Google LLC v. EcoFactor Inc

1. Case Identification

• Case #: IPR2022-00475
• Patent #: 8,740,100
• Filed: February 2, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): EcoFactor, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: System and Method for Ventilation System Usage Reduction
• Brief Description: The ’100 patent describes a climate control system that reduces energy usage by improving thermostat functionality. The system uses internal and external temperature measurements to predict a structure's rate of temperature change, and based on this prediction, selects one of at least two different compressor delay intervals to optimize HVAC operation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ehlers and McLellan - Claims 1-16 are obvious over Ehlers in view of McLellan.

• Prior Art Relied Upon: Ehlers (Application # 2004/0117330) and McLellan (Patent 8,091,795).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Ehlers taught a networked energy management system that controls HVAC usage to save energy. Ehlers’s system accessed stored internal and external temperature data to calculate a "thermal gain rate"—a prediction of how quickly a structure's temperature changes. This predicted rate was then used to adjust thermostat setpoints to manage energy demand. However, Petitioner contended that Ehlers did not explicitly teach a thermostatic controller with at least two distinct, selectable settings for a delay interval enforced after the system is turned off.

  Petitioner asserted that McLellan supplied this missing element. McLellan described an intelligent thermostat designed to save energy by using various "cycle restrictions" and delays. Specifically, McLellan taught at least two different types of delays: a short, standard "safety delay" to protect the compressor from damage (a first, shorter interval) and a longer, customizable "cycling feature" that restricts HVAC operation for a set percentage of a time cycle to further reduce energy demand (a second, longer interval). The combination of Ehlers’s predictive capabilities with McLellan’s multiple delay settings allegedly rendered the claims of the ’100 patent obvious. The system would use Ehlers’s predicted rate of change to evaluate conditions and then determine whether to adopt the shorter safety delay or the longer, energy-saving delay taught by McLellan.

  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Ehlers and McLellan to improve the energy management functions of the Ehlers system. Both references address the same problem of reducing HVAC energy consumption. A POSITA would have been motivated to incorporate McLellan's explicit "cycling feature" into Ehlers's system as a more direct and alternative method for controlling the HVAC duty cycle, a goal already central to Ehlers. Furthermore, adding McLellan's standard "safety delay" would have been an obvious implementation to ensure mechanical protection of the compressor, a well-known need in the art.

  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because combining the teachings was a predictable variation of known technologies. Both references operate in the same field of HVAC controls, and implementing McLellan's software-based delay logic into Ehlers's processor-based system would involve routine and predictable engineering.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors. The co-pending district court litigation was in its very early stages, with the patent owner having first asserted the ’100 patent in a counterclaim just months prior to the IPR filing. No trial date had been set, substantial resources had not been invested by the court or parties, and Petitioner stated its intent to seek a stay of the litigation pending the outcome of the IPR. These factors, Petitioner argued, weighed heavily against denying institution.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-16 of the ’100 patent as unpatentable.