Paper: 35
`Trials@uspto.gov
`Date: April 18, 2022
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC and ECOBEE, INC.,
`Petitioners,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-000541
`Patent 10,534,382 B2
`
`
`
`
`
`
`
`
`
`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`1 Ecobee, Inc., has been joined as a party to this proceeding. IPR2021-
`01052, Paper 7.
`
`
`
`

`

`IPR2021-00054
`Patent 10,534,382 B2
`
`
`INTRODUCTION
`A. Background and Summary
`Google LLC (“Petitioner”) filed a Petition seeking to institute an inter
`partes review of claims 1–20 of U.S. Patent No. 10,534,382 B2 (Ex. 1001,
`“the ’382 patent”). 2 Paper 2 (“Petition,” “Pet.”). EcoFactor, Inc. (“Patent
`Owner”) filed a Patent Owner’s Preliminary Response. Paper 6. We
`instituted an inter partes review of claims 1–20 of the ’382 patent on all
`grounds of unpatentability alleged in the Petition. Paper 9 (“Institution
`Decision” or “Inst. Dec.”).
`After institution of trial, Patent Owner filed a Response (Paper 19,
`“PO Resp.”), Petitioner filed a Reply (Paper 24, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 26, “PO Sur-reply”).
`An oral hearing was held on February 8, 2022, and the record contains
`a transcript of this hearing. Paper 34 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
`follow, we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–20 of the ’382 patent are unpatentable.
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 6.
`Joined party ecobee, Inc. identifies ecobee, Inc. and ecobee Ltd. as the
`real parties in interest. Ecobee, Inc. v. EcoFactor, Inc., IPR2021-01052,
`
`
`2 ecobee, Inc., was joined to this proceeding upon instituting inter partes
`review in IPR2021-01052 and granting ecobee’s motion for joinder. See
`Paper 20.
`
`2
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`IPR2021-00054
`Patent 10,534,382 B2
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`Paper 1, 6 (Petition); IPR2021-015052, Paper 7, 5–7 (Grant of Motion for
`Joinder).
`Patent Owner identifies itself as the real party in interest. Paper 3, 1
`(Patent Owner’s Mandatory Notices).
`C. Related Matters
`The parties identify various district court proceedings, including
`EcoFactor, Inc. v. Google LLC, 6:20-cv-00075 (W.D. Tex. Jan. 31, 2020).
`Pet. 6; Paper 3, 2. On February 10, 2022, a jury determined that Petitioner
`did not prove by clear and convincing evidence that claims 2 and 12 were
`invalid. Verdict Form, EcoFactor, Inc. v. Google LLC, 6:20-cv-00075, 3
`(W.D. Tex. Feb. 10, 2021), ECF 215. 3
`D. The ’382 Patent
`The ’382 patent is entitled “System and Method for Using a Wireless
`Device as a Sensor for an Energy Management System.” Ex. 1001, code
`(54). The ’382 patent is directed to “the use of thermostatic HVAC
`[(heating, ventilation, and cooling)] and other energy management controls
`that are connected to a computer network” and, more specifically “to the use
`of user interactions with an interface such as a personal computer or an
`Internet-enabled television as signal related to occupancy to inform an
`energy management system.” Id. at 1:16–23.
`The ’382 patent describes the advantages of programmable
`thermostats for HVAC systems. Ex. 1001, 1:24–50. The ’382 patent further
`
`
`3 As discussed infra, Petitioner relies on Geadelmann and Ehlers in this
`proceeding. Petitioner relied on different prior art references to challenge
`the claims of the ’382 patent in the district court proceeding. See Jury
`Instructions, EcoFactor, Inc. v. Google LLC, 6:20-cv-00075, 25 (W.D. Tex.
`Feb. 10, 2021), ECF 208 (relying on “Rhee”).
`
`3
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`IPR2021-00054
`Patent 10,534,382 B2
`
`describes how hotels use occupancy detectors to control HVAC systems. Id.
`at 2:35–48. Such systems detect occupancy by either requiring the guest to
`use a keycard to control the system or motion detectors. Id. at 2:48–59.
