21
May
By John Presper and Elissa Sanford
On May 14, 2021, ALJ David P. Shaw issued the public version (see Part I, Part II, Part III) of his initial determination (“ID” dated April 20, 2021) finding no violation of section 337 in Certain Smart Thermostats, Smart HVAC Systems, and Components Thereof (Inv. No. 337-TA-1185).

By way of background, this investigation was based on an October 23, 2019 complaint filed by EcoFactor, Inc. of Palo Alto, California (“EcoFactor”) alleging violations of section 337 by four respondents—including ecobee Ltd. of Toronto, Canada (“ecobee”), Google LLC of Mountain View, California (“Google”), Alarm.com Incorporated and Alarm.com Holdings, Inc. of Tysons, Virginia (collectively, “Alarm.com”), and Vivint, Inc. of Provo, Utah (“Vivint”) (collectively, “Respondents”)—through the importation/sale of certain smart thermostats and smart HVAC systems that infringe one or more claims of U.S. Patent Nos. 8,131,497 (“the ‘497 patent”); 8,423,322 (“the ‘322 patent”); and 10,018,371 (“the ‘371 patent”). The accused products include ecobee’s SmartThermostat with Voice Control, Google’s Nest Learning Thermostat Third Generation and Nest Thermostat E, Alarm.com’s T2000 and T3000 Smart Thermostats, and Vivint’s CT-100 and CT-200 smart thermostats and the Vivint SkyControl panels. EcoFactor alleged that the domestic industry requirement is satisfied by the EcoFactor Platform, alone or in combination with ecobee’s Simple Thermostat.

According to the ID, ALJ Shaw determined that EcoFactor failed to show that Respondents’ imported thermostats indirectly infringed at any time because smart thermostats have substantial non-infringing uses. Ultimately, the ALJ concluded there was no violation of section 337 with respect to the ‘497, ‘322 and ‘371 patents based on the following conclusions of fact and law:

  • With respect to the ‘497 patent, (a) EcoFactor has shown that Google’s Nest Learning Thermostat Third Generation and Nest Thermostat E infringe the asserted claims; (b) EcoFactor has not shown that the other Respondents’ accused products infringe the asserted claims; (c) EcoFactor has not shown that the EcoFactor Platform (with or without the Simple Thermostat) practices claims 1, 2, or 5; (d) Respondents have not shown that the asserted claims are patent-ineligible under 35 U.S.C. § 101 or invalid under §§ 102 or 103; and (e) Respondents have shown that the asserted claims are invalid under § 112.

  • Regarding the ‘322 patent, (a) EcoFactor has shown that Google’s Nest Learning Thermostat Third Generation and Nest Thermostat E infringe the asserted claims; (b) EcoFactor has not shown that the other Respondents’ accused products infringe the asserted claims; (c) EcoFactor has not shown that the EcoFactor Platform (with or without the Simple Thermostat) practices claims 1, 2, or 5; (d) Respondents have not shown that the asserted claims are patent-ineligible under § 101; (e) Respondents have shown that claim 1 is anticipated and claims 2 and 5 are obvious over the prior art; and (f) Respondents have shown that the asserted claims are invalid under § 112.

  • As to the ‘371 patent, (a) EcoFactor has shown that Google’s Nest Learning Thermostat Third Generation and Nest Thermostat E infringe the asserted claims; (b) EcoFactor has not shown that the EcoFactor Platform (with or without the Simple Thermostat) practices claim 9; and (c) Respondents have not shown that the asserted claims are patent-ineligible under § 101 or invalid under §§ 102 or 103.

  • The economic prong of domestic industry has not been satisfied under § 337(a)(3)(A) or (B).
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