Case 6:22-cv-00068 Document 1 Filed 01/18/22 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`Plaintiff,
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`Case No.
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`ECOFACTOR, INC,
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`v.
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`AMAZON.COM, INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR PATENT INFRINGEMENT
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`This is an action for patent infringement arising under the Patent Laws of the United States
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`of America, 35 U.S.C. § 1 et seq., in which Plaintiff EcoFactor, Inc. (“Plaintiff” or “EcoFactor”)
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`makes the following allegations against Defendant Amazon.com, Inc. (“Defendant”):
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`INTRODUCTION
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`1.
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`This complaint arises from Defendant’s unlawful infringement of the following
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`United States patents owned by EcoFactor: and U.S. Patent No. 10,534,382 (“’382 Patent”); U.S.
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`and Patent No. 10,584,890 (“’890 Patent”) (collectively the “Asserted Patents”). EcoFactor owns
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`all right, title, and interest in each of the Asserted Patents.
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`PARTIES
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`2.
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`EcoFactor is a privately held company, having its principal place of business at 441
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`California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was founded in 2006 and is
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`headquartered in Palo Alto, California. EcoFactor is a leader in smart home energy management
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`services. EcoFactor delivers smart home energy management services that improve energy
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`efficiency, reduce energy bills and vastly increase demand response efficacy – all while
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`maintaining consumer comfort. EcoFactor’s patented big-data analytics and machine learning
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`algorithms collect and process massive amounts of residential data – including home
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`thermodynamics, family comfort preferences and schedules, plus external data such as weather –
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`to continually monitor, adapt and learn for optimum energy savings. The company provides
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`homeowners significant cost savings and energy usage benefits. EcoFactor’s award-winning
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`service has been offered through channel partners such as utilities, energy retailers, broadband
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`service providers and HVAC companies.
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`3.
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`EcoFactor transformed how homes use energy by applying advanced analytics to
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`connected devices in the home. EcoFactor developed a suite of software known as the “EcoFactor
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`Platform” that incorporates EcoFactor’s patented data analytics and machine learning algorithms,
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`as well as EcoFactor’s award-winning smart HVAC control technologies. The EcoFactor Platform
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`is software that runs on servers, including cloud servers, in the United States, and provides service
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`to customers in the United States. The source code of the EcoFactor Platform, including for
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`example the platform, quant, and mobile application source code, that comprises the EcoFactor
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`Platform was designed by, created by, and is continuously maintained and improved by EcoFactor
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`employees working in the United States. The EcoFactor Platform actively manages thermostats on
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`occupants’ behalf in intelligent ways that improve comfort while helping them save time, energy
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`and money. Utilities, home service providers and homeowners rely on EcoFactor for demand
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`response, energy efficiency, and HVAC performance monitoring services. The EcoFactor Platform
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`includes the software that practices EcoFactor’s patents on these features. For example, the
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`EcoFactor Platform includes EcoFactor’s patented techniques for monitoring the health and
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`performance of HVAC systems over time, smart thermostat scheduling to improve energy savings
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`and optimize comfort for occupants, and thermodynamic modeling of the user’s home and HVAC
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`system to enable dynamic pre-cooling and pre-heating to further improve comfort, save energy, or
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`both, by creating comfortable schedules that also shift energy usage out of periods of peak energy
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`demand.
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`4.
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`The patented innovations at issue in this action were invented by EcoFactor
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`engineers and researchers. EcoFactor has played a significant role in the development and
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`advancement of such improvements to energy management technology—and the domestic market
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`for them. EcoFactor has expended tens of millions of dollars of research and development and
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`technical services and support in the United States. In recent years, an explosion of imported
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`products that infringe EcoFactor’s innovative Asserted Patents has significantly eroded
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`EcoFactor’s market standing. This infringement action is about several patented improvements to
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`smart thermostat systems, smart HVAC systems, and smart HVAC control systems—which took
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`years of research and millions of dollars in U.S. investments to develop, and which are infringed
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`by Defendant’s accused products.
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`PARTIES
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`5.
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`Plaintiff EcoFactor is a privately held company, having its principal place of
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`business at 441 California Avenue, Number 2, Palo Alto, CA 94301. EcoFactor was founded in
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`2006 and is headquartered in Palo Alto, California. EcoFactor is the sole owner of all right, title,
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`and interest in each Asserted Patents.
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`6.
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`Defendant Amazon.com, Inc. is a corporation organized under the laws of the State
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`of Delaware, with its principal place of business at 410 Terry Avenue North, Seattle, Washington
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`98109.
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`JURISDICTION AND VENUE
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`7.
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`This action arises under the patent laws of the United States, Title 35 of the United
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`States Code. This Court has original subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a).
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`8.