`According to the ’382 patent, “[a]dding occupancy detection
`capability to residential HVAC systems could . . . add considerable value in
`the form of energy savings without significant tradeoff in terms of comfort.”
`Ex. 1001, 2:60–63. “It would thus be desirable to provide a system that
`could detect occupancy without requiring the installation of additional
`hardware; that could accurately detect occupancy regardless of which room
`in the house is occupied, and could optimize energy consumption based
`upon dynamic and individually configurable heuristics.” Id. at 3:15–20.
`E. Illustrative Claim
`Claims 1 and 17 are independent claims and claim 1, reproduced
`below with bracketed materials added in the Petition, is illustrative of the
`subject matter of the challenged claims.
`1. [1a] A system for controlling an HVAC system at a
`user’s building, the system comprising:
`[1b] a memory; and
`[1c] one or more processors with circuitry and code
`designed to execute instructions;
`[1d] the one or more processors with circuitry and code
`designed to execute instructions to receive a first data from at
`least one sensor, wherein the first data from the at least one
`sensor includes a measurement of at least one characteristic of
`the building;
`[1e] the one or more processors with circuitry and code
`designed to execute instructions to receive a second data from a
`network connection, wherein the second data from the network
`connection is collected from a source external to the building,
`
`4
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`IPR2021-00054
`Patent 10,534,382 B2
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`
`wherein the second data from the network connection is received
`via the Internet;
`[1f] the one or more processors with circuitry and code
`designed to execute instructions to receive a first temperature
`setpoint for the building corresponding to a desired temperature
`setting when the building is occupied, and a second temperature
`setpoint for the building corresponding to a desired temperature
`setting when the building is unoccupied;
`[1g] the one or more processors with circuitry and code
`designed to execute instructions to receive commands through
`the Internet by way of a remote interface on a mobile, wireless
`device running software application code; [1h] wherein the
`interface is configured to allow the user to adjust temperature
`setpoints for the HVAC system;
`[1i] the one or more processors with circuitry and code
`designed to execute instructions to send user-specific data
`through the Internet, wherein user-specific information about the
`building and HVAC system is generated based at least in part on
`the user-specific data, [1j] wherein the user-specific information
`is configured to be presented on a user interface on a mobile,
`wireless device running software application code via the
`Internet;
`[1k] the one or more processors with circuitry and code
`designed to execute instructions to determine whether the
`building
`is occupied or unoccupied, and based on that
`determination, to control the HVAC system to provide heating
`or cooling to the building at an operational temperature;
`[1l] wherein the one or more processors comprises a first
`processor with circuitry and code designed
`to execute
`instructions, which is located remotely from the memory and is
`not electrically connected to the memory;
`[1m] the first processor with circuitry and code
`designed to execute instructions to communicate with the
`memory;
`wherein the memory is configured to store historical
`values of the first data and second data.
`
`5
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`IPR2021-00054
`Patent 10,534,382 B2
`
`Ex. 1001, 8:12–67 (bracketed designations added in Petition).
`F. Prior Art and Asserted Ground
`Petitioner asserts that claims 1–20 would have been unpatentable
`based on the following ground:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Geadelmann, 5 Ehlers6,7
`1–20
`1034
`Additionally, Petitioner relies on the testimony of Mr. Shah (Ex. 1002
`(Declaration of Rajendra Shah)). Patent Owner relies on the testimony of
`Dr. Palmer (Ex. 2013 (Declaration of John A. Palmer, Ph.D.)).
`ANALYSIS
`A. Legal Standard for Unpatentability
`In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
`Supreme Court set out a framework for assessing obviousness under
`35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
`ordinary skill in the pertinent art,” (2) the “scope and content of the prior
`
`4 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Petitioner
`argues that “because no application leading to the ’382 patent—and certainly
`not any application filed prior to March 16, 2013—provides written
`description support for claims 19 and 20,” the ’382 patent is subject to the
`revisions of the AIA. Pet. 9–10. Patent Owner does not address whether the
`’382 patent is subject to the AIA or pre-AIA version of sections 102 and
`103. See PO Resp. Because neither party contends that the outcome of this
`proceeding depends on which version of the patent code we use, and it is not
`apparent that it does, we need not address that issue.
