1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 GOOGLE LLC, Case No. 21-cv-03220-HSG 8 Plaintiff, ORDER DENYING MOTION FOR JUDGMENT ON THE PLEADINGS 9 v. Re: Dkt. No. 41 10 ECOFACTOR, INC., 11 Defendant. 12 13 Plaintiff Google LLC seeks judgment on the pleadings that Defendant EcoFactor, Inc.’s 14 patents-in-suit are invalid under 35 U.S.C. § 101. For the reasons explained below, the Court 15 denies the motion. 16 I. BACKGROUND 17 Google is a technology company based in Mountain View, California. Its stated mission is 18 to organize the world’s information to make it universally accessible and useful. EcoFactor is a 19 private company based in Palo Alto, California. Beginning in 2019, EcoFactor filed actions in the 20 District of Massachusetts, the Western District of Texas, and the International Trade Commission 21 accusing Google’s Nest thermostat products of patent infringement. 22 In June 2021, Google filed this action seeking a declaratory judgment of non-infringement 23 of four EcoFactor patents, U.S. Patent Nos. 8,751,186 (the “’186 Patent”), 8,740,100 (the “’100 24 Patent”), 9,194,597 (the “’597 Patent”) and 10,584,890 (the “’890 Patent”). See Dkt. No. 1. The 25 following month, EcoFactor filed an answer to Google’s complaint as well as a counterclaim 26 accusing Google’s Nest thermostats of infringing the patents-in-suit. See Dkt. No. 17. Google 27 now moves for judgment on the pleadings. See Dkt. No. 41 (“Mot.”), 48 (“Opp.”), and 49 II. LEGAL STANDARD 1 Under Federal Rule of Civil Procedure 12(c), a party may move for judgment on the 2 pleadings “[a]fter the pleadings are closed—but early enough not to delay trial.” “Judgment on 3 the pleadings is proper when, taking all allegations in the pleading as true, the moving party is 4 entitled to judgment as a matter of law.” Stanley v. Trustees of Cal. State Univ., 433 F.3d 1129, 5 1133 (9th Cir. 2006). “Rule 12(c) is functionally identical to Rule 12(b)(6) and . . . the same 6 standard of review applies to motions brought under either rule.” Cafasso, U.S. ex rel. v. Gen. 7 Dynamics C4 Sys., Inc., 637 F.3d 1047, 1054 n.4 (9th Cir. 2011) (quotation omitted). The Court 8 will “accept factual allegations in the complaint as true and construe the pleadings in the light 9 most favorable to the nonmoving party.” Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 10 1025, 1031 (9th Cir. 2008). 11 Section 101 of the Patent Act describes the scope of patentable subject matter as 12 encompassing “any new and useful process, machine, manufacture, or composition of matter, or 13 any new and useful improvement thereof.” 35 U.S.C. § 101. It is well settled that laws of nature, 14 natural phenomena, and abstract ideas are excluded from the universe of patentable subject matter. 15 See Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). These categories are not patent- 16 eligible because “they are the basic tools of scientific and technological work,” which are “free to 17 all men and reserved exclusively to none.” Mayo Collaborative Servs. v. Prometheus Labs., 566 18 U.S. 66, 71 (2012) (citations omitted). Allowing patent claims for laws of nature, natural 19 phenomena, and abstract ideas would “tend to impede innovation more than it would tend to 20 promote it,” thereby thwarting the primary object of the patent laws. Id. However, the Supreme 21 Court has also recognized the need to “tread carefully in construing this exclusionary principle lest 22 it swallow all of patent law.” Alice, 573 U.S. at 217. 23 The Supreme Court and Federal Circuit have articulated a two-part test for determining 24 whether a claim’s subject matter is patent-eligible. First, a court “determine[s] whether a claim is 25 ‘directed to’ a patent-ineligible abstract idea.” Content Extraction & Transmission LLC v. Wells 26 Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1346-47 (Fed. Cir. 2014) (citing Mayo, 566 U.S. at 75- 27 76). If so, the Court then “consider[s] the elements of the claim—both individually and as an 1 ordered combination—to assess whether the additional elements transform the nature of the claim 2 into a patent-eligible application of the abstract idea.” Id. at 1347. “This is the search for an 3 ‘inventive concept’—something sufficient to ensure that the claim amounts to ‘significantly more’ 4 than the abstract idea itself.” Id. (quoting Mayo, 566 U.S. at 72-73). 5 To determine whether the “claim’s character as a whole is directed to excluded subject 6 matter” the Court evaluates the claimed “advance” over the prior art. Intellectual Ventures I LLC 7 v. Erie Indem. Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (quotation omitted). “At Alice step one, 8 ‘it is not enough to merely identify a patent-ineligible concept underlying the claim; [the court] 9 must determine whether that patent-ineligible concept is what the claim is ‘directed to.’’” Data 10 Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1011 (Fed. Cir. 2018) (quoting Rapid Litig. 