UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Patent No. 8,412,488
`
`DECLARATION OF RAJENDRA SHAH
`
`1
`
`GOOGLE 1002
`
`

`

`TABLE OF CONTENTS
`ENGAGEMENT AND COMPENSATION ................................................... 4 
`I. 
`QUALIFICATIONS ........................................................................................ 4 
`II. 
`SUMMARY OF OPINIONS ........................................................................... 6 
`III. 
`IV.  MATERIALS REVIEWED ............................................................................ 7 
`V.  UNDERSTANDING OF THE RELEVANT LAW ........................................ 7 
`A.  Anticipation ........................................................................................... 8 
`B. 
`Obviousness ........................................................................................... 8 
`C.  Written Description ............................................................................. 11 
`D. 
`Indefiniteness ....................................................................................... 12 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 12 
`VII.  RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS ....... 13 
`VIII.  TECHNICAL INTRODUCTION ................................................................. 14 
`A. 
`The ’488 Patent Disclosure ................................................................. 14 
`IX.  CLAIM INTERPRETATION ....................................................................... 18 
`X.  GROUND 1: Claims 1-20 are obvious over Ehlers ’330 in view of Van
`ostrand ................................................................................................. 20 
`Effective Prior Art Dates of Ehlers ’330 and Van Ostrand ................. 20 
`Relationship to Examination of the Application Leading to the ’488
`Patent. .................................................................................................. 20 
`C.  Overview of the Ground ...................................................................... 23 
`1. 
`Overview of Ehlers ’330 ........................................................... 23 
`2. 
`Overview of Van Ostrand ......................................................... 30 
`Rationale (Motivation) Supporting Obviousness ................................ 35 
`
`A. 
`B. 
`
`D. 
`
`
`
`2
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`

`

`E. 
`Reasonable Expectation of Success .................................................... 36 
`F. 
`Analogous Art ..................................................................................... 37 
`G. 
`Claim Mapping .................................................................................... 38 
`XI.  CLAIMS 2 AND 10 ARE OBVIOUS AS IN GROUND 1, IN FURTHER
`VIEW OF ROSEN .............................................................................. 83 
`A.  Overview of My Obviousness Opinion ............................................... 84 
`B. 
`Rationale (Motivation) Supporting Obviousness ................................ 84 
`C. 
`Reasonable Expectation of Success .................................................... 84 
`D.  Analogous Art ..................................................................................... 85 
`E. 
`Claim Mapping .................................................................................... 86 
`XII.  OATH
` ................................................................................................... 88 
`
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`
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`
`
`3
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`

`

`
`
`I.
`
`ENGAGEMENT AND COMPENSATION
` My name is Rajendra Shah. (Ex. 1003). I have been retained by Google
`1.
`
`LLC for the purpose of providing my opinion with respect to the unpatentability of
`
`U.S. Pat. No. 8,412,488 (“the ’488 patent”). I am being compensated for my time
`
`in preparing this declaration at my standard hourly rate, and my compensation is not
`
`dependent upon my opinions or the outcome of the proceedings. My curriculum
`
`vitae is attached as Ex. 1003.
`
`II. QUALIFICATIONS
`
`I am currently the Principal at AnalyzRS LLC, a company providing,
`2.
`
`among other things, consulting services for the HVAC industry. I have been
`
`employed in this position since 2016.
`
`
`3.
`
`I consider myself to have significant knowledge and experience in
`
`Heating, Ventilating and Air Conditioning (“HVAC”) systems, with particular
`
`knowledge relating to associated technology integration, control algorithms,
`
`modeling and simulation, and data analytics. I have significant knowledge and
`
`experience relating to the optimization of the operational efficiency of HVAC
`
`systems. My current Curriculum Vitae is attached as Exhibit 1003, and summarizes
`
`my qualifications.
`
`
`4.
`
`Prior to my work for AnalyzRS LLC, I was employed at United
`
`
`
`4
`
`

