific function claimed in the ’488 patent of using a similar model to verify if the HVAC system is currently on or off?
- A dispositive procedural question will be the viability of the '382 patent claims: given that an IPR certificate indicates all asserted claims of the ’382 patent have been cancelled subsequent to the complaint's filing, the court will need to address whether the count for infringement of this patent can be maintained.