UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ECOBEE, INC.
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Inter Partes Review No.: (Unassigned)
`Patent No. 8,498,753
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01504
`
`
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`ECOBEE, INC.
`
`Petitioner
`
`v.
`
`ECOFACTOR, INC.
`
`(record) Patent Owner
`
`Inter Partes Review No.: (Unassigned)
`Patent No. 8,498,753
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01504
`
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`I.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ......................... 1
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`STATEMENT OF MATERIAL FACTS ....................................................... 2
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`III. REASONS FOR REQUESTED RELIEF ...................................................... 3
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`A.
`
`B.
`
`C.
`
`
`Legal Standard ...................................................................................... 3
`
`The Motion for Joinder is Timely ........................................................ 4
`
`The Factors Weighs in Favor of Granting the Motion for
`Joinder .................................................................................................. 4
`
`1.
`
`2.
`
`3.
`
`
`4.
`
`Joinder with the Google IPR Is Appropriate ............................. 4
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`Petitioner Does Not Propose New Grounds .............................. 5
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`Joinder Will Not Negatively Impact the Google IPR Trial
`Schedule ..................................................................................... 6
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`Procedures to Simplify Briefing and Discovery ........................ 7
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`IV. CONCLUSION ............................................................................................... 9
`
`
`
`
`
`i
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`
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`ecobee Inc. respectfully submits this Motion for Joinder, with a Petition
`
`(“the Petition”) for inter partes review of U.S. Patent No. 8,498,753 (“the ‘753
`
`patent”), filed concurrently herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Petitioner
`
`requests institution of an inter partes review and joinder with Google LLC f/k/a
`
`Google Inc. v. EcoFactor, Inc., IPR2020-01504 (“the Google IPR”), which the
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`Board instituted on March 9, 2021, concerning the same claims (1-20) of the ‘753
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`patent at issue in the current Petition. This request is being submitted within the
`
`one-month time limit set forth in 37 C.F.R. § 42.122(b).
`
`Petitioner submits that the request for joinder is consistent with the policy
`
`objectives surrounding inter partes reviews, as it is the most expedient way “to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” See 37
`
`C.F.R. § 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC.,
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`IPR2017-00512, Paper No. 12 at 5-6 (June 1, 2017). The present Petition and the
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`Google IPR Petition are substantially identical with respect to the asserted grounds,
`
`are based on the same prior art combinations and supporting evidence, and asserted
`
`against the same claims. Further, upon joining the Google IPR, Petitioner will act
`
`as an “understudy” and will not assume an active role unless the current petitioner
`
`ceases to participate in the instituted IPR. Accordingly, the proposed joinder will
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`
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`1
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`
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`not unduly complicate the Google IPR nor adversely impact its schedule. As such,
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`Motion for Joinder
`US 8,498,753
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`the requested joinder will promote judicial efficiency in determining the
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`patentability of the ‘753 patent without prejudice to Patent Owner. Moreover,
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`Petitioner has spoken with Google’s counsel of record in IPR2020-01504, and
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`Google does not oppose this requested joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`
`1.
`
`The ‘753 patent has been asserted in the following District Court
`
`cases: (i) EcoFactor, Inc. v. Google LLC, 1-19-cv-12322 (D. Mass.
`
`Nov. 12, 2019); (ii) EcoFactor, Inc. v. Alarm.com Inc. et al., 1-19-cv-
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`12323 (D. Mass. Nov. 12, 2019); (iii) EcoFactor, Inc. v. Daikin
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`Industries, Ltd. et al., 1-19-cv-12324 (D. Mass. Nov. 12, 2019); (iv)
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`EcoFactor, Inc. v. Ecobee, Inc. et al., 1-19-cv-12325 (D. Mass. Nov.
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`12, 2019); (v) EcoFactor, Inc. v. Schneider Electric USA, Inc. et al.,
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`1-19-cv-12326 (D. Mass. Nov. 12, 2019); and (vi) EcoFactor, Inc. v.
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`2.
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`3.
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`Vivint, Inc., 1-19-cv-12327 (D. Mass. Nov. 12, 2019).
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`Cases (iii) and (v) have been voluntarily terminated.
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`Case (iv), wherein Petitioner ecobee is a defendant, has been stayed.
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`The remaining cases, (i), (ii) and (vi), have also been stayed.
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`4.
