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UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

ECOFACTOR, INC.,

Plaintiff,

v.

GOOGLE LLC,

Defendant.

Case No. 6:20-cv-00075-ADA

JOINT PRETRIAL ORDER

Plaintiff EcoFactor, Inc. (“EcoFactor”) and Defendant Google LLC (“Google”) hereby 

submit the following proposed Joint Pre-Trial Order pursuant to the Court’s Order (Dkt. No. 68), 

the Court’s Standing Order on Pre-Trial Procedures and Requirements in Civil Cases, the Federal 

Rules of Civil Procedure, and Local Rules of this Court. The parties have stipulated to various 

matters identified herein and have identified exhibits, witnesses, factual contentions and triable 

issues.

It is hereby ORDERED as follows:

I. APPEARANCES OF COUNSEL

A. Attorneys for EcoFactor

Reza Mirzaie

Marc A. Fenster

Paul A. Kroeger

James N. Pickens

Kristopher R. Davis

Minna Y. Chan

Matthew Aichele

Adam S. Hoffman

Jason M. Wietholter

RUSS AUGUST & KABAT

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12424 Wilshire Boulevard 12th Floor

Los Angeles, California 90025

Tel: 310-826-7474

rak_ecofactor@raklaw.com

B. Attorneys for Google

Robert A. Van Nest (admitted Pro Hac Vice)

Leo L. Lam (admitted Pro Hac Vice)

Eugene M. Paige (admitted Pro Hac Vice)

R. Adam Lauridsen (admitted Pro Hac Vice)

Jennifer A. Huber (admitted Pro Hac Vice)

Kristin Hucek (admitted Pro Hac Vice)

Anna Porto (admitted Pro Hac Vice)

Patrick E. Murray (admitted Pro Hac Vice)

Gregory Washington (admitted Pro Hac Vice)

Eric B. Hanson (admitted Pro Hac Vice)

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Telephone: 415 391 5400 

Facsimile: 415 397 7188

econest-kvp@keker.com

Michael E. Jones (TX Bar No. 10929400)

mikejones@potterminton.com

Patrick C. Clutter (TX Bar No. 24036374)

patrickclutter@potterminton.com

POTTER MINTON

110 N. College, Suite 500

Tyler, Texas 75702

Tel: 903-597-8311

Fax: 903-593-0846

Shamita Etienne-Cummings 

(admitted to the Western District of Texas)

ALLEN & OVERY LLP

1101 New York Avenue, NW

Washington, DC 20005

Telephone: (202) 683-3810

GoogleEcofactorWDTX@AllenOvery.com

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Bijal V. Vakil

(admitted to the Western District of Texas)

Eric Lancaster (admitted Pro Hac Vice)

ALLEN & OVERY LLP

530 Lytton Avenue, 2nd Floor

Palo Alto, CA 94301

Telephone: (650) 388-1703

GoogleEcofactorWDTX@AllenOvery.com

II. JOINT STATEMENT OF THE CASE

This is an action for patent infringement. EcoFactor accuses Google of infringing:

• Claims 5 and 8 of U.S. Patent No. 8,738,327 (“the ’327 patent”),

• Claims 1 and 8 of U.S. Patent No. 8,412,488 (“the ’488 patent”), and

• Claims 2, 6, 12, and 17 of U.S. Patent No. 10,534,382 (“the ’382 patent”),1

by making, using, selling, offering for sale, and/or importing into the United States the Accused 

Products. EcoFactor additionally alleges that Google’s infringement is willful. EcoFactor seeks 

an injunction, and damages of no less than a reasonable royalty for Google’s infringement, 

together with interest and costs, as well as enhanced damages under 35 U.S.C. § 284 and 

attorneys’ fees under 35 U.S.C. § 285.

Google denies that it has infringed, or currently infringes, any of the Asserted Claims, 

directly or indirectly, and also denies that any of the alleged infringement was or is willful. 

Google further contends that all of the Asserted Claims are invalid under 35 U.S.C. §§ 101, 102, 

103, and/or 112, including, without limitation, because they are anticipated and/or rendered 

obvious by prior art, are directed to patent-ineligible subject matter, and fail the written 

description, enablement, and/or definiteness requirements. Google thus denies that EcoFactor is 

entitled to any relief whatsoever. To the extent any Asserted Claim is found to be infringed, 

enforceable, and not invalid, Google agrees that a reasonable royalty is the appropriate measure 

1 The claims enumerated in these bullet points are collectively referred to the “Asserted Claims” 

throughout this order. The ’327 patent, the ’488 patent, and the ’382 patent are collectively 

referred to as the “Asserted Patents.”

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of damages. Google disputes, however, EcoFactor’s assertions of what constitutes a reasonable 

royalty and the underlying methodology used by EcoFactor. Google disputes that EcoFactor is 

entitled to enhanced damages, interest, costs, attorneys’ fees in this case, equitable relief, or an 

injunction. 

III. CONTENTIONS OF THE PARTIES

A. EcoFactor’s Contentions

1. The ’327 patent was duly and legally issued by the United States Patent 

and Trademark Office on May 27, 2014. 

2. The ’327 patent claims priority to Provisional Application No. 60/994,011 

filed on September 17, 2007, and thus is entitled to this priority date. 

3. The ’488 patent was duly and legally issued by the United States Patent 

and Trademark Office on April 2, 2013. 

4. The ’488 patent claims priority to Provisional Application No. 60/994,011 

filed on September 17, 2007, and thus is entitled to this priority date.

5. The ’382 patent was duly and legally issued by the United States Patent

and Trademark Office on January 14, 2020.

6. The ’382 patent claims priority to Provisional Application No. 61/134,714 

filed on July 14, 2008, and thus is entitled to this priority date. 

7. Google has been aware of the ’488 and ’327 patents since at least August 

10, 2018.

8. Google has been aware of the ’382 patent since February 13, 2020.

9. Google makes, uses, sells, offers for sale and imports products that are 

accused of infringing the Asserted Patents. Google’s products accused of 

infringement are as follows (collectively “the Accused Products”):

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a. Smart thermostat systems and smart HVAC control systems made, 

used, offered for sale, or sold by Google;

b. Nest Learning Thermostat Third Generation;

c. Nest Thermostat E;

d. Nest Thermostat;

e. Google servers or Nest servers that support the Nest Learning 

Thermostat Third Generation, Nest Thermostat E, or Nest 

Thermostat; 

f. Google’s mobile applications that support the Nest Learning 

Thermostat Third Generation, Nest Thermostat E, or Nest 

Thermostat, including the Google Home app and the Nest app.

10. Google infringes Claims 5 and 8 of the ’327 patent, literally or under the 

doctrine of equivalents, by making, using, selling and offering for sale the 

Accused Products in the United States.

