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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
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`
`
`
`
`IPR2020-01504
`Patent No. 8,498,753
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`
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`PETITIONER REPLY
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`
`
`1
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`
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`TABLE OF CONTENTS
`TABLE OF EXHIBITS ............................................................................................. 3
`A.
`Relative Credibility of the Experts ........................................................ 4
`B.
`Level of Skill in the Art ......................................................................... 5
`C.
`Responses to EcoFactor Arguments ...................................................... 6
`1.
`There was a proper rationale for the combination ...................... 6
`2.
`A POSITA would have had a reasonable expectation of
`success ....................................................................................... 10
`The combination meets claim limitation 1[a] ........................... 14
`The combination renders obvious a first internal temperature
`acquired at a third time, used to determine the start time and
`intervals. .................................................................................... 19
`The combination renders obvious using a forecasted
`temperature occurring at the target time ................................... 22
`Claim 5 was obvious. ................................................................ 27
`6.
`CERTIFICATE OF SERVICE ................................................................................ 29
`CERTIFICATE OF WORD COUNT ...................................................................... 30
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`
`
`3.
`4.
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`5.
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`
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`2
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`
`
`TABLE OF EXHIBITS
`
`
`Description
`U.S. Patent No. 8,498,753 (“the ’753 patent”).
`Declaration of Rajendra Shah.
`C.V. of Rajendra Shah.
` U.S. Pat. No. 5,454,511 (“Van Ostrand”).
`U.S. Pat. No. 6,480,803 (“Pierret”).
`U.S. Pat. No. 5,197,666 (“Wedekind”).
`Joint Claim Construction Chart in Smart HVAC Systems, and
`Components Thereof, 337-TA-1185 (ITC March 6, 2020).
`U.S. Pat. No. 6,216,956 (“Ehlers”).
`Redline comparison of claims 1, 9 and 15.
`File History of U.S. App. Ser. No. 12/773,690 (the application
`that issued as the ’753 patent).
`Horan, T, Control Systems and Applications for HVAC/R,
`Prentice-Hall, Inc., 1997.
`Levenhagen, J, HVAC Control and Systems, McGraw-Hill, Inc.,
`1993.
`U.S. Pat. No. 6,957,690 (“Raaijmakers”).
`Deposition Transcript of Dr. John Palmer.
`File History of U.S. App. Ser. No. 12/773,690 (the application
`that issued as the ’753 patent), with added page numbering.
`U.S. Pat. No. 4,475,685 (“Grimado”).
`U.S. Pat. No. 5,555,927 (“Shah”).
`
`
`3
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`
`1008
`1009
`1010
`
`1011
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`1012
`
`1013
`1014
`1015
`
`1016
`1017
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`
`
`
`
`
`
`Petitioner Google LLC hereby submits its Reply to EcoFactor’s Patent Owner
`
`Response (“POR”). This reply will address two preliminary issues in §§A and B.
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`In §C, the reply will address EcoFactor’s arguments in roughly the order presented
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`in the POR, but with certain overlapping arguments addressed together.
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`A. Relative Credibility of the Experts
`Several issues raised by the POR (e.g., whether there would have been a
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`motivation to combine references or a reasonable expectation of success) may
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`require the Board to judge the credibility of experts Shah and Palmer. In so doing,
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`the Board should consider the relevant experience of both experts.
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`Mr. Shah’s testimony is based on twenty-five years of experience designing
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`and developing HVAC control systems for Carrier Corporation—including during
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`the relevant timeframe. (Ex. 1002, ¶¶4, 2-10)(Ex. 1003, p. 001). He is a named
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`inventor on approximately 50 patents and applications relating to HVAC systems
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`(Ex. 1003, p. 001)(Ex. 1002, ¶9), including prior art cited in the Petition dealing with
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`recovery ramping. (Ex. 1005).
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`Dr. Palmer’s experience, in contrast, comes through failure analysis
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`performed for insurance subrogation lawsuits. (Ex. 1014, 10:20-13:21). He does
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`not have experience building or designing HVAC control systems. (Ex. 1014,
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`13:22-14:5). He has no relevant publications or patents. (Ex. 2003, pp. 3-4)(Ex.
