`Trials@uspto.gov
`571-272-7822
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`Paper # 34
`Entered: February 24, 2022
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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,
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`v.
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`ECOFACTOR, INC.,
`Patent Owner.
`_______________
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`IPR2021-00054
`Patent 10,534,382 B2
`_______________
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`Record of Oral Hearing
`Held: February 8, 2022
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`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
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`IPR2021-00054
`Patent 10,534,382 B2
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`A P P E A R A N C E S
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`On Behalf of the Petitioner:
`
`
`Matthew A. Smith
`SMITH BALUCH LLP
`1100 Alma Street, Suite 109
`Merlo Park, California 94025
`(202) 669-6207
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`On Behalf of the Patent Owner:
`
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`Jonathan Link
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard
`Los Angeles, California 90025
`(310) 826-7474
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`Also Appearing:
`Sylvia Gerukos, USPTO Staff
`United States Patent & Trademark Office
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`The above-entitled matter came on for hearing on Tuesday,
`February 8, 2022, commencing at 1:59 p.m. EST, by video/by telephone.
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`IPR2021-00054
`Patent 10,534,382 B2
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` P R O C E E D I N G S
` JUDGE HOWARD: Good morning. This is an
`oral hearing in Case Number 2021-00054 between
`Petitioner, Google LLC, and Patent Owner, EcoFactor
`Inc., concerning U.S. Patent Number 10543382.
` I am Judge Howard, and I am joined by
`Judges Derrick and Abraham. Just a few
`administrative matters before we begin. Per our
`hearing order, each side will have 60 minutes to
`present its case. Petitioner, who bears the burden
`on unpatentability, will proceed first. You may
`reserve up to half your time for rebuttal.
` Once Petitioner has finished its initial
`presentation, Patent Owner will proceed with its
`argument. If Petitioner reserves time for rebuttal,
`then Patent Owner can also reserve time for
`sur-rebuttal. Rebuttal will be limited to addressing
`issues raised by Patent Owner in its initial
`presentation, and the sur-rebuttal will be limited to
`issues raised by Petitioner in its rebuttal.
` It is important that each and every
`participant here have fair opportunity to both
`listen and speak. If at any time you are having any
`type of audio-visual issues, either where you cannot
`hear us or cannot speak, please just contact us. We
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`will pause the hearing until any issues are
`resolved tomake sure that you have your full amount of time.
` We also request that if you are not
`speaking that you please keep yourself on mute.
`This will make things easier for everybody to hear,
`including for the court reporter. In addition, to
`allow everybody to follow your presentation and also
`for clarity of the record, when you're referring to
`your slides please identify the slide number that
`you're using.
` As for any objections if there are any, we
`ask that you do not interrupt each other during the
`proceedings. If you do have an objection, save them
`for your argument time, and we can address them at
`that point. At this time, we'd like counsel to
`introduce yourselves and who you have with you
`starting with the Petitioner.
` MR. SMITH: Thank you, Your Honor. This
`is Matthew Smith for the petitioner, and I believe
`on the line are my associates Elizabeth Laughton and
`a representative of Google.
` JUDGE HOWARD: Okay. And who is there for
`Patent Owner?
` MR. LINK: Good afternoon, Your Honor.
`Johnathan Link on behalf of patent owner, EcoFactor,
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`and I will be the only one on my side.
` JUDGE HOWARD: Okay. And, Mr. Smith, how
`much time would you like to reserve for your rebuttal?
` MR. SMITH: 20 minutes, Your Honor. Thank you.
` JUDGE HOWARD: Okay. I will be keeping
`track of time manually as we go along. I will do my
`best to give each party a five-minute warning before
`you hit your rebuttal or sur-rebuttal time. I will
`also try and give you a five-minute warning before
`the end of your time altogether.
` Mr. Smith, you can begin whenever you're ready.
` MR. SMITH: Thank you, Your Honor.