`

`Technologies Carrier Corporation in Indianapolis, Indiana from 1991 to 2016.
`
`During my career at Carrier, my work focused on the design and development of
`
`HVAC systems and associated technologies. From 1991 to 2000, I was employed
`
`as a Senior Program Manager for Advanced Systems at Carrier. While in that
`
`position, I had responsibility for the launch of new product categories, including two
`
`stage air conditioners and heat pumps, variable speed fan coils, digital thermostats,
`
`multi zone controls, expandable filters, and fresh air ventilators.
`
`
`
`From 2000 to 2008 I was employed as an Engineering Manager for
`
`Systems Development. In that role I designed and managed the design of premium
`
`air conditioners, heat pumps, indoor fan coils, advanced thermostats, multi-zone
`
`controls and indoor air quality products. In particular, my team developed Carrier’s
`
`Infinity® HVAC system, which was originally launched in 2004, and which went
`
`on to be a highly successful product.
`
`
`
`From 2008 to 2016 I held the title of Engineering Fellow, Systems and
`
`Controls. I was one of the first eight Fellows selected to what was Carrier’s top
`
`engineering position out of thousands of engineers worldwide. While in this
`
`position, I worked to develop Carrier’s Infinity® Touch Control system with internet
`
`connectivity, which was first launched in 2012. This product received the Dealer
`
`Design Gold award from industry magazine ACHR News in 2013 and has continued
`
`to be a top-selling product for Carrier.
`
`
`
`5
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`
`
`Beginning in 1984, I was employed as Project Manager for
`
`Electronically Commutated (Brushless DC) Motors at General Electric (GE)
`
`Motors. While employed in this role, I developed and launched GE’s new line of
`
`brushless DC variable speed motors targeted at residential heating and air
`
`conditioning applications.
`
`
`
`Beginning in 1977, I was employed by United Technologies Electronic
`
`Controls as a Project Engineer for Control Design. In this position, I designed high
`
`volume electronic controls, including electronic circuit design and microprocessor
`
`software, for appliances and heating and air conditioning systems.
`
`
`
`I am a named inventor on at least 50 patents, with applications still
`
`pending. My patents primarily relate to the field of HVAC technology.
`
`
`
`I hold a Bachelor’s degree in Electrical Engineering from the Indian
`
`Institute of Technology, Bombay, India, which I obtained in 1975. I also obtained a
`
`Master’s degree in Electrical Engineering, Ohio State University, Columbus, Ohio
`
`in 1977 and a Master’s degree in Business Administration from the University of St
`
`Francis, Fort Wayne, Indiana in 1983.
`
`III. SUMMARY OF OPINIONS
`
`In my opinion, claims 1, 3-9, 11-16 are obvious over the Ehlers ’330
`
`publication in view of the Van Ostrand publication. It is further my opinion that
`
`Claims 2 and 10 are obvious over the Ehlers ’330 publication in view of the Van
`
`
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`6
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`Ostrand publication, and further in view of the Rosen patent.
`
`IV. MATERIALS REVIEWED
`
`In forming my opinions, I have relied on my knowledge of the field and
`
`my experience, and have specifically reviewed the following exhibits:
`
`Exhibit No.
`1001
`1004
`1005
`1006
`1007
`1008
`
` 1009
`
`1010
`
`1011
`
`
`
`Description
`U.S. Patent No. 8,412,488(“the ’488 patent”).
`U.S. Patent Publication 2004/0117330 A1 (“Ehlers ’330”).
`U.S. Patent Publication 2005/0159846 A1 (“Van Ostrand”).
`U.S. Pat. No. 6,789,739 (“Rosen”).
`File History of U.S. Pat. Appl. No. 13/409,697.
`Email from the Court Providing Preliminary Constructions in
`EcoFactor, Inc. v. Google LLC, Case No. 6:20-cv-00075-ADA,
`EcoFactor, Inc. v. EcoBee, Inc., Case No. 6:20-cv-00078-ADA,
`and EcoFactor, Inc. v. Vivint, Inc., Case No. 6:20-cv-00080-
`ADA (W.D. Tex., sent Dec. 9, 2020).
`Transcript of Markman Hearing in EcoFactor, Inc. v. Google
`LLC, Case No. 6:20-cv-00075-ADA, EcoFactor, Inc. v. EcoBee,
`Inc., Case No. 6:20-cv-00078-ADA, and EcoFactor, Inc. v.
`Vivint, Inc., Case No. 6:20-cv-00080-ADA (W.D. Tex. 2020).
`Scheduling Order in EcoFactor, Inc. v. Google LLC, Case No.
`6:20-cv-00075-ADA (W.D. Tex. 2020).
`U.S. Pat. App. Pub. 2003/0179714 A1 (“Gilgenbach”).
`
`V. UNDERSTANDING OF THE RELEVANT LAW
`
`I have the following understanding of the applicable law:
`
`
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`7
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`A. Anticipation