`
`1014, 15:8-11). Nor does his academic background make up for his lack of practical
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`
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`4
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`
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`experience—his studies related to electrical power engineering generally, not
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`HVAC systems in particular. (Ex. 1014, 10:9-12:8).
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`This is not to impugn Dr. Palmer’s credentials in his chosen field, but merely
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`to say that he is in a worse position than Mr. Shah to judge how a person having
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`ordinary skill in the art (“POSITA”) would have viewed the prior art, the motivations
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`to modify prior art, and the likelihood of success in doing so. See In re Deters, 515
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`F.2d 1152, 1155 (CCPA 1975); Sony Corp. v. Collabo Innovations, LLC, IPR2016-
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`00941, Final Written Decision, p. 32 (PTAB October 3, 2017).
`
`B. Level of Skill in the Art
`The parties also dispute the level of ordinary skill in the art, and this difference
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`likely bears on the respective experts’ view on how easy it would be to combine the
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`prior art references. Mr. Shah testified that the level of ordinary skill was relatively
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`high, requiring “at least five years of (i) professional experience in building energy
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`management and controls.” (Ex. 1002, ¶26). Dr. Palmer estimated that the person
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`of ordinary skill would have only two years of professional experience.
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`There is good reason to doubt Dr. Palmer’s estimate. As noted above, Dr.
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`Palmer has no personal experience working in a relevant field. Instead, his appraisal
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`of a POSITA was “based on discussions with counsel, as well as [his] understanding
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`of the, you know, basic experience level of technicians that worked in the industry.”
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`(Ex. 1014, 29:20-32:6). EcoFactor’s counsel improperly blocked cross-examination
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`
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`5
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`
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`of conversations with counsel on which Dr. Palmer based his opinion (id.), so the
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`full reasoning behind his opinion is unclear, but the experience level of HVAC
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`service technicians is clearly not the appropriate benchmark for a patent that
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`concerns the design of an HVAC control system. (Ex. 1002, ¶26). This point is
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`important, because Dr. Palmer’s underestimation of the level of ordinary skill likely
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`infected his opinions concerning whether a person of ordinary skill would have been
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`able to modify Wedekind’s system.
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`C. Responses to EcoFactor Arguments
`1. There was a proper rationale for the combination
`EcoFactor argues in §V.B of the POR that there would have been no
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`motivation to combine Ehlers with Wedekind. (POR, pp. 10-14). Specifically,
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`EcoFactor argues that Wedekind is “entirely” limited to reducing the “on-time” of
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`an HVAC system that has a single stage and is situated in a residence of an individual
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`consumer. (POR, pp. 10-11). In contrast, argues EcoFactor, Ehlers limits its focus
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`to reducing costs for multi-stage HVAC systems that are situated in commercial
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`structures. (POR, pp. 10-1) Extending this argument, EcoFactor maintains that
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`implementing Ehlers’ ramping technique in Wedekind would increase the recovery
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`time of Wedekind, which would necessarily increase the HVAC system “on time”.
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`(POR, pp. 12-13). A POSITA would not be motivated to do this, argues EcoFactor,
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`because increasing the “on time” of an HVAC system would “frustrat[e] the stated
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`6
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`
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`purpose and fundamental assumption in Wedekind”. (POR, p. 13).
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`EcoFactor’s argument mischaracterizes the prior art. Ehlers, for example, is
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`not limited to—or even particularly focused on—“large commercial buildings”.
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`(POR, p. 10). Instead, Ehlers is expressly directed to both commercial and
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`residential buildings. (Ex. 1008, )(“The present invention relates generally to a
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`residential or commercial environmental condition control system....”)(emphasis
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`added)(see also Ex. 1008, 1:18-20, 20:4-6, 27:30-35, 30:36-37, 34:32-34).