`5 US 8,196,185 B2, issued June 5, 2012, filed August 27, 2007 (Ex. 1004).
`6 US 2004/0117330 A1, published June 17, 2004 (Ex. 1010).
`7 The parties refer to Ehlers as Ehlers ’330. See, e.g., Pet. 7. Because there
`is only one Ehlers patent in this proceeding, we have removed the reference
`to “’330” from all quotes.
`
`6
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`IPR2021-00054
`Patent 10,534,382 B2
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`art,” (3) the “differences between the prior art and the claims at issue,” and
`(4) if in evidence, “secondary considerations” of non-obviousness such as
`“commercial success, long felt but unsolved needs, failure of others, etc.”
`Id. at 17–18. 8 “While the sequence of these questions might be reordered in
`any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407
`(2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly
`emphasized that “it is error to reach a conclusion of obviousness until all
`those factors are considered,” WBIP, LLC v. Kohler, 829 F.3d 1317, 1328
`(Fed. Cir. 2016).
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham, 383 U.S. at 17. “The importance of
`resolving the level of ordinary skill in the art lies in the necessity of
`maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v.
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person [of] ordinary
`skill in the art” is a hypothetical construct, from whose vantage point
`obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir.
`1998). “This legal construct is akin to the ‘reasonable person’ used as a
`reference in negligence determinations” and “also presumes that all prior art
`references in the field of the invention are available to this hypothetical
`skilled artisan.” Id. (citing In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir.
`1993)).
`
`
`8 Neither party presented objective evidence of non-obviousness. See Pet.;
`PO Resp. Accordingly, we do not consider that factor in the following
`analysis.
`
`7
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`IPR2021-00054
`Patent 10,534,382 B2
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`
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) educational level of active workers in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co. of Cal., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every
`case, and one or more of these or other factors may predominate in a
`particular case.” Id.
`Relying on Mr. Shah’s testimony, Petitioner argues that a person
`having ordinary skill in the art would have “a (1) Bachelor’s degree in
`engineering, computer science, or a comparable field of study, and (2) at
`least five years of (i) professional experience in building energy
`management and controls, or (ii) relevant industry experience. Additional
`relevant industry experience may compensate for lack of formal education or
`vice versa.” Pet. 21 (citing Ex. 1002 ¶¶ 27–28).
`Patent Owner argues, relying on the testimony of Dr. Palmer, that a
`person having ordinary skill in the art “would be someone having a (1)
`Bachelor’s degree in engineering, computer science, or a comparable field of
`study, and (2) at least two years of (i) professional experience in temperature
`control systems, embedded systems, or building energy management and
`controls, or (ii) relevant industry experience.” PO Resp. 9 (citing Ex. 2013
`¶ 27). Patent Owner further argues that a person having ordinary skill in the
`art “would not require a full five years of professional experience.” Id.
`(citing Ex. 2013 ¶ 27).
`
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`IPR2021-00054
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`
`We are persuaded that Petitioner’s formulation, supported by the
`testimony of Mr. Shah, except for the qualifier “at least,” is correct. 9
`On the one hand, Dr. Palmer’s formulation is conclusory and does not
`provide any reasoning or underlying supporting facts. See Ex. 2013 ¶ 27; 37
`C.F.R. § 42.65(a) (2020) (“Expert testimony that does not disclose the
`underlying facts or data on which the opinion is based is entitled to little or
`no weight.”). On the other hand, Mr. Shah bases his opinion on the field of
`the invention of the challenged ’382 patent and its claims. Ex. 1002 ¶ 27.
`Because Mr. Shah’s testimony is anchored by an identified factual predicate,
`we give it some weight. 10
`C. Claim Construction
`We apply the same claim construction standard used in the federal
`courts, in other words, the claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), which is
`articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`
`9 We eliminate the qualifier because it expands the range indefinitely
`without an upper bound, and thus precludes a meaningful indication of the
`level of ordinary skill in the art.