`
`I understand that a claim in an issued patent can be unpatentable if it is
`
`anticipated. I understand that “anticipation” means that there is a single prior art
`
`reference that discloses every element of the claim, arranged in the way required by
`
`the claim.
`
`
`
`I understand that an anticipating prior art reference must disclose each
`
`of the claim elements expressly or inherently. I understand that “inherent”
`
`disclosure means that the claim element, although not expressly described by the
`
`prior art reference, must necessarily be present based on the disclosure. I understand
`
`that a mere probability that the element is present is not sufficient to qualify as
`
`“inherent disclosure.”
`
`B. Obviousness
`
`I understand that a claim in an issued patent can be unpatentable if it is
`
`obvious. Unlike anticipation, obviousness does not require that every element of the
`
`claim be in a single prior art reference. Instead, it is possible for claim elements to
`
`be described in different prior art references, so long as there is motivation or
`
`sufficient reasoning to combine the references, and a reasonable expectation of
`
`success in achieving what is set forth in the claims.
`
`
`
`I understand that a claim is unpatentable for obviousness if the
`
`differences between the claimed subject matter and the prior art are such that the
`
`
`
`8
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`subject matter as a whole would have been obvious at the time the alleged invention
`
`was made to a person having ordinary skill in the art to which said subject matter
`
`pertains.
`
`
`
`I understand, therefore, that when evaluating obviousness, one must
`
`consider obviousness of the claim “as a whole”. This consideration must be from
`
`the perspective of the person of ordinary skill in the relevant art, and that such
`
`perspective must be considered as of the “time the invention was made.”
`
` The level of ordinary skill in the art is discussed in ¶¶26-27 below.
`
` The relevant time frame for obviousness, the “time the invention was
`
`made”, is discussed in ¶¶28-29, below.
`
`
`
`I understand that in considering the obviousness of a claim, one must
`
`consider four things. These include the scope and content of the prior art, the level
`
`of ordinary skill in the art at the relevant time, the differences between the prior art
`
`and the claim, and any “secondary considerations.”
`
`
`
`I understand that “secondary considerations” include real-world
`
`evidence that can tend to make a conclusion of obviousness either more probable or
`
`less probable. For example, the commercial success of a product embodying a claim
`
`of the patent could provide evidence tending to show that the claimed invention is
`
`not obvious. In order to understand the strength of the evidence, one would want to
`
`know whether the commercial success is traceable to a certain aspect of the claim
`
`
`
`9
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`not disclosed in a single prior art reference (i.e., whether there is a causal “nexus” to
`
`the claim language). One would also want to know how the market reacted to
`
`disclosure of the invention, and whether commercial success might be traceable to
`
`things other than innovation, for example the market power of the seller, an
`
`advertising campaign, or the existence of a complex system having many features
`
`beyond the claims that might be desirable to a consumer. One would also want to
`
`know how the product compared to similar products not embodying the claim. I
`
`understand that commercial success evidence should be reasonably commensurate
`
`with the scope of the claim, but that it is not necessary for a commercial product to
`
`embody the full scope of the claim.
`
` Other kinds of secondary considerations are possible. For example,
`
`evidence that the relevant field had a long-established, unsolved problem or need
`
`that was later provided by the claimed invention could be indicative of non-
`
`obviousness. Evidence that others had tried, but failed to make an aspect of the
`
`claim might indicate that the art lacked the requisite skill to do so. Evidence of
`
`copying of the patent owner’s products before the patent was published might also
`
`indicate that its approach to solving a particular problem was not obvious. Evidence
`
`that the art recognized the value of products embodying a claim, for example, by
`
`praising the named inventors’ work, might tend to show that the claim was non-
`
`obvious.
`
`
`
`10
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`