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`This Court has personal jurisdiction over Defendant in this action because
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`Defendant has committed acts within this District giving rise to this action, and has established
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`minimum contacts with this forum such that the exercise of jurisdiction over Defendant would not
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`offend traditional notions of fair play and substantial justice. Defendant, directly and through
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`subsidiaries or intermediaries, has committed and continue to commit acts of infringement in this
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`District by, among other things, importing, offering to sell, and selling products that infringe the
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`asserted patents.
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`9.
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`Venue is proper in this District under 28 U.S.C. § 1400(b). Upon information and
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`belief, Defendant has transacted business in this District and has committed acts of direct and
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`indirect infringement in this District by, among other things, making, using, offering to sell, selling,
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`and importing products that infringe the Asserted Patents. Defendant has a regular and established
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`place of business in the District, including offices at 11501 Alterra Parkway, Austin, Texas, and a
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`fulfillment center at 2093-2209 Rutland Drive, Austin, Texas 78758. Further, Amazon’s website
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`lists over 500 jobs available in the Austin area.
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`THE TECHNOLOGY AND PRODUCTS AT ISSUE
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`10.
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`The products accused of infringing one or more of the Asserted Patents are smart
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`thermostat systems, smart HVAC systems, smart HVAC control systems, and all components
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`(including accessories) thereof offered for sale by Defendant.
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`11.
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`The Accused Products include thermostat systems that connect to and control an
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`HVAC system, they include smart HVAC systems, and they include components of such systems
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`such as, for example, hubs, panels, and remote sensors. These thermostat devices communicate
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`over a network with other devices and systems offered by Defendant. The Accused Products
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`connect to the network managed by Defendant via the Internet. For example, the Accused Products
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`connect to Defendant’s networked servers and data centers, online interfaces, and related
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`accessories.
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`12. When connected as designed, the Accused Products form a smart thermostat
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`system, smart HVAC system, and/or smart HVAC control system. Defendant’s smart thermostat
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`systems are “smart” because they are designed to connect to Defendant’s servers and data centers
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`(including, e.g., cloud-based servers and backend support), related online interfaces (including,
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`e.g., mobile apps and web portals), and related accessories (e.g., remote temperature sensors), upon
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`importation in the United States. Further, Defendant’s smart thermostat systems are “smart”
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`because they support and are marketed as providing features to end users that analyze thermostat
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`and HVAC system data gathered by the smart thermostat systems.
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`13.
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`The Accused Products constitute the “frontend” of the smart thermostat system,
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`smart HVAC system, and/or smart HVAC control system. Such smart thermostat devices can be
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`programmed using the servers and the network maintained by Defendant and which form the
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`“backend” for the smart thermostat. Such smart thermostat systems can be programmed remotely
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`with a web or mobile application offered by Defendant. The web or mobile application
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`communicates with the smart thermostat via computer servers or data centers managed by
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`Defendant, who sells and imports the smart thermostat. Each Defendant allows an end user to use
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`a web or mobile application on a mobile phone, tablet, laptop, or other computing device to control
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`the smart thermostat systems, such as by adjusting temperature settings. Defendant’s smart
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`thermostat systems also communicate data using the network. For example, Defendant’s smart
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`thermostat systems send and receive temperature data and/or temperature settings using the
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`network.
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`14.
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`Defendant’s Accused Products are designed and specially made and adapted to
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`infringe claims of the Asserted Patents and to embody a material part of the claimed inventions.
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`The Accused Products are installed and used in the United States according to Defendant’s design
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`and instructions. Defendant has knowledge as well as notice of its infringement of each asserted
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`patent at least as of October 21, 2019. Defendant knowingly induces and encourages the use of the
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`Accused Products in the United States in a manner that infringes the asserted claims of the Asserted
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`Patents. Defendant infringes the Asserted Patents directly, through making, using, selling, and/or
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`offering for sale the Accused Products. Defendant also infringes the Asserted Patents indirectly,
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`both for example through contributory infringement as well as through induced infringement. The
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`infringement of the Asserted Patents is also attributable to Defendant. Defendant and/or users of
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`the Accused Products directs and controls use of the Accused Products to perform acts that result
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`in infringement the Asserted Patents, conditioning benefits on participation in the infringement
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`and establishing the timing and manner of the infringement.
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`COUNT I
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`INFRINGEMENT OF U.S. PATENT NO. 10,534,382
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`15.
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`Plaintiff realleges and incorporates by reference the foregoing paragraphs as if fully
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`set forth herein.
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`16.
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`Plaintiff is the owner and assignee of United States Patent No. 10,534,382 titled
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`“System and method for using a wireless device as a sensor for an energy management system.”
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`The ’382 Patent was duly and legally issued by the United States Patent and Trademark Office on
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`January 14, 2020. Plaintiff is the owner and assignee, possessing all substantial rights, to the ’382
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`Patent. A true and correct copy of the ’382 Patent is attached as Exhibit 1.
