ecobee Technologies ULC v. Ollnova Technologies Ltd

1. Case Identification

• Case #: IPR2024-00131
• Patent #: 7,746,887
• Filed: November 2, 2023
• Petitioner(s): Ecobee Technologies ULC
• Patent Owner(s): Ollnova Technologies Ltd.
• Challenged Claims: 1, 3-8, 14-15, and 18

2. Patent Overview

• Title: System for Wirelessly Reporting Sensed Conditions
• Brief Description: The ’887 patent relates to a wireless automation device designed to reduce network communication by implementing dynamic value reporting. The device transmits sensor data only when a sensed condition falls outside a predetermined, and potentially variable, range.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kates-711 - Claims 1, 3-8, and 18 are obvious over Kates-711.

• Prior Art Relied Upon: Kates-711 (Patent 7,528,711).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kates-711 discloses a wireless sensor system that meets all limitations of independent claim 1. Kates-711’s sensor unit was described as having a controller, sensor, and transceiver, and it conserves power by transmitting data only for an “anomalous condition,” which is defined by comparing sensor data to a threshold value. Transmission is suspended for data that falls within a “normal range.” For the memory limitation, Petitioner asserted that Kates-711’s teaching of calculating a “time-weighted average” using both “recent” and “less recent” sensor readings would have rendered obvious to a Person of Ordinary Skill in the Art (POSITA) the use of memory to store those readings for computation.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground.

Ground 2: Obviousness over Kates-711 and Hitt - Claims 1, 3-8, and 18 are obvious over Kates-711 in view of Hitt.

• Prior Art Relied Upon: Kates-711 (Patent 7,528,711) and Hitt (Application # 2004/0100394).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground supplemented Ground 1 by using Hitt to provide explicit teachings of the claimed memory elements. Petitioner contended that while memory is implicit in Kates-711, Hitt expressly discloses a wireless node with a memory that stores periodically sampled sensor data. This stored data is available for later processing and transmission, directly teaching the limitations of storing current and prior readings from different polling intervals.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hitt’s explicit memory with the Kates-711 system to achieve the predictable result of improving system reliability. Storing sensor readings in a dedicated memory, as taught by Hitt, would securely enable the time-weighted average calculations and data history functions already disclosed in Kates-711.
  • Expectation of Success (for §103 grounds): Success was expected because the conventional microcontrollers disclosed in Kates-711 were well-understood at the time to commonly use memory for tracking data variables in control applications.

Ground 4: Obviousness over Kates-711, Hitt, and Littrell - Claims 1, 3-8, 14-15, and 18 are obvious over Kates-711 in view of Hitt and Littrell.

• Prior Art Relied Upon: Kates-711 (Patent 7,528,711), Hitt (Application # 2004/0100394), and Littrell (Application # 2005/0246593).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Littrell to provide specific teachings for the dependent claims related to varying limits (claims 3-7) and storing/transmitting timing data (claims 14-15). Petitioner asserted Littrell teaches a method for determining parameter limits using statistical functions (e.g., averages and standard deviations) to create dynamic "upper acceptance limits" and "lower acceptance limits." This directly teaches a variable band limit based on current and prior readings. Further, Littrell was cited for its disclosure of time-stamping sensor measurements and transmitting that timestamp information along with the sensor data.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Littrell’s teachings with the Kates-711/Hitt system for two primary reasons. First, Littrell’s specific mathematical formulas provide a clear path to implement the adjustable thresholds broadly taught by Kates-711. Second, adding Littrell's timestamping functionality would improve the accuracy of Kates-711's "time history" and "time average" features by providing exact records of when data was sensed.
  • Expectation of Success (for §103 grounds): Success was expected because this combination involved applying a known technique (Littrell’s specific formulas) to a known device (the Kates-711 sensor system) to achieve the predictable result of more robust and accurate dynamic thresholding.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Kates-505 (a patent with disclosures similar to Kates-711 but an earlier priority date) alone and in combination with Hitt, Littrell, and Mueller. The combinations including Mueller (Patent 6,513,723) relied on its teachings of transmitting data only upon a rate-of-change exceeding a predefined amount.

4. Key Claim Construction Positions

• Petitioner argued that the prior art discloses the challenged claims under any reasonable interpretation, including constructions proposed in parallel litigation. A key disputed term was "information associated with the reading of the indicator." Petitioner contended that regardless of whether this requires transmitting the sensor reading itself, associated data (like a sensor ID), or both, the Kates-711 reference meets the limitation because it discloses transmitting both the sensor data and an associated ID code.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either 35 U.S.C. §325(d) or §314(a).
  • §325(d): Denial was argued to be inappropriate because the primary prior art references asserted in the petition (Kates-711, Kates-505, Hitt, Littrell, and Mueller) are new and were never considered during the original prosecution of the ’887 patent.
  • §314(a) (Fintiv): Petitioner argued against denial under the Fintiv factors, stating that the petition seeks to join an already-instituted IPR (the "Copeland IPR") against the same patent. Joinder would therefore conserve Board and party resources rather than create inefficiencies.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3-8, 14-15, and 18 of the ’887 patent as unpatentable.