`

`
`
`I further understand that prior art references can be combined where
`
`there is an express or implied rationale to do so. Such a rationale might include an
`
`expected advantage to be obtained, or might be implied under the circumstances.
`
`For example, a claim is likely obvious if design needs or market pressures existing
`
`in the prior art make it natural for one or more known components to be combined,
`
`where each component continues to function in the expected manner when combined
`
`(i.e., when there are no unpredictable results). A claim is also likely unpatentable
`
`where it is the combination of a known base system with a known technique that can
`
`be applied to the base system without an unpredictable result. In these cases, the
`
`combination must be within the capabilities of a person of ordinary skill in the art.
`
`
`
`I understand that when considering obviousness, one must not refer to
`
`teachings in the specification of the patent itself. One can, however, refer to portions
`
`of the specification admitted to being prior art, including the “BACKGROUND”
`
`section. Furthermore, a lack of discussion in the patent specification concerning
`
`how to implement a disclosed technique can support an inference that the ability to
`
`implement the technique was within the ordinary skill in the prior art.
`
`C. Written Description
`
`I understand that a patent claim needs to be described in the application
`
`for patent that was filed with the United States Patent and Trademark Office. I
`
`understand to “describe” a claim, the patent application needs to provide sufficient
`
`
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`11
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`written description to reasonably convey to those skilled in the art that the inventor
`
`had ‘possession’ of the claimed subject matter as of the filing date. This involves an
`
`objective inquiry into the four corners of the specification from the perspective of a
`
`person of ordinary skill in the art. Based on that inquiry, the specification must
`
`describe an invention understandable to that skilled artisan and show that the
`
`inventor actually invented the invention claimed. I further understand that while a
`
`patent specification can support a claim even if it does not need to use exactly the
`
`same words as the claim, this does not extend into the realm of “obviousness”. That
`
`is, a patent specification that merely renders a claim obvious does not provide written
`
`description support for that claim.
`
`D. Indefiniteness
`
`I understand that to be valid, a claim must particularly point out and
`
`distinctly claim the subject matter which the applicant regards as the invention. I
`
`understand that a patent claim is indefinite when the claim interpreted in light of the
`
`specification and the prosecution history fails to inform those skilled in the art about
`
`the scope of the invention with reasonable certainty.
`
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`In my opinion, the relevant art was that of heating, ventilation, and air
`
`conditioning (“HVAC”) control and building automation. I note that the ’488 patent
`
`teaches that “[t]his invention relates to the use of thermostatic HVAC controls that
`
`
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`12
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`are connected to a computer network.” (Ex. 1001, 1:21-23). Furthermore, the claims
`
`of the ’488 patent are directed to “[a] system for monitoring the operational status
`
`of an HVAC system” (claim 1) and “[a] method for monitoring the operation of an
`
`HVAC system” (claim 9).
`
`
`
`In my opinion, the level of ordinary skill encompassed a person with at
`
`least 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. In my opinion,
`
`additional relevant industry experience may compensate for lack of formal education
`
`or vice versa.
`
`
`
`I believe I would meet this definition, and would have met this
`
`definition in the relevant timeframe. My testimony is offered from this perspective,
`
`even if it does not specifically refer to the perspective of a person of ordinary skill
`
`in the art in every instance.
`
`VII. RELEVANT TIMEFRAME FOR DETERMINING OBVIOUSNESS
`
`I understand that obviousness must be evaluated “at the time of the
`
`invention.” From the cover pages of the ’488 patent, I can see that the first
`
`provisional application for a patent was filed in the United States on August 3, 2007.
`
` For the purpose of this declaration, I will analyze obviousness in the
`
`time frame immediately prior to this date, although my testimony is usually
`
`
`
`13
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`applicable to a longer period of time before August 3, 2007. My testimony is
`
`directed to this timeframe, even if I do not always use a past tense.
`
`VIII. TECHNICAL INTRODUCTION
`A. The ’488 Patent Disclosure
`
` The ’488 patent at-issue (with an earliest-possible benefit date of
`
`2007) relates generally to climate control systems, such as heating and cooling
`
`systems (“HVAC systems”). (Ex. 1001, Abstract, 1:29-56, 3:25-4:17). Such HVAC
`
`systems have, for decades, been controlled by thermostats. (Ex. 1001, 1:29-56). As
`
`the ’488 patent recognizes, thermostats are typically wall-mounted units that have
`
`an internal temperature sensor, and which allow a user to set a target temperature.
`
`(Ex. 1001, 1:29-56). The target temperature, or “setpoint,” is compared against the
`
`actual temperature, and the HVAC system is switched on or off in an attempt to
`
`maintain the setpoint temperature. (Ex. 1001, 1:29-56, 6:49-59).
`
`
`
`It was well known at the relevant time that HVAC systems can be a
`
`significant source of energy consumption (i.e., load). The load of an HVAC system
`
`can be the single highest source of demand for an electrical utility. (Ex. 1001, 1:57-
`
`64). As the ’488 patent explains:
`
`“in so-called ‘summer-peaking’ locations, on the hottest days of the
`year, peak loads may be twice as high as average loads. During such
`peak load periods (generally in the late afternoon), air conditioning
`can be the largest single element of demand.”
`
`
`
`14
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`