11. Google indirectly infringes Claims 5 and 8 of the ’327 patent, literally or 

under the doctrine of equivalents, by inducing infringement, by 

affirmatively encouraging infringing uses of the Accused Products in the 

United States, with knowledge of the asserted patents, and with knowledge 

or willful blindness that the encouraged acts result in infringement.

12. Google indirectly infringes Claims 5 and 8 of the ’327 patent, literally or 

under the doctrine of equivalents, by contributorily infringing, by making, 

using, selling, and offering for sale the Accused Products in the United 

States, with knowledge or willful blindness that the Accused Products are 

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especially made or adapted for use in infringement of the patent, are not 

staple articles of commerce, and are incapable of substantial noninfringing use.

13. Google infringes Claims 1 and 8 of the ’488 patent, literally or under the 

doctrine of equivalents, by making, using, selling and offering for sale the 

Accused Products in the United States.

14. Google indirectly infringes Claims 1 and 8 of the ’488 patent, literally or 

under the doctrine of equivalents, by inducing infringement, by 

affirmatively encouraging infringing uses of the Accused Products in the 

United States, with knowledge of the asserted patents, and with knowledge 

or willful blindness that the encouraged acts result in infringement.

15. Google indirectly infringes Claims 1 and 8 of the ’488 patent, literally or 

under the doctrine of equivalents, by contributorily infringing, by making, 

using, selling, and offering for sale the Accused Products in the United 

States, with knowledge or willful blindness that the Accused Products are 

especially made or adapted for use in infringement of the patent, are not 

staple articles of commerce, and are incapable of substantial noninfringing use.

16. Google infringes Claims 2, 16, 12, and 17 of the ’382 patent, literally or 

under the doctrine of equivalents, by making, using, selling and offering 

for sale the Accused Products in the United States.

17. Google indirectly infringes Claims 2, 16, 12, and 17 of the ’382 patent, 

literally or under the doctrine of equivalents, by inducing infringement, by 

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affirmatively encouraging infringing uses of the Accused Products in the 

United States, with knowledge of the asserted patents, and with knowledge 

or willful blindness that the encouraged acts result in infringement.

18. Google indirectly infringes Claims 2, 16, 12, and 17 of the ’382 patent, 

literally or under the doctrine of equivalents, by contributorily infringing, 

by making, using, selling, and offering for sale the Accused Products in 

the United States, with knowledge or willful blindness that the Accused 

Products are especially made or adapted for use in infringement of the 

patent, are not staple articles of commerce, and are incapable of 

substantial non-infringing use. 

19. Google’s infringement has been and continues to be willful.

20. At no point in time did Google redesign the Accused Products in an 

attempt to avoid infringement of the Asserted Patents.

21. EcoFactor has suffered damages in an amount to be determined at trial as 

a direct and proximate cause of Google’s direct infringement, and is 

entitled to an award of damages adequate to compensate it for Google’s 

infringement. 

22. EcoFactor is entitled to a running royalty.

23. EcoFactor is entitled to injunctive relief.

24. EcoFactor is also entitled to enhanced damages for past and continued 

willful conduct, as well as an award of interest, costs, attorneys’ fees and 

any other relief the Court deems equitable and just.

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25. Google’s infringement and conduct justifies finding this dispute an 

exceptional case.

B. Google’s Contentions

Google’s contentions in this case are detailed in its pleadings, discovery responses, expert 

reports, and Google’s motions, including its motions for summary judgment, Daubert motions, 

and motions in limine, which are incorporated here by reference. By providing these contentions, 

Google does not concede that all of these issues are appropriate for trial. In particular, Google 

does not waive any of its pending or future filed motions, which if granted, would render some 

or all of these issues moot. 

1. ’488 Patent

26. Google denies that it has infringed or currently infringes Claims 1 or 8 of 

the ’488 patent, directly or indirectly. Specifically, Google denies that the 

Nest Learning Thermostat Third Generation, Nest Thermostat E, or the 

Nest Thermostat2 infringe Claims 1 or 8 of the ’488 patent directly or 

indirectly. 

27. Google contends that it has not induced or contributed to infringement of 

the ’488 patent because direct infringement cannot be proven. 

Furthermore, if a finding of direct infringement is entered, Google 

contends that it has not induced or contributed to any infringement 

because it lacked the requisite knowledge and intent. No notice of 

infringement of any EcoFactor patent was given prior to the filing of the 

2 Google objects to EcoFactor’s definition of “Accused Products” in its contentions to the extent 

it includes products other than the Nest Learning Thermostat Third Generation, Nest Thermostat 

E, or the Nest Thermostat. 

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lawsuit. In addition, it cannot be shown that Google knew or knows that 

the acts of others that EcoFactor alleges Google induced constitute 

infringement of the ’488 patent, or that Google knew or knows that 

components it supplied were made or adapted for use in an infringing 

product and lack substantial non-infringing uses. 

28. Google contends that the Asserted Claims of the ’488 patent are directed 

to patent-ineligible subject matter, and thus invalid, under 35 U.S.C. § 

101. See Dkt. No. 111.

29. Google contends that each of the Asserted Claims of the ’488 patent is 

invalid under 35 U.S.C. § 103, at least based on one or more of the 

following prior art references: 

• U.S. Patent Application No. 2004/0117330 (“Ehlers ’330”);

• U.S. Patent No. 7,216,016 (“Van Ostrand”);

• U.S. Patent No. 5,729,474 (“Hildebrand”); and

• U.S. Patent No. 4,897,798 (“Cler”).

30. Google contends that the prior art can be applied to the claims to prove 

obviousness as shown: 

Claim of the ’488 Patent References

1 Ehlers ’330

Ehlers ’330 + Van Ostrand

Hildebrand + Van Ostrand

Cler + Van Ostrand

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8 Ehlers ’330

Ehlers ’330 + Van Ostrand

Hildebrand + Van Ostrand

Cler + Van Ostrand

Hildebrand + Van Ostrand + Ehlers ’330

Cler + Van Ostrand + Ehlers ’330

31. Google contends that the Asserted Claims of the ’488 patent are not 

adequately enabled, and thus are invalid under 35 U.S.C. § 112.

32. Google contends that the Asserted Claims of the ’488 patent are invalid 

under 35 U.S.C. § 112 for failure to comply with the written description 

requirement. 

33. Google contends that the Asserted Claims of the ’488 patent are invalid 

under 35 U.S.C. § 112 for indefiniteness because the language of the 

claims fails to inform with reasonable certainty those skilled in the art 

about the scope of the invention. 

34. Google contends that the priority date for the ’488 patent is its earliest 

filing date, July 31, 2008. Google disputes EcoFactor’s contention that the 

applicable priority date for the ’488 patent is September 17, 2007. 

35. Google denies that it received notice of the ’488 patent before EcoFactor 

filed this suit on January 31, 2020. Google also denies that it knew or 

should have known of any risk that it was infringing the ’488 patent. 