`10 In the Institution Decision, we suggested that “[i]f Patent Owner proposes
`a different level of ordinary skill in the art during in its Response” that the
`parties “address whether there are any material differences between the two
`proposals and what impact, if any, the different levels have on the
`obviousness analysis.” Inst. Dec. 17 n.6. The parties declined to do so. See
`PO Resp.; Pet. Reply. Accordingly, the parties forfeited any argument that a
`different level of ordinary skill would have changed the outcome. See Paper
`10, 8 (Scheduling Order) (“Patent Owner is cautioned that any arguments
`not raised in the response may be deemed waived.”); cf. In re NuVasive,
`Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that the patent owner
`waived an issue presented in its preliminary response that it failed to renew
`in its response during trial).
`
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`IPR2021-00054
`Patent 10,534,382 B2
`
`(en banc). See 37 C.F.R. § 42.100(b). Under the Phillips standard, the
`“words of a claim ‘are generally given their ordinary and customary
`meaning,’” which is “the meaning that the term would have to a person of
`ordinary skill in the art in question at the time of the invention, i.e., as of the
`effective filing date of the patent application.” Phillips, 415 F.3d at
`1312–13.
`Neither Petitioner nor Patent Owner proposes any express
`constructions for any claim limitations. See Pet. 9 (“In this case, the claim
`terms as applied to the prior art do not require construction.”); PO Resp. 9
`(agreeing that no construction is necessary). Despite the statements that no
`constructions are necessary, the parties dispute the ordinary and customary
`meaning of “located remotely” and “one or more processors with circuitry
`and code designed to execute instructions.” PO Resp. 9–13; Pet. Reply 7–
`20; PO Sur-reply 1–7. Accordingly, we expressly construe those limitations
`below. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
`1351, 1361–62 (Fed. Cir. 2008) (holding that the court must construe
`limitations when parties disagree on the ordinary meaning). However, we
`need not construe any other claim limitations. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(noting that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`1. “Located Remotely”
`Claim 1 recites, inter alia, “a first processor . . . which is located
`remotely from the memory.” Ex. 1001, 8:58–62 (emphasis added).
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`10
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`IPR2021-00054
`Patent 10,534,382 B2
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`
`a) Patent Owner’s Argument
`Patent Owner argues that, “[i]n the context of the specification and
`claim 1 of the ‘382 patent, a [person having ordinary skill in the art] would
`have understood ‘remotely located’ to mean not in the same building.” PO
`Resp. 10 (citing Ex. 2013 ¶ 32). Specifically, Patent Owner argues that
`“[t]he ‘382 patent describes the thermostat 108 and computer 104 connected
`to a server 106 via the Internet 102.” Id. (citing Ex. 1001, Fig. 2, 4:30–37);
`see also PO Sur-reply 7 (citing same). Patent Owner also argues that
`“[c]onnections between components in different buildings require the
`Internet, while connections between components in the same building use
`local networks, such as WiFi or the like.” PO Sur-reply 7.
`Patent Owner further argues that the ’382 patent seeks to improve
`upon “prior art systems, such as those found in hotels, where individually
`controlled HVAC systems operate in each room.” PO Resp. 9–11 (citing
`Ex. 1001, 2:35–59; Ex. 2013 ¶ 34).
`Patent Owner further argues that a person having ordinary skill in the
`art “would understand that the Petitioner’s definition of ‘remote’ is only
`partially applicable for the ‘382 patent, and would not in fact cover ‘a
`computer or other device located in another [room].’” PO Sur-reply 7
`(quoting Ex. 1029, 11 441 (Dictionary of Information Technology)).
`b) Petitioner’s Arguments
`Petitioner argues there is no support for Patent Owner’s proposed
`construction. Specifically, Petitioner argues that the ’382 patent only uses
`the term “located remotely” in independent claims 1 and 17 and only refers
`to a “remote server” once, which, based on context, refers to server 106.
