ecobee Inc v. EcoFactor Inc

1. Case Identification

• Case #: IPR2021-00792
• Patent #: 8,498,753
• Filed: April 9, 2021
• Petitioner(s): Ecobee, Inc.
• Patent Owner(s): EcoFactor, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method and Apparatus for Adaptively Optimizing Climate Control Energy Consumption in a Building
• Brief Description: The ’753 patent discloses methods for optimizing the operation of a heating, ventilation, and air conditioning (HVAC) system to reduce energy consumption. The system determines thermal performance values for a structure, uses this data to predict an optimal start time to reach a target temperature by a target time, and calculates a plurality of intermediate setpoints to gradually adjust the temperature during this recovery period.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Wedekind in view of Ehlers

• Prior Art Relied Upon: Wedekind (Patent 5,197,666) and Ehlers (Patent 6,216,956).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wedekind teaches a sophisticated HVAC control system that meets most limitations of the challenged claims. Wedekind’s system uses a thermodynamic model based on historical internal and external temperatures to determine a structure’s thermal performance values (e.g., thermal capacitance, heat transfer conductance). It then uses these values to calculate an optimal start time for a setback recovery period—the time required to bring a structure from an energy-saving temperature to a comfort temperature by a user-specified target time. However, Petitioner contended that Wedekind does not explicitly teach two key features claimed in the ’753 patent: calculating intermediate setpoints (i.e., "ramping") during recovery and using forecasted external temperatures in its predictions. Ehlers was asserted to supply both of these missing elements. Ehlers explicitly discloses "temperature ramping"—using a plurality of intermediate setpoints to gradually change the temperature—to avoid engaging less-efficient, multi-stage HVAC systems. Ehlers also explicitly teaches obtaining and using local weather forecast data to predict the time required to heat or cool a building. Petitioner argued that adding Ehlers' well-known techniques of ramping and using forecasted data to Wedekind's predictive control system would have been a simple and obvious improvement.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Ehlers with Wedekind to improve the accuracy and efficiency of Wedekind’s system. The primary motivation for incorporating temperature ramping from Ehlers was to reduce energy costs. Large, abrupt changes in setpoint, as implied by Wedekind’s recovery method, were known to trigger expensive, multi-stage heating or cooling. Ramping was a widely known solution to this problem. The motivation to add forecasted temperature data from Ehlers was to improve the accuracy of Wedekind’s recovery time calculation. A POSITA would have recognized that the external temperature often changes significantly during the morning or evening recovery periods, and using a forecast of this change would yield a more precise optimal start time, thereby saving energy and improving comfort.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in making this combination. The field of HVAC controls was predictable, and both temperature ramping and the use of weather forecasts were established techniques. Integrating these known methods into Wedekind’s thermodynamic model would have been a straightforward implementation for a skilled artisan.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner adopted the claim constructions proposed by the Patent Owner in a co-pending ITC investigation (337-TA-1185). This was done to preempt disputes over claim scope.
• Key adopted constructions included:
  • "thermal performance values": construed as "values indicating a rate of change of temperature in said structure in response to changes in outside temperature."
  • "performance characteristic [of a] climate control...system]": construed as a "characteristic that is indicative of a capability to change inside temperature."
  • "heating, ventilation, and air conditioning system": construed to mean "a group of components working together to move heat or remove heat from the conditioned [structure/location]."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a), based on the Fintiv factors, would be inappropriate.
• The petition was identified as a "me-too" or "copycat" filing, submitted concurrently with a Motion for Joinder to an already-instituted IPR on the same patent (IPR2020-01504, filed by Google). Petitioner argued this posture "effectively neutralized" the General Plastic factors that weigh against institution.
• Petitioner further noted that all parallel district court litigations involving the ’753 patent had been either stayed or terminated, eliminating concerns of inefficiency or duplicative efforts between the PTAB and district courts.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’753 patent as unpatentable.