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`17.
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`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
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`imports (or has done so within the damages period) certain smart thermostat products (“Accused
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`Products”), such as the Amazon Smart Thermostat (e.g., S6ED3R), that directly infringe, literally
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`and/or under the doctrine of equivalents, claims 1-20 of the ’382 Patent. The Accused Products
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`additionally include Amazon servers, backend systems, web portals, APIs, Alexa mobile app, and
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`remote sensor accessories that support these thermostats.
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`18.
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`The infringement of the ’382 Patent is also attributable to Defendant. Defendant
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`and/or users of the Accused Products directs and controls use of the Accused Products to perform
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`acts that result in infringement of the patent, conditioning benefits on participation in the
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`infringement and establishing the timing and manner of the infringement.
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`19.
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`Defendant also knowingly and intentionally induces infringement of claims of the
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`’890 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service of this
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`Complaint, Defendant has had knowledge of the ’382 Patent and the infringing nature of the
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`Accused Products. Despite this knowledge of the ’382 Patent, Defendant continues to actively
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`encourage and instruct its customers and end users (for example, through user manuals and online
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`instruction materials on its website) to use the Accused Products in ways that directly infringe the
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`’382 Patent. Defendant does so knowing and intending that its customers and end users will
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`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
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`import the Accused Products, despite its knowledge of the ’382 Patent, thereby specifically
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`intending for and inducing its customers to infringe the ’382 Patent through the customers’ normal
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`and customary use of the Accused Products.
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`20.
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`Defendant has also infringed, and continue to infringe, claims of the ’382 Patent by
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`offering to commercially distribute, commercially distributing, making, and/or importing the
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`Accused Products, which are used in practicing the process, or using the systems, of the patent,
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`and constitute a material part of the invention. Defendant knows the components in the Accused
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`Products to be especially made or especially adapted for use in infringement of the patent, not a
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`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
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`Accordingly, Defendant has been, and currently is, contributorily infringing the ’382 Patent, in
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`violation of 35 U.S.C. § 271(c).
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`21.
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`The Accused Products satisfy all claim limitations of claims of the ’382 Patent. A
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`claim chart comparing claim elements of the ’382 Patent to representative Accused Products, is
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`attached as Exhibit 2.
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`22.
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`By making, using, offering for sale, selling and/or importing into the United States
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`the Accused Products, Defendant has injured EcoFactor and is liable for infringement of the ’890
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`Patent pursuant to 35 U.S.C. § 271.
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`23.
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`As a result of Defendant’s infringement of the ’382 Patent, EcoFactor is entitled to
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`monetary damages in an amount adequate to compensate for Defendant’s infringement, but in no
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`event less than a reasonable royalty for the use made of the invention by Defendant, together with
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`interest and costs as fixed by the Court.
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`24.
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`Defendant’s infringing activities have injured and will continue to injure EcoFactor,
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`unless and until this Court enters an injunction prohibiting further infringement of the ’382 Patent,
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`and, specifically, enjoining further manufacture, use, sale, importation, and/or offers for sale that
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`come within the scope of the patent claims.
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`COUNT II
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`INFRINGEMENT OF U.S. PATENT NO. 10,584,890
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`25.
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`EcoFactor realleges and incorporates by reference the foregoing paragraphs as if
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`fully set forth herein.
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`26.
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`EcoFactor owns all rights, title, and interest in U.S. Patent No. 10,584,890, titled
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`“System and Method for Using a Mobile Electronic Device to Optimize an Energy Management
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`System,” issued on Mar. 10, 2020. The inventor of the ’890 Patent is John Douglas Steinberg. The
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`’597 Patent is based on U.S. Pat. App. No. 16/374,246, filed on Apr. 3, 2019, which is a
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`continuation of U.S. Pat. App. No. 16/264,050, filed on Jan. 31, 2019, which is a continuation of
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`U.S. Pat. App. No. 15/616,719, filed on June 7, 2017, which is a continuation of U.S. Pat. App.
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`No. 14/491,554, filed on Sept. 19, 2014, which is a continuation of U.S. Pat. App. No. 14/048,932,
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`filed on Oct. 8, 2013, which is a continuation of U.S. Pat. App. No. 12/788,246, filed on May 26,
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`2010. A true and correct copy of the ’890 Patent is attached as Exhibit 3.
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`27.
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`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
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`imports (or has done so within the damages period) certain smart thermostat products (“Accused
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`Products”), such as the Amazon Smart Thermostat (e.g., S6ED3R), that directly infringe, literally
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`and/or under the doctrine of equivalents, claims 1-17 of the ’890 Patent. The Accused Products
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`additionally include Amazon servers, backend systems, web portals, APIs, Alexa mobile app, and
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`remote sensor accessories that support these thermostats.
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`28.
