1

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

PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT OF DEFENDANT’S 

AFFIRMATIVE DEFENSES 

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TABLE OF CONTENTS 

I. INTRODUCTION ............................................................................................................... 1

II. FACTUAL BACKGROUND ............................................................................................. 1

III. ARGUMENT ................................................................................................................... 3

A. SUMMARY JUDGMENT OF GOOGLE’S PROSECUTION HISTORY ESTOPPEL AFFIRMATIVE 

DEFENSE IS APPROPRIATE BECAUSE GOOGLE CAN SHOW NO PROPERLY IDENTIFIED FACTS IN 

SUPPORT, AND THEIR POSITION IS WRONG AS A MATTER OF LAW .......................................... 4

i. Google failed to properly adduce facts in support of its prosecution history 

estoppel affirmative defense........................................................................4 

ii. Even if Dr. Turnbull’s opinions are not struck, Google’s prosecution history 

estoppel position is wrong as a matter of law...................................................5 

B. GOOGLE FAILS TO ADDUCE EVIDENCE IN SUPPORT OF ITS EQUITABLE DOCTRINES 

AFFIRMATIVE DEFENSES ............................................................................................................ 6 

C. GOOGLE’S COLLATERAL ESTOPPEL, IMPROPER VENUE, AND FAILURE TO STATE A CLAIM 

DEFENSES ARE MOOT ................................................................................................................ 9 

IV. CONCLUSION ................................................................................................................ 9

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TABLE OF AUTHORITIES 

CASES

Anderson v. Liberty Lobby, Inc., 

477 U.S. 242 (1986) ----------------------------------------------------------------------------------- 3, 7 

Bitterroot Holdings, L.L.C. v. MTGLQ Inv’rs, L.P., 

648 F. App’x 414 (5th Cir. 2016) ----------------------------------------------------------------------- 3 

Brown v. AT&T Serv. Inc., 

236 F. Supp. 3d 1000 (S.D. Tex. 2017) ---------------------------------------------------------------- 4 

C.R. Bard, Inc. v. M3 Sys., Inc., 

157 F.3d 1340 (Fed. Cir. 1998) ------------------------------------------------------------------------- 7 

Celotex Corp. v. Catrett, 

477 U.S. 317 (1986) -------------------------------------------------------------------------------------- 3 

Certain Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC Control Systems, and 

Components Thereof, Inv. No. 337-TA-1258 --------------------------------------------------------- 3 

Hazel–Atlas Glass Co. v. Hartford–Empire Co., 

322 U.S. 238 (1944) -------------------------------------------------------------------------------------- 7 

Hemstreet v. Computer Entry Sys. Corp., 

972 F.2d 1290 (Fed. Cir. 1992) ------------------------------------------------------------------------- 8 

Hobbs v. McLean,

117 U.S. 567 (1886) -------------------------------------------------------------------------------------- 8 

Keystone Driller Co. v. General Excavator Co., 

290 U.S. 240 (1933) -------------------------------------------------------------------------------------- 7 

Maguregui v. ADP, LLC, 

No. EP-16-CV-121-PRM, 2017 WL 5473484 (W.D. Tex. Apr. 10, 2017) ----------------------- 4 

Precision Instrument Manufacturing Co. v. Automotive Maintenance Machinery Co., 

324 U.S. 806 (1945) -------------------------------------------------------------------------------------- 7 

Ragas v. Tenn. Gas Pipeline Co., 

136 F.3d 455 (5th Cir. 1998) ---------------------------------------------------------------------------- 3 

Sprint Commc'ns Co. L.P. v. Charter Commc'ns, Inc., 

No. CV 17-1734-RGA, 2021 WL 982726 (D. Del. Mar. 16, 2021) ------------------------------- 9 

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Standard Oil Co. v. United States, 

429 U.S. 17 ------------------------------------------------------------------------------------------------ 7 

Symbol Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., 

422 F.3d 1378 (Fed. Cir. 2005) ------------------------------------------------------------------------- 8 

Symbol Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., LP, 

429 F.3d 1051 (Fed. Cir. 2005) ------------------------------------------------------------------------- 8 

Tech. Properties Ltd. LLC v. Huawei Techs. Co., 

849 F.3d 1349 (Fed. Cir. 2017) ------------------------------------------------------------------------- 8 

Therasense, Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276 (Fed. Cir. 2011) ------------------------------------------------------------------------- 7 

Trading Techs. Int'l, Inc. v. Open E Cry, LLC, 

728 F.3d 1309 (Fed. Cir. 2013) ------------------------------------------------------------------------- 5 

RULES

Federal Rule of Civil Procedure 26 ------------------------------------------------------------------ 3, 4, 5 

Federal Rule of Civil Procedure 37(c)(1) ----------------------------------------------------------- 3, 4, 5

Federal Rule of Civil Procedure 56(a) ----------------------------------------------------------------- 1, 3 

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I. INTRODUCTION 

Pursuant to Federal Rule of Civil Procedure 56 Plaintiff EcoFactor, Inc. (“EcoFactor”) 

respectfully moves for summary judgment as to Google’s prosecution history estoppel, unclean 

hands, laches, disclaimer, patent misuse, waiver, collateral estoppel, improper venue, and failure 

to state a claim affirmative defenses. Google has not identified any documents nor cited any 

witness testimony in support of these affirmative defenses in response to EcoFactor’s 

interrogatories. The scant responses Google did provide are either irrelevant to these defenses or 

fail to identify facts which would allow a jury to return a verdict in Google’s favor. 