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`EcoFactor’s attempt, at page 10 of its Response, to characterize Wedekind as
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`merely “applicable to relatively simple systems such as applied in single-family
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`residences” (POR, p. 10) also fails. Two pages earlier in the POR, EcoFactor
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`described Wedekind as focused on a “highly sophisticated computational model of
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`the structure and its climate control system.” (POR, p. 8). Indeed, Wedekind is also
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`expressly directed to both residential and commercial settings. (Ex. 1006, 5:60-67).
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`Nor is it correct to characterize Wedekind as limited to single-stage HVAC
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`systems, or Ehlers as limited to multi-stage systems. EcoFactor points to no
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`statements of limitation in either reference, and does not dispute the fundamental
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`commercial reality: namely, that multi-stage HVAC systems were in widespread use
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`in the relevant timeframe, and recovery ramping was frequently used with such
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`systems. (Petition, pp. 11-12, 55)(Ex. 1002, ¶¶38-42, 123)(Ex. 1006, 19:46-
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`20:3)(Ex. 1004, 1:23-28, 6:56-61, 4:53-55)(Ex. 1005, 4:53-55)(Ex. 2004, 116:11-
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`
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`7
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`
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`118:9).
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`EcoFactor again attempts to pigeonhole the prior art by arguing that Wedekind
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`is “entirely focused on maximizing energy savings by minimizing the time the
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`climate control system is on”, while Ehlers is supposedly “completely focused on
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`cost, even when energy efficiency would not necessarily be maximized.” (POR, p.
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`11). Wedekind, however, never says it is focused on “minimizing the time the
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`climate control system is on” (POR, p. 11), but rather repeatedly states that its focus
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`is more broadly on optimizing energy efficiency and user comfort. (Ex. 1006, 1:13-
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`18, 2:30-33, 2:53-63, 4:38-45, 11:22-25, 11:40-45). Even the passage to which
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`EcoFactor cites (20:45-65) states only that Wedekind seeks an optimal setback
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`schedule to “minimize[] the input energy consumption”—a broadly-stated goal.
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`(Ex. 1006, 20:45-51).
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`Ehlers, likewise, is not “completely focused on cost”. (POR, p. 11). The very
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`passage EcoFactor cites as support (2:42-48) begins by saying “[t]he present
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`invention is directed to an environmental condition sensing and control system
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`aimed at optimizing comfort and minimizing energy consumption and cost.”
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`(Ex. 1008, 2:42-45)(Emphasis added)(Ex. 1008, 19:27-62).
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`Even if one could somehow limit Wedekind’s goals to reducing HVAC “on
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`time”, and Ehlers’ goals to reducing “cost”, it is difficult to believe that a POSITA
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`in 2009 would not have understood that lower costs will usually result from running
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`8
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`the HVAC system less. The ’753 patent itself, for example, treats costs and energy
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`consumption as practically synonymous. (Ex. 1001, 1:41-44, 1:60-67). And Dr.
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`Palmer testified that both consumers and businesses in the relevant timeframe would
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`respond to cost incentives by using less energy, substantiating the already common-
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`sense notions that (1) people appreciate lower costs, and (2) that using less energy
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`will lead to lower costs. (Ex. 1014, 23:6-24:19). Even if that were not the case,
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`there is no legal reason why Ehlers could not provide a motivation (lowering costs)
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`for the combination. See KSR, 550 U.S. at 420 (“Regardless of Asano's primary
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`purpose, the design provided an obvious example of an adjustable pedal with a fixed
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`pivot point; and the prior art was replete with patents indicating that a fixed pivot
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`point was an ideal mount for a sensor.”).
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`Using its faulty factual assertions, EcoFactor then draws a faulty conclusion.
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`Specifically, EcoFactor reasons that if Wedekind is solely interested in reducing “on
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`time”, then a POSITA would not have found it obvious to use Ehlers’ ramping
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`method. The ramping method of Ehlers, EcoFactor argues, would allegedly
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`“increase the amount of time the climate control system is turned ‘on’ and to slow
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`down the recovery...” (POR, p. 12). But here EcoFactor employs a sleight of hand:
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`the comparison being made—the alleged “increase” in “on time”—is not a
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`comparison of Wedekind before-and-after the modification with Ehlers. Rather, it
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`is a comparison of Wedekind alone with Wedekind modified by a technique not
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`9
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`
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`taught in Ehlers, namely, running all HVAC stages at once. (Ex. 2004, 28:18-29:10).
