ecobee Technologies ULC v. CaUSAm Enterprises Inc

1. Case Identification

• Case #: IPR2022-01339
• Patent #: 10,394,268
• Filed: July 28, 2022
• Petitioner(s): ecobee Technologies ULC
• Patent Owner(s): Causum Enterprisess, Inc.
• Challenged Claims: 1-11, 13-19

2. Patent Overview

• Title: Method and System for Actively Controlling Power Load Management
• Brief Description: The ’268 patent discloses methods and systems for managing electric power flow within a power grid. The system involves a load management server communicating a power control message to a client device, which in turn instructs a controllable device (e.g., smart breaker) to disable power to a power-consuming appliance (e.g., an HVAC unit) to achieve a reduction in consumed power.

3. Grounds for Unpatentability

Ground 1: Claims 1-11 and 13-19 are obvious over Ehlers

• Prior Art Relied Upon: Ehlers (Application # 2004/0117330).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ehlers discloses all limitations of the challenged claims. Ehlers describes a system to "manage delivery of energy" comprising a "utility control system" (the claimed load management server) that communicates with a "gateway node" (the claimed client device). This gateway node, in turn, communicates with "control nodes" and "load control nodes" (the claimed controllable devices) to manage power to energy-consuming devices like HVAC units. Ehlers' system sends a "supply request" (the power control message) to initiate a load reduction program, and the gateway node issues commands to the control nodes to disable power flow, causing a reduction in consumed power. Finally, Ehlers taught generating "measurement and verification data" by monitoring load control reductions to calculate energy savings and provide rebates to customers.
  • Expectation of Success: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have had a reasonable expectation of success in implementing Ehlers’ teachings, as the technology was relatively predictable in the early 2007 timeframe.

Ground 2: Claims 1-11 and 13-19 are obvious over Ehlers in view of Chen

• Prior Art Relied Upon: Ehlers (Application # 2004/0117330) and Chen (Application # 2004/0095237).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that Ehlers taught most elements of the claims, as argued in Ground 1. Chen was introduced to provide more explicit disclosure for the power control message indicating a specific "amount" of electric power to be reduced. While Petitioner contended Ehlers’ teaching of adjusting thermostat setpoints met this limitation, Chen was cited for its clear disclosure of a command message that includes a request to reduce power consumption by a "predetermined amount." Chen’s system remotely monitors equipment and adjusts resource consumption, explicitly teaching that a central server can send a command to reduce consumption by "a certain amount or percentage."
  • Motivation to Combine: A POSITA would combine Ehlers and Chen to enhance the functionality of Ehlers’ system. Incorporating Chen's more precise control message, which specifies an amount of power to be reduced, would have been a predictable improvement to Ehlers’ demand response system. This would enable the system to better achieve its targeted demand reduction goals by providing more precise information to the client device about which devices to curtail and for how long.
  • Expectation of Success: Petitioner argued a POSITA would have expected success in this combination. The integration involved applying known control message techniques from Chen to the similar demand-response system of Ehlers for the same purpose—reducing power consumption—which would have been a predictable implementation within the skill of a POSITA.

4. Key Claim Construction Positions

• "Power Supply Value (PSV)": Petitioner argued this term is expressly defined in the ’268 patent’s specification as "an actual value that includes measurement and verification of the reduction in consumed power; such measurement and verification methods may be determined by the appropriate governing body or authority for the electric power grid(s)." Petitioner contended the claims are unpatentable under this construction.
• "Device Control Manager": Petitioner noted that in a parallel proceeding it asserted this term should be construed as an indefinite means-plus-function term. However, for the purposes of this inter partes review (IPR), Petitioner adopted the Patent Owner's proposed construction that the term is an element of the system "operable to issue power control instructions to a controllable device."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. The co-pending district court litigation was in its earliest stages and was administratively stayed pending the final determination of a parallel International Trade Commission (ITC) proceeding. Key factors weighing against denial included that the district court case was stayed, no trial date had been set, and neither the parties nor the court had invested substantial resources. Furthermore, Petitioner argued that the merits of the petition are exceptionally strong, which alone warrants institution.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-11 and 13-19 of the ’268 patent as unpatentable.