`Matthew Smith for the petitioner Google, may it
`please the board. I'd like to start on slide 3 of
`the petitioner's demonstratives which is the
`overview. I think there's sort of three main
`argument groups that have been identified by the
`parties. The first, of course, is the claim
`construction of one or more processors which I think
`underpins a lot of the issues in this case, and then
`a couple of issues that are independent or at least
`somewhat independent on the one or more processors
`construction and that is claim elements 1E and 1M
`which deals, you know, essentially with outside
`temperature being received and stored; and claim 12
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`Patent 10,534,382 B2
`which deals with the first processor located
`remotely from the memory of performing the
`determination of occupancy and whether it is in fact
`located remotely from the memory.
` Let me begin with claim construction and
`turning to slide 5 of the petitioner's
`demonstrative. this is Ecofactor's patent owner
`response to the argument on one or more processors
`claim limitation fits in one paragraph and the
`patent owner response, and the essence of it is
`shown on slide 5 and that is Ecofactor simply
`maintains that the claim limitations which recite
`one or more processors. There's seven of them, 1D,
`E, F, G, I, K, and L to the extent there is a
`processor that is a member of that group of one or
`more processors, it must perform each of those
`functional limitations. So if you have two
`processors then they all need to perform those
`functional limitations, if you have one processor
`they all need to perform those functional
`limitations. Whereas, Google's position is that
`certainly all those functional limitations need to
`be performed by the group of one or more processors,
`but how those processors within the group interact
`to or cooperate to perform those functions is not
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`Patent 10,534,382 B2
`specified by the claim owner.
` Seeing to slide 6, Ecofactor's argument is
`almost entirely based on the concept of entity and
`basis where they say, okay, each of these seven
`limitations recites the same term one or more
`processors referring back to the initial instance of
`it, and I would agree with that that it does
`interfere with the same group of one or more
`processors but I don't think that actually answers
`the question in the sense that if one has a group of
`one or more processors it doesn't specify how the
`processors within the group interacted to perform
`those limitations. It just says the same group has
`to be performed in the limitations, and it's not in
`accord with what we know to be the traditional
`interpretation of language like one or more of X
`were doing a function.
` That language has traditionally been
`interpreted in a way where there can be more than
`one of X whatever that is, in this case the
`processor, and more than one cooperating to carry
`out the functional limitations recited in the claim
`even if no single processor carries out every single
`limitation in the claims.
` We cited two federal circuit cases for
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`this, Unwired and Convolve. I'm sure you're
`probably already familiar with them, but the basic
`gist of both of those cases were -- was that the
`Court of Appeals was presented with either claim
`language or construction of claim language that
`specified a thing. In one case it was a server and
`in one case it was a processor, and there was an
`infringement question as to whether more than one
`server and more than processor could interact to
`perform the functional limitations of the claims,
`and in each case the court's analysis turned on
`whether the singular language could be rewritten to
`the phrase one or more processors. So in one case
`it was can a server be rewritten as one or more
`computers, or can a processor be rewritten as one or
`more processors. And as soon as the court reached
`the conclusion in certain instances that a singular
`noun could be rewritten as the phrase one or more of
`that noun the ultimate conclusion for infringement
`purposes followed, which was that whatever those
`were computers or processors, they could cooperate
`together to perform the functional limitations of
`the claims, and I don't think that Ecofactor has
`cited any case law contrary to that.
` JUDGE HOWARD: But isn't that the facts of
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`this case sort of the opposite being Unwired and
`Convolve the issue was where the claim said a)
`you're reaching what the interpretation should be
`and as -- was interpreting as being one, but you
`could also have others which is just typical claim
`construction with comprising doesn't -- having one
`doesn't preclude you from having others, and here
`it's sort of the exact opposite situation, we're
`trying to figure out what one or more is.
` So how does that, those cases, really give
`us guidance as to what to do here?
` MR. SMITH: Yeah, I would respectfully
`disagree, Your Honor, that it's the opposite
`situation. I agree that it is not squarely on
`point. I think this case represents a stronger
`version of Convolve and Unwired, because in Convolve
`and Unwired the Federal Circuit was trying to
`determine whether or not the singular could be
`rewritten as one or more processors, but as soon as
`it was it was obvious to everyone concerned
`including the court and probably the parties, that
`whatever it was that was represented -- or proceeded
`by the phrase one or more could cooperate to perform
`several different functional limitations, and that
`was a given in the court's analysis.