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`The infringement of the ’890 Patent is also attributable to Defendant. Defendant
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`and/or users of the Accused Products directs and controls use of the Accused Products to perform
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`acts that result in infringement of the patent, conditioning benefits on participation in the
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`infringement and establishing the timing and manner of the infringement.
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`29.
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`Defendant also knowingly and intentionally induces infringement of claims of the
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`’890 Patent in violation of 35 U.S.C. § 271(b). Through at least the filing and service of this
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`Complaint, Defendant has had knowledge of the ’890 Patent and the infringing nature of the
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`Accused Products. Despite this knowledge of the ’890 Patent, Defendant continues to actively
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`encourage and instruct its customers and end users (for example, through user manuals and online
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`instruction materials on its website) to use the Accused Products in ways that directly infringe the
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`’890 Patent. Defendant does so knowing and intending that its customers and end users will
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`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
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`import the Accused Products, despite its knowledge of the ’890 Patent, thereby specifically
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`intending for and inducing its customers to infringe the ’890 Patent through the customers’ normal
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`and customary use of the Accused Products.
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`30.
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`Defendant has also infringed, and continue to infringe, claims of the ’890 Patent by
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`offering to commercially distribute, commercially distributing, making, and/or importing the
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`Accused Products, which are used in practicing the process, or using the systems, of the patent,
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`and constitute a material part of the invention. Defendant knows the components in the Accused
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`Products to be especially made or especially adapted for use in infringement of the patent, not a
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`staple article, and not a commodity of commerce suitable for substantial noninfringing use.
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`Accordingly, Defendant has been, and currently is, contributorily infringing the ’890 Patent, in
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`violation of 35 U.S.C. § 271(c).
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`31.
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`The Accused Products satisfy all claim limitations of claims of the ’890 Patent. A
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`claim chart comparing claim elements of the ’890 Patent to representative Accused Products, is
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`attached as Exhibit 4.
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`32.
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`By making, using, offering for sale, selling and/or importing into the United States
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`the Accused Products, Defendant has injured EcoFactor and is liable for infringement of the ’890
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`Patent pursuant to 35 U.S.C. § 271.
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`33.
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`As a result of Defendant’s infringement of the ’890 Patent, EcoFactor is entitled to
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`monetary damages in an amount adequate to compensate for Defendant’s infringement, but in no
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`event less than a reasonable royalty for the use made of the invention by Defendant, together with
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`interest and costs as fixed by the Court.
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`34.
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`Defendant’s infringing activities have injured and will continue to injure EcoFactor,
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`unless and until this Court enters an injunction prohibiting further infringement of the ’890 Patent,
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`and, specifically, enjoining further manufacture, use, sale, importation, and/or offers for sale that
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`come within the scope of the patent claims.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff respectfully requests that this Court enter:
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`a.
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`A judgment in favor of Plaintiff that Defendant has infringed, literally and/or under
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`the doctrine of equivalents, the ’382 Patent and the ’890 Patent;
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`b.
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`A permanent injunction prohibiting Defendant from further acts of infringement of
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`the ’382 Patent and the ’890 Patent;
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`c.
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`A judgment and order requiring Defendant to pay Plaintiff its damages, enhanced
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`damages, costs, expenses, and pre-judgment and post-judgment interest for Defendant’s
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`infringement of the ’382 Patent and the ’890 Patent;
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`d.
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`A judgment and order requiring Defendant to provide an accounting and to pay
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`supplemental damages to Plaintiff, including without limitation, pre-judgment and post-judgment
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`interest;
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`e.
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`A judgment and order finding that this is an exceptional case within the meaning
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`of 35 U.S.C. § 285 and awarding to Plaintiff its reasonable attorneys’ fees against Defendant; and
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`f.
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`Any and all other relief as the Court may deem appropriate and just under the
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`circumstances.
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`DEMAND FOR JURY TRIAL
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`Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of
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`any issues so triable by right.
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`Dated: January 18, 2022
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`Respectfully submitted,
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`/s/ Reza Mirzaie
`Reza Mirzaie
`Marc A. Fenster
`James N. Pickens
`Kristopher R. Davis
`Minna Y. Chan
`Adam S. Hoffman
`Jason M. Wietholter
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard 12th Floor
`Los Angeles, California 90025
`Tel: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`mfenster@raklaw.com
`jpickens@raklaw.com
`kdavis@raklaw.com
`mchan@raklaw.com
`ahoffman@raklaw.com
`jwietholter@raklaw.com
`rak_ecofactor@raklaw.com
`
`Matthew D. Aichele
`RUSS AUGUST & KABAT
`800 Maine Ave SW, Suite 200
`Washington, DC. 20024
`Telephone: (202) 664-0623
`maichele@raklaw.com
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`Attorneys for Plaintiff EcoFactor, Inc.
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