Despite failing to disclose the bases for these defenses in discovery, Google’s expert 

witness now opines in his rebuttal report on prosecution history estoppel issues, prejudicing 

EcoFactor by depriving it of the ability to take fact discovery on these issues and preventing 

EcoFactor’s experts an opportunity to respond. The Court should therefore strike Google’s noninfringement expert Dr. Don Turnbull’s analysis of the undisclosed prosecution history estoppel 

opinions at paragraphs 189-197 of his expert report. Even if considered, Dr. Turnbull’s opinions 

cannot support a prosecution history estoppel defense as a matter of law, and so summary 

judgment on that issue is warranted. 

Separately, Google has withdrawn or previously litigated in this case certain of its 

affirmative defenses, such that they are now moot. Accordingly, the Court should grant 

EcoFactor’s motion for summary judgment of Google’s affirmative defenses of prosecution 

history estoppel, unclean hands, laches, disclaimer, patent misuse, waiver, collateral estoppel, 

improper venue, and failure to state a claim. 

II. FACTUAL BACKGROUND

On July 1, 2020, Google alleged nine separate affirmative defenses in its Answer to 

EcoFactor’s First Amended Complaint. See Dkt. No. 31 at 15-18. On December 16, 2020, 

EcoFactor propounded interrogatories requesting Google “Set forth all factual bases for, 

including identification of any documents or witnesses that you contend support your 

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affirmative defenses asserted in your answer.” Plaintiff EcoFactor, Inc.’s First Set of 

Interrogatories to Defendant Google LLC (Ex. A1) at 10. On that same day, EcoFactor 

requested production of “All documents and things that support any affirmative defense.” 

Plaintiff EcoFactor, Inc.’s First Set of Requests for Production to Defendant Google LLC (Ex. 

B) at 13. Google’s initial response to this discovery did not identify any witnesses or documents 

in support of any of its affirmative defenses. See Google LLC’s Responses to EcoFactor, Inc.’s 

First Set of Interrogatories (Ex. C) at 9-14, 16-17; Google LLC’s Responses to EcoFactor, Inc.’s 

First Set of Requests for Production of Documents (Ex. D) at 21-22. On August 24, 2021, 

Google supplemented its responses to EcoFactor’s interrogatories. However, it provided no 

additional information or citations for its prosecution history estoppel affirmative defense. See 

Google LLC’s First Supplemental Responses to EcoFactor, Inc.’s First Set of Interrogatories 

(Ex. E) at 5-12, 14-16. 

With respect to Google’s defense of prosecution history estoppel, Google merely 

“incorporate[ed] by reference its claim construction briefing in this litigation,” but provided no 

other factual bases for this defense. Ex. C at 16; Ex. E. at 14. Google’s claim construction 

briefing raises no prosecution history estoppel issues related to the ‘488 patent. See generally 

Dkt. Nos. 34, 36, and 39. Furthermore, Google’s briefing does not cite to any of the ’488 

patent’s file history as an exhibit. Moreover, Google’s expert’s declarations in support of 

Google’s claim construction briefing does not cite to the ’488 file history. See generally Dkt. 

Nos. 34-1 and 36-1. 

Even so, for the first time in Google’s expert’s rebuttal report of October 22, 2021, Dr. 

Turnbull opines that “the prosecution of a related patent application” with a different file 

history, different specification, and different claims should nevertheless support a prosecution 

history estoppel defense as to the ’488 patent at issue in this case. Ex. F, October 22, 2021 

Rebuttal Expert Report of Dr. Don Turnbull (“Turnbull Rpt.”) ¶ 189-190. Dr. Turnbull’s sole 

1 Unless indicated otherwise, all citations to exhibits herein are to the Declaration of Reza 

Mirzaie in support of this motion. 

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basis for this opinion are certain statements found in portions of an appendix to the complaint 

filed in a separate International Trade Commission (“ITC”) Investigation on February 25, 2021. 

Id.; See Certain Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC Control 

Systems, and Components Thereof, Inv. No. 337-TA-1258. However, the documents Dr. 

Turnbull cites in support were not disclosed until Dr. Turnbull’s rebuttal report, fifteen months 

after Google plead its prosecution history estoppel affirmative defense, and almost ten months 

after EcoFactor first requested all factual bases for Google’s affirmative defenses. Indeed, Dr. 

Turnbull’s rebuttal report is the first time Google provides any indication of its prosecution 

history estoppel affirmative defense related to the ’488 patent. 

III. ARGUMENT

Pursuant to Federal Rule of Civil Procedure 56, a motion for summary judgment shall be 

granted when the record demonstrates that there is no genuine dispute as to any material fact 

and that the moving party is entitled to judgment as a matter of law. FED. R. CIV. P. 

56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986); Ragas v. Tenn. Gas Pipeline Co., 

136 F.3d 455, 458 (5th Cir. 1998). “Only disputes over facts that might affect the outcome of 

the suit under the governing laws