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`Patent 10,534,382 B2
` Here, we already have claim language that
`specifies one or more indicating that the natural
`interpretation of these claims would follow from,
`you know, the Federal Circuit with a conclusion that
`the Federal Circuit appeared to find obvious in
`those decisions which is that the one or more
`processors can cooperate to perform the functional
`limitations of the claims.
` I would also say that there's no real
`reason to write or more processors given Ecofactor's
`interpretation here, and that's because Ecofactor's
`interpretation, as exemplified by the testimony of
`its expert which we quote on our slide number 8, is
`that as soon as you have one processor that performs
`all limitations of the claims it doesn't matter
`whether there are more processors or not. So these
`claims under Ecofactor's interpretation should have
`been written as a single processor that does the
`first function, the same single processor doing the
`second function. The only thing that the or more
`processors could add here is the ability for
`multiple processors to work in cooperation to
`perform the functional limitations of the claims,
`and I think that's also in accord with the dependent
`claims that we see in claim 12 and claim 13, and
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`Patent 10,534,382 B2
`we've called these out on slide 9 of the
`petitioner's demonstratives -- and, I'm sorry; slide
`9 is a prelude, claims 12 and 13 are called out on
`slide 11 of the petitioner's demonstratives.
` Claim 12 requiring the determination of
`whether the building is occupied or unoccupied to be
`performed by the first processor and claim 13
`requiring the controlling of the heating or cooling
`of the building to be performed by the first
`processor. The first processor in claim 1,
`according to claim limitation 1L, is expressly one
`of the one or more processors and since Ecofactor's
`position is that each of the one or more processors
`has to perform all of the functional limitations of
`the claim, the first processor by that logic also
`has to perform all of the limitations of the claim,
`but the dependent claims 12 and 13, as you can see
`on slide 11, are specifically reciting that the
`first processor perform parts of claim limitation
`1K. And so if by Ecofactor's logic the first
`processor already has to perform limitation 1K,
`there's no point in reciting dependent claims that
`specifically require the first processor to perform
`the parts of limitation 1K, and that means that if
`one were to adopt Ecofactor's construction would
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`simply result in claims 12 and 13 not meaning very
`much, if anything at all.
` Would also point Ecofactor's response in
`the sur reply to this which we've quoted on slide 12
`of the petitioner's demonstratives, and I found it a
`little bit confusing, but there are a couple of
`things that one can pick out right away.
` First, Ecofactor says limitation 1L
`recites "the one or more processors comprises a
`first processor while limitation 1K recites a
`specific function for the first processor." I think
`that's just factually incorrect if you look at
`limitation 1A, it does not refer to the first
`processor, it simply refers to the group of one or
`more processors, so unless Ecofactor here is saying,
`well, the first processor is just one of the one or
`more processors and everyone has to do everything,
`that's consistent, but otherwise saying that the
`limitation 1K specifically refers to the first
`processor is just incorrect.
` And then Ecofactor goes on to say the one
`first processor would perform all the functions
`recited in claim 1 while another processor would
`perform all the functions recited in claim 1 except
`those required to be performed by that first
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`processor.
` I think this directly contradicts what
`Ecofactor said in the patent owner response on page
`13 where they said all of the one or more processors
`have to perform each of the functional limitations
`including 1K and 1L, and this is also, I think, just
`a representation of a construction that allows
`processors within the group of one or more
`processors to do fewer than all of the functional
`limitations, and that feeds back into Ecofactor's
`antecedent basis argument which was the only basis
`they put forward to justify the construction.
` If it really is the fact that this phrase
`on or more processors is being recited over and over
`again and referring back to the original recitation
`which justifies Ecofactor's construction, that
`should apply to both of the processors they're
`talking about in Ecofactor's sur reply so there is
`no reason that "another processor would perform all
`the functions in claim 1 except those required to be
`performed by that first processor." You can't let
`one processor not perform some of the functions
`under Ecofactor's reasoning of pursuant to the
`antecedent basis argument, and so it just
`contradicts the patent owner response and the sur
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`reply.