11 Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016))). The Court must “examine 12 earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were 13 about, and which way they were decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 14 1288, 1294 (Fed. Cir. 2016). Finally, in Aatrix Software, Inc. v. Green Shades Software, Inc., the 15 Federal Circuit emphasized that the question of eligibility may be determined at the pleadings 16 stage “only when there are no factual allegations that, taken as true, prevent resolving the 17 eligibility question as a matter of law.” 882 F.3d 1121, 1125 (Fed. Cir. 2018). 18 III. ANALYSIS 19 Google moves for judgment on the pleadings under Rule 12(c), arguing that the four 20 patents-in-suit are directed to abstract ideas and fail to assert any inventive concept to transform 21 the nature of the claims into a patent-eligible application of the abstract idea. The Court proceeds 22 under the two-part test outlined in Alice.1 23 1 EcoFactor makes a perfunctory argument that claim construction is necessary before the Court can 24 consider issues of invalidity. Opp. at 24-25. While claim construction is often helpful, and sometimes necessary, to resolve whether a claim is directed to patent-eligible subject matter, it “is 25 not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1273 (Fed. Cir. 2012). EcoFactor has neither 26 explained how any particular construction would alter the section 101 analysis, nor proposed any constructions that the Court should credit given the posture of this motion. In line with the Federal 27 Circuit and several other courts in this district, the Court finds that this motion can be resolved on A. The ’186 Patent 1 The ’186 patent is titled “System and method for calculating the thermal mass of a 2 building.” See ’186 patent. The ’186 patent claims “a system for calculating a value for the 3 effective thermal mass of a building.” Id. at Abstract. Claim 1 recites the following system claim: 4 1. A system for controlling a heating, ventilation and air conditioning 5 (HVAC) system comprising:
6 one or more server computers comprising computer hardware, the one or more server computers configured to receive inside 7 temperature measurements from at least a first location conditioned by at least one HVAC system; 8 one or more databases that store the inside temperature 9 measurements over time, the one or more databases accesses by the one or more server computers; 10 wherein the one or more server computers are located 11 remotely from the first location, the one or more server computers configured to receive outside temperature 12 measurements from at least one source other than the HVAC system, 13 wherein the one or more server computers are configured to 14 calculate one or more predicted rates of change in temperature at the first location based on status of the HVAC system, and 15 based on the outside temperature measurements, wherein the one or more predicted rates of change predict a speed a 16 temperature inside the first location will change in response to changes in outside temperature; and 17 wherein the one or more server computers are further 18 configured to determine whether to direct the HVAC control system to pre-cool the first structure based on the one or more 19 predicted rates of change prior to directing the HVAC control system to reduce electricity demand. 20 21 ’186 patent at 13:31-57. The ’186 patent’s other independent claim, Claim 8, discloses a method 22 reciting a similar invention. Id. at 14:19-39. The parties agree that claim 1 of the ’186 patent is 23 representative of the ’186 patent for purposes of the Court’s § 101 analysis. See Berkheimer v. HP 24 Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018) (“Courts may treat a claim as representative in certain 25 situations, such as if the patentee does not present any meaningful argument for the distinctive 26 significance of any claim limitations not found in the representative claim or if the parties agree to 27 1 treat a claim as representative.”). 2 Google argues that claim 1 of the ’186 patent is analogous to the patents found ineligible in 3 ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019). The Court disagrees. 4 The patents in ChargePoint claimed network-connected charging stations for electric vehicles. 5 The patents’ specification detailed the prior art’s lack of network communication that would allow 6 efficient interaction with respect to electrical needs, and the claimed solution enabled such 7 communication. Noting the breadth of the claims and the fact that the specification never 8 indicated that charging stations were improved from a technical perspective, the Federal Circuit 9 held that these asserted claims were directed to the “abstract idea of network communication for 10 device interaction.” Id. at 768. The court concluded that “the inventors here had the good idea to 11 add networking capabilities to existing charging stations to facilitate various business interactions. 