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36. Google contends that it has not willfully infringed, and is not willfully 

infringing, the ’488 patent, and that EcoFactor has not put forward any 

sufficient basis for willful infringement. 

37. Google contends that EcoFactor is barred from asserting infringement 

under the doctrine of equivalents for Claim 1 of the ’488 patent due to 

prosecution history estoppel. See Dkt. No. 124. 

2. ’327 Patent

38. Google denies that it has infringed or currently infringes Claims 5 or 8 of 

the ’327 patent, directly or indirectly. Specifically, Google denies that any 

of the Accused Products infringe Claims 5 or 8 of the ’327 patent directly 

or indirectly. 

39. Google contends that it has not induced or contributed to infringement of 

the ’327 patent because direct infringement cannot be proven. 

Furthermore, if a finding of direct infringement is entered, Google 

contends that it has not induced or contributed to any infringement 

because it lacked the requisite knowledge and intent. No notice of 

infringement of any EcoFactor patent was given prior to the filing of the 

lawsuit. In addition, it cannot be shown that Google knew or knows that 

the acts of others that EcoFactor alleges Google induced to constitute 

infringement of the ’327 patent, or that Google knew or knows that 

components it supplied were made or adapted for use in an infringing 

product and lack substantial non-infringing uses.

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40. Google contends that the Asserted Claims of the ’327 patent are directed 

to patent-ineligible subject matter, and thus invalid, under 35 U.S.C. § 

101. See Dkt. No. 111.

41. Google contends that each of the Asserted Claims of the ’327 patent is 

invalid under 35 U.S.C. §§ 102 and/or 103, at least based on one or more 

of the following prior art references: 

• U.S. Patent Application No. 2004/0117330 (“Ehlers ’330”);

• U.S. Patent No. 6,868,293 (“Schurr”);

• WebCTRL building automation system (“WebCTRL”); and

• U.S. Patent No. 4,897,798 (“Cler”).

42. Google contends that the prior art can be applied to the claims to prove 

anticipation and/or obviousness as shown: 

Claim of the ’327 Patent References

5 Ehlers ’330

WebCTRL

WebCTRL + Cler

8 Ehlers ’330

WebCTRL

43. Google contends that the Asserted Claims of the ’327 patent are not 

adequately enabled, and thus are invalid under 35 U.S.C. § 112.

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44. Google contends that the Asserted Claims of the ’327 patent are invalid 

under 35 U.S.C. § 112 for failure to comply with the written description 

requirement. 

45. Google contends that the Asserted Claims of the ’327 patent are invalid 

under 35 U.S.C. § 112 for indefiniteness because the language of the 

claims fails to inform with reasonable certainty those skilled in the art 

about the scope of the invention. 

46. Google contends that the priority date for the ’327 patent is its earliest 

filing date, July 31, 2008. Google disputes EcoFactor’s contention that the 

applicable priority date for the ’327 patent is September 17, 2007. 

47. Google denies that Google received notice of the ’327 patent before 

EcoFactor filed this suit on January 31, 2020. Google also denies that it 

knew or should have known of any risk that it was infringing the ’327 

patent. 

48. Google contends that it has not willfully infringed, and is not willfully 

infringing, the ’327 patent, and that EcoFactor has not put forward any 

sufficient basis for willful infringement. 

3. ’382 Patent

49. Google denies that it has infringed or currently infringes Claims 2, 6, 12, 

or 17 of the ’382 patent, directly or indirectly. Specifically, Google denies 

that any of the Accused Products infringe Claims 2, 6, 12, or 17 of 

the ’382 patent directly or indirectly. 

50. Google contends that it has not induced or contributed to infringement of 

the ’382 patent because direct infringement cannot be proven. 

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Furthermore, if a finding of direct infringement is entered, Google 

contends that it has not induced or contributed to any infringement 

because it lacked the requisite knowledge and intent. No notice of 

infringement of any EcoFactor patent was given prior to the filing of the 

lawsuit. In addition, it cannot be shown that Google knew or knows that 

the acts of others that EcoFactor alleges Google induced to constitute 

infringement of the ’382 patent or that Google knew or knows that 

components it supplied were made or adapted for use in an infringing 

product and lack substantial non-infringing uses. 

51. Google contends that the Asserted Claims of the ’382 patent are directed 

to patent-ineligible subject matter, and thus invalid, under 35 U.S.C. § 

101. See Dkt. No. 111.

52. Google contends that each of the Asserted Claims of the ’382 patent is 

invalid under 35 U.S.C. §§ 102 and/or 103, at least based on one or more 

of the following prior art references: 

• U.S. Patent Application Publication No. 2009/0302994 (“Rhee”);

• Ehlers ’330;

• U.S. Patent No. 8,196,185 (“Geadelmann”);

• A peer reviewed paper entitled “Demand Response Enabling 

Technology Development” that was published by the University of 

California – Berkeley on April 4, 2006 (“Arens”);

• U.S. Patent No. 8,880,047 (“Konicek”); and

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• U.S. Patent Application Publication No. 2005/0171645 

(“Oswald ’645”).

53. Google contends that the prior art can be applied to the claims to prove 

anticipation and/or obviousness as shown: 

Claim of the ’382 Patent References

2 Rhee

Ehlers ’330

Ehlers ’330 + Rhee

Oswald ’645

Oswald ’645 + Rhee

Oswald ’645 + Ehlers ’330

Oswald ’645 + Geadelmann

6 Rhee

Ehlers ’330

Ehlers ’330 + Arens

Ehlers ’330 + Konicek

Ehlers ’330 +Rhee + Arens

Ehlers ’330 +Rhee + Konicek

Rhee + Arens

Rhee + Konicek

Oswald ’645 + Arens

Oswald ’645 + Konicek

Oswald ’645 + Ehlers ’330 + Arens

Oswald ’645 + Ehlers ’330 + Konicek

Oswald ’645 + Geadelmann + Arens

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Oswald ’645 + Geadelmann + Konicek

12 Rhee

Rhee + Ehlers ’330

Rhee + Geadelmann

Ehlers ’330

Oswald ’645

Oswald ’645 + Rhee

Oswald ’645 + Ehlers ’330

Oswald ’645 + Geadelmann

17 Rhee

Rhee + Ehlers ’330

Rhee + Geadelmann

Ehlers ’330

Ehlers ’330 + Rhee

Oswald ’645

Oswald ’645 + Rhee

Oswald ’645 + Ehlers ’330

Oswald ’645 + Geadelmann

54. Google contends that the Asserted Claims of the ’382 patent are not 

adequately enabled, and thus are invalid under 35 U.S.C. § 112. 

55. Google contends that the Asserted Claims of the ’382 patent are invalid 

under 35 U.S.C. § 112 for failure to comply with the written description 

requirement. 

56. Google contends that the Asserted Claims of the ’382 patent are invalid 

under 35 U.S.C. § 112 for indefiniteness because the language of the 

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claims fails to inform with reasonable certainty those skilled in the art 

about the scope of the invention. 