`
`11 Patent Owner incorrectly cites Exhibit 2029.
`
`11
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`Patent 10,534,382 B2
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`Pet. Reply 17. According to Petitioner, however, “the ’382 patent does
`not . . . connect the concept of ‘remoteness’ to [a] location in a different
`building.” Id. Patent Owner argues that Figure 2, which is all Dr. Palmer
`points to, “does not show a building or the walls of a building.” Id. at 17–18
`(citing Ex. 1025, 21:14–22:14 (Dr. Palmer’s Cross-examination)). Petitioner
`also argues that the hotel example in the ’382 patent suggests “that the
`relevant feature of ‘remoteness’ is whether communication over a network
`link is called for.” Pet. Reply 18–19 (citing Ex. 1001, Fig. 2, 7:63–67).
`Petitioner further argues that its understanding of “remote” is
`consistent with the definition of “remote” in the Dictionary of Information
`Technology. Pet. Reply 19 (citing Ex. 1029, 441).
`c) Analysis
`We start our analysis with the words of the claims. Claim 1 recites
`“wherein the one or more processors comprises a first processor with
`circuitry and code designed to execute instructions, which is located
`remotely from the memory and is not electrically connected to the memory.”
`Ex. 1001, 8:58–62 (emphasis added). Because claim 1 is otherwise silent
`about the location of the memory and the first processor, the language of the
`claims is of little assistance in determining its meaning.
`We similarly find the language of the specification to be of little
`value. Although Figure 2 shows servers 106a and 106b connected to
`computer 104 via a network 102 (Ex. 1001, Fig. 2), as Patent Owner’s expert
`conceded, nothing in the figure specifically indicates a building or “where
`the boundaries or exterior walls of the building might be” (Ex. 1025, 22:8–
`14). And although the specification states that network 102 is preferably the
`internet, it further states that “it is also intended to encompass variations
`
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`IPR2021-00054
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`which may be made in the future, including changes [or] additions to
`existing standard protocols.” Ex. 1001, 4:30–37. Thus, the network
`connection is not limited to the internet. Nor does anything about the hotel
`example relate to remoteness. See id. at 2:35–3:14.
`The language of other claim limitations makes it clear that “located
`remotely” does not require communication by the internet. When the
`applicant wanted to indicate that elements needed to communicate by the
`internet, those internet connections were explicitly claimed:
`the one or more processors with circuitry and code
`designed to execute instructions to receive a second data from a
`network connection, wherein the second data from the network
`connection is collected from a source external to the building,
`wherein the second data from the network connection is received
`via the Internet;
`. . .
`
`
`
`the one or more processors with circuitry and code
`designed to execute instructions to receive commands through
`the Internet by way of a remote interface on a mobile, wireless
`device running software application code; wherein the interface
`is configured to allow the user to adjust temperature setpoints for
`the HVAC system; [and]
`the one or more processors with circuitry and code
`designed to execute instructions to send user-specific data
`through the Internet, wherein user-specific information about the
`building and HVAC system is generated based at least in part on
`the user-specific data, wherein the user-specific information is
`configured to be presented on a user interface on a mobile,
`wireless device running software application code via the
`Internet.
`Ex. 1001, 8:36–51 (emphases added). Similarly, the applicant knew how to
`claim something being external to a building: “wherein the second data
`from the network connection is collected from a source external to the
`
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`building.” Id. at 8:22–28. Thus, when the applicant wanted to claim
`something being outside (or external) to a building or using the internet, the
`applicant knew how to claim it. The fact that the applicant chose different
`language—“located remotely”—strongly implies that an outside or external
`location or the internet is not required. See Scripps Research Inst. v.
`Illumina, Inc., 782 F. App’x 1018, 1027 (Fed. Cir. 2019) (non-precedential)
`(“[T]he patentee’s choice of the word ‘connote’ rather than the word ‘is’
`implies the patentee intended those two words to carry different
`meanings.”); Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir.