12 But that is where they stopped, and that is all they patented.” Id. at 770. 13 By contrast, claim 1 of the ’186 patent recites a device that receives and stores inside 14 temperature measurements, calculates a predicted rate of change based on the stored temperature, 15 status of the HVAC system, and outside temperature (the ’186 patent describes this analysis as 16 calculating “thermal mass”), then determines whether to direct the HVAC to pre-cool the structure 17 before the HVAC reduces electricity. The Court finds that claim 1 is more analogous to the claims 18 deemed eligible in Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1149 (Fed. Cir. 19 2019) and CardioNet, LLC v. InfoBionic, Inc. 955 F.3d 1358, 1368 (Fed. Cir. 2020), cert. denied 20 sub nom. InfoBionic, Inc. v. Cardionet, LLC, 141 S. Ct. 1266 (2021). In both cases, the Federal 21 Circuit held that the asserted claims were directed to specific implementations of improved 22 devices and systems and not abstract ideas that used computers as tools. See Koninklijke KPN 23 N.V., 942 F.3d at 1150 (“[W]e conclude that appealed claims 2–4 of the ’662 patent are patent- 24 eligible because they are directed to a non-abstract improvement in an existing technological 25 process (i.e., error checking in data transmissions).”); CardioNet, 955 F.3d at 1368 (“[W]e 26 conclude that claim 1 of the ’207 patent is directed to an improved cardiac monitoring device and 27 not to an abstract idea.”). Similarly, claim 1 of the ’186 patent is directed to the non-abstract 1 process of directing programmable HVAC thermostats, not an abstract result that merely invokes 2 generic processes or machinery. 3 The written description of the ’186 patent supports this reading of claim 1. See 4 ChargePoint, 920 F.3d at 767 (“The ‘directed to’ inquiry may also involve looking to the 5 specification to understand ‘the problem facing the inventor’ and, ultimately, what the patent 6 describes as the invention.” (citation omitted)). As the specification explains, thermostats at the 7 time were unable to receive more than two variables and had a limited user interface, making it 8 less likely a user would control or re-program the thermostat to their preferences. See ’186 patent 9 at 1:46-60. This often diminished the energy savings attainable through the use of programmable 10 thermostats. Id. at 1:56-60. Accordingly, the ’186 patent provides a specific solution because it is 11 directed to a non-abstract improvement in an existing technological process (i.e., pre-cooling an 12 HVAC system). By requiring the determination of whether to direct the HVAC control system to 13 pre-cool the structure based on thermal mass calculation, claim 1 recites a specific implementation 14 of pre-cooling that improves the operation of the technological HVAC system process. 15 Google also contends that the ’186 patent fails because it does not specify how the claimed 16 improvement is implemented. But this requirement was rejected by the Federal Circuit in 17 Koninklijke KPN N.V., 942 F.3d at 1151 (“A claim that is directed to improving the functionality 18 of one tool (e.g., error checking device) that is part of an existing system (e.g., data transmission 19 error detection system) does not necessarily need to recite how that tool is applied in the overall 20 system (e.g., perform error detection) in order to constitute a technological improvement that is 21 patent-eligible.”). Rather, “the more relevant inquiry is ‘whether the claims in th[is] patent[ ] 22 focus on a specific means or method that improves the relevant technology or are instead directed 23 to a result or effect that itself is the abstract idea and merely invoke processes and machinery.’” 24 Id. (quoting McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)). 25 Here, claim 1 of the ’186 patent focuses on a specific method – the use of calculated thermal mass 26 – to improve the function of the HVAC thermostat. It is not directed to a result or effect that is the 27 abstract idea itself. 1 step one. Thus, the Court need not reach Alice step two. See Core Wireless Licensing S.A.R.L. v. 2 LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) (“Because we hold that the asserted claims 3 are not directed to an abstract idea, we do not proceed to the second step of the inquiry.”). 4 B. The ’100 Patent 5 The ’100 patent is titled “System, method and apparatus for dynamically variable 6 compressor delay in thermostat to reduce energy consumption.” See ’100 patent. It claims 7 systems and methods “for reducing the usage of a ventilation system.” Id. at Abstract. Claim 1 8 recites the following system claim:
9 1. A system for reducing the usage of a ventilation system comprising:
10 a thermostatic controller having at least two settings for a delay enforced by said thermostatic controller after said 11 thermostatic controller turns said ventilation system off prior to allowing said thermostatic controller to signal said 12 ventilation system to turn on again, one setting being for a first interval, and at least a second setting for a second interval that 13 is longer than said first interval; and
14 a computer processor in communication with said thermostatic controller, the processor configured to: 15 access stored data comprising a plurality of internal 16 temperature measurements taken within a structure and a plurality of outside temperature measurements 17 relating to temperatures outside the structure;
18 use the stored data to predict a rate of change of temperatures inside the structure in response to at least 19 changes in outside temperatures; and
20 evaluate one or more parameters including at least the outside temperature measurements and the predicted 21 rate of change, and to determine whether to adopt said first interval or said second interval based upon the 22 values of said parameters. 23 Id. at 9:61-10:17. The ’100 patent’s other independent claim, Claim 9, is a method claim reciting 24 a similar invention. Id. at 10:36-61. The parties agree that claim 1 of the ’100 patent is 25 representative of the ’100 patent for purposes of the Court’s § 101 analysis. See Berkheimer, 881 26 F.3d at 1365. 27 Google argues that the ’100 patent is patent-ineligible because it is directed to “the abstract 1 concept” that “humans have performed . . . since people first began using fire to heat their homes.” 2 Mot. at 16. However, this characterization oversimplifies the claimed invention. See McRO, 837 3 F.3d at 1313; see also Data Engine, 906 F.3d at 1011 (explaining that “[i]t is not enough . . . to 4 merely trace the invention to some real-world analogy,” because “[t]he question of abstraction is 5 whether the claim is ‘directed to’ the abstract idea itself.”). The Court concludes that the ’100 6 patent is more appropriately described as directed to the specific invention of a HVAC system 7 with a computer processor that selects from multiple compressor delays based on a set of 8 parameters like user preferences. And the Court accordingly finds that claim 1 “focus[es] on a 9 specific means or method that improves” HVAC system technology and is not “directed to a result 10 or effect that itself is the abstract idea and merely invoke generic processes and machinery.” 11 CardioNet, 955 F.3d at 1368 (quoting McRO, 837 F.3d at 1314). 12 In particular, the language of claim 1 recites an HVAC system that uses a computer 13 processor to predict a rate of change of inside temperatures, then uses those predictions along with 14 other parameters to select a compressor delay for the operation of the HVAC system. Thus, the 15 Court concludes that this claim is patent eligible because, like the claims deemed eligible in 16 Koninklijke KPN N.V., 942 F.3d at 1149 and CardioNet, 955 F.3d at 1368, it is directed to a 17 specific implementation of a system improvement. 18 Google contends that “having multiple compressor delays or adjustable compressor delays 19 was not a new concept [in the prior art].” Reply at 11 (citing ’100 patent at 2:25-40 (explaining 20 that existing programmable thermostats could adjust compressor delay through mechanical 21 switches)). Google’s argument is correct as far as it goes. But as the ’100 patent written 22 description explains, many existing HVAC systems could not easily adjust the compressor delay 23 for the system. Instead, “[c]hanging the compressor delay generally require[d] disassembling the 24 thermostat.” Id. at 2:32-40. Simply claiming an invention that uses a generic processor to select 25 from multiple compressor delays would not survive Alice step one because the “mere automation 26 of manual processes using generic computers does not constitute a patentable improvement in 27 computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. 1 computer and processor. It focuses on a specific method of improving HVAC system operation 2 by selecting an appropriate compressor delay based on user parameters and other calculations.2 In 3 other words, while the benefits of varying compressor delay were already known in the prior art, 4 the ’100 patent claims an improvement over the prior art because it allows the HVAC system to 5 better accommodate certain parameters by varying compressor delay. A review of the 6 specification as a whole makes clear that the ’100 patent is not directed to the ineligible idea of 7 merely selecting from multiple compressor delays but rather to the specific improvement of using 8 user preferences and rate of change predictions to make the selection. This provides the 9 technological benefit of “offer[ing] a simple way to create asymmetrical thermal waveforms 10 without the need for highly detailed programming.” ’100 patent at 3:29-34. 