Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 1 of 12
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`RUSS AUGUST & KABAT
`Marc A. Fenster, CA SBN 181067
`mfenster@raklaw.com
`Reza Mirzaie, CA SBN 246953
`rmirzaie@raklaw.com
`Kristopher Davis, CA SBN 329627
`kdavis@raklaw.com
`James N. Pickens, CA SBN 307474
`jpickens@raklaw.com
`Minna Y. Chan, CA SBN 305941
`mchan@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Tele:
`310/826-7474
`Fax:
`310/826-6991
`
`Attorneys for Plaintiff
`ECOFACTOR, INC.
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`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`ECOFACTOR, INC.
`Case No.
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` Plaintiff,
`COMPLAINT
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`DEMAND FOR JURY TRIAL
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`GOOGLE LLC,
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` Defendant.
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`v.
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`Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 2 of 12
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`ECOFACTOR’S COMPLAINT FOR PATENT INFRINGEMENT
`1. Plaintiff, EcoFactor, Inc., a Delaware corporation (“EcoFactor” or
`“Plaintiff”) through its undersigned counsel, for its claims against Defendant Google
`LLC (“Google” or “Defendant”), alleges as follows:
`INTRODUCTION
`2. These claims arise from Defendant’s unlawful infringement of the
`following United States patent owned by EcoFactor: U.S. Patent No. 11,835,394 (the
`“Asserted Patent”). EcoFactor owns all right, title, and interest in the Asserted
`Patent.
`3. EcoFactor is a privately held company, having its principal place of
`business at 441 California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was
`founded in 2006 and is headquartered in Palo Alto, California. EcoFactor is a leader
`in smart home energy management services. EcoFactor delivers smart home energy
`management services that improve energy efficiency, reduce energy bills, and vastly
`increase demand response efficacy – all while maintaining consumer comfort.
`EcoFactor’s patented big-data analytics and machine learning algorithms collect and
`process massive amounts of residential data – including home thermodynamics,
`family comfort preferences and schedules, plus external data such as weather – to
`continually monitor, adapt and learn for optimum energy savings. The company
`provides homeowners significant cost savings and energy usage benefits.
`EcoFactor’s award-winning service has been offered through channel partners such
`as utilities, energy retailers, broadband service providers, and HVAC companies.
`4. EcoFactor transformed how homes use energy by applying advanced
`analytics to connected devices in the home. EcoFactor developed a suite of software
`known as the “EcoFactor Platform” that incorporates EcoFactor’s patented data
`analytics and machine learning algorithms, as well as EcoFactor’s award-winning
`smart HVAC control technologies. The EcoFactor Platform is software that runs on
`servers, including cloud servers, in the United States, and provides service to
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`Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 3 of 12
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`customers in the United States. The source code of the EcoFactor Platform, including
`for example the platform, quant, and mobile application source code, that comprises
`the EcoFactor Platform was designed by, created by, and is continuously maintained
`and improved by EcoFactor employees working in the United States. The EcoFactor
`Platform actively manages thermostats on occupants’ behalf in intelligent ways that
`improve comfort while helping them save time, energy and money. Utilities, home
`service providers, and homeowners rely on EcoFactor for demand response, energy
`efficiency, and HVAC performance monitoring services. The EcoFactor Platform
`includes the software that practices EcoFactor’s patents on these features. For
`example, the EcoFactor Platform includes EcoFactor’s patented techniques for
`monitoring the health and performance of HVAC systems over time, smart
`thermostat scheduling to improve energy savings and optimize comfort for
`occupants, and thermodynamic modeling of the user’s home and HVAC system to
`enable dynamic pre-cooling and pre-heating to further improve comfort, save
`energy, or both, by creating comfortable schedules that also shift energy usage out
`of periods of peak energy demand.
`5. The patented innovations at issue in this action were invented by
`EcoFactor engineers and researchers. EcoFactor has played a significant role in the
`development and advancement of such improvements to energy management
`technology—and the domestic market for them. EcoFactor has expended tens of
`millions of dollars of research and development and technical services and support
`in the United States. In recent years, an explosion of imported products that infringe
`EcoFactor’s innovative technologies has significantly eroded EcoFactor’s market
`standing. This infringement action is about patented improvements to smart
`thermostat systems, smart HVAC systems, and smart HVAC control systems—
`which took years of research and millions of dollars in U.S. investments to develop,
`and which are infringed by Defendant’s accused products.
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`Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 4 of 12
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`PARTIES
`6. Plaintiff EcoFactor is a privately held company, having its principal place
`of business at 441 California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor
`was founded in 2006 and is headquartered in Palo Alto, California. EcoFactor is the
`sole owner of all right, title, and interest in each Asserted Patent.
