Google LLC v. EcoFactor Inc

1. Case Identification

• Case #: IPR2021-00054
• Patent #: 10,534,382
• Filed: October 22, 2020
• Petitioner(s): Google LLC
• Patent Owner(s): Ecofactor, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: HVAC Control System
• Brief Description: The ’382 patent discloses a system for controlling a building’s HVAC system. The system uses processors and memory to collect and store "first data" (e.g., building characteristics like inside temperature) and "second data" (e.g., external information like outdoor temperature), along with user-specific data, to determine whether a building is occupied and adjust temperature setpoints accordingly.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Geadelmann in view of Ehlers ’330.

• Prior Art Relied Upon: Geadelmann (Patent 8,196,185) and Ehlers (Application # 2004/0117330).
• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Geadelmann teaches the core components of the challenged claims. Geadelmann discloses a remote HVAC control system where thermostats communicate with a central Building Control Appliance (BCA). The BCA provides a web-based interface allowing a user to remotely access user-specific information, set distinct temperature setpoints for "occupied" and "unoccupied" modes, and view graphs of historical inside and outside temperature data. Petitioner contended that Geadelmann discloses nearly all limitations of independent claim 1.

  • Ehlers was introduced to supplement Geadelmann's teachings in three primary areas. First, while Geadelmann discloses an "occupancy sensor," it does not explicitly state it is used to determine occupancy. Ehlers expressly teaches using an occupancy sensor (such as a motion sensor, as required by claims 10 and 17) to determine occupancy and switch between energy-saving modes. Second, while Geadelmann discloses storing and displaying historical temperature data, it does not explicitly teach using this data to control the HVAC system. Ehlers teaches using historical inside and outside temperature data to calculate a building's "thermal gain," which is then used to predict the recovery time needed to transition from an unoccupied to an occupied setpoint, thereby controlling the HVAC system based on historical data as required by claims 19 and 20. Third, to the extent Geadelmann’s disclosure of remote components is insufficient, Ehlers teaches that a server communicating with thermostats over a network can be located anywhere.

  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to improve the functionality and efficiency of Geadelmann’s system. A POSA would have been motivated to use Geadelmann's disclosed occupancy sensor for its intended purpose—detecting occupancy to control HVAC modes—as explicitly taught by Ehlers. Similarly, a POSA would have been motivated to use the historical temperature data already stored in Geadelmann’s system to implement the predictive control methods of Ehlers. This would improve energy efficiency by more accurately timing the transition between unoccupied and occupied temperatures, a known goal in the field. The combination involved applying known techniques to a known system to yield predictable results.

  • Expectation of Success: Petitioner asserted that a POSA would have had a reasonable expectation of success in combining the references. The technologies involved—networked thermostats, web interfaces, occupancy sensors, and the use of historical data for predictive control—were well-understood and the art was relatively predictable. Integrating Ehlers's control logic into Geadelmann's hardware and software architecture would have involved routine modifications.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a). It contended that the petition was filed early in the parallel district court litigation against Google, with trial not scheduled until December 2021. Furthermore, Petitioner noted that the ’382 patent is an America Invents Act (AIA) patent and that the petition was filed shortly after the first available date for an inter partes review (IPR). The assertion of the patent against multiple parties was cited as evidence of a public interest in resolving the patentability of the claims.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-20 of the ’382 patent as unpatentable under 35 U.S.C. §103.