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`The proper comparison, in contrast, would undermine EcoFactor’s argument.
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`Specifically, EcoFactor itself alleges that Wedekind alone uses only a single-stage
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`HVAC system, and that Ehlers recommend avoiding higher stages. (POR, pp. 13-
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`14). Thus, Wedekind would use a single stage for recovery both before and after the
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`combination with Ehlers. It is difficult to see how this would result in an increase
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`in “on time”. (Ex. 2004, 116:11-117:15)(by avoiding upper stages, recovery will be
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`“going at the same path”)(see also Ex. 2004, 118:10-119:12).
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`In all of this, EcoFactor does not dispute that multistage HVAC systems were
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`in widespread use in the prior art, that it was well-known that second- and third-
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`stages were usually significantly less efficient than the primary stage (Ex. 1008,
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`19:60-62)(Ex. 2004, 31:23-25), and that recovery ramping was a well-known
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`technique to increase energy efficiency in multistage systems. EcoFactor’s faulty
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`assumptions about the prior art cannot overcome this strong motivation to combine.
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`2. A POSITA would have had a reasonable expectation of success
`In §V.B of the POR (pp. 14-18), EcoFactor argues that a POSITA would not
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`have had a reasonable expectation of success in combining Wedekind and Ehlers,
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`allegedly because the combination would require “extensive” revisions to
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`Wedekind’s equations. (POR, p. 15).
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`EcoFactor’s assertion is not credible. The ’753 patent performs substantially
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`10
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`
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`similar calculations (using historical temperature measurements to calculate thermal
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`properties to predict performance), and provides no equations or algorithms for
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`doing so. (Ex. 1014, 57:7-59:4, 38:25-41:12, 44:16-45:11, 67:8-67:21). Instead, the
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`’753 patent relies entirely on the skill of a POSITA to implement its alleged
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`invention. Where the patent-at-issue assumes that ordinary skill is available in the
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`art to implement a claimed invention, it is unreasonable for the Patent Owner to
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`argue that the prior art cannot also rely on such skill.1 Along these lines, a POSITA
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`possessing the skill to implement the mathematics of the ’753 patent from the terse
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`disclosures of the patent, would certainly have the skill to make much more limited
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`modifications to Wedekind’s equations.
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` EcoFactor makes three specific objections, each of which lacks merit. First,
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`EcoFactor objects that “the Wedekind climate control system has only one capacity”,
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`and it would “require extensive revisions to the entire non-linear computational
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`1 See In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)(“the Board's observation
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`that appellant did not provide the type of detail in his specification that he now
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`argues is necessary in prior art references supports the Board's finding that one
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`skilled in the art would have known how to implement the features of the
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`references.”); Residio Tech., Inc. v. Ubiquitous Connectivity, LP, IPR2019-01335,
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`Paper 38, pp. 25-26 (PTAB January 26, 2021)(citing Epstein).
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`
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`11
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`
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`model....to account for the varying energy input levels...” (POR, pp. 15-16).
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`EcoFactor provides no reason why this rewrite would be necessary, and in fact, it is
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`not. Multistage HVAC systems have primary heating and cooling systems, with
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`which they are designed to operate most of the time. Additional stages are
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`supplemental, meaning they are only engaged when the primary system is unable to
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`maintain the HVAC setpoint. (Ex. 1008, 19:60-62)(Ex. 1014, 24:25-26:12). The
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`additional stages, however, are significantly less efficient (Mr. Shah estimated “three
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`or four times as much energy for the same amount of heating as delivered”). (Ex.
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`2004, 31:23-25, 27:6-28:1)(see also Ex. 1008, 19:52-60). That means, as Ehlers
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`explains, that “[b]y maintaining the systems operation in the first stage cycle,
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`maximum energy consumption efficiency is achieved.” (Ex. 1008, 19:60-62)(Ex.