` The last thing I'll say on this issue is
`that the specification also doesn't support
`Ecofactor's proposed construction and that's
`essentially because there's no single processor in
`the 382 patent specification that performs all of
`the limitations and could be the first processor
`well -- as well which has to be located remotely
`from the memory. I think if we were to look for
`such a processor and, you know, just generally
`speaking, there are processors in the thermostat,
`processors in the server, and processors in user
`devices which now gets to the prior art, but if we
`were to look, the processor that seems to perform
`the most functions and would be the starting point
`for the analysis is server 106 -- or the processor
`in server 106 I should say, and server 106, you
`know, the first problem with that sort of analysis
`is Ecofactor also says that server 106 is the
`processor or the computer that contains the memory
`of the claim. And the memory of the claims, which
`is recited in limitation 1B, has to be located
`remotely from the first processor of the claims per
`limitation 1L, and that means that the server cannot
`both be the thing that houses the memory and the
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`first processor because it would have to be located
`remotely from itself.
` In a sur reply, and this is shown on our
`slide 14, Ecofactor says okay, but there are more
`than one server 106 shown in the 3A2 patent, and you
`can see that in figure 2, and, therefore, it could
`be that one server 106 is accessing the memory of a
`different server 106 which is also located remotely
`from the first server 106 and so in that sense, the
`server 106 could be both a first processor and
`located remotely from a memory, but the problem with
`that argument is that the 3A2 patent doesn't say
`that. There's no indication that those two servers
`106 shown in figure 2 are located remotely from each
`other, they could just be two servers next to each
`other in the server rack, nor any indication that
`one server accesses the memory of another server.
`So that embodiment that Ecofactor was pointing to
`there just doesn't exist in the 3A2 patent.
` And lastly on this issue, I think it's
`fairly clear that the server 106 does not carry out
`limitation 1I of claim 1 and limitation 1I requires
`the server to send users specific data through the
`Internet wherein users' specific information about
`the building and HVAC system is generated based at
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`least in part on the user specific data.
` On our slides 15 and 16, we have shown
`Ecofactor's response to that from the sur reply
`where Ecofactor points to two portions of the 3A2
`patent.
` Now, I don't think those two portions of
`the 382 patent namely column 7 lines 38 to 54 and
`column 6 lines 38 to 58, demonstrate that the server
`106 is sending user specific data through the
`Internet. There's certainly a mention of some user
`specific data, but no mention of the server sending
`it, nor is there any indication what the user
`specific information about the building and the HVAC
`system is that is generated based on the user
`specific data. It's just sort of a general
`recitation of user specific data that may or may not
`be sent.
` So in sum, on the one or more processors
`limitation, I think in just the natural reading of
`the phrase one or more processors allows different
`processors to cooperate to perform the functions
`without specifying that each one has to perform all
`of the functions in parallel. And if one interprets
`the phrase one or more processors in the manner in
`which Ecofactor is advancing here, it would be, I
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`think, contrary to the literal language of the
`claims that are particularly dependent claims 12 and
`13 and not consistent with the specification.
` Let me proceed to the second group of
`arguments which is related to claim limitations 1E
`and 1M which we've excerpted on page 18, and this
`relates to the one or more processors receiving
`second data from network connection, the Internet,
`and the memory configured to store historical values
`of first and second data, and this -- as an overview
`in the Geadelmann prior reference and this is on our
`slide 19 where we show figures 1 and 2, they're, of
`course, in Geadelmann just as in the 382 patent
`there are these sort of three different kinds of
`processors. There's processors in the thermostat,
`processors in the user device 34 and then processors
`in the building control appliance or a processor in
`the building control appliance 12.
` Building control appliance 12 is shown in
`figure 2 on the right and contains a web server 38
`and as shown on line 20 that web server 38 is the
`application running on the BCA that serves up all of
`the content that you see in the figures of the
`Geadelmann prior reference, so figures 3A to 10D
`specifically are web pages and be served up by the
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`web server 38.
