Google LLC v. EcoFactor Inc

1. Case Identification

• Case #: IPR2022-00538
• Patent #: 9,194,597
• Filed: February 3, 2022
• Petitioner(s): Google LLC
• Patent Owner(s): Ecofactor, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Controls for Climate Control Systems
• Brief Description: The ’597 patent relates to methods and systems for controlling HVAC systems. The technology involves detecting manual, user-initiated changes to a thermostat's setpoints and incorporating information from those changes into the thermostat's long-term, automated programming.

3. Grounds for Unpatentability

Ground 1: Claims 1-24 are obvious over Ehlers in view of the knowledge of a POSITA and Wruck.

• Prior Art Relied Upon: Ehlers (Application # 2004/0117330), Wruck (Application # 2005/0040250), and the knowledge of a Person of Ordinary Skill in the Art (POSITA).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ehlers taught or rendered obvious nearly all elements of the challenged claims. Ehlers disclosed a smart HVAC control system with a thermostatic controller that connects to a server via a gateway. The system collected and stored indoor and outdoor temperature data, used this data to calculate a "thermal gain rate" to predict temperature changes inside a structure, and calculated scheduled, automated setpoints. Crucially, Ehlers taught that its system "learns from the user's inputs or adjustments" and performs "set point pattern change tracking" to modify its control algorithms based on manual user changes. Petitioner asserted that while Ehlers taught learning from manual changes, it did not specify the exact mechanism for detecting them. To supply this, Petitioner turned to Wruck and the knowledge of a POSITA. Wruck, in the same field of thermostat control, explicitly taught detecting a manual override of a scheduled setpoint by determining if a "Delta value" between the temporary setpoint and the scheduled setpoint is not equal to zero. This directly taught using a "difference value" to detect a manual change, the key element Petitioner argued was not explicit in Ehlers.
  • Motivation to Combine: Petitioner contended a POSITA implementing Ehlers’s learning system would need a way to compare the user's actual setpoint with the system's automated setpoint. The most basic and obvious method for comparing two numerical values is to subtract one from the other to generate a difference value. This would not only detect a change but also quantify its magnitude, facilitating the "learning" process described by Ehlers. Wruck confirmed the obviousness of this approach by expressly teaching the use of a "Delta value" for the same purpose in a similar system. Therefore, a POSITA would combine Wruck's specific implementation of using a difference value with Ehlers's broader learning system to achieve a more robust and predictable method for detecting and incorporating user preferences.
  • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The combination involved applying a simple, well-understood mathematical operation (subtraction) to compare values within a predictable field of computer-controlled systems. Wruck's disclosure demonstrated the known applicability of this technique to thermostat controls, removing any uncertainty.

4. Key Claim Construction Positions

• "detecting a manual change to the first automated setpoint": Petitioner did not propose a formal construction but argued for applying the "apparent construction" from a prior International Trade Commission (ITC) investigation involving a related patent. In that proceeding, the patent owner successfully argued the limitation was met when a comparison between an actual and automated setpoint was performed, regardless of whether the system had previously detected a change or could retrieve complete change information from memory. Petitioner applied this broad interpretation to its analysis of the prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on the Fintiv factors would be inappropriate. The petition asserted that the co-pending district court litigation was in its very early stages, with no trial date set and minimal investment of resources by the court or the parties. Petitioner contended that because the litigation was at its inception and the merits of the IPR petition were strong, the Board should decline to exercise its discretion to deny institution.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-24 of the ’597 patent as unpatentable under 35 U.S.C. §103.