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`1002, ¶¶48, 61). Based on Ehlers’ recommendation, a POSITA would see no need
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`to modify Wedekind’s equations to account for multiple capacities. Rather, a
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`POSITA would simply use the primary-stage capacity in Wedekind’s equations.
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`(Ex. 2004, 118:24-119:12). The system would then generate setpoints that keep the
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`HVAC system operating with only the primary stage per Ehlers. (Id.). The
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`supplemental (second- and third-) stages would still be useful in the normal way,
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`because they can provide backup capacity if the primary stage falls too far behind
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`the setpoint. (Ex. 1008, 19:62-66). But Ehlers’ teaching is to avoid the supplemental
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`heating and cooling stages, not to plan for their regular use. (Ex. 1008, 19:62-
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`12
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`
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`66)(Ex. 2004, 26:9-28:1)(Ex. 1014, 24:25-26:12).
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`Second, EcoFactor argues that because Wedekind allegedly seeks to
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`minimize the “on time” of the HVAC system—even at the expense of energy
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`efficiency—Wedekind will always choose the shortest possible ramp time. (POR,
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`pp. 15-16). EcoFactor then appears to reason (although it is not entirely clear) that
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`when Wedekind uses a multistage HVAC system, Wedekind’s algorithm will always
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`choose to turn on all stages (primary and supplemental) during recovery, in order to
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`minimize the recovery time. EcoFactor then concludes a POSITA would have had
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`to modify Wedekind’s equations to avoid using multiple stages—despite its earlier
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`argument that Wedekind was already focused on single-stage systems.
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`This argument fails for several reasons. As explained above in §I.C.1,
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`Wedekind does not blindly seek to minimize HVAC “on time”, but rather seeks to
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`optimize the overall efficiency of energy consumption. (e.g. Ex. 1006, 1:13-18,
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`2:30-33, 2:53-63, 4:38-45, 11:22-25, 11:40-45). Thus, a necessary premise of
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`EcoFactor’s argument is simply incorrect. Moreover, a POSITA reading Ehlers
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`would not seek to use the supplemental stages for recovery, because Ehlers counsels
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`avoiding them. (Ex. 1008, 19:60-62). This means that the POSITA would simply
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`use Wedekind’s model as-is, using the primary stage capacity of the HVAC system
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`to calculate recovery time (Ex. 2004, 118:3-119:12), and assigning, e.g., a simple
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`ramp of equal time and degree increments to avoid engaging the supplemental
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`13
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`
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`stages, exactly as taught by Ehlers.
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`Third, EcoFactor argues that a POSITA would not have had a reasonable
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`expectation of success in achieving the ’753 patent’s goal of avoiding “overshoot”.
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`This argument also has numerous problems. To begin with, the ’753 patent never
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`mentions overshoot, and the POR cites to no portion of the ’753 patent when
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`discussing overshoot. Furthermore, the effects of the ’753 patent’s ramping method
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`would be achieved by any reasonable ramping algorithm, even a simple division of
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`the recovery time into equal intervals. (Ex. 1014, 67:22-70:12)(Ex. 1001, 7:15-24).
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`Most importantly, however, the prior art is not required to pursue the same objective
`
`as the patent-at-issue. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2017)(it
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`is error to “look only to the problem the patentee was trying to solve.”).
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`Finally, Dr. Palmer’s assertions are not well-substantiated. In formulating his
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`opinion that “extensive” modification of Wedekind’s equations would be required,
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`Dr. Palmer performed no mathematical analysis at all. (Ex. 1014, 97:17-25).
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`Furthermore, as explained in §§I.A and I.B, supra, Dr. Palmer lacks significant
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`experience in the industry, and likely underestimated the extent of skill in the art.
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`EcoFactor’s argument should thus be rejected.
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`3. The combination meets claim limitation 1[a]
`In §D.1. of its Response (POR, pp. 19-21) EcoFactor argues that the
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`combination does not meet the preamble of claim 1, which recites “[a] method for
`
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`14
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`
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`reducing the cycling time...” EcoFactor makes three arguments. First, EcoFactor
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`implies that the phrase “cycling time” should have been construed according to how
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`a similar-sounding term (“cycle time”) was used in the prior art. (POR, p. 20).