` So when we're looking at the figures of
`Geadelmann, it is important to remember that this is
`information coming from BCA. Among that set of
`information is the web page shown on our slide 21,
`which is figure 7A of the Geadelmann prior art
`reference. And as you can see in figure 7A the BCA
`and its web server were able to plot historical
`values of first and second data or inside and
`outside temperature here over the course of several
`days which indicates both of the BCA has this
`information, received it, and has stored it in order
`to be able to generate this web page at all. So
`just at a high level it's pretty clear that the BCA
`has this information.
` Moving onto slide 22 and as argued in the
`petition, and, you know, expounded upon in the
`reply, every single web page 3A to 10D with only a
`couple of exceptions shows an outside temperature of
`76 degrees. Figure 10A is an example of that. You
`can see that sort of in the middle toward the
`right-hand side outside temperature is 76 degrees by
`the numeral 68 which is also an indication of the
`source at the bottom local weather and outside
`temperature coming from a network connection, and in
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`slide 23 --
` JUDGE HOWARD: Is there anything that
`indicates that that temperature is coming from the
`web server -- sorry. Is there anything that
`indicates that the temperature is coming from the
`web server itself as opposed to, as patent owner
`argues, some sort of link or pointer that's allowing
`the user device to actually get the data?
` MR. SMITH: Yes, Your Honor. So the
`Geadelmann referenced specifically, and I can refer
`you back to the passage on slide 19, this is column
`9. We quoted lines 11 to 16, and it goes onto line
`27 but showing that all of these web pages are
`served by the BCA and the natural inference from
`that is that the content in the web pages is served
`from the BCA, but I think even if one, except as you
`said, Ecofactor's argument, it's sort of summarized
`in slide 24 in Dr. Palmer's testimony where he says,
`well, instead of the content coming from the BCA,
`the BCA could just serve up a script or some
`instructions that tell the user device how to go out
`over the Internet and collect the information that
`it needs including the outside temperature. But
`even if one were to accept Ecofactor's sort of
`alternate explanation on that and still meet the
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`IPR2021-00054
`Patent 10,534,382 B2
`language of the claims. I don't understand how that
`advances the cause of patentability here because the
`user device is laid out in the petition, and I'm
`referring particularly to element 1C on pages 24 to
`25 of the petition, is expressly one of the one or
`more processors that can carry out these functions.
` So I suppose if Ecofactor's purposed
`construction is correct then they would have an
`objection to that, but assuming one or more
`processor allows more than one more processor to
`cooperate in performing these functions, the user
`device is one of the one or more processors, and
`it's clearly receiving this information over the
`Internet because it's displaying a web -- it has
`that (indiscernible) in it and whether that
`information comes from the BCA or it comes from a
`site like Weather.com that the user device simply
`goes out and gets itself, it's still coming over the
`Internet and still literally meets the terms of
`claim limitation 1M.
` I -- you know, the claims are, in that
`particular sense, broad enough that once you have
`this temperature in the system it's really difficult
`to come up with a plausible alternate proposal of
`where the temperature comes from where it isn't
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`IPR2021-00054
`Patent 10,534,382 B2
`received by one of the one or more processors from
`the Internet, right? It's either coming from the
`BCA over the Internet to the user processor --
` THE COURT REPORTER: Sorry --
` MR. SMITH: -- or maybe it's coming from one --
` THE REPORTER: -- sir, you cut out for a
`just a second, and I lost some words.
` MR. SMITH: Okay. No problem.
` THE REPORTER: If you could -- if you
`remember the last sentence you said, and I can just
`restate it again, that would be perfect.
` MR. SMITH: It's fine, yeah. So there
`really is -- it's very difficult to come up with a
`plausible alternate scenario where this temperature
`which is being displayed on the websites served by
`the BCA is not being received by one of the one or
`more processors over the Internet. Geadelmann
`itself indicates that the source is an outside
`weather site, the patent owner's argument suggests
`that that is being received by the processor in the
`user device, but that's one of the one or more
`processors, but even if someone comes up with some
`other scenario, it would still have to travel over
`the Internet to get to the user device and be
`displayed, and so you have this one or more
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`IPR2021-00054
`Patent 10,534,382 B2
`processors in the form of the user device receiving
`the temperature information over the Internet
`regardless of what the source is almost. It's very
`difficult to try to figure out what could be
`happening other than the BCA is getting that
`information over the Internet and sending it to the
`user device in a way that would avoid the proper
`construction of the claims.
