Google LLC v. EcoFactor Inc

1. Case Identification

• Case #: IPR2021-00488
• Patent #: 8,180,492
• Filed: January 30, 2021
• Petitioner(s): Google LLC
• Patent Owner(s): EcoFactor, Inc.
• Challenged Claims: 1-4, 6-13, 15-18

2. Patent Overview

• Title: HVAC Control System with Occupancy-Based User Notifications
• Brief Description: The ’492 patent discloses methods and systems for controlling an HVAC system based on the detected occupancy of a structure. The technology's focus is on its user interface, particularly detecting occupancy by monitoring the use of networked electronic devices, notifying a user of a potential automatic change from a "non-occupied" to an "occupied" temperature setpoint, and allowing the user to override that change.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chapman and Bray - Claims 1-4, 6-13, and 15-18 are obvious over Chapman in view of Bray.

• Prior Art Relied Upon: Chapman (Application # 2006/0208099) and Bray (Application # 2006/0262086).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chapman taught a system for controlling HVAC and other home appliances using an intelligent thermostat with energy-saving modes based on occupancy. Chapman disclosed determining occupancy by monitoring the usage of various appliances (e.g., a television) and automatically switching between an "occupied" and "unoccupied" state. However, Petitioner contended that Chapman did not expressly disclose notifying a user about an impending change or allowing the user to override it.
  • Petitioner asserted that Bray remedied this deficiency. Bray disclosed a system for automatically controlling building systems, including lighting and explicitly HVAC systems, to save power based on occupancy detected via computer usage (e.g., keystrokes, mouse movement). Critically, Bray taught that a user is "preferably warned of an upcoming action" via a notification on a host computer and is provided with an interface (e.g., a pop-up window) with options to override the automatic change. Petitioner argued the combination taught every limitation of the challenged claims, including storing separate occupied/non-occupied setpoints, detecting device usage to determine occupancy, prompting the user with a message about the impending change, and receiving user input to override the change and keep the current setpoint.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine Chapman and Bray for several reasons. Both references were in the same field of energy management and sought to solve the same problem: automatically controlling building systems based on occupancy to save energy. A POSITA would have been motivated to enhance Chapman’s automated HVAC system with Bray’s more sophisticated user interface features to improve functionality and user experience. Bray’s warning-and-override system would give the user a greater sense of control and prevent undesirable automatic changes, a known benefit for automated systems. Furthermore, Bray’s method of detecting occupancy through computer usage would complement Chapman’s appliance monitoring, improving the system’s ability to detect a relatively motionless but present user (e.g., someone working at a desk).
  • Expectation of Success: Petitioner argued that a POSITA would have had a reasonable expectation of success in combining the references. The integration involved applying known software-based user interface techniques (notifications and overrides) from Bray to a known automated control system (occupancy-based HVAC) from Chapman. The technology was predictable, and the combination represented the application of known techniques to a known system to yield predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under either 35 U.S.C. §325(d) or §314(a) (based on Fintiv factors).
• §325(d): Petitioner contended that denial would be improper because the asserted prior art, Chapman and Bray, was not considered during the original prosecution of the ’492 patent. It was argued that the combination addressed the very limitation—allowing a user to decline a proposed change—that was the basis for the patent's allowance, thus presenting a significant new question of patentability.
• §314(a) (Fintiv): Petitioner argued against denial based on the co-pending district court litigation. Key arguments included that the trial was not scheduled until December 2021 and was subject to delay; Petitioner had filed motions to transfer venue and stay the case; and Petitioner stipulated that it would not pursue the same invalidity grounds in district court if the IPR was instituted, mitigating concerns of duplicative efforts and inconsistent rulings. Petitioner also asserted that the strong merits of the petition weighed in favor of institution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6-13, and 15-18 of the ’492 patent as unpatentable.