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`Second, EcoFactor argues that minimizing input energy consumption, as discussed
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`by Wedekind at 17:53-62, is not the same as minimizing the average input energy
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`rate, as used in Equation (1) of Wedekind. (POR, p. 21). Third, EcoFactor argues
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`that reducing the parameter that Wedekind calls the “cycle time”, while holding
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`everything else constant, will increase the input energy rate. (POR, p. 21).
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`EcoFactor’s first two arguments can be quickly dismissed. The first argument
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`fails because it is the specification of the patent that contains the claim—not the
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`specifications of prior art patents—that is “usually dispositive” and “the single best
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`guide to the meaning of a disputed term”. Phillips v. AWH Corp., 415 F.3d 1303,
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`1315 (Fed. Cir. 2005)(en banc). If EcoFactor wanted a narrow construction of
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`“cycling time”, it should have proposed one, beginning its analysis with the
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`specification of ’753 patent.
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`The second argument fails for two reasons. First, EcoFactor provides no
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`evidence that Wedekind’s goal of “minimiz[ing] the input energy consumption” (as
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`expressed in Wedekind at 17:62) is meaningfully distinct from minimizing the
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`“input energy rate”, as used in Equation 1. In fact, Wedekind uses the input energy
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`rate in order to minimize consumption. (Ex. 1006, 19:50-20:62, particularly 20:26-
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`
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`15
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`
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`30 and 20:45-51). Even if there were a relevant distinction between the average rate
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`of consumption and the total consumption, they are directly mathematically related.
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`An average rate is the cumulative amount divided by time (e.g. the hourly energy
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`rate is the total energy used in a day divided by 24 hours). If one quantity changes,
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`the other also inexorably changes in the same direction.
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`EcoFactor’s third argument also fails. EcoFactor essentially argues that the
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`claim term “cycling time” was mapped to the wrong parameter in Wedekind by the
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`Petition. The Petition argued that the term “reducing the cycling time” of claim 1
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`was not particularly clear, but that it would have been obvious based on Wedekind’s
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`minimization of input energy consumption. (Petition, pp. 27-29). In particular,
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`because Wedekind minimizes input energy consumption (17:60-62), then it would
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`be obvious that cycling time was reduced. (Petition, pp. 27-29). This was evidenced
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`by the relationship between input energy and the parameter “te”, or the time the
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`HVAC system is on during a Wedekind cycle, as expressed in Equation (1) of
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`Wedekind. EcoFactor seems to object to this mapping, arguing that the Petition
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`should instead have mapped “cycling time” of claim 1 to the quantity Wedekind
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`calls “cycle time” (“tc”). Having edited the Petition in this way, EcoFactor then
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`argues that its chosen parameter in Wedekind is not, in fact, “reduced”.
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`In making its third argument, EcoFactor seems to have a specific construction
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`16
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`
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`of “reducing the cycling time” in mind, but never makes a case for that construction.2
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`Nor would a narrowing construction be easy: the term “cycling time” is used only
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`in the preambles of the claims of the ’753 patent and the first line of the Abstract.
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`There is no discussion in the patent of what a cycling time might be, how one might
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`reduce it, nor the benchmark against which such a reduction should be measured. In
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`fact—beyond the preambles of the claims and the first line of the abstract—the ’753
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`patent speaks only of a desire to reduce energy use and network traffic. (Ex. 1001,
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`1:20-25, 7:23-24, 8:17). The file history of the application leading to the ’753 patent
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`does not define “cycling time” or explain how it is “reduced”. The Examiner, in two
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`separate rejections, appeared to treat the term as a shorthand for recited calculations
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`concerning recovery time. (Ex. 1015, pp. 226, 140).