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`The ‘753 patent has also been asserted in Smart HVAC Systems, and
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`Components Thereof, 337-TA-1185 (ITC). However, the
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`2
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`Motion for Joinder
`US 8,498,753
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`investigation has been terminated with respect to the ‘753 patent.
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`Exhibit 1014.
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`5.
`
`Google filed a Petition for inter partes review of claim 1-20 of the
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`‘753 patent on August 20, 2020. The Board instituted review of the
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`‘753 patent as to all claims and all grounds on March 9, 2021 in
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`IPR2020-01504.
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`6.
`
`The present Petition asserts the same ground of unpatentability against
`
`the same claims, and relies on the same expert declaration and
`
`evidence as asserted and relied upon on in the Google IPR.
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`III. REASONS FOR REQUESTED RELIEF
`
`A. Legal Standard
`
`The Board may grant a motion for joining an inter partes review petition
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`with another inter partes review proceeding. 35 U.S.C. § 315(c). A petitioner may
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`request joinder up to one month after the institution date of the proceeding to
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`which joinder is requested, without prior authorization. 37 C.F.R. § 42.122(b). The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`3
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`
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`Motion for Joinder
`US 8,498,753
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`
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`simplified. Central Security Group – Nationwide, Inc. d/b/a Alert360 v.
`
`Ubiquitous Connectivity, LP, IPR2019-01610, paper no. 12, p. 6.
`
`B.
`
`The Motion for Joinder is Timely
`
`Pursuant to 37 C.F.R. § 42.122(b), joinder can be requested without prior
`
`authorization no later than one month after the institution date of the proceeding to
`
`which joinder is requested. This motion is being filed no later than one month
`
`from the March 9, 2020 institution date of IPR2020-01504. This motion is timely.
`
`C. The Factors Weighs in Favor of Granting the Motion for Joinder
`
`All four factors weigh in favor of granting the motion for Petitioner. The
`
`Petition is substantively identical to the petition in the Google IPR. Petitioner does
`
`not present any new grounds of unpatentability. Additionally, as all issues are
`
`substantively identical and Petitioner will act as an “understudy,” joinder will have
`
`no impact on the pending schedule of the Google IPR. See LG v. Memory
`
`Integrity, LLC., IPR2015-01353, Paper No. 11, p. 6 (granting motion for joinder
`
`where petitioner requested an “understudy” role). Moreover, the briefing and
`
`discovery will be simplified by resolving all issues in a single proceeding.
`
`Accordingly, joinder is appropriate.
`
`1.
`
`Joinder with the Google IPR Is Appropriate
`
`The Board “routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in [an] existing
`
`4
`
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`
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`Motion for Joinder
`US 8,498,753
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`
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`proceeding.” Central Security, IPR2019-01610, paper no. 12, p. 6 (internal
`
`citations omitted). Here, joinder with the Google IPR is appropriate because the
`
`present Petition introduces the same arguments and the same grounds raised in the
`
`existing Google IPR (i.e., challenges the same claims of the same patent, relies on
`
`the same expert declaration, and is based on the same grounds and combinations of
`
`prior art submitted in the granted Google Petition). Although there are minor
`
`differences related to the mandatory notices and grounds for standing, there are no
`
`substantive changes to the facts, citations, evidence, or arguments relied upon to
`
`assert unpatentability of the claims relative to the Google Petition. Exhibit 1015.
`
`Because these proceedings are substantively identical, good cause exists for joining
`
`this proceeding with the Google IPR so that the Board, consistent with 37 C.F.R. §
`
`42.1(b), can efficiently “secure the just, speedy, and inexpensive resolution” of the
`
`present Petition and Google’s Petition in a single proceeding, as compared with
`
`two separate proceedings.
`
`2.
`
`Petitioner Does Not Propose New Grounds
`
`As noted above, the Petition challenges the same claims of the ‘753 patent,
`
`relying on the same expert declaration, and on the same grounds and combinations
`
`of prior art submitted in the Google Petition. See LG, IPR2015-01353, Paper No.
`
`11 at 5-6 (granting institution of IPR and motion for joinder where petitioner relied
`
`“on the same prior art, same arguments, and same evidence, including the same
`
`5
`
`
`
`
`Motion for Joinder
`US 8,498,753
`
`
`
`expert and a substantively identical declaration”); see also Central Security,
`
`IPR2019-01610, paper no. 12, p. 8 (granting motion for joinder where the Petitions
`
`challenge the same claims on the same grounds using the same prior art).