11 Thus, the ’100 patent discloses the specific method of a networked HVAC system that 12 selects from compressor delay variables based on certain parameters to improve the operation in 13 thermostats. On this basis, the Court concludes that the ’100 patent is not directed to an abstract 14 idea at Alice step one and the Court need not reach Alice step two. See Core Wireless Licensing, 15 880 F.3d at 1363. 16 C. The ’597 Patent 17 The ’597 patent is titled “System, method and apparatus for identifying manual inputs to 18 and adaptive programming of a thermostat.” See ’597 patent. It claims systems and methods “for 19 incorporating manual changes to the setpoint for a thermostatic controller into long-term 20 programming of the thermostatic controller.” Id. at Abstract. The ’597 patent contains three 21 independent claims, 1, 9, and 17. Because the parties have not designated a representative claim, 22 the Court will analyze each claim separately. See Berkheimer, 881 F.3d at 1365. 23 Google argues that all claims of the ’597 patent are directed to the abstract idea of “using 24 temperature data to detect a manual change in a thermostat’s temperature setting.” Mot. at 18. 25 Google characterizes the claims of the ’597 patent as “recit[ing] conventional computer functions 26 2 The ’100 patent written description explains that these parameters “may include user preferences, 27 such as the weather, time of day and other conditions under which the homeowner has elected to 1 for generic data collection, analysis, and storage to . . . ‘detect[] a manual change’ to a 2 [temperature] setpoint.” Id. at 21. EcoFactor responds that the ’597 patent recites an HVAC 3 control “that uses stored predicted rates of change in inside temperature to calculate scheduled 4 programming comprising automated setpoints that also compares actual setpoints with one or 5 more automated setpoints in order to determine whether the actual or automated setpoints are the 6 same or different based on a difference value.” Opp. at 16. 7 i. Claim 1 of the ’597 Patent 8 The first claim of the ’597 patent recites the following method: 9 1. A method for detecting manual changes to the setpoint for a thermostatic controller comprising: 10 providing a thermostatic controller operatively connected to a 11 heating ventilation and air conditioning system, the temperature set point of the heating ventilation and air 12 conditioning system being manually changeable; 13 accessing stored data comprising a plurality of internal temperature measurements taken within a structure and a 14 plurality of outside temperature measurements; 15 using the stored data to predict changes in temperature inside the structure in response to at least changes in outside 16 temperatures; 17 calculating with at least one computer, scheduled programming of the thermostatic controller for one or more 18 times to control the heating ventilation and air conditioning system, the scheduled programming comprising at least a first 19 automated setpoint at a first time; 20 recording, with the thermostatic controller, actual setpoints of the heating ventilation and air condition system; 21 communicating the actual setpoints from the one or more 22 thermostatic controllers to the at least one computer; 23 generating with the at least one computer, a difference value based on comparing at least one of the an actual setpoints at 24 the first time for the thermostatic controller to the first automated setpoint for the thermostatic controller; 25 detecting a manual change to the first automated setpoint by 26 determining whether the at least one of the actual setpoints and the first automated setpoint are the same or different based 27 on the difference value; and 1 Id. at 8:8-38. 2 The Court concludes that claim 1 of the ’597 patent is directed to the patent-eligible idea of 3 detecting and logging manual changes made to a HVAC system and, using that stored information 4 along with predictions of temperature changes based on outside and inside temperatures, adjusting 5 the HVAC system’s setpoints. This is a non-abstract improvement to the existing technological 6 process of an HVAC system. By requiring the logging of manual changes in a database, claim 1 7 recites a specific implementation that varies the way the HVAC system functions by improving its 8 ability to consider outside weather conditions and the thermal characteristics of individual homes. 9 This improvement allows the HVAC system to “dynamically achieve the best possible balance 10 between comfort and energy savings.” ’597 patent at 2:12-17. 