57. Google contends that the priority date for the ’382 patent is its earliest 

filing date, July 13, 2009. Google disputes EcoFactor’s contention that the 

applicable priority date for the ’382 patent is July 14, 2008. 

58. Google denies that it received notice of the ’382 patent before EcoFactor 

filed this suit on January 31, 2020. Google also denies that it knew or 

should have known of any risk that it was infringing the ’382 patent. 

59. Google contends that it has not willfully infringed, and is not willfully 

infringing, the ’382 patent, and that EcoFactor has not put forward any 

sufficient basis for willful infringement. 

4. Damages

60. Google contends that EcoFactor is not entitled to damages at all, much 

less in the amount that EcoFactor seeks.

61. Google contends that should any Asserted Claims of the ’327 patent, ’488 

patent, and/or the ’382 patent be determined to be not invalid, infringed, 

and not unenforceable, EcoFactor’s damages calculations are inflated and 

inaccurate. Google contends in particular, as detailed in Google’s motion 

to exclude the expert testimony of David Kennedy, Dkt. No. 114, that 

EcoFactor’s damages theory is legally deficient and methodologically 

unsound and thus should be excluded from trial. Google further contends 

that additional deficiencies in the expert report of Mr. Kennedy, as set 

forth in the expert report of W. Todd Schoettelkotte, causes EcoFactor’s 

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requested damages to be inflated, inaccurate, and not reflective of a 

hypothetical negotiation between the parties. 

62. Google contends that should any Asserted Claim of the ’327 patent, ’488 

patent, and/or the ’382 patent be determined to be not invalid, infringed, 

and not unenforceable, damages, if any, are limited to a reasonable royalty 

as calculated through the methodology set forth in the expert report of W. 

Todd Schoettelkotte.

63. Google contends that if one or more of the Asserted Claims are found to 

be not invalid and not unenforceable, and if Google is found to have 

infringed such claims, EcoFactor is not entitled to enhanced damages 

under 35 U.S.C. § 284.

64. Google contends that this case is not exceptional and that EcoFactor is not 

entitled to its costs (including expert witness fees), expenses, or reasonable 

attorneys’ fees pursuant to 35 U.S.C. § 285.

65. Google contends that EcoFactor is not entitled to recover pre-judgment or 

post-judgment interest. 

66. Google contends that EcoFactor is not entitled to an injunction or any 

other equitable relief.

67. Google contends that EcoFactor is not entitled to any supplemental 

damages.

68. Google contends that EcoFactor is not entitled to any post-judgment 

ongoing royalty. 

5. Other Contentions

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69. Google objects to EcoFactor’s definition of “Accused Products” to the 

extent it includes products other than the Nest Learning Thermostat Third 

Generation, Nest Thermostat E, and the Nest Thermostat.

70. Google contends that the Court should exclude the rebuttal opinions of 

EcoFactor’s purported expert Dr. John A. Palmer concerning alleged 

secondary considerations of the non-obviousness of the Asserted Patents. 

Google also contends that Dr. Palmer is unqualified to testify regarding 

any alleged commercial success of EcoFactor’s products of the Accused 

Products. See Dkt. No. 108.

71. Google contends that EcoFactor’s unreasonable and inexcusable delay in 

filing suit against Google supports a laches defense against EcoFactor’s 

request for injunctive relief. See Dkt. No. 124.

72. Google contends that EcoFactor has failed to disclose its reliance on the 

doctrine of equivalents for each of the Asserted Claims in its infringement 

contentions and has failed to adequately describe the bases for its assertion 

of the doctrine of equivalents for each of the Asserted Claims in the expert 

report of Mr. Erik de la Iglesia. Google objects to EcoFactor asserting the 

doctrine of equivalents for any of the Asserted Claims where EcoFactor 

failed to disclose and/or failed to provide a basis for a finding of 

infringement under the doctrine of equivalents.

73. Google contends that to the extent that EcoFactor attempts to recapture 

any subject matter relinquished during the patent examination process 

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through broad claim construction, such a recapture is barred by the 

doctrine of prosecution history disclaimer. See Dkt. No. 124.

74. Google objects to any of EcoFactor’s contentions that were not properly 

disclosed pursuant to the Court’s rules and orders. 

75. Google objects to EcoFactor’s contentions regarding issues excluded by 

agreement and/or by the rulings of the Court. 

76. Google objects to any contention that is subject to a currently pending 

motion in this matter. 

77. Google objects to the relitigation of any issue that has already been 

determined by the Court. 

IV. STIPULATED FACTS

The parties agree to the following stipulated facts:

1. This Court has personal jurisdiction over the parties and subject matter 

jurisdiction over all claims and defenses in this action. 

2. EcoFactor is a privately held company, having its principal place of business at 

441 California Avenue, Number 2, Palo Alto, CA 94301.

3. Google LLC is a subsidiary of XXVI Holdings, Inc., which is a subsidiary of 

Alphabet, Inc. Google LLC is a Delaware limited liability company with a 

principal place of business at 1600 Amphitheatre Parkway, Mountain View, 

California 94043.

4. On January 31, 2020, EcoFactor filed the Complaint asserting infringement of 

the ’488 Patent, the ’327 Patent and the ’382 Patent (collectively the “Asserted 

Patents”).

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5. On June 17, 2020, EcoFactor filed the First Amended Complaint asserting 

infringement of the ’488 Patent, the ’327 Patent and the ’382 Patent.

V. DISPUTED ISSUES OF FACT AND LAW

The parties identify the following issues that remain to be litigated. The parties reserve 

the right to identify additional factual or legal issues that may arise, including issues raised by 

any further discovery undertaken in this case, the Court’s rulings on any pending motion, or 

ruling made at the pretrial conference in this action. By providing this statement, the parties do 

not concede that all of these issues are appropriate for trial. The parties also do not waive any of 

their pending motions.

1. Whether Google directly infringes Claims 5 and/or 8 of the ’327 patent.

2. Whether Google indirectly infringes Claims 5 and/or 8 of the ’327 patent.

3. Whether Google directly infringes Claims 1 and/or 8 of the ’488 patent.

4. Whether Google indirectly infringes Claims 1 and/or 8 of the ’488 patent.

5. Whether Google directly infringes Claims 2, 6, 12, and/or 17 of the ’382 patent.

6. Whether Google indirectly infringes Claims 2, 6, 12, and/or 17 of the ’382 patent.

7. Whether Google’s infringement, if any, has been and continues to be willful.

8. Whether EcoFactor has suffered damages in an amount to be determined at trial 

as a direct and proximate cause of Google’s direct infringement of claims found 

not to be invalid. 

9. What award of damages through trial should be awarded to EcoFactor to 

compensate for Google’s direct infringement, if any, including pre-judgment and 

post-judgment interest. 

