Paper 7
`trials@uspto.gov
`Date: October 7, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ECOBEE, INC.,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-01052
`Patent 10,534,382 B2
`
`
`
`
`
`
`
`
`
`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`trials@uspto.gov
`Date: October 7, 2021
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ECOBEE, INC.,
`Petitioner,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-01052
`Patent 10,534,382 B2
`
`
`
`
`
`
`
`
`
`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`
`INTRODUCTION
`A. Background and Summary
`Ecobee, Inc. (“Petitioner”) filed (1) a Petition to institute an inter
`partes review (Paper 1, “Pet.”) of claims 1–20 of U.S. Patent No. 10,534,382
`B2 (Ex. 1001, “the ’382 patent”) and (2) a Motion for Joinder (Paper 3,
`“Mot.”) with Google LLC v. EcoFactor, Inc., IPR2021-00054 (“Google
`IPR”). We instituted an inter partes review in the Google IPR on May 10,
`2021. Google IPR, Paper 9. EcoFactor, Inc. (“Patent Owner”) did not file a
`Patent Owner Preliminary Response or an Opposition to Petitioner’s Motion
`for Joinder in this proceeding.
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C. § 314
`and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless
`“the information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When
`instituting inter partes review, the Board will authorize the review to
`proceed on all of the challenged claims and on all grounds of unpatentability
`asserted for each claim.” PTAB Rules of Practice for Instituting on All
`Challenged Patent Claims and All Grounds and Eliminating the Presumption
`at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg.
`79,120, 79,129 (Dec. 9, 2020), (to be codified at 37 C.F.R. 42.108(a)).
`B. Real Parties in Interest
`Petitioner identifies ecobee, Inc. and ecobee Ltd. as the real parties in
`interest. Pet. 6.
`Patent Owner identifies itself as the real party in interest. Paper 5, 1.
`
`2
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`C. Related Matters
`Petitioner identifies the following proceedings in which the ’382
`patent has been asserted: EcoFactor, Inc. v. Alarm.com Inc., 1-20-cv-11007
`(D. Mass. May 26, 2020); EcoFactor, Inc. v. Google LLC, 6-20-cv-00075
`(W.D. Tex. Jan. 31, 2020); EcoFactor, Inc. v. Alarm.com Inc., 6-20-cv-
`00076 (W.D. Tex. Jan. 31, 2020); EcoFactor, Inc. v. Ecobee, Inc., 6-20-cv-
`00078 (W.D. Tex. Jan. 31, 2020); EcoFactor, Inc. v. Vivint, Inc., 6-20-cv-
`00080 (W.D. Tex. Jan. 31, 2020). Pet. 6. Petitioner also identifies the
`Google IPR. Id. at 7.
`Patent Owner identifies the following proceedings that may affect, or
`be affected by, a decision in this proceeding: In re Smart HVAC Systems,
`and Components Thereof, ITC Inv. No. 37-TA-1185; EcoFactor, Inc. v.
`Google LLC, 6-20-cv-00075 (W.D. Tex. Jan. 31, 2020); EcoFactor, Inc. v.
`Ecobee, Inc., 6-20-cv-00078 (W.D. Tex. Jan. 31, 2020); EcoFactor, Inc. v.
`Vivint, Inc., 6-20-cv-00080 (W.D. Tex. Jan. 31, 2020). Paper 5, 1–2.
`
`3
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–20 of the ’382 patent would have been
`unpatentable on the following ground:
`Claim(s) Challenged
`35 U.S.C. §1
`1–20
`103(a)
`
`Reference(s)/Basis
`Geadelmann, 2 Ehlers3
`
`
`INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same ground of
`unpatentability as the one on which we instituted review in the Google IPR.
`Compare Pet. 11–79, with Google IPR, Paper 9 at 6. Indeed, Petitioner
`contends that the 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,
`
`
`1 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 in any application filed prior to March 16, 2013—provides written
`description support for claims 19 or 20,” the ’382 patent is subject to the
`revisions of the AIA. Pet. 10–11. Patent Owner does not address whether
`the ’382 is subject to the AIA or pre-AIA version of section 103. Because
`the decision whether to institute does not depend on whether the ’382 patent
`is subject to the AIA version of section 103, we do not decide that issue. See
`Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (explaining
`that an administrative agency may render a decision based on “a single
`dispositive issue”).
`2 US 8,196,185, issued Jun. 5, 2012 (Ex. 1004).
`3 US 2004/0117330 A1, published Jun. 17, 2004 (Ex. 1010).
`
`4
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`evidence, or arguments relied upon to assert unpatentability of
`the claims relative to the Google Petition.