`7. Defendant Google LLC is a subsidiary of Alphabet Inc. with its principal
`place of business located at 1600 Amphitheatre Parkway, Mountain View, California
`94043.
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`JURISDICTION AND VENUE
`8. This court has original jurisdiction over EcoFactor's counterclaims
`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because they arise under the patent laws
`of the United States, Title 35 of the United States Code.
`9. Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1400(b)
`because Google resides in this District, and also because Google is subject to
`personal jurisdiction in this District, and a substantial part of the events giving rise
`to EcoFactor’s claims of infringement (such as the development and sale of Nest-
`branded thermostats) occurred in this District.
`THE TECHNOLOGY AND PRODUCTS AT ISSUE
`10. The products accused of infringement (“Accused Products”) are smart
`thermostat systems, smart HVAC systems, smart HVAC control systems, and all
`components (including accessories) thereof offered for sale by the Defendant,
`including the Google Nest Thermostat and Nest Learning Thermostat Third
`Generation. The Accused Products includes Google’s servers and data centers that
`provide cloud-based server backend support for the features of the Nest-branded
`thermostats, Google services or Nest services supporting the Nest-branded
`thermostats, related online interfaces for the Nest-branded thermostats (including,
`e.g., mobile apps and web portals), and related accessories for the Nest-branded
`thermostats (including, e.g., Nest remote temperature sensors), and including device-
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`Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 5 of 12
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`side and cloud-based features thereof, and all versions and variations thereof since
`the issuance of the Asserted Patent.
`11. The Accused Products include thermostat systems that connect to and
`control an HVAC system. These thermostat devices communicate over a network
`with other devices and systems offered by the Defendant. The Accused Products
`connect to the network managed by the Defendant via the Internet. For example, the
`Accused Products connect to Defendant’s networked servers and data centers, online
`interfaces, and related accessories.
`12. When connected as designed, the Accused Products form a smart
`thermostat system, smart HVAC system, and/or smart HVAC climate control
`system. Defendant’s smart thermostat systems are “smart” including because they
`are designed to connect to Defendant’s servers and data centers (including, e.g.,
`cloud-based servers and backend support), related online interfaces (including, e.g.,
`mobile apps and web portals), and related accessories (e.g., remote temperature
`sensors). Further, Defendant’s smart thermostat systems are “smart” including
`because they support and are marketed as providing features to end users that analyze
`thermostat and HVAC system data to provide advanced smart thermostat features.
`13. The Accused Products constitute the “frontend” of the smart thermostat
`system, smart HVAC system, and/or smart HVAC control system. Such smart
`thermostat devices can be programmed using the servers and the network maintained
`by Defendant and which form the “backend” for the smart thermostat. Such smart
`thermostat systems can be programmed remotely with a web or mobile application
`offered by Defendant. The web or mobile application communicates with the smart
`thermostat via computer servers or data centers managed by the Defendant, who sells
`and imports the smart thermostat. For example, Defendant allows an end user to use
`a web or mobile application on a mobile phone, tablet, laptop, or other computing
`device to control the smart thermostat systems, such as by adjusting temperature
`settings.
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`14. These smart thermostat systems also communicate data using the
`network. For example, Defendant’s smart thermostat systems send and receive
`temperature data and/or temperature settings using the network.
`15. Defendant’s Accused Products are designed and specially made and
`adapted to infringe claims of the Asserted Patents and to embody a material part of
`the claimed inventions. The Accused Products are installed and used in the United
`States according to Defendant’s design and instructions. Defendant has knowledge
`as well as notice of its infringement of each asserted patent at least as of the date of
`the Complaint. Defendant knowingly induces and encourages the use of the
`Accused Products in the United States in a manner that infringes the asserted claims
`of the Asserted Patents. Defendant infringes the Asserted Patents directly, through
`making, using, selling, and/or offering for sale the Accused Products. Defendant
`also infringes the Asserted Patents indirectly, both for example through contributory
`infringement as well as through induced infringement. The infringement of the
`Asserted Patents is also attributable to Defendant. Defendant and/or users of the
`Accused Products direct and control use of the Accused Products to perform acts
`that result in infringement the Asserted Patents, conditioning benefits on
`participation in the infringement and establishing the timing and manner of the
`infringement.
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`COUNT I:
`INFRINGEMENT OF U.S. PATENT NO. 11,835,394
`16. EcoFactor realleges and incorporates by reference the foregoing
`paragraphs as if fully set forth herein.
`17. U.S. Patent No. 11,835,394 (the “’394 Patent”), titled “System and
`Method for Evaluating Changes in the Efficiency of an HVAC System,” issued on
`December 5, 2023. Ex. 1 (’394 Patent). The inventors of the ’394 Patent are John
`Douglas Steinberg and Scott Douglas Hublou. The ’394 Patent is based on U.S. Pat.