10. Whether EcoFactor is entitled to any running royalty.

11. Whether EcoFactor is entitled to any injunctive relief.

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12. What award of damages after trial should be awarded to EcoFactor to compensate 

for continued infringement that is willful, if any.

13. Whether Google has proven by clear and convincing evidence that one or more of 

the Asserted Claims of the ’327 patent are invalid.

14. Whether Google has proven by clear and convincing evidence that one or more of 

the Asserted Claims of the ’488 patent are invalid.

15. Whether Google has proven by clear and convincing evidence that one or more of 

the Asserted Claims of the ’382 patent are invalid.

VI. EXHIBITS

A Joint Exhibit List, including documents identified by both parties and not objected to, 

is attached as Exhibit A-1. EcoFactor’s Exhibit List and Google’s objections thereto are attached 

as Exhibit A-2. Google’s Exhibit List and EcoFactor’s objections thereto are attached as Exhibit 

A-3. EcoFactor’s Physical Exhibit list is attached hereto as Exhibit A-4. Google’s Physical 

Exhibit list is attached as Exhibit A-5.

VII. WITNESSES

EcoFactor’s witness list for the jury trial, with Google’s objections, is attached as Exhibit 

B-1. Google’s witness list for the jury trial, with EcoFactor’s objections, is attached as Exhibit 

B-2. 

VIII. DEPOSITION DESIGNATIONS

EcoFactor’s deposition designations, with Google’s objections and counter-designations,

are attached as Exhibit C-1. Google’s deposition designations, with EcoFactor’s objections and

counter-designations, are attached as Exhibit C-2. 

IX. DISCOVERY DESIGNATIONS

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EcoFactor’s discovery designations, with Google’s objections, are attached as Exhibit D1. Google’s discovery designations, with EcoFactor’s objections, are attached as Exhibit D-2.

X. STIPULATIONS AND TRIAL DISCLOSURES

The following stipulations were agreed upon by the parties as discussed below and are 

made a part of this Pretrial Order.

The parties agree to the following procedure which will govern the disclosure of 

witnesses, exhibits, deposition testimony and demonstratives to use at trial and the process to 

identify any objections remaining between the parties with regard to these disclosures:

A. Motions

All motions for judgment as a matter of law pursuant to Fed. R. Civ. P. 50(a) may be 

brought to the Court orally or in writing. Unless the Court sets alternative deadlines, all 

oppositions to motions filed pursuant to Fed. R. Civ. P. 50(b) must be filed within 28 days of the 

filing of the motion. All replies in support of the motions must be filed within 21 days of service 

of any oppositions. The parties reserve their right to seek reasonable extensions of these 

deadlines, subject to the Court’s approval.

B. Exhibits

The Exhibit Lists set forth the parties’ exhibits for their respective cases-in-chief; the lists 

do not include potential impeachment material that is not introduced into evidence. The parties 

reserve the right to offer exhibits for purposes of impeachment that are not included in the 

Exhibit Lists.

No later than 7:00 p.m.3 two (2) calendar days before their introduction (e.g., Sunday 

evening for a witness to be called on Tuesday), counsel shall (1) provide opposing counsel with 

3 All times noted herein are Central Time.

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an identification of trial exhibits to be used on direct examination of each witness (both live and 

by deposition) and (2) make any non-documentary trial exhibits to be used with the witness 

available for physical inspection. Any objections to the identified exhibits shall be provided no 

later than 7:00 p.m. one (1) calendar day before the exhibits are proposed to be introduced and 

the parties shall meet and confer telephonically or in person in an attempt to resolve any 

objections to the exhibits at 9:00 p.m. the day the objections are provided. The parties will 

continue in good faith to meet and confer regarding exhibits and if objections remain unresolved, 

the parties will cooperate in seeking to have the Court resolve any disputes prior to the 

introduction of the exhibit.

The parties stipulate to the authenticity of each document that on its face appears to be 

generated by a party (plaintiff or defendant). The parties reserve the right to add additional 

deposition designations to establish the foundation and authenticity of an exhibit to the extent the 

admissibility of a particular document is challenged. Notwithstanding this stipulation, each party 

preserves its right to object to the document on any ground other than authenticity. The Final 

Exhibit Lists must be filed by January 28, 2022. Those Final Exhibit Lists shall not be 

supplemented without approval of all parties or leave of the Court upon a showing of good 

cause. 

No exhibit will be admitted unless offered into evidence through a witness, who must at 

least be shown the exhibit. At some point before the completion of the witness’s testimony, any 

party that has used an exhibit with the witness and wishes that exhibit to be admitted into 

evidence must formally move the exhibit into evidence by exhibit number. Exhibits may not be 

published, displayed, or otherwise shown to the jury until after they have been admitted into 

evidence. Once admitted, counsel may publish exhibits to the jury without requesting to do so. 

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The parties may use each other’s exhibits listed on the parties’ respective exhibit lists attached 

hereto to the same effect as though it were on their own exhibit list, subject to all evidentiary 

objections. However, another party’s exhibit is not admissible by virtue of being on an exhibit 

list or over an objection; a party seeking to introduce another party’s exhibit must still have a 

witness sponsor the exhibit into evidence as described above subject to any objections.

The parties agree that any description of a document on an exhibit list is provided for 

convenience only and shall not be used as an admission or otherwise as evidence regarding the 

listed document or any other listed document.

Finally, legible copies of United States and foreign patents, the file prosecution histories 

of United States patents, published foreign patent applications, and certified translations thereof 

(if in English or translated into English) may be offered and received in evidence in lieu of 

certified copies thereof, subject to all other objections which might be made to the admissibility 

of certified copies.

C. Witnesses

The parties agree to disclose the witnesses in the order that they will be called. No later 

than 7:00 p.m. two (2) calendar days before they are to be called, counsel shall provide to 

opposing counsel the names and order of witnesses to be called (both live and by deposition). 

Any objections to the identified witnesses shall be provided no later than 7:00 p.m. the day 

before the witness is offered to testify and the parties shall meet and confer telephonically or in 

person in an attempt to resolve any objections to the witnesses at 9:00 p.m. the day the 

objections are provided. If counsel intends to change the order of witnesses or the matter of 

presentation of witness testimony (i.e., by live video feed) due to a COVID-19 pandemic-related 

disruption, they shall notify the other side immediately according to the parties’ agreement 

regarding how to deal with such disruptions, set forth below in the undisputed portions of section 

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XV. The parties will continue in good faith to meet and confer regarding exhibits and if 

objections remain unresolved, the parties will cooperate in seeking to have the Court resolve any 

disputes prior to the introduction of the exhibit.

Fact witnesses are not to be allowed into the courtroom before they testify on the stand, 

or after, if they are subject to recall. The only exception is the parties’ client representative, who 

will be allowed in the courtroom even if testifying in the case.

D. Deposition Testimony4

The parties shall identify a list of deposition designations to be played or read to the jury 

by 7:00 p.m. five (5) calendar days before the designations are to be played or read to the jury. 