11 Claim 1 does not specify how the logged manual changes are applied by the overall HVAC 12 system to achieve a technological improvement. But as noted above, see supra Section III.A, 13 under Koninklijke KPN N.V., the Federal Circuit does not require a patent claim recite a “last step 14 tying the claims to a ‘concrete application’” to survive at Alice step one. 942 F.3d at 1151. The 15 Court concludes that the claim focuses on the specific use of manual changes and internal 16 temperature rate of change predictions to improve adjustments to an HVAC system’s automated 17 setpoint. See id. (“[T]he more relevant inquiry is ‘whether the claims in th[is] patent[ ] focus on a 18 specific means or method that improves the relevant technology or are instead directed to a result 19 or effect that itself is the abstract idea and merely invoke processes and machinery.’”). It does not 20 merely focus on an abstract idea like improving an HVAC automated setpoint or the generic use of 21 computers or processors. 22 The ’597 specification confirms that claim 1 is not directed to an abstract idea. It explains 23 that existing thermostats “d[id] not [previously] record such inputs locally, and neither recognize 24 nor transmit the fact that a manual override has occurred.” ’597 patent at 5:44-47. The ’597 25 patent claims recite an invention that detects the manual changes made to the thermostat and uses 26 that data to determine whether it should incorporate the information into long-term programming. 27 The Court concludes that this is a specific enough solution to make concrete the asserted 1 1152. 2 Because claim 1 of the ’597 patent is not directed to an abstract idea at step one, the Court 3 need not reach Alice step two. See Core Wireless Licensing, 880 F.3d at 1363. 4 ii. Claim 9 of the ’597 Patent 5 Where claim 1 recites a method for “detecting manual changes to the setpoint,” claim 9 6 recites a method for “incorporating manual changes to the setpoint”:
7 9. A method for incorporating manual changes to the setpoint for a thermostatic controller, the method comprising: 8 providing a thermostatic controller operatively connected to a 9 heating ventilation and air conditioning system, the temperature set point of the heating ventilation and air 10 conditioning system being manually changeable;
11 accessing stored data comprising a plurality of internal temperature measurements taken within a structure and a 12 plurality of outside temperature measurements;
13 using the stored data to predict changes in temperatures inside the structure in response to at least changes in outside 14 temperatures;
15 calculating scheduled programming of setpoints in the thermostatic controller based on the predicted rate of change, 16 the scheduled programming comprising at least a first automated setpoint at a first time and a second automated 17 setpoint at a second time to control the heating ventilation and air conditioning system; 18 recording, with the thermostatic controller, actual setpoints of 19 the heating ventilation and air condition system;
20 communicating the actual setpoints from the thermostatic controller to the at least one computer; 21 comparing at least one of the actual setpoints at the first time 22 for the thermostatic controller to the first automated setpoint for the thermostatic controller; 23 detecting a manual change to the first automated setpoint by 24 determining whether the at least one of the actual setpoints and the first automated setpoint are the same or different; and 25 changing the operation of the heating ventilation and air 26 conditioning system by changing the second automated setpoint at the second time based on at least one rule for the 27 interpretation of the manual change. 1 As noted above, claims 1 and 9 of the ’597 patent recite slightly different limitations: 2 while claim 1 detects manual change data and predicts inside temperature changes, claim 9 3 “incorporat[es]” that data into the HVAC system to change its operation. The differences do not 4 affect the Court’s Alice step one analysis, because both claims “focus on a specific means or 5 method that improves” [HVAC system technology] [and] are not ‘directed to a result or effect that 6 itself is the abstract idea and merely invoke generic processes and machinery.’” CardioNet, 955 7 F.3d at 1368 (quoting McRO, 837 F.3d at 1314). 8 Because the ’597 specification notes that existing thermostats did not record or recognize a 9 manual change to the thermostat, and because the specification as a whole recites a specific 10 invention that uses manual change data to determine whether it should incorporate certain 11 information into a thermostat’s long-term programming, the Court concludes that claim 9 of the 12 ’597 patent is not directed to an abstract idea. 13 Accordingly, claim 9 of the ’597 patent is not directed to an abstract idea at step one and 14 the Court need not reach Alice step two. See Core Wireless Licensing, 880 F.3d at 1363. 15 iii. Claim 17 of the ’597 Patent 16 Claim 17, the last independent claim of the ’597 patent, recites the following apparatus:
