PTAB

IPR2021-00454

Google LLC v. EcoFactor Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: HVAC Control System
  • Brief Description: The ’327 patent discloses a system for controlling the operational status of an HVAC system. The system uses one or more remote servers that communicate with a thermostat in a structure to receive inside temperature measurements and also receive outside temperature measurements, compare them over time to estimate a rate of temperature change, and adjust the thermostat’s setting in response to a demand reduction request from a utility or service provider.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-11, and 13-19 are obvious over Schurr in view of Ehlers ’330

  • Prior Art Relied Upon: Schurr (Patent 6,868,293) and Ehlers (Application # 2004/0117330).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Schurr discloses the core framework of the claimed system but is missing a key computational element supplied by Ehlers. Schurr teaches a system with a remote server that communicates with thermostats to manage energy consumption. This server can receive demand reduction requests (termed "curtailment events") from a service provider and, in response, send a signal to alter a thermostat's "offset temperature setting" to reduce energy use. While Schurr’s server receives inside temperature data, it does not teach deriving an estimation for the rate of temperature change based on a comparison of inside and outside temperatures over time. Ehlers allegedly remedies this deficiency by teaching a system that calculates a "thermal gain rate"—the rate at which inside temperature changes in response to outside temperature—to predict how long an HVAC system needs to run to achieve a desired temperature.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ehlers’s computational methods with Schurr’s networked control system to improve its functionality. Ehlers's "thermal gain rate" calculation provides a more sophisticated way to manage energy during a demand reduction event. By incorporating this teaching, Schurr’s system could more accurately compute the required temperature offset to achieve a desired level of energy savings and could also calculate more accurate "recovery times" for returning to a comfortable temperature post-event. This combination would result in a more efficient and predictable energy management system, a known goal in the art.
    • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success. The combination involved applying known thermal modeling calculations taught by Ehlers to the server-based control architecture of Schurr. This integration would have been a predictable application of known computer processing techniques to an existing system architecture to achieve improved performance.

Ground 2: Claims 2 and 12 are obvious over Schurr in view of Ehlers ’330, and further in view of Rosen

  • Prior Art Relied Upon: Schurr (Patent 6,868,293), Ehlers (Application # 2004/0117330), and Rosen (Patent 6,789,739).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds upon the combination in Ground 1 to address the additional limitations of dependent claims 2 and 12, which require the server to "receive measurements of outside temperatures for geographic regions such as ZIP codes." The primary combination of Schurr and Ehlers teaches receiving "local weather forecast data" but does not specify the mechanism for localizing this data. Rosen allegedly supplies this missing element by disclosing a thermostat that receives location-specific weather data from an internet weather service by providing the structure's ZIP code.
    • Motivation to Combine: A POSITA looking to implement the "local weather" feature taught by Ehlers would have sought a common and reliable method to localize that data. Rosen provided a simple and widely understood solution: using a ZIP code to query a weather service. This would have been an obvious design choice to make the Ehlers system more practical and specific, as ZIP code-based localization was a conventional technique for internet-based services at the time.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should decline to exercise discretionary denial under 35 U.S.C. §314(a) based on the Apple Inc. v. Fintiv factors. Petitioner contended that the parallel district court litigation against it was at an early stage, with pending motions to transfer venue and to stay the case.
  • Further, the trial date was distant (December 2021), and the Patent Owner was not required to narrow its asserted claims until September 2021, suggesting significant PTAB-district court overlap was unlikely. To mitigate any remaining concerns, Petitioner stipulated that if the IPR was instituted, it would not pursue the same invalidity grounds in the district court.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-19 of the ’327 patent as unpatentable under 35 U.S.C. §103.