Any objections and counter-designations shall be provided no later than 3:00 p.m. three (3) 

calendar days before the designations are to be played or read to the jury. Any objections to 

counter-designations shall be provided no later than 7:00 p.m. two (2) calendar days before the 

counter-designations are provided. The party introducing the deposition testimony shall be 

responsible for editing the deposition video to include the testimony and any counter-designation 

testimony, and remove any attorney objections, and provide a final version of the deposition 

testimony excerpts (testimony clip report) to the other party by 7:00 p.m. the day before it is to 

be shown to the jury. If the party intends to read the deposition testimony into the record instead 

of playing the video, the party shall state that in writing by 7:00 p.m. the day before the 

testimony is to be introduced. The parties shall meet and confer at 9:00 p.m. the day before the 

deposition testimony is to be shown to the jury in an attempt to resolve any objections to the 

deposition. The parties may continue to cooperate in good faith to narrow deposition 

4 EcoFactor’s Position: To the extent permitted by the Federal Rules of Evidence and rulings 

from the Court, the parties agree that depositions may be used at trial whether or not the 

transcripts of such depositions have been signed and filed as set forth in Federal Rule of Civil 

Procedure 30(b).

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designations and counter-designations to be played or read to the jury after they have been 

disclosed in accordance with the above procedures. The parties will continue in good faith to 

meet and confer regarding the proposed deposition testimony and if objections remain 

unresolved, the parties will cooperate in seeking to have the Court resolve any disputes prior to 

presenting the proposed testimony. 

All designated deposition testimony may be played by video or may be read live in court. 

The parties agree that any counter-designations, to which the other party did not object or to 

which the Court overruled the objection, will be included in the reading or video playing of 

deposition designations. To the extent that the trial is subject to specific time limitations, the time 

required to read or play back testimony shall count against the party that designated or counterdesignated the testimony. The designations and counter-designations must be presented in the 

order they appear in the transcript. All colloquy between counsel and objections will be 

eliminated when deposition testimony is presented at trial.

Any deposition testimony not specifically identified on a party’s deposition designation 

list may still be used at trial for the purposes of impeachment, if otherwise competent for that 

purpose. When a party uses deposition testimony for impeachment, the party may elect to either 

play the deposition testimony by video or to read the deposition testimony live, unless the Court 

orders otherwise.

E. Demonstrative Exhibits

Demonstrative exhibits that the parties intend to use at trial need not be included on the 

parties’ respective exhibit lists. “Demonstratives” are exhibits specifically created for the 

purpose of the trial and do not include (1) exhibits created in the courtroom during testimony or 

opening at trial, (2) the enlargement, highlighting, ballooning, etc. of trial exhibits or transcripts 

of testimony, or to composites of admitted exhibits and/or testimony, so long as the enlargement, 

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highlighted exhibit, ballooning exhibit, and/or composite only includes factual descriptions of 

the underlying exhibit or testimony. Any physical demonstratives, including any poster boards, 

must be made available for inspection at a time pre-arranged by the parties (see competing 

proposals below). Photos or electronic images of the physical demonstratives must also be 

disclosed at the same time along with the other demonstratives. The parties competing positions 

regarding the disclosure of demonstratives during the trial are as follows:

EcoFactor’s Position: The parties shall exchange copies of all documentary, graphic, 

slide, animation, and any other form of demonstratives, such as prototypes, that they plan to use 

at trial during direct examination, by 7:00 p.m. one (1) calendar day before their anticipated use. 

EcoFactor further proposes that the parties need not exchange copies of documentary, graphic, 

slide, animation, and any other form of demonstratives, such as prototypes, if they have 

previously been displayed during the course of trial. Any objections to the demonstrative exhibits 

shall be provided by 8:00 p.m. one (1) calendar day before their anticipated use. The parties 

shall meet and confer telephonically in an attempt to resolve any objections to the demonstratives 

at 9:00 p.m. the day the objections are provided. The parties will continue in good faith to meet 

and confer regarding the proposed demonstratives and if objections remain unresolved, the 

parties will cooperate in seeking to have the Court resolve any disputes prior to presenting the 

proposed demonstratives. 

Google’s Position: The parties shall exchange copies of all documentary, graphic, slide, 

animation, and any other form of demonstratives, such as prototypes, that they plan to use at trial 

during direct and cross-examination, by 7:00 p.m. two (2) calendar days before their anticipated 

use. Google agrees that the parties need not exchange copies of documentary, graphic, slide, 

animation, and any other form of demonstratives, such as prototypes, if they have previously 

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been displayed during the course of trial, but if a party wishes to use a previously-disclosed

demonstrative they must provide notice to the opposing party at 7:00 p.m. two (2) calendar days 

before their anticipated use. Any objections to the demonstrative exhibits shall be provided by 

7:00 p.m. one (1) calendar day before their anticipated use. The parties shall meet and confer 

telephonically in an attempt to resolve any objections to the demonstratives at 9:00 p.m. the day 

the objections are provided. The parties will continue in good faith to meet and confer regarding 

the proposed demonstratives and if objections remain unresolved, the parties will cooperate in 

seeking to have the Court resolve any disputes prior to presenting the proposed demonstratives.

F. Disclosures for Opening Statements

With respect to opening statements, by no later than 12:00 p.m. on the day before the 

opening statements the parties shall exchange by email (a) lists of all exhibits the party intends to 

use in its opening statement and (b) electronic copies of any demonstrative exhibits that the party 

intends to use in its opening statement. Any physical demonstratives, including any poster 

boards, must be made available for inspection at the same time and physical demonstratives must 

also be made available for inspection at the same time. 

Any objections to the opening statement disclosures must be provided by 3:00 p.m. the 

day the disclosures are received. The parties shall meet and confer telephonically in an attempt to 

resolve any objections to these disclosures at 4:00 p.m. If the parties cannot resolve the 

objections, the unresolved issues will be raised with the Court in the morning, before opening 

statements are presented to the jury.

G. Disclosures for Closing Arguments

With respect to closing arguments that will be given on a day following a non-trial day 

(i.e. closing arguments to be given on a Monday following the weekend), by no later than 12:00 

p.m. on the day before the closing arguments the parties shall exchange by email electronic 

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copies of any demonstrative exhibits that the party intends to use in its closing argument and that 

have not already been shown to the jury during the course of the trial. Demonstratives setting 

forth witness testimony given at trial do not have to be exchanged. Any physical demonstratives 

that have not already been shown to the jury during the course of the trial, including any poster 

boards, must be made available for inspection at the same time and physical demonstratives must 

also be made available for inspection at the same time. 

Any objections to the closing arguments disclosures must be provided by 3:00 p.m. the 

day the disclosures are received. The parties shall meet and confer telephonically in an attempt to 

resolve any objections to these disclosures at 4:00 p.m. If the parties cannot resolve the 

objections, the unresolved issues will be raised with the Court in the morning, before opening 

statements are presented to the jury. 