`

` (Ex. 1001, 1:57-64)(see also Ex. 1001, 2:32-34).
`
` To reduce the demand during such “peak load periods,” the ’488 patent
`
`explains that “many utilities have begun to enter into agreements with certain
`
`customers.” (Ex. 1001, 1:57-64, 2:15-23). Under such agreements—sometimes also
`
`referred to as “peak demand reduction (PDR) contracts”—“customers agree to
`
`reduce usage during a few critical periods in exchange for incentives from the
`
`utility.” (Ex. 1001, 1:57-64, 2:15-23). The incentives, according to the ’488 patent,
`
`“may take the form of a fixed contract payment in exchange for the right to cut the
`
`amount of power supplied at specified times, or a reduced overall price per kilowatt-
`
`hour, or a rebate each time power is reduced, or some other method [of
`
`incentivizing].” (Ex. 1001, 2:15-26).
`
` Because customers can receive financial incentives for reducing their
`
`electricity consumption by turning off their air conditioning, there is a risk of fraud.
`
`(Ex. 1001, 2:57-59). Specifically, in certain systems, “[i]f a consumer tampers with
`
`the system so that the A/C can be used anyway, the utility will not be able to detect
`
`it, absent additional verification systems.” (Ex. 1001, 2:57-59). Because of this risk,
`
`according to the ’488 patent, “[w]hen utilities contract for PDR, they expect
`
`verification of compliance.” (Ex. 1001, 2:53-54)(Emphasis added). The ’488 patent
`
`recognizes the potential for improvements in verifying residential consumer
`
`compliance with a peak demand reduction request. (Ex. 1001, 3:13-21).
`
`
`
`15
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`

`

` To accomplish verification that an air conditioner has actually been
`
`turned off in response to a demand reduction request, the ’488 patent describes a
`
`system that predicts how the indoor temperature inside a structure changes in
`
`response to outside temperature. (Ex. 1001, 3:25-4:13). This prediction can then be
`
`used to “infer” whether the HVAC system is “on” or “off” at a particular time. The
`
`’488 patent explains:
`
`“[F]or example, if the air conditioning is shut off on a hot afternoon,
`given a known outside temperature, it will be possible to predict how
`quickly the temperature in the house should rise. If the actual
`temperature change is significantly different from the predicted rate
`of change, or does not change at all, it is possible to infer that the air
`conditioning has not, in fact been shut off.”
`
` (Ex. 1001, 4:7-13)(see also Ex. 1001, 7:48-8:33).
`
`
`
`I note however that the concept of verification of demand reduction
`
`requests is not reflected in the claims of the ’488 patent. Instead, only the technique
`
`of inferring whether an HVAC system is “ON” or “OFF” based on the rate of change
`
`of temperature—regardless of context—is recited. Independent claim 1 of the ’488
`
`patent reads as follows:
`
`“1. A system for monitoring the operational status of an HVAC
`system comprising:
`
`at least one HVAC control system associated with a first structure
`that receives temperature measurements from at least a first
`16
`
`
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`

`

`structure conditioned by at least one HVAC system;
`
`one or more processors that receive measurements of outside
`temperatures from at least one source other than said HVAC
`system,
`
`wherein said one or more processors compares the inside
`temperature of said first structure and the outside temperature
`over time to derive an estimation for the rate of change in inside
`temperature of said first structure in response to outside
`temperature, and
`
`wherein said one or more processors compare an inside temperature
`recorded inside the first structure with said estimation for the
`rate of change in inside temperature of said first structure to
`determine whether the first HVAC system is on or off.
`
` Thus, claim 1 is directed overall to a system for monitoring the
`
`operational status of an HVAC system. I observe that the system must, among other
`
`things, be able to receive measurements of “inside temperature” and “outside
`
`temperature.” It must also be able to “compare[] the inside temperature of [a] first
`
`structure and the outside temperature over time to derive an estimation for the rate
`
`of change in inside temperature of said first structure in response to outside
`
`temperature.” Furthermore, the system must be able to “compare an inside
`
`temperature recorded inside the first structure with [the above-described] estimation
`
`for the rate of change in inside temperature of said first structure to determine
`
`
`
`17
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`