17 17. An apparatus for detecting manual changes to one or more setpoints for a thermostatic controller, the apparatus comprising: 18 a programmable communicating thermostat operatively 19 connected to a heating ventilation and air conditioning system, the temperature set point of the heating ventilation and air 20 conditioning system being manually changeable;
21 at least an electronic storage medium comprising stored data of a plurality of internal temperature measurements taken 22 within a structure and a plurality of outside temperature measurements; 23 computer hardware configured to communicate with the 24 electronic storage medium and with the programmable communicating thermostat, the computer hardware 25 configured to use the stored data to predict a rate of change of temperatures inside the structure in response to changes in 26 outside temperatures;
27 the computer hardware further configured to calculate a the heating ventilation and air conditioning system based on 1 the predicted rate of change, the scheduled programming comprising one or more automated setpoints; 2 wherein the programmable communicating thermostat records 3 actual setpoints of the heating ventilation and air condition system; 4 wherein the computer hardware is further configured to store 5 in the electronic storage medium, the one or more automated setpoints associated with the scheduled programming for the 6 programmable communicating thermostat;
7 wherein the programmable communicating thermostat records actual setpoints of the heating ventilation and air condition 8 system;
9 wherein the computer hardware is further configured to obtain the actual setpoints from the programmable communicating 10 thermostat and store the actual setpoints in the electronic storage medium; 11 wherein the computer hardware is further configured to 12 compare the one or more automated setpoints associated with the scheduled setpoint programming with at least one of the 13 actual setpoints; and
14 wherein the computer hardware is further configured to detect a manual change to the one or more automated setpoints by 15 determining whether the at least one of the actual setpoints and the one or more automated setpoints are the same or 16 different based on the difference value. 17 Id. at 9:40-10:34. 18 The Court concludes that Claim 17 is directed not to an abstract idea but to an HVAC 19 system configured to detect manual changes to the automated setpoints and determine whether to 20 change those automated setpoints based on those manual changes. For the same reasons discussed 21 with respect to claims 1 and 9 of the ’597 patent, the ’597 patent written description reinforces the 22 Court’s conclusion that claim 17 recites a specific method to improve the function of the HVAC 23 thermostat and is not directed to a result or effect that is the abstract idea itself. 24 Accordingly, because claim 17 of the ’597 patent is not directed to an abstract idea at step 25 one, the Court need not reach Alice step two. See Core Wireless Licensing, 880 F.3d at 1363. 26 D. The ’890 Patent 27 The ’890 patent is titled “System and method for using a mobile electronic device to 1 geographic location of networked consumer electronics devices as indications of occupancy of a 2 structure for purposes of automatically adjusting the temperature setpoint on a thermostatic HVAC 3 control.” Id. at Abstract. Claim 1 is the ’890 patent’s sole independent claim and recites:
4 1. A thermostat system comprising:
5 a housing;
6 electrical contacts configured to connect the thermostat with wires that allow for at least two electrical connections from a 7 building’s HVAC system to the contacts;
8 a display configured to present information to a user;
9 a wireless radio compatible with a wireless radio frequency protocol and configured to communicate bi-directionally with 10 a location-aware mobile device;
11 a temperature sensor;
12 one or more processors configured with electronic circuitry to:
13 receive HVAC data parameters, including a first data parameter from the temperature sensor comprising an 14 interior temperature inside the building; and
15 a second data parameter from a network connected to the thermostat, wherein the second data parameter 16 comprises an outside weather condition collected from a source external to the building; 17 determine a first temperature setpoint data parameter 18 for the building, wherein the first setpoint data parameter includes a first temperature value and a first 19 time value;