`
`3.
`
`Joinder Will Not Negatively Impact the Google IPR Trial
`Schedule
`
`Joinder should have no meaningful impact on the Google IPR trial schedule
`
`because the present Petition presents no new issues or grounds of unpatentability.
`
`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
`
`Petitioner explicitly consents to the existing IPR2020-01504 trial schedule. There
`
`are no new issues for the Board to address, and Patent Owner will not be required
`
`to present any additional responses or arguments upon joinder. It is noted that in
`
`the Google IPR (IPR2020-01504), the Patent owner elected not to file a Patent
`
`Owner’s Preliminary Response. Likewise, Patent Owner is under no obligation to
`
`do so in response to the present Petition. Presumably, Patent Owner has already
`
`been actively analyzing the same grounds presented in the present Petition in
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`connection with its Patent Owner’s Response due June 1, 2021 in the Google IPR.
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`Accordingly, joinder with the Google IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`6
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`
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`Motion for Joinder
`US 8,498,753
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`4.
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`Procedures to Simplify Briefing and Discovery
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`Petitioner explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Petitioner explicitly agrees, upon joining the
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`Google IPR, that the following conditions shall apply so long as the current lead
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`petitioner in IPR2020-01504 remains an active party:
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`a) Petitioner shall not make any substantive filings and shall be bound
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`by the filings of Google, unless a filing concerns termination and
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`settlement;
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`b) Petitioner shall not present any argument or make any presentation at
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`oral hearing;
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`c) Petitioner shall not seek to cross-examine or defend the cross-
`
`examination of any witness; and
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`d) Petitioner shall not seek discovery from Patent Owner.
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`
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`See, e.g., Central Security, IPR2019-01610, paper no. 12, p. 8 (“Petitioner
`
`avers it will take an ‘understudy’ role in the [joined] IPR by consolidating all
`
`filings, refraining from advancing new arguments, binding itself to any discovery
`
`agreements, and limiting its deposition time to the time already allotted . . . Thus,
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`joinder would result in the just, speedy, and inexpensive resolution of the instant
`
`Petition as well as the petition filed in the [joined] IPR.”). Unless and until the
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`7
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`
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`current petitioner ceases to participate in the instituted IPR proceeding, Petitioner
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`Motion for Joinder
`US 8,498,753
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`will not assume an active role therein.
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`Thus, by Petitioner accepting an “understudy” role, Patent Owner and the
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`current petitioner in the Google IPR can comply with the existing trial schedule
`
`without requiring any duplicative efforts by the Board or the Patent Owner. These
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`steps will minimize any potential complications or delay that potentially may result
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`by joinder. Petitioner is further amenable to any other reasonable conditions the
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`Board deems necessary.
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`8
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`
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`Motion for Joinder
`US 8,498,753
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`IV. CONCLUSION
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`
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`Based on the factors discussed above, Petitioner respectfully requests that
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`the Board grant the Petition and grant this motion for joinder with the Google IPR.
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`Date: April 9, 2021
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`
`
` Respectfully submitted,
`
`By: /Scott W. Cummings/
`
`Scott W. Cummings, Reg. No. 41,567
`Email: scott.cummings@dentons.com
`
`
`Timothy J. Carroll (pending admission
`pro hac vice)
`Email: tim.carroll@dentons.com
`
`Steven M. Lubezny (pending
`admission pro hac vice)
`Email: steve.lubezny@dentons.com
`
`Catherine N. Taylor, Reg. No. 78,518
`Email: catherine.taylor@dentons.com
`
`
`Counsel for Petitioner ecobee, Inc.
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing MOTION FOR
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`JOINDER TO INTER PARTES REVIEW IPR2020-01504, was served by
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`Priority Mail Express on April 9, 2021, on the Patent Owner’s counsel of record at
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`the United States Patent & Trademark Office having the following address:
`
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN STREET
`FOURTEENTH FLOOR
`IRVINE CA 92614
`
`
`
`
`Courtesy copies of the above-mentioned documents were also provided to
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`counsel of record for Patent Owner in IPR2020-01504 via email correspondence to
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`the following recipients:
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`pwang@raklaw.com
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`jchung@raklaw.com
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`kshum@raklaw.com
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`rak_ecofactor@raklaw.com
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`Date: April 9, 2021
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`
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`
`
`/Monet Noel/
`Monet Noel
`Paralegal
`Dentons US LLP
`
`
`
`
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