`App. No. 18/104,767, filed on Feb. 1, 2023, which claims priority to U.S. Provisional
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`Case 4:24-cv-00175-JST Document 1 Filed 01/09/24 Page 7 of 12
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`App. No. 60/994,011, filed on September 17, 2007. A true and correct copy of
`the ’394 Patent is attached as Exhibit 1.
`18. On information and belief, Defendant makes, uses, offers for sale, sells,
`and/or imports certain products (“Accused Products”), such as the Nest Thermostat
`and Nest Learning Thermostat Third Generation, including device-side and cloud-
`based features thereof, and related accessories, that directly infringe, literally and/or
`under the doctrine of equivalents, at least claims 1, 3, 4, 6, 10, 12, 13, and 15 of the
`’394 Patent.
`19. The infringement of the ’394 Patent is also attributable to Defendant. For
`example, Defendant directs and controls use of the Accused Products to perform acts
`that result in infringement of the patent, conditioning benefits on participation in the
`infringement and establishing the timing and manner of the infringement.
`20. Defendant also knowingly and intentionally induces infringement of
`claims of the ’394 Patent in violation of 35 U.S.C. § 271(b). Through at least the
`filing and service of the Complaint, Defendant has had knowledge of the ’394 Patent
`and the infringing nature of the Accused Products. Despite this knowledge of the
`’394 Patent, Defendant continues to actively encourage and instruct its customers
`and end users (for example, through user manuals and online instruction materials
`on its website) to use the Accused Products in ways that directly infringe the ‘394
`Patent. Defendant does so knowing and intending that its customers and end users
`will commit these infringing acts. Defendant also continues to make, use, offer for
`sale, sell, and/or import the Accused Products, despite its knowledge of the ’394
`Patent, thereby specifically intending for and inducing its customers to infringe the
`’394 Patent through the customers’ normal and customary use of the Accused
`Products.
`21. Defendant has also infringed, and continue to infringe, claims of the ’394
`Patent by offering to commercially distribute, commercially distributing, making,
`and/or importing the Accused Products, which are used in practicing the process, or
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`using the systems, of the patent, and constitute a material part of the invention.
`Defendant knows the components in the Accused Products to be especially made or
`especially adapted for use in infringement of the patent, not a staple article, and not
`a commodity of commerce suitable for substantial noninfringing use. Accordingly,
`Defendant has been, and currently is, contributorily infringing the ’394 Patent, in
`violation of 35 U.S.C. § 271(c).
`22. The Accused Products satisfy all claim limitations of claims of the ‘394
`Patent. A claim chart comparing claim elements of the ’394 Patent to representative
`Accused Products, is attached as Exhibit 2.
`23. By making, using, offering for sale, selling and/or importing into the
`United States the Accused Products, Defendant has injured EcoFactor and is liable
`for infringement of the ’394 Patent pursuant to 35 U.S.C. § 271.
`24. As a result of Defendant’s infringement of the ’394 Patent, EcoFactor is
`entitled to monetary damages in an amount adequate to compensate for Defendant’s
`infringement, but in no event less than a reasonable royalty for the use made of the
`invention by Counterclaim Defendant, together with interest and costs as fixed by
`the Court.
`25. Further, Defendant’s infringing activities have injured and will continue
`to injure EcoFactor, unless and until this Court enters an injunction prohibiting
`further infringement of the ’394 Patent, and, specifically, enjoining further
`manufacture, use, sale, importation, and/or offers for sale that come within the scope
`of the patent claims. EcoFactor and Google are direct competitors offering similar
`services to overlapping customer channels. For example, EcoFactor offers an
`advanced demand response feature to its utility and energy retailer customers.
`Google competes in this same business, also offering demand response services to
`utility and energy retailer customers, under the brand name “Rush Hour Rewards”—
`which a jury has already found to infringe EcoFactor patent claims covering demand
`response technology. See EcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-00075,
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`the foregoing
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`Dkt. No. 215 (W.D. Tex. Feb. 10, 2022) (jury verdict finding infringement of U.S.
`Patent No. 8,738,327). As another example, EcoFactor offers HVAC performance
`monitoring services to its customers, and Google has also recently released a
`performance monitoring feature that infringes the Asserted Patent and that directly
`competes with EcoFactor’s domestic HVAC performance monitoring feature which
`is offered for sale to the same customers and utility companies with respect to whom
`Google offers for sale. Ex. 3 at 1 (EcoFactor web page); Ex. 4 at 4-5 (ITC confirming
`in mid-2022 that EcoFactor has a domestic industry in the United States); Ex. 5
`(Nevada Energy guide directing registrants to nve.ecofactor.com and noting that
`“EcoFactor is our technology partner”); Ex. 6 (listing utility and energy retailer
`customers, including Reliant and CenterPoint Energy, for whom Google offers
`competitive smart thermostat technology services). This makes the parties direct
`competitors. An injunction is warranted.
