PTAB

IPR2022-00535

Google LLC v. EcoFactor Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Thermostat System with Geolocation Capabilities
  • Brief Description: The ’890 patent discloses a thermostat system for controlling building HVAC systems. The system uses geo-positioning data from a user's location-aware mobile device to determine if the building is occupied and automatically adjusts temperature setpoints to improve energy efficiency.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 17 are obvious over Quam in view of Drees.

  • Prior Art Relied Upon: Quam (Application # 2015/0159901) and Drees (Patent 5,769,314).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Quam taught a "Building Automation System" with a smart thermostat that communicates with a user's mobile device. Quam's system used the mobile device's geolocation to establish a "geofence" around a building, determining occupancy and adjusting HVAC settings accordingly (e.g., switching to an "away" setting to save energy). Petitioner asserted that Quam disclosed all limitations of the challenged claims except for a compressor delay circuit. Drees was cited for teaching this missing element, describing a microprocessor-controlled system that adds a delay before starting or stopping an HVAC compressor.
    • Motivation to Combine: A POSITA would combine Drees's well-known compressor protection method with Quam's modern smart thermostat to improve the system's operational lifespan and reliability. Preventing rapid compressor cycling is a known objective in HVAC design, and Drees provided a conventional solution to this problem that could be readily integrated into the system disclosed by Quam.
    • Expectation of Success: Petitioner contended that incorporating a start/stop delay for an HVAC compressor was a well-known, predictable technique in the art. A POSITA would have had a high expectation of success in implementing Drees's delay logic in Quam’s microprocessor-controlled thermostat to prevent damage from rapid cycling.

Ground 2: Claims 7 and 8 are obvious over Quam and Drees in further view of Modi.

  • Prior Art Relied Upon: Quam (Application # 2015/0159901), Drees (Patent 5,769,314), and Modi (Application # 2013/0204442).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Quam and Drees from Ground 1 and added Modi to address dependent claim 7, which required receiving a data parameter comprising a "measurement of sunlight." Petitioner argued that Modi taught an HVAC control system with a thermostat that included an ambient light sensor. This sensor was used to detect when the thermostat was in direct sunlight, which could cause artificially high temperature readings.
    • Motivation to Combine: A POSITA would have been motivated to add the sunlight sensor taught by Modi to the Quam/Drees system to improve the accuracy of its temperature sensing. Correcting for inaccurate readings caused by direct sunlight is a practical and known way to enhance the performance and efficiency of any thermostat, making Modi's solution an attractive and obvious improvement.

Ground 3: Claims 9-14 and 16 are obvious over Quam, Drees, and Barnard.

  • Prior Art Relied Upon: Quam (Application # 2015/0159901), Drees (Patent 5,769,314), and Barnard (Patent 4,660,759).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground added Barnard to the Quam/Drees combination to address claims related to predicting the HVAC system's recovery time, a technique known as "optimum start." Petitioner asserted that Barnard taught a system for calculating the optimal lead time to re-energize an HVAC system to reach a comfortable temperature by a scheduled occupancy time. Barnard's method involved using historical indoor and outdoor temperature data to calculate "drift rates" (the rate of temperature change) and predict the necessary HVAC runtime.
    • Motivation to Combine: Petitioner argued that a POSITA would integrate Barnard's established optimum start calculations into Quam's smart thermostat to further enhance its energy efficiency. Quam already disclosed a system with scheduling and occupancy detection; adding Barnard's predictive algorithm was a logical next step to ensure occupant comfort precisely at the time of arrival while minimizing premature HVAC operation. This combination represented the application of a known technique (optimum start) to improve a similar, newer system (Quam).

  • Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 15 based on the combination of Quam, Drees, and Barnard in further view of Van Ostrand (Patent 5,454,511). Van Ostrand was cited for its teaching of using intermediate temperature setpoints during recovery to avoid system overshoot.

4. Key Technical Contentions (Beyond Claim Construction)

  • Effective Filing Date Challenge: Petitioner dedicated a significant portion of the petition to arguing that the ’890 patent was not entitled to the filing date of its predecessor applications. It was contended that at least three limitations in independent claim 1 lacked written description support in the prior '554 application. These limitations included receiving an outside weather condition from an external network source, initiating a heating/cooling cycle when the building is unoccupied, and analyzing user-specific HVAC usage data to generate usage metrics. Petitioner argued this pushed the patent’s effective filing date to no earlier than June 7, 2017, making it an AIA patent and qualifying Quam and Modi as prior art under §102.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The petition asserted that the co-pending district court litigation was in its early stages, with no trial date set and minimal investment of resources by the court or parties. Petitioner stated its intent to seek a stay of the litigation pending the outcome of the IPR, and noted that the merits of the petition are strong, weighing against denial.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of the ’890 patent as unpatentable.