`2005) (“When different words or phrases are used in separate claims, a
`different in meaning is presumed.”); Tandon Corp. v. U.S. Intern. Trade
`Com’n, 831 F.2d 1023 (Fed. Cir. 1987) (“There is presumed to be a
`difference in meaning and scope when different words or phrases are used in
`separate claims.”).
`“[T]he Board ‘may look to extrinsic evidence so long as the extrinsic
`evidence does not contradict the meaning otherwise apparent from the
`intrinsic record.’” Collabo Innovations, Inv. v. Sony Corp., 778 F. App’x
`954, 958 (Fed. Cir. 2019) (quoting Helmsderfer v. Bobrick Washroom
`Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008)); see also Praxair, Inc. v.
`ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions,
`including Phillips, 415 F.3d at 1322, do not preclude the use of general
`dictionary definitions as an aid to claim construction.”). We therefore turn
`to the Dictionary of Information Technology, which defines “remote” as:
`“Not in the immediate vicinity, as a computer or other device located in
`another place (room, building, or city) and accessible through some type of
`cable or communications link.” Ex. 1029, 441. Under this definition,
`
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`devices located in different rooms, but within the same building, can be
`considered remote. See id. That definition is neither inconsistent with nor
`contradicted by the specification and the words of the claims.
`Although Patent Owner argues we should ignore a portion of that
`definition, it offers no evidence in support of that argument. See PO Sur-
`reply 7. Therefore, we decline to do so.
`Accordingly, “remotely located” as used in the ’382 patent does not
`require the first processor and the memory to be located in different
`buildings. Based on the arguments of the parties, no further construction is
`necessary.
`2. “One or More Processors . . .”
`Independent claim 1 recites “[1c] one or more processors with
`circuitry and code designed to execute instructions” and further recites
`various limitations—limitations [1d], [1e], [1f], [1g], [1i], [1k], and [1l]—
`that describe what instructions the one or more processors perform.
`Ex. 1001, 8:12–67. 12, 13
`a) Patent Owner’s Opening Arguments
`Patent Owner argues that because limitation [1c] provides the
`antecedent basis for limitations [1d], [1e], [1f], [1g], [1i], [1k], and [1l], “a
`[person having ordinary skill in the art] would understand that all of the ‘one
`or more processors’ must be able to perform the functions recited in claim
`elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l].” PO Resp. 13; see also
`
`
`12 Claim 17 recites similar limitations. See Ex. 1001, 9:56–10:50.
`13 Petitioner refers to the limitations collectively as the “Processor
`Limitations.” Pet. Reply 7. We refer to them as the “one or more processors
`limitations.”
`
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`PO Sur-reply 2–3. According to Patent Owner, that means that “there needs
`to be at least a single processor that meets all of the limitations of claim
`elements [1d], [1e], [1f], [1g], [1i], [1k], and [1l].” PO Resp. 13 (citing
`Ex. 2013 ¶ 39). 14
`b) Petitioner’s Reply Arguments
`Petitioner argues that we should not limit the “one or more processors
`limitations” to a single processor which performs all of the limitations. Pet.
`Reply 8; see also id. at 8–17.
`Petitioner argues that the ALJ in In re Certain Smart Thermostats,
`Smart HVAC Systems, and Components Thereof, Inv. No. 337-TA-1185
`(ITC) (the “ITC Investigation”) concluded that the claim limitation directed
`to “one or more processors” to perform certain functions should have its
`plain and ordinary meaning. Pet. Reply 8–9 (citing Ex. 1024, 59, 61).
`Petitioner also argues that in the district court proceeding involving the ’382
`patent, no party requested a claim construction relevant to the “one or more
`processors limitations.” Id. at 9.
`Petitioner further argues that Patent Owner’s argument regarding the
`antecedent basis of the “one or more processors limitations” does not
`support Patent Owner’s claim construction. Pet. Reply 9–10. According to
`
`
`14 Patent Owner further argues that the “one or more processors with
`circuitry and code designed to execute instructions” limitations “is not
`descriptive of the ‘one or more processors’ but rather indicates how the
`recited actions are performed.” PO Resp. 12–13; see also id. at 11–13
`(discussing argument). However, because Patent Owner does not contend
`that the construction would change the outcome of this proceeding (see
`Ex. 1025 (Cross-examination of Dr. Palmer), 22:24–25:9; Pet. Reply 19–20;
`PO Resp.); PO Resp. 22–23, our construction need not address that aspect.