`whether the first HVAC system is on or off.”
`
`IX. CLAIM INTERPRETATION
`
`I understand that it is sometimes necessary or useful for claim terms in
`
`a patent to be further explained or interpreted (“construed”). I understand that in the
`
`present proceeding, the Board applies the same claim construction standard used by
`
`District Courts in actions involving the validity or infringement of a patent. This
`
`involves construing claim terms in accordance with the ordinary and customary
`
`meaning of such terms, as understood by one of ordinary skill in the art, in light of
`
`the claim language, the technical disclosure of the patent (i.e. the specification) and
`
`the prosecution history or “file history” of correspondence with the United States
`
`Patent and Trademark Office (USPTO) pertaining to the patent.
`
`
`
`I further understand that the file history of a parent patent application
`
`can be relevant to the claim construction of claim terms appearing in patents that
`
`have descended from that parent application.
`
`
`
`I understand that certain “extrinsic” evidence, such as dictionaries or
`
`other prior art, can sometimes be useful to understand the meaning of a claim term.
`
`However I understand that where there is a conflict between any such extrinsic
`
`evidence and the patent and patent’s prosecution history, the latter control.
`
`
`
`I am informed that in several co-pending litigations various parties have
`
`taken claim construction positions. (Exs. 1008 - 1009).
`
`
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`18
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`

`
`
`I am informed that Defendants before the Western District of Texas
`
`(including Petitioner Google LLC) maintain that independent claims 1 and 9 of the
`
`’488 patent are indefinite. (Ex. 1008, pp. 8-10). In my opinion, the prior art teaches
`
`all elements of the claims as-written, and also demonstrates a structure similar to
`
`that shown in Fig. 2 of the ’488 patent (namely, an HVAC system and thermostat
`
`connected by a network to one or more servers).
`
` Further terms and constructions that I understand have been adopted by
`
`the district court in the Western district of Texas, or agreed to by the parties, are as
`
`follows:
`
`Term
`“measurement[s]”
`(all claims)
`“outside temperature”
`(’488, claims 1, 2, 9,
`10)
`“rate of change in
`inside temperature”
`/
`“rate of change in
`temperature inside the
`[said] structure”
`(’488, claims 1, 9 / 8,
`16)
`
`“compare(s)”
`(’488, claims 1, 9)
`
`
`
`Court’s Construction
`Plain and ordinary meaning.
`
`Plain and ordinary meaning.
`
`“the difference between inside temperature
`measurements divided by the span of time between
`the measurements”
`
`Agreed Construction
`
`“analyze to determine one or more
`
`19
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`

`

`similarities or differences between”
`
`
`X. GROUND 1: CLAIMS 1-20 ARE OBVIOUS OVER EHLERS ’330 IN
`VIEW OF VAN OSTRAND
`
`In my opinion, claims 1, 3-9, and 11-16 are obvious over U.S. patent
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`application publication US 2004/0117330 A1 (“Ehlers ’330”)(Ex. 1004) in view of
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`U.S. patent application publication US 2005/0159846 A1 (“Van Ostrand”)(Ex.
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`1005).
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`A. Effective Prior Art Dates of Ehlers ’330 and Van Ostrand
` The ’488 patent has an earliest-possible effective filing date of August
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`3, 2007.
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`I can see from the face of Ehlers ’330 that it is a U.S. patent application
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`that was filed on July 28, 2003 and published on June 17, 2004. I understand that
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`Ehlers ’330 is thus prior art.
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`I can see from the front page of Van Ostrand that it is a U.S. patent
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`application that was filed on April 14, 2004 and published on July 21, 2005. I
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`understand that Van Ostrand thus prior art.
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`I note that I am one of the named inventors on the Van Ostrand patent
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`application publication.
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`B. Relationship to Examination of the Application Leading to the ’488
`Patent.
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`I note that Van Ostrand was not of record during the prosecution of any
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`application leading to the ’488 patent.
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`I am informed that Ehlers ’330 itself was not of record, but a publication
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`in the same family (U.S. Pat. App. Pub. 2007/0043477)(“Ehlers ’477”) was made of
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`record in an Information Disclosure Statement (“IDS”), as reference 89 of 126
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`references. (Ex. 1007, pp. 143-147). I understand that the Examiner did not apply
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`Ehlers ’477, and neither the Examiner nor the Applicants discussed Ehlers ’477 on
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`the record.
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`I observe that the Examiner did reject some of the claims over a
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`different publication: U.S. Pat. App. Pub. 2005/0288822 to Rayburn. (Ex. 1007, pp.
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`110-111). In response, the Applicants argued:
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`“Rayburn fails to teach one or more processors that ‘comparing with
`said one or more processors, an inside temperature recorded inside
`the first structure with said estimation for the rate of change in inside
`temperature of said first structure to determine whether the first
`HVAC system is on or off.’
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`While Rayburn uses temperature differences in paragraphs 18 and 19
`to determine when to turn on an HVAC system, Rayburn does not
`appear to describe using temperature differences to determine
`whether the first HVAC system is on or off. In light of this significant
`difference, Applicant respectfully requests allowance of the claims.”
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`(Ex. 1007, p. 051)(Emphasis original).
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` The Examiner allowed the claims for the same reason put forth by the
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`Applicants, finding:
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`“With regards to Claims 1 and 9, the prior art of record or any
`combination of prior art searched fails to teach the limitations of
`comparing with said one or more processors, an inside temperature
`recorded inside the first structure with said estimation for the rate of
`change in inside temperature of said first structure to determine
`whether the first HVAC system is on or off.”
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`(Ex. 1007, p. 017).
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`In my opinion, the question before the Examiner differed significantly
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`from the one presented by my opinions as set forth in this declaration. As I set forth
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`in detail below, the Van Ostrand prior art expressly teaches comparing an inside
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`temperature recorded inside the first structure with said estimation for the rate of
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`change in inside temperature of said first structure to determine whether the first
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`HVAC system is on or off. (Ex. 1005, ¶0031)(see also Ex. 1005, Fig. 4, Fig. 5,
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`¶¶0005, 0007, 0029-0033). See generally below, Claim Mapping, claim element
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`[1e].
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` Because Van Ostrand was not of record before the Examiner, the
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`Examiner never had the opportunity to consider its teachings. In particular, in my
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`opinion, the Examiner would not have been able to consider whether it would have
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`been obvious to combine Van Ostrand with other prior art (like Ehlers ’330).
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`C. Overview of the Ground
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`In my opinion, Ehlers ’330 in view of Van Ostrand renders the
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`challenged claims obvious. In brief, Ehlers ’330 provides a system with an HVAC
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`system, thermostat, temperature sensors, and a processor. (Ex. 1004, Fig. 1B,
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`¶¶0072-0079, 0099) The processor implements demand reduction requests and
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`verifies those requests. (Ex. 1004, ¶¶0078-0079, 0082, 0096-0098, 0135, 0141).
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`The processor also receives inside and outside temperature data, and tracks the rate
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`of change in temperature at different outside temperatures. (Ex. 1004, ¶0253, Fig.
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`3D). In my opinion, Ehlers ’330 is thus similar to the ’488 patent.
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`In my opinion, Van Ostrand teaches that comparing a temperature
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`with the rate of change in inside temperature to determine whether HVAC equipment
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`was operating was a known technique in the art. (Ex. 1005, ¶¶0007, 0029-0033).
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`Van Ostrand uses the technique to determine whether HVAC equipment is operating
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`properly. (Id.).
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`It is my opinion that it would have been obvious to use the technique of
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`Van Ostrand in the system of Ehlers ’330 for the reasons described in Van Ostrand
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`(to monitor the health of HVAC equipment), and separately, to verify a customer’s
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`compliance with a demand reduction request.
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`1. Overview of Ehlers ’330
` Ehlers ’330 teaches “[a] system and method [to] manage delivery of
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`energy from a distribution network to one or more sites.” (Ex. 1004, Abstract). The
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`management of the delivery of energy in Ehlers ’330 includes the ability to reduce
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`energy consumption by an HVAC system in a building by changing the temperature
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`when there is a spike in demand. (Ex. 1004, ¶¶0016, 0017, 0135-0141, 0204, 0254,
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`0266, 0319-0324, Fig. 1C).
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`I note tha