With respect to closing arguments that will be given on a day following a trial day (i.e. 

closing arguments to be given on a Friday following a day that the parties were in trial), by no 

later than 7:00 p.m. on the day before the closing arguments the parties shall exchange by email 

electronic copies of any demonstrative exhibits that the party intends to use in its closing 

argument and that have not already been shown to the jury during the course of the trial. Any 

physical demonstratives that have not already been shown to the jury during the course of the 

trial, including any poster boards, must be made available for inspection at the same time and 

physical demonstratives must also be made available for inspection at the same time. 

Any objections to the closing arguments disclosures must be provided by 9:00 p.m. the 

day the disclosures are received. The parties shall meet and confer telephonically in an attempt to 

resolve any objections to these disclosures at 10:00 p.m. If the parties cannot resolve the 

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objections, the unresolved issues will be raised with the Court in the morning, before opening 

statements are presented to the jury. 

H. Stipulations Regarding Subject Matter Not To Be Presented To the Jury

The parties have stipulated to the following:

1. There will not be any testimony, argument, or evidence about the possibility that 

damages could be enhanced.

2. There will not be any attempt to use the COVID-19 pandemic or related 

conditions against any party or its witnesses, or how any party structures its trial 

presentation (i.e., through use of video testimony).

3. The parties shall not refer to EcoFactor as a “troll,” “pirate,” “privateer,” 

“extortionist,” “litigious,” a “shell-company,” engaged in a “shakedown.” 

4. The parties shall not offer evidence or argument that EcoFactor has engaged in 

forum shopping, litigation abuse, or suggesting that the Western District of Texas 

is an improper venue or is otherwise a popular or notorious venue for patent 

litigation. 

5. The parties shall not offer evidence or argument regarding inter parties reviews, 

reexaminations, or other post-grant proceedings.

6. The parties shall not offer evidence or argument regarding alleged misconduct 

during patent prosecution, the duty of candor to the USPTO, or any other issue of 

alleged inequitable conduct.

7. The parties shall not offer evidence or argument regarding post-filing 

communications between the parties, including settlement discussions or settlement 

offers.

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8. The parties shall not offer evidence or argument regarding no-longer asserted 

patents, dropped patent claims, non-asserted infringement theories, no-longer 

asserted non-infringement, and no-longer asserted invalidity theories.

9. The parties shall not offer evidence or argument suggesting or implying that the 

conduct of EcoFactor is responsible or the cause for (i) the timing of the trial as it 

relates to the specific date of the trial, (ii) jurors having to come to the courthouse 

and/or serve on the jury during the pandemic, (iii) any risk to health or safety of the 

jurors, their families, members of the community, or anyone else, or (iv) any burden 

or inconvenience to the jurors as it relates to the pandemic or the specific date of 

the trial.

10. The parties shall not offer evidence, argument, or testimony regarding expert 

opinions not disclosed in expert reports. 

11. The parties shall not offer evidence or argument contrary to the court’s claim 

construction rulings.

12. The parties shall not offer evidence or argument regarding if or how often either 

party’s experts—including Erik de la Iglesia, who is EcoFactor’s technical expert 

witness in this matter—have worked with either EcoFactor’s or Google’s counsel 

outside the context of this specific matter. The parties are not precluded from 

using prior inconsistent statements for impeachment. 

13. The parties shall not offer evidence or argument regarding Google’s overall size, 

wealth, revenues, including advertising revenues. 

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14. The parties shall not offer evidence or argument relating to legal proceedings 

involving Google that have no relationship to EcoFactor or licenses considered by 

the parties’ damages experts. 

15. The parties shall not offer evidence or argument regarding damages or royalties 

owed to EcoFactor by Vivint, Inc. or ecobee, Inc.

16. The parties shall not offer evidence or argument regarding labor issues or working 

conditions at Google.

17. The parties shall not offer evidence or argument using the terms “monopoly,” 

“antitrust,” or Big Tech” to describe Google. 

18. The parties shall not offer evidence or argument regarding the number of times a 

fact witness has been deposed in other cases not involving the parties or regarding 

the number of times a party has been accused of infringing intellectual property 

where such accusation did not involve the parties.

19. The parties shall not offer evidence or argument regarding the impact of a 

potential damages award on Google’s customers, manufacturers, partners, or job 

losses. Google shall not be precluded from offering evidence related to the cost of 

goods sold or its profits and operating costs, including, for example, as set forth in 

Google’s expert’s report.

I. Handling of Source Code and Confidential Material

The parties agree to request that the courtroom be sealed when a party’s confidential 

information, including source code or evidence concerning highly sensitive business documents, 

testimony, or information is expected to be presented. 

EcoFactor’s Position: Regarding source code, the Protective Order allows the “receiving 

party . . . to make up to five (5) additional hard copies for the Court in connection with a Court 

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filing, hearing, or trial” and “Electronic copies of Source Code may be made to be included in 

documents which, pursuant to the Court’s rules, procedures, and order(s), may be filed or served 

electronically.” Dkt. No. 72, para. 19(c)(x)(2)-(3). For purposes of trial this includes creating an 

electronic image of the entirety of EcoFactor’s and Google’s printed hard copy source code in 

order to pre-mark the electronic copy as an exhibit. Only the specific code files or source code 

pages discussed at trial may be offered into evidence to become part of the record, not the 

entirety of the printed source code hard copies during fact discovery or their electronic image. 

Google’s Position: Google agrees that its source code may be displayed in a closed 

courtroom only. Google also agrees that the parties may include references to Google’s source 

code in their argument and may elicit testimony from witnesses permitted to view this source 

code pursuant to the Protective Order in this case. Google objects to its source code being 

included as an exhibit and objects to copies of source code materials being provided to jurors in 

this case as it will serve no useful purpose and creates a greater risk of improper or inadvertent 

disclosure of highly confidential material. Once the trial is complete, EcoFactor must delete 

and/or destroy any copies of source code material in its possession, whether they be hard copies 

or digital copies. EcoFactor must confirm deletion/destruction of any source code material no 

later than 60 days following the entry of judgment. For the avoidance of any doubt, any 

presentation of the parties’ source code in electronic or paper form in open court requires sealing 

of the court room.

XI. PROPOSED JURY INSTRUCTIONS

The parties’ joint and disputed proposed preliminary jury instructions are attached as 

Exhibit E-1 and the joint and disputed proposed charge instructions are attached as Exhibit E-2.

XII. LIST OF PENDING MOTIONS

The following motions remain pending:

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1. Defendants Google, ecobee, Inc., and Vivint Inc.’s Joint Motion for Summary 

Judgment of Subject Matter Ineligibility Under 35 U.S.C. § 101. Dkt. No. 111.

2. Defendants’ Google, ecobee, Inc., and Vivint Inc.’s Joint Daubert Motion to 

Exclude Certain Testimony of Dr. Palmer. Dkt. No. 113. 