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`Expert testimony regarding terms in the preamble conflicts. Mr. Shah found
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`the phrase “cycling time” to be unclear, although it most likely related to the time
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`the HVAC system was “on”. (Ex. 1002, ¶80). Dr. Palmer expressly declined to
`
`provide a construction in his declaration. (Ex. 2002, ¶25). At his deposition,
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`however, Dr. Palmer testified that he believes “cycling time” means the HVAC
`
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`2 In a prior ITC investigation 337-TA-1185, EcoFactor argued, prior to dropping
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`the patent from the case, that the preamble of claim 1 of the ’753 patent was not
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`limiting. Google argued that the preamble was indefinite.
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`
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`17
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`
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`switching interval, or more precisely “the time from the HVAC system turning on
`
`to the time when it turns on again, after having turned off in the interim”. (Ex. 1014,
`
`54:14-22). Dr. Palmer’s interpretation is illustrated here (drawing by Petitioner):
`
`
`
`This interpretation, respectfully, makes little sense in the context of the ’753
`
`patent. Reducing the HVAC switching interval would mean that the HVAC system
`
`will turn on and off faster, but would have no effect on energy consumption, or any
`
`other expressed goal of the ’753 patent. Indeed, there is no discussion in the ’753
`
`patent of the time period that covers the HVAC turning on, turning off, and turning
`
`back on, or why reducing that time period might be important. If anything, the ’753
`
`patent teaches that the HVAC switching interval should be increased, “to avoid
`
`frequent switching of the HVAC system”. (Ex. 1001, 6:64-7:2).
`
`Even if EcoFactor had put forth a limiting construction of the preamble, the
`
`evidence is unlikely to have supported it. Rather, the only relevant thing the ’753
`
`patent supports “reducing” is energy consumption. Reducing energy consumption,
`
`
`
`18
`
`
`
`of course, is precisely the goal of Wedekind. (Ex. 2004, 24:1-19). EcoFactor’s
`
`arguments should thus be rejected.
`
`4. The combination renders obvious a first internal temperature
`acquired at a third time, used to determine the start time and
`intervals.
`EcoFactor presents a number of related arguments in §§D.2, D.3. and D.5 of
`
`the POR. In those sections, EcoFactor asserts that the combination of Wedekind and
`
`Ehlers does not meet a “first internal temperature” that is “acquired at a third time
`
`prior to said target time” and that is used to perform the determination required by
`
`claim element [1m], (i.e. the determination of a recovery start time) or the
`
`determination required by claim element [1n] (calculation of intervals).
`
`EcoFactor’s first argument (POR, pp. 22-30) is that Wedekind uses a
`
`“setback temperature setpoint Ti” as the inside temperature at the start of recovery.
`
`Specifically, EcoFactor argues that Wedekind “assumes that the indoor air
`
`temperature at or before time t3 is equivalent to the effective setback temperature
`
`setpoint.” (POR, p. 24). Thus, according to EcoFactor, Wedekind does not “acquire
`
`a new internal temperature at a ‘third time’....” (POR, p. 24).
`
`EcoFactor’s argument lacks merit. First, the Petition argued that the “first
`
`internal temperature” at a “third time” is met by Wedekind’s continual collection of
`
`inside temperatures. (Petition, p. 42)(citing Ex. 1006, Abstract, 4:55-5:1, 4:38-54,
`
`7:41-68, 17:53-63, Fig. 3, rn 34 and 36, 3:59-62, and Ex. 1002, ¶97). EcoFactor’s
`
`
`
`19
`
`
`
`first argument does not address this position.
`
`Even Wedekind’s parameter Ti, however, would still meet the claim language.
`
`EcoFactor principally argues that Ti is not a measured temperature, but rather just a
`
`setpoint. A setpoint, according to EcoFactor, is at best a “predict[ion] [of] air
`
`temperature at or before time t3”. To this there are three responses. First, EcoFactor
`
`simply assumes that the “setback temperature” is a setpoint, but Wedekind refers to
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`it in the relevant passage as “the setback temperature which exists at time, t3”. (Ex.
`
`1006, 19:61)(Emphasis added). The phrase “setback temperature setpoint”, as used
`
`by EcoFactor, does not actually occur in Wedekind. Second, even if the setback
`
`temperature were a setpoint, the setpoint is a good estimate for the temperature (Ex.
