Google LLC v. EcoFactor Inc

1. Case Identification

• Case #: IPR2020-00947
• Patent #: 8,131,497
• Filed: May 15, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Ecofactor, Inc.
• Challenged Claims: 1-12

2. Patent Overview

• Title: System for Calculating Operational Efficiency of an HVAC System
• Brief Description: The ’497 patent relates to systems for improving the efficiency of heating, ventilation, and air conditioning (HVAC) systems. It addresses perceived shortcomings of typical thermostats by disclosing a system with a server that receives and stores inside and outside temperature measurements over time. The server uses this data to predict a building’s thermal characteristics and calculate a value for the operational efficiency of the HVAC system.

3. Grounds for Unpatentability

Ground 1: Anticipation by Oswald - Claims 1, 4, 7, and 10 are anticipated by Oswald.

• Prior Art Relied Upon: Oswald (Application # 2005/0171645).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that Oswald discloses an energy management system that anticipates every element of the challenged claims. Oswald teaches building "models... of the thermal properties of the house and the efficiency of the appliances," which directly corresponds to calculating operational efficiency. The system uses a processor (a "P.C." or a processor in the "single central sensor 2"), a database for storing acquired data, and receives both inside temperature measurements and outside temperature information (from the internet) to build a "transient thermal model." As shown in its Figure 8, Oswald uses this model to calculate and predict the rates of temperature change when the heating system is both 'on' and 'off' and explicitly relates these calculations to outside temperature. This mapping covers independent claims 1 and 7. For dependent claims 4 and 10, Oswald discloses that its processor communicates with system components, including an electricity meter, over a network and that the system receives information about electricity consumption from that meter.

Ground 2: Obviousness over Oswald and Cler - Claims 1, 3-7, and 9-12 are obvious over Oswald in view of Cler.

• Prior Art Relied Upon: Oswald (Application # 2005/0171645) and Cler (Patent 4,897,798).
• Core Argument:
  • Prior Art Mapping: Petitioner contended that to the extent Oswald is found not to explicitly teach every detail, Cler provides the missing elements to render the claims obvious. Cler describes an adaptive control system that uses a thermal model for "optimum stop and start times," a concept also mentioned by Oswald. Critically, Cler provides the specific mathematical formulas for these calculations. For example, Cler’s Eq. (11) calculates the time required to reach a setpoint temperature. The denominator of this equation represents the rate of change of temperature and explicitly depends on both the HVAC status ('on' or 'off,' reflected in the γ term) and the outside temperature. This provides the specific method for calculating the rates of change claimed in the ’497 patent. The combination further renders claim 3 obvious, as using a programmable thermostat (taught by Cler for setback schedules) that communicates over the Internet (taught by Oswald) would have been a simple combination of known features.
  • Motivation to Combine: A person of ordinary skill in the art (POSA), starting with Oswald's general framework for an energy management system with "optimum start" capabilities, would be motivated to consult references like Cler. Cler, being in the same field, provides a detailed, mathematical implementation for the very concepts Oswald describes generally. Combining Cler’s established calculations with Oswald’s system would be a predictable way to improve Oswald's system and implement its suggested features.
  • Expectation of Success: A POSA would have had a high expectation of success. The combination involves applying Cler's well-defined mathematical models for thermal performance to Oswald's analogous system, a task that involves standard engineering and would yield predictable results in energy efficiency.
  • Key Aspects: Petitioner asserted Cler provides the specific mathematical underpinnings for calculating rates of change that are only generally described in Oswald, making the combination straightforward.

Ground 3: Obviousness over Oswald, Cler, and Rosen - Claims 2 and 8 are obvious over the combination in Ground 2 in further view of Rosen.

• Prior Art Relied Upon: Oswald (Application # 2005/0171645), Cler (Patent 4,897,798), and Rosen (Patent 6,789,739).
• Core Argument:
  • Prior Art Mapping: Petitioner argued that claims 2 and 8, which add the limitation of receiving outside temperatures for "geographic regions based on ZIP codes," are rendered obvious by the addition of Rosen. While the base combination (Oswald and Cler) teaches using "local weather" data from the Internet, it does not specify the localization method. Rosen explicitly discloses a thermostat system that obtains location-specific weather data by providing the structure's ZIP code to an Internet-based weather service.
  • Motivation to Combine: A POSA seeking to implement Oswald’s general teaching of retrieving "local weather" would naturally look for a common and effective way to specify that location to an online service. Rosen provides this exact solution. Using a ZIP code is a simple, conventional, and widely-understood method for localizing data in the United States. A POSA would have been motivated to adopt this straightforward technique to implement Oswald's feature.
  • Expectation of Success: Integrating Rosen’s use of ZIP codes into the Oswald/Cler system would be a simple design choice with predictable results. It represents the application of a known technique (ZIP code localization) to a known problem (obtaining local data) and would not have required any undue experimentation.
  • Key Aspects: Petitioner argued that Rosen supplies a specific, common-sense implementation (using ZIP codes) for a general feature (obtaining "local weather") described in the primary reference, Oswald.

4. Key Claim Construction Positions

• Petitioner proposed that the term "HVAC system" or "heating, ventilation, and air conditioning (HVAC) system" should be construed as "devices for transferring heat into or out of a building." This construction is based on the ’497 patent's own specification and is important for defining the scope of the claimed system in relation to the prior art disclosures.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-12 of the ’497 patent as unpatentable.