3. Google’s Motion to Exclude Expert Testimony of David Kennedy. Dkt. No. 114. 

4. Google’s Motion for Summary Judgment as to the ’488 Patent. Dkt. No. 115.

5. EcoFactor’s Motion to Strike Expert Opinions on Non-Infringing Alternatives. 

Dkt. No. 109.

6. EcoFactor’s Motion to Exclude Printed Publication Opinions and Summary 

Judgment as to Public Availability of References. Dkt. No. 112. 

7. EcoFactor’s Motion for Summary Judgment of Google’s Affirmative Defenses. 

Dkt. No. 116. 

8. EcoFactor’s Motion to Exclude Expert Opinions of Todd Schoettelkotte. Dkt. No. 

117. 

9. The Parties’ Joint Motion to Amend Scheduling Order. Dkt. No. 118.5

XIII. PROPOSED JUROR QUESTIONNAIRE & VOIR DIRE QUESTIONS

The Parties' Joint proposed juror questionnaire is attached as Exhibit F-1. 

EcoFactor’s proposed voir dire questions are attached as Exhibit F-2. Google’s proposed 

voir dire questions are attached as Exhibit F-3.

XIV. VERDICT FORM

5 On December 8, 2021, the Parties received confirmation from the Court’s clerk via email that 

the Parties should consider this motion as granted. 

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EcoFactor’s proposed verdict form is attached as Exhibit G-1. Google’s proposed verdict 

form is attached as Exhibit G-2. EcoFactor’s objections to Google’s proposed verdict form are 

attached as Exhibit G-3. Google’s objections to EcoFactor’s proposed verdict form are attached 

as Exhibit G-4.

XV. DISPUTED MOTIONS IN LIMINE

EcoFactor motions in limine still in dispute:

• Motion In Limine No. 1: To Preclude Evidence Or Argument Regarding 

EcoFactor’s Attorney Fee Agreements Or Regarding Payments Or Non-Payments 

To EcoFactor’s Litigation Counsel, Russ August & Kabat.

• Motion In Limine No. 2: To Preclude Evidence Or Argument Regarding How, Or 

To Whom, A Damages Award To EcoFactor May Be Distributed, Including Its 

Members’ Or Shareholders’ Ownership Interests In The Company.

• Motion In Limine No. 4: To Preclude Evidence Or Argument Regarding An 

“Advice Of Counsel” Defense. 

• Motion In Limine No. 5: To Preclude Evidence Or Argument Relating To 

Documents Originating With Trane That Were Not Timely Produced In This 

Case, And Further To Preclude Evidence, Argument, Or Suggestion That 

EcoFactor’s Expert Witnesses Should Have Addressed Those Documents In Their 

Expert Reports. 

• Motion In Limine No. 6: To Preclude Evidence Or Argument Regarding The 

Alleged Number Of Nest Learning Thermostat Third Generation, Nest 

Thermostat E, Or Nest Thermostat Products That Are Not Currently Connected 

To A Wi-Fi Network, Based On Documents Not Produced During Fact Discovery 

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And Google’s Rebuttal Experts’ Off-The-Record Conversations With Fact 

Witness Manu Sharma, Who Was Never Identified During Fact Discovery As A 

Person With Knowledge Relevant To This Case. 

• Motion In Limine No. 7: To Preclude Evidence Or Argument On Google’s 

Affirmative Defenses Of Prosecution History Estoppel, Equitable Defenses, 

Improper Venue, Or Failure To State A Claim. 

• Motion In Limine No. 8: To Preclude Evidence Or Argument That Is Derogatory 

Of The USPTO Or Its Examiners, Including That They Are “Overworked” Or 

Substantially Similar Language; Provided, However, The Parties May Use The 

Following, Or Substantially Similar, Language About The USPTO: “There Is The 

Possibility That Mistakes Were Made, Or Important Information Overlooked. 

Examiners Have A Lot Of Work To Do, And No Process Is Perfect.” 

• Motion In Limine No. 9: To Preclude Evidence Or Argument That Individual 

Claim Elements Were Known In The Prior Art. 

Google motions in limine still in dispute:

• Google’s Motion in Limine No. 1: The Court should exclude references to $5.16

as an “established royalty” and otherwise exclude evidence of a per-unit royalty

rate of $5.16. 

• Google’s Motion in Limine No. 2: The Court should exclude evidence of Nest’s

revenues and profits prior to the January 2020 start of alleged infringement.

• Google’s Motion in Limine No. 3: The Court should exclude references to the

price Google paid to acquire Nest or any other companies. 

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• Google’s Motion in Limine No. 4: The Court should exclude references to and

evidence of the size, value, and revenue of Google’s Nest Division.

• Google’s Motion in Limine No. 5: The Court should exclude references to the

parties’ other litigations and claims besides EcoFactor’s claims against Google in

this case.

• Google’s Motion in Limine No. 6: The Court should exclude arguments or

evidence that EcoFactor’s products practice the asserted patents and evidence of

industry praise relying on the same. 

• Google’s Motion in Limine No. 7: The Court should exclude any testimony by

Erik de la Iglesia that accuses instrumentalities other than the processors in the

Nest thermostats of infringing the “one or more processors” claim limitations of

the ’382 patent. 

XVI. PROCEDURE FOR POTENTIAL COVID-19 WITNESS DISRUPTIONS

The Parties agree that, in the event any witness that is scheduled and disclosed to appear 

live to testify, becomes unable to do so due to COVID-19 illness or travel restrictions or is 

unwilling or unable to travel due to concerns about health and safety, the witness may be called 

via live videoconference. To the extent that any party intends to offer testimony in this fashion, it 

will notify opposing counsel as soon as it becomes aware of the issue and provide a revised order 

of witness appearance if necessary. In the event that a previously and properly disclosed witness 

is unavailable (as defined in Fed. R. Civ. P. 32) to give live testimony in person or by video due 

to COVID-19, his or her deposition testimony will be permitted as a substitute.

XVII. LENGTH OF TRIAL

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EcoFactor’s Position: The length of trial will be 10 hours per side. This time will not 

include opening statements and closing arguments. Opening statements be limited to sixty (60) 

minutes per side, and the closing arguments be limited to sixty (60) minutes per side.

Google’s Position: Based on the claims EcoFactor currently asserts, the length of trial 

will be 18 hours per side, excluding opening statements and closing arguments. Opening 

statements will be limited to sixty (60) minutes per side, and closing arguments will be limited to 

ninety (90) minutes per side. 

This Joint Pre-Trial Order is hereby approved this ___ day of ___________, 2022.

Hon. Alan D. Albright

United States District Judge

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CERTIFICATE OF SERVICE 

I certify that this document is being served upon counsel of record for Defendant on 

January 7, 2022 via electronic service.

/s/ Reza Mirzaie

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