` And, lastly, let me turn to the issue of
`claim 12, and I think I need to start by objecting
`to what seemed to be some new arguments shown up in
`the patent owner's demonstrative. And I'm referring
`specifically to the argument that the petitioned or
`the prior art doesn't clearly show which processor
`makes the determination of occupancy. Okay. Now,
`this is, I think, most clearly presented by the
`patent owner on slides 42 and 43 of the patent
`owner's demonstratives so Ecofactor's demonstratives
`where the patent owner seems to be arguing as far as
`I can determine for the first time, that there's no
`teaching of where the occupancy determination
`occurs. So this could be relevant specifically to
`the language in claim 1 which requires the one or
`more processors to perform a determination of
`occupancy in limitation 1K, I believe, and could
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`IPR2021-00054
`Patent 10,534,382 B2
`also be relevant to the limitation of claim 12 where
`claim 12 specifically requires the first processor
`to perform the determination of occupancy.
` I think Ecofactor here is arguing about
`claim 12 and that's because in the petition, there
`are multiple ways in which the Geadelmann reference
`teaches limitation 1K. One is a determination by
`the server based on a schedule and Ecofactor just
`hasn't challenged them. So I think the arguments
`Ecofactor is making newly, I believe, in slides 42
`and 43, are directed probably to claim 12. And you
`can see on slide 43 Ecofactor quotes the obvious in
`this case -- or part of the obvious in this case for
`slide 12 from the petition on page 64.
` So I'm on the very last page of
`Ecofactor's demonstratives and they show in the
`lower right corner an excerpt from the petition at
`page 64. And here -- I mean, this is interesting,
`Ecofactor is sort of making a process argument
`against this just saying the obvious in this
`argument is conclusory. The obvious in this
`argument is it's obvious to use the processor of the
`thermostat to perform the determination of occupancy
`because thermostats contain the occupancy sensors
`because the thermostats per units needed to operate
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`IPR2021-00054
`Patent 10,534,382 B2
`their associated HVAC systems based on the occupier
`and occupying state. This isn't particularly mind
`bending stuff. I mean, the occupancy sensor used to
`be close to the thermostat so it can detect whether
`occupancies where -- occupants are there, you have
`some data from the occupancy sensor. You need some
`logic somewhere to make a determination of occupancy
`based on that data it seems to be, you know, sort of
`right in front of the person with ordinary skills to
`use the processor in the thermostat to make that
`determination.
` And Ecofactor's not responding on the
`merit, I think, here. It doesn't say, well, it's
`really not obvious to do that, but even if it did
`this is the first time it's happened, and they have
`the opportunity to do that in the patent owner
`response and in the sur reply.
` The argument that Ecofactor did make in
`the patent owner response is that the thermostat not
`located remotely from the BCA or the memory ends,
`and the reason that's relevant is because claim 12
`requires the first processor to make the
`determination of occupancy. The petition says it's
`obvious to do that determination at the thermostat
`and the thermostat, if it's the first processor, has
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`IPR2021-00054
`Patent 10,534,382 B2
`to be located remotely from the memory and Ecofactor
`says, well, Geadelmann explains that the thermostats
`are in the same building. It can be in a very big
`building like a shopping -- where you have the
`thermostat saying it's a store, and a manager's
`office through a utility room has BCA and maybe
`located at the other end of the complex. Certainly
`located at the other end of the complex from some
`thermostat, and, you know, therefore this is not
`located remotely, but here Ecofactor I think has
`just ignored the argument in the petition at pages
`48 to 49 that it's obvious to operate in 2008 the
`BCA, which is effectively a server, at the greater
`distance communicating over the Internet. That, as
`the petition explained, would allow a sort of
`central administration of the BCA so you don't have
`to send out field techs if it fails or something
`like that. You can have a company that, you know,
`specializes in providing those services just update
`the software or maintain it if it's crashing or
`something like that without having to send somebody
`to the site and seems very obvious in 2008, and
`Ecofactor has just sort of consistently ignored that
`argument.
` So how ever you come down on the located
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`IPR2021-00054
`Patent 10,5
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