`
`1014, 19:23-21:3), and the claims do not require a measured “first internal
`
`temperature”, merely one that is “acquired”. Finally, even if the setback temperature
`
`of Wedekind were a predicted temperature, the ’753 patent works in exactly the same
`
`way, namely by using a “predicted initial temperature PT” as the temperature at the
`
`beginning of the recovery period. (Ex. 1001, 6:17-22)(Ex. 1014, 55:25-58:4). Thus,
`
`even if EcoFactor had made an express claim construction argument, the “first
`
`internal temperature” would not have been construed to exclude predicted
`
`temperatures.
`
`EcoFactor’s second argument takes issue with how the “first internal
`
`temperature” is used in Wedekind. This argument has two related aspects. One
`
`
`
`20
`
`
`
`aspect asserts that the “first internal temperature” must be used directly to calculate
`
`the start time and intervals of the recovery period, and not used to calculate start time
`
`and intervals by way of thermal performance values. (e.g., POR, p. 46). The second
`
`aspect asserts that the “first internal temperature” must be a “newly acquired”
`
`temperature—presumably meaning a temperature that has not been used for the step
`
`of “determining one or more thermal performance values.” (POR, p. 31).
`
`EcoFactor’s argument is incorrect for at least two reasons. First, claim 1 does
`
`not read the way EcoFactor asserts. Regarding the first aspect of the argument, claim
`
`1 only requires that start time and intervals be “based at least in part on” the “first
`
`internal temperature”, not that they must be “directly calculated from” the “first
`
`internal temperature”. Regarding the second aspect of the argument, claim 1 only
`
`positively requires two inside and outside temperature values be used in the
`
`calculation of the thermal performance values. There is no negative limitation that
`
`would prevent the “first temperature” “acquired at a third time” from having also
`
`been used in the calculation of thermal performance values. EcoFactor presents no
`
`claim construction argument for the limitations it assumes are present.
`
`Even if EcoFactor had presented such an argument, however, it would have
`
`been incorrect. This is because the ’753 patent discloses no “first internal
`
`temperature[s]...acquired at a third time” that would meet all the requirements
`
`EcoFactor seeks to impose. At best, the ’753 patent teaches measuring temperature
`
`
`
`21
`
`
`
`continuously to provide so-called “algorithmic learning data (ALD)”, which is in
`
`turn used to calculate a “slope of inside temperature”, which is in turn used to
`
`calculate a start time. (Ex. 1001, 5:62-6:22, 7:47-48, Fig. 10)(Ex. 1014, 39:21-
`
`42:14, 44:16-45:11, 55:25-59:4, 62:21-67:17).
`
`5. The combination renders obvious using a forecasted
`temperature occurring at the target time
`In §D.4 of its POR, EcoFactor argues that the combination does not render
`
`obvious using a “forecasted temperature forecasted to occur at the target time” to
`
`“estimate a recovery period.” (POR, pp. 37-44).
`
`EcoFactor’s first argument in this section is that neither Wedekind nor Ehlers
`
`specifically discloses using a forecasted temperature at a target time, which is an
`
`end time of a recovery period. This argument attacks a straw man. The Petition did
`
`not contend that Ehlers specifically taught a forecasted temperature at a target time.
`
`(Petition, pp. 43-48). Instead, the Petition pointed out that Ehlers taught receiving
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`weather forecast data (including outside temperature) and taught using the weather
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`forecast data to manage energy consumption and the internal environment. (Petition,
`
`pp. 43-45)(Ex. 1008, 2:52-65, 11:35-63, 37:22-30, 37:37-50)(Ex. 1002, ¶103). For
`
`example, Ehlers teaches:
`
`“The system also can accept and process inputs such as local
`weather forecast data, energy supply company pricing schemes,
`and user-entered parameters such as desired comfort levels and
`energy price cutoff points. Such sensed conditions and inputs are
`22
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`
`
`
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`processed by a processor of the system, with software operating on
`the processor, to maintain environmental conditions and energy
`consumption level and cost within the user-defined levels.”
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