PTAB

IPR2022-00686

ecobee Technologies ULC v. EcoFactor Inc

Title: Evaluating Changes in Operational Efficiency of an HVAC System
Brief Description: The ’567 patent discloses a system for monitoring the performance of an HVAC system over time. The system collects inside and outside temperature data to estimate a rate of temperature change, determines if efficiency has decreased, and suggests a cause for the degradation.

Prior Art Relied Upon: Hildebrand (Patent 5,729,474) and Van Ostrand (Application # 2005/0159846).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Hildebrand taught most elements of the challenged claims, including a system for monitoring an HVAC system's operational efficiency over time by collecting indoor and outdoor temperatures and calculating a rate of change to detect deterioration. However, Hildebrand only suggested maintenance was needed without identifying a specific cause. Petitioner asserted that Van Ostrand supplied the missing element by teaching a method to diagnose the failure of specific HVAC components (e.g., different heating/cooling stages) by analyzing the rate of change of the indoor temperature.
- Motivation to Combine: A POSITA would combine these references to enhance Hildebrand's system. Hildebrand already monitored for efficiency degradation, and incorporating Van Ostrand's diagnostic technique would provide valuable information about the specific source of the failure, going beyond a simple maintenance alert. This combination used a known technique (Van Ostrand's diagnostics) to improve a similar system (Hildebrand's monitor) to yield predictable results.
- Expectation of Success: A POSITA would have a reasonable expectation of success because both references are software-based systems operating on well-known HVAC principles and components, making their integration predictable.

Prior Art Relied Upon: Hildebrand (Patent 5,729,474), Van Ostrand (Application # 2005/0159846), and Rosen (Patent 6,789,739).
Core Argument for this Ground:
- Prior Art Mapping: This ground applied the teachings of Hildebrand and Van Ostrand as in Ground 1. Petitioner further argued that Rosen taught replacing Hildebrand's physical outdoor temperature sensor with data obtained from an internet weather service. Rosen disclosed a programmable, internet-capable thermostat that could retrieve localized weather data (e.g., by ZIP code), satisfying limitations in dependent claims 2, 3, 16, and 17 requiring temperature measurements for geographic regions and communication via the internet.
- Motivation to Combine: A POSITA would be motivated to substitute Hildebrand's physical sensor with Rosen's internet-based weather data to reduce cost and complexity. This would avoid the expense of installing, wiring, and servicing an external sensor. This modification was presented as the simple substitution of one known data source for another to obtain the same information (outdoor temperature).
- Expectation of Success: The combination involved well-established programming and network communication techniques, ensuring a high expectation of success.

Prior Art Relied Upon: Spalink (Application # 2006/0111816).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Spalink taught the key limitations of independent claim 8, which involved detecting and correcting anomalous behavior by comparing HVAC performance between two different structures. Spalink disclosed a central controller connected to multiple buildings that collects temperature and weather data to model each building's climate control system. By comparing the performance of one building's HVAC system against a model or against the performance of systems in similar buildings, Spalink could identify "systemic problems" (anomalous behavior) and correct them by adjusting parameters or scheduling maintenance.
- Motivation to Combine: This ground is based on a single reference, so a motivation to combine is not required. Spalink's own system was argued to teach the claimed invention.
- Expectation of Success: N/A for a single-reference ground.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Hildebrand/Van Ostrand with Ehlers ’330 (Application # 2004/0117330) to add an electricity meter, combining Spalink with Rosen to use internet weather data, and combining Spalink with Ehlers ’330.

Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The petition was filed as a motion for joinder with an already-instituted IPR (IPR2021-01218). Petitioner asserted that joinder would conserve judicial resources. Further, the trial date in the parallel district court litigation involving the Petitioner was scheduled for December 2023, well after the statutory deadline for a Final Written Decision in the IPR, minimizing any concerns of inefficiency or conflicting results.

Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’567 patent as unpatentable.