20 determine a second temperature setpoint data parameter for the building, wherein the second 21 setpoint data parameter includes a second temperature value and a second time value; 22 receive radio frequency signals from the location- 23 aware mobile device;
24 receive geo-positioning data from the location-aware mobile device and automatically adjust a temperature 25 value based on the geo-positioning data, including initiating at least one cooling or heating cycle for the 26 HVAC system when the geo-positioning data is determined to indicate that the building is unoccupied 27 by the user; desired temperature for the HVAC system; 1 electronic circuitry configured to analyze a plurality of data 2 parameters specific to the user, including at least one data parameter relating to usage of the HVAC system at various 3 times; and
4 electronic circuitry configured to generate and communicate usage metrics pertaining to the HVAC system over time; and 5 a compressor delay circuit configured to delay the start or stop 6 of a compressor for the HVAC system and protect the compressor from rapid cycling. 7 8 Id. at 33:29-34:10. The parties agree that claim 1 of the ’890 patent is representative of the ’890 9 patent for purposes of the Court’s § 101 analysis. See Berkheimer, 881 F.3d at 1365. 10 The Court finds that claim 1 of the ’890 patent is directed to an HVAC system that uses 11 geo-positioning data from location-aware mobile devices to determine if a building is occupied 12 and readjust the system’s temperature as needed. While Google characterizes the ’890 patent as 13 nothing more than the mere automation of turning an HVAC system on or off depending on 14 whether an occupant is home, this again oversimplifies the claims. See McRO, 837 F.3d at 1313 15 (“Courts must be careful to avoid oversimplifying the claims by looking at them generally and 16 failing to account for the specific requirements of the claims.” (quotation marks and quotation 17 omitted)). The ’890 patent focuses on the new and useful feature of controlling a home’s HVAC 18 thermostat by detecting whether an occupant is home based on mobile device location data. 19 The ’890 patent’s claimed advance makes clear that its claims are not directed to an 20 abstract idea. See Ancora Techs., 908 F.3d at 1347 (“We examine the patent’s ‘claimed advance’ 21 to determine whether the claims are directed to an abstract idea.” (quotation omitted)). The ’890 22 patent specification identifies the growing desire to increase energy efficiency amid rising energy 23 prices. See ’890 patent at 2:19-39. This trend included the hospitality industry, where HVAC 24 systems in hotel rooms were often left operating while the rooms were unoccupied, wasting 25 considerable energy. Id. at 2:40-47. To address this problem, hotels began incorporating motion 26 sensors into their HVAC systems to turn the system off if the sensor did not detect any motion 27 after a predetermined interval. Id. at 56-64. However, “the systems used in hotels do not easily 1 between the average hotel room and the average home. /d. at 3:1-8. As the ’890 patent 2 || specification explains, while a hotel room tends “to be small enough that a single motion sensor 1s 3 sufficient to determine with a high degree of accuracy whether or not the room is occupied,” “[a] 4 single motion sensor in the average home today would have limited value because there are likely 5 to be many places one or more people could be home and active yet invisible to the motion 6 sensor.” Jd. And though “[t]he most economical way to include a motion sensor in a traditional 7 || programmable thermostat would be to build it into the thermostat itself,” because “thermostats are 8 generally located in hallways,” they were “unlikely to be exposed to the areas where people tend 9 to spend their time.” Jd. at 3:8-20. 10 To more accurately detect whether an occupant is home, the ’890 patent uses a “significant 11 new technology” incorporated into mobile devices — “the ability to geolocate the device,” id. at 12 3:37-40 — and claims an HVAC system configured to receive mobile device geolocation data 5 13 signals to detect and predict occupancy and adjust the HVAC system accordingly. Accordingly, 14 || EcoFactor’s invention solves the problem of managing energy consumption in a home based on 15 || mobile device location signals. Such an invention is directed a non-abstract idea and thus patent- 16 || eligible. 3 17 Because the *890 patent is not directed to an abstract idea at step one, the Court need not 18 reach Alice step two. See Core Wireless Licensing, 880 F.3d at 1363. 19 || IV. CONCLUSION 20 The Court DENIES Google’s motion for judgment on the pleadings. 21 IT IS SO ORDERED. 22 || Dated: 5/6/2022 23 Absepwrl & Ml}. HAYWOOD S. GILLIAM, JR. United States District Judge 25 26 27 28