ecobee Inc v. EcoFactor Inc

1. Case Identification

• Case #: IPR2021-01052
• Patent #: 10,534,382
• Filed: June 10, 2021
• Petitioner(s): Ecobee Inc.
• Patent Owner(s): Ecofactor, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: System for Controlling HVAC Systems
• Brief Description: The ’382 patent relates to systems for controlling building heating, ventilation, and air conditioning (HVAC) systems. The disclosure describes improving energy efficiency by using enhanced occupancy detection, such as monitoring user computer activity on a home network, to adjust thermostat settings 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 and architecture of the claimed system. Geadelmann disclosed a central Building Control Appliance (BCA) that communicates with multiple thermostats to collect inside temperature data (“first data”) and receives outside weather data (“second data”) from an external source via the Internet. Geadelmann’s system provided a remote web interface, accessible by mobile devices, allowing a user to log in with user-specific credentials to view system information and configure temperature setpoints for distinct "occupied" and "unoccupied" modes. The interface also displayed historical graphs of inside and outside temperatures. Petitioner asserted that Ehlers supplied the missing teachings for using historical data for active HVAC control and explicitly using occupancy sensors to determine occupancy status. Specifically, Ehlers taught calculating a building's "thermal gain" from historical indoor and outdoor temperatures to predict the recovery time needed to transition from an energy-saving unoccupied setpoint to a comfortable occupied setpoint.
  • Motivation to Combine: Petitioner asserted a person of ordinary skill in the art (POSITA) would combine the references for several reasons. First, a POSITA would use the occupancy sensor disclosed in Geadelmann for its known and primary purpose of detecting occupancy to switch modes, a function explicitly taught by Ehlers. Second, a POSITA would be motivated to enhance Geadelmann's system—which already collected and stored the necessary historical temperature data—with Ehlers's technique of using that data to predict HVAC recovery times. This combination would improve energy efficiency and occupant comfort by ensuring the building reaches the desired temperature precisely when needed. Third, to satisfy the "remotely located" claim limitations, Ehlers taught that network-connected servers can operate from any distance, making the remote placement of Geadelmann’s BCA relative to its thermostats an obvious and logical design choice for flexible system management.
  • Expectation of Success: Petitioner contended that a POSA would have had a reasonable expectation of success in combining the references. The underlying technologies, including networked HVAC controls, web-based interfaces, and sensor integration, were well-understood and predictable in the relevant timeframe, making the proposed combination straightforward to implement.

4. Key Claim Construction Positions

• While Petitioner maintained that no claim terms required formal construction for the purposes of the IPR, it highlighted a dispute from a co-pending litigation regarding the term “measurement.” The Patent Owner had asserted that “measurement” of a temperature could include a forecasted temperature. Petitioner argued this dispute was immaterial to the IPR because the prior art combination disclosed systems that use actual temperature measurements, which would satisfy the claim limitation under either party’s proposed interpretation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) would be inappropriate. It asserted that the petition was filed early in the parallel district court proceeding, with trial not scheduled until December 2021. Petitioner also noted that the patent is asserted against multiple parties, indicating a significant public interest in having the USPTO review its patentability.

6. Relief Requested

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