`WILLFUL INFRINGEMENT
`26. EcoFactor realleges and
`incorporates by reference
`paragraphs as if fully set forth herein.
`27. Defendant had knowledge of EcoFactor’s ’394 Patent by at least the date
`of filing of this Complaint in the Northern District of California.
`28. Despite Defendant’s knowledge of EcoFactor’s Asserted Patents and its
`patent portfolio, Defendant infringed and continues to infringe the Asserted Patent
`with full and complete knowledge of the patents’ applicability to Defendant’s smart
`thermostats and smart HVAC systems without taking a license and without a good
`faith belief that the Asserted Patents are invalid and not infringed. Defendant’s
`infringement occurred, and continues to occur, with knowledge of infringement and
`objective recklessness, and/or with willful blindness to its infringement.
`29. Defendant sold, and continues to sell, its Accused Products (e.g., Google’s
`Nest Thermostat and Nest Learning Thermostat Third Generation) to customers
`despite its knowledge of EcoFactor’s Asserted Patents, such as on store.google.com.
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`Defendant also manufactured and imported into the United States, and continues to
`do so, the Accused Products for sale and distribution to its customers, despite its
`knowledge of EcoFactor’s Asserted Patents.
`30. Defendant’s infringement of EcoFactor’s Asserted Patents is egregious
`because despite its knowledge of EcoFactor’s Asserted Patents, Defendant
`deliberately and flagrantly copied the invention claimed in the Asserted Patents and
`implemented that patented invention in its Accused Products. Further, despite
`Defendant’s knowledge of the Asserted Patents, Defendant sold, offered for sale,
`manufactured, and imported, the Accused Products—and continues to do so—
`without investigating the scope of the Asserted Patent and without forming a good-
`faith belief that its Accused Products do not infringe or that the Asserted Patent are
`invalid. Defendant has not taken any steps to remedy its infringement of the Asserted
`Patents (e.g., by removing the Accused Products from its sales channels). Instead,
`Defendant continues to sell its Accused Products to customers, such as its continued
`sale of Nest Thermostat, for example. Defendant’s behavior is egregious because it
`engaged, and continues to engage, in misconduct beyond that of typical
`infringement. For example, in a typical infringement, an infringer would investigate
`the scope of the asserted patents and develop a good-faith belief that it does not
`infringe the asserted patents or that the asserted patents are invalid before selling
`(and continuing to sell) its accused products. An infringer would also remove its
`accused products from its sales channels and discontinue further sales.
`31. Thus, Defendant’s infringement of the Asserted Patents is willful,
`deliberate, and flagrant, entitling EcoFactor to increased damages under 35 U.S.C.
`§ 284 and to attorneys’ fees and costs incurred in prosecuting this action under 35
`U.S.C. § 285.
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`ECOFACTOR’S PRAYER FOR RELIEF
`WHEREFORE, Plaintiff EcoFactor, Inc. request that this Court enter:
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`A. A judgment in favor of EcoFactor that Google has infringed, either
`literally and/or under the doctrine of equivalents, the ’394 Patent;
`B. A permanent injunction prohibiting Defendant from further acts of
`infringement of the ’394 Patent;
`C. A judgment and order requiring Defendant to pay EcoFactor its
`damages, enhanced damages, costs, expenses, and pre-judgment and post-judgment
`interest for Defendant’s infringement;
`D. A judgment and order requiring Defendant to provide accountings and
`to pay supplemental damages to Plaintiff, including without limitation, pre-judgment
`and post-judgment interest;
`E. A judgment and order finding that this is an exceptional case within the
`meaning of 35 U.S.C. § 285 and awarding to EcoFactor its reasonable attorneys’
`fees against Defendant; and
`F.
`Any and all other relief as the Court may deem appropriate and just
`under the circumstances.
`DEMAND FOR JURY TRIAL
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`Defendant, under Rule 38 of the Federal Rules of Civil Procedure, requests a
`trial by jury of any issues so triable by right.
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`Respectfully submitted,
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`RUSS AUGUST & KABAT
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`By: /s/ Reza Mirzaie
`
`Reza Mirzaie
` Marc A. Fenster
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`Kristopher Davis
`James N. Pickens
` Minna Y. Chan
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`Attorneys for Plaintiff
`ECOFACTOR, INC.
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`COMPLAINT
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`DATED: January 9, 2024
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