`See Nidec, 868 F.3d at 1017.
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`Petitioner, “[t]he existence of antecedent basis for a group of ‘one or more
`processors’ says nothing about the workings of individual processors within
`the group—much as reciting an ‘engine’ to perform various functions does
`not imply how components within the engine work together to perform those
`functions.” Id. at 10.
`Petitioner further argues that two analogous Federal Circuit cases,
`Convolve and Unwired Planet, weigh against Patent Owner’s proposed
`construction. Pet. Reply 10–12 (citing Unwired Planet L.L.C. v. Google,
`Inc., 660 F. App’x 974, 979–80 (Fed. Cir. 2016); Convolve, Inc. v. Compaq
`Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016)). Specifically,
`Petitioner argues that the Federal Circuit in Unwired Planet affirmed a
`construction of the term “server node” as one or more computers and that
`“the claim [does not] rule out multiple computers or programs working in
`concert to operate as the claimed server node.” Id. at 10–11 (quoting
`Unwired Planet, 660 F. App’x at 981) (emphasis omitted). Petitioner also
`argues that the Federal Circuit in Convolve recognized that “absent a clear
`intent in the claims themselves, the specification, or the prosecution history”
`the term “processor” is interpreted as “one or more processors.” Id. at 11–12
`(quoting Convolve, 812 F.3d at 1321).
`Petitioner further argues that Patent Owner’s “interpretation would
`render portions of the claims superfluous, and make the independent claims
`inconsistent with the dependent claims.” Pet. Reply 12–14. Specifically,
`Petitioner argues that Patent Owner’s “interpretation would thus re-write the
`claim language to mean ‘one processor’, rendering the reference to ‘or more
`processors’ superfluous.” Id. at 13. Petitioner also argues that because (1)
`claim 1 recites that “the one or more processors comprises a first processor”
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`and (2) dependent claims 12 and 13 specifically require the first processor to
`perform certain functions in limitation [1k], “[t]his implies (by claim
`differentiation), that the independent claim is broad enough to cover
`arrangements where the ‘first processor’ does not perform those functions.”
`Id. at 13–14 (citing Phillips, 415 F.3d at 1315).
`Finally, Petitioner argues that the specification does not support Patent
`Owner’s construction. Pet. Reply 14–17. Specifically, Petitioner argues that
`Patent Owner’s focus on server 106 is inapposite because, according to the
`specification, server 106 does not perform at least claim element [1i]. Id. at
`15. Additionally, Patent Owner states that server 106 contains the memory,
`but, as Petitioner notes, “[a] computer that contains both the processor and
`the memory cannot have a “first processor” that is “located remotely” from
`the memory.” Id.
`c) Patent Owner’s Sur-reply Arguments
`Patent Owner argues that the construction of the ALJ in the ITC
`Investigation is irrelevant. PO Sur-reply 1–2. According to Patent Owner,
`Petitioner conceded that the construction involved two patents “not formally
`related to the ’382 patent.” Id. at 2 (quoting Pet. Reply 8 n.1).
`Patent Owner further argues that the two Federal Circuit cases, i.e.,
`Unwired and Convolve, are not applicable to this case. First, Patent Owner
`argues that “[t]he court’s analysis [in Unwired] was based on the language
`of its construction, and not on the actual claim language.” PO Sur-reply 3
`(citing Unwired, 660 F. App’x at 979–80). According to Patent Owner,
`“[t]his is different than here, where the actual claim language is at issue.”
`Id.
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`Second, Patent Owner argues that the Federal Circuit held in
`Convolve that “for three claims, all of the functions were required to be
`performed by a single processor.” PO Sur-reply 3–4.
`Patent Owner further argues that its claim construction would not
`render portions of the claim superfluous. PO