`Mot. 4.
`Patent Owner did not file a Preliminary Response.
`For the same reasons set forth in our institution decision in the Google
`IPR, we determine that the information presented in the Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that claims 1–
`20 of the ’392 patent are unpatentable. See Google IPR, Paper 9, 18–29.
`Accordingly, we institute an inter partes review on all of the challenged
`claims.
`
`GRANT OF MOTION FOR JOINDER
`We instituted trial in the Google IPR on May 10, 2021. Google IPR,
`Paper 6. Petitioner filed the Petition and Motion for Joinder on June 10,
`2021. Because joinder was requested no later than one month after trial was
`instituted in the Google IPR, Petitioner’s Motion for Joinder is timely. See
`37 C.F.R. § 42.122(b) (2020).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`A motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`
`5
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-
`00004, Paper 15 (PTAB Apr. 24, 2013).
`The Petition asserts the same unpatentability ground on which we
`instituted review in the Google IPR. See Mot. 1, 4–5. Petitioner presents
`“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).” Id. at 4. Indeed, the
`Petition is nearly a “carbon copy” of the petition filed by the petitioner in the
`Google IPR. See id. Thus, this inter partes review does not present any
`ground or matter not already at issue in the Google IPR.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of the Google IPR
`petitioner as a party. Mot. 1–2; see also id. at 6–7. Petitioner states that it
`“will act as an ‘understudy’ and will not assume an active role unless the
`current petitioner ceases to participate in the instituted IPR.” Id. at 1.
`Because Petitioner expects to participate only in a limited capacity,
`Petitioner submits that “the proposed joinder will not unduly complicate the
`Google IPR nor adversely impact its schedule. As such, the requested
`joinder will promote judicial efficiency in determining the patentability of
`the ‘382 patent without prejudice to Patent Owner.” Id. at 1–2. Petitioner
`further indicates that Google does not oppose the request joinder. Id. at 2.
`Patent Owner did not file an opposition to the motion for joinder.
`We agree with Petitioner that joinder with the Google IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`6
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–20 of the ’382 patent is instituted in IPR2021-01052;
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00054 is granted, and Petitioner is joined as a party to IPR2021-00054;
`FURTHER ORDERED that all further filings by Petitioner and Patent
`Owner, except for those which concern a request for rehearing of this
`decision, shall be made only in IPR2021-00054;
`FURTHER ORDERED that, subsequent to joinder, the grounds and
`claims for trial in IPR2021-00054 remain unchanged;
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2021-00054 (Paper 10) remains unchanged, subject to
`any change already made by stipulation between Patent Owner and Google
`LLC (“Google”);
`FURTHER ORDERED that, subsequent to joinder, Petitioner is
`bound by every paper filed by and every representation made by Google in
`IPR2021-00054, except for papers and representations regarding settlement
`between Google and Patent Owner;
`FURTHER ORDERED that Petitioner shall make no filing and take
`no action in the joined proceeding unless (1) Google settles with Patent
`Owner and a Motion to Terminate Google from the joined proceeding has
`been filed, or (2) the filing is a motion to terminate the proceeding with
`respect to Petitioner, a settlement agreement between Petitioner and Patent
`Owner, or a request to keep settlement agreement separate under 37 C.F.R.
`§ 42.74(c);
`
`7
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`FURTHER ORDERED that Petitioner shall not receive any direct,
`cross examination, or redirect time beyond that permitted for Google alone,
`under either 37 C.F.R. § 42.53 or any agreement between Google and Patent
`Owner;
`FURTHER ORDERED that the case caption in IPR2021-00054 shall
`be changed in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00054.
`
`
`
`
`
`8
`
`
`
`IPR2021-01052
`Patent 10,534,382 B2
`FOR PETITIONER:
`
`Rudolph Telscher
`Daisy Manning
`HUSCH BLACKWELL LLP
`ptab-rtelscher@huschblackwell.com
`ptab-dmanning@huschblackwell.com
`
`
`FOR PATENT OWNER:
`
`Philip Wang
`Reza Mirzaie
`Kristopher Davis
`Jonathan Link
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
`jlink@raklaw.com
`
`
`
`9
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC and ECOBEE, INC.,
`Petitioners,
`v.
`ECOFACTOR, INC.,
`Patent Owner.
`
`IPR2021-00054
`Patent 10,534,382 B21
`
`
`
`
`
`
`
`
`
`
`
`
`1 Ecobee, Inc. was joined as a party to this proceeding via a Motion for
`Joinder in IPR2021-01052.
`
`
`
`
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