`571-272-7822
`
`Paper 7
`Date: June 16, 2021
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`ECOFACTOR, INC.,
`Patent Owner.
`
`
`IPR2021-00409 (Patent 8,412,488 B2)
`IPR2021-00454 (Patent 8,738,327 B2)
` IPR2021-00488 (Patent 8,180,492 B2)1
`
`
`
`Before TREVOR M. JEFFERSON, WESLEY B. DERRICK,
`JEFFREY W. ABRAHAM, and CHRISTOPHER L. OGDEN,
`Administrative Patent Judges.2
`
`DERRICK, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this filing style in subsequent papers
`2 This is not an expanded panel. The caption identifies judges that are
`assigned to one or more of three related cases in which this one Order is
`being filed.
`
`
`
`IPR2021-00409 (Patent 8,412,488 B2)
`IPR2021-00454 (Patent 8,738,327 B2)
`IPR2021-00488 (Patent 8,180,492 B2)
`
`
`In an email to the Board dated June 7, 2021, Petitioner requests
`permission to file documents as exhibits, with no additional briefing, in each
`of IPR2021-00409, -00454, and -00488. Petitioner identifies the documents
`it will file as exhibits as:
`(1) Two letters, by other defendants in co-pending litigation in the
`Western District of Texas (ecobee and Vivint), providing stipulations
`relevant to the Board’s consideration of the Fintiv factors; and
`(2) An updated scheduling order for the co-pending Western District of
`Texas litigation.
`Petitioner states that it has conferred with Patent Owner and that Patent
`Owner indicates it does not object to the submissions.
`On this record, we determine that permitting Petitioner to file the
`identified exhibits would be in the interests of justice and would also be
`helpful to the panel. See 37 C.F.R. § 42.20(d). No briefing is authorized to
`be filed with the exhibits.
`
`Accordingly, it is hereby:
`ORDERED that Petitioner is authorized to file, within three business
`days of this order, the identified documents as exhibits.
`
`
`
`2
`
`
`
`IPR2021-00409 (Patent 8,412,488 B2)
`IPR2021-00454 (Patent 8,738,327 B2)
`IPR2021-00488 (Patent 8,180,492 B2)
`
`FOR PETITIONER:
`
`Matthew A. Smith
`Elizabeth Laughton
`SMITH BALUCH LLP
`smith@smithbaluch.com
`laughton@smithbaluch.com
`
`
`FOR PATENT OWNER:
`
`Philip X. Wang
`C. Jay Chung
`RUSSS AUGUST & KABAT
`pwang@raklaw.com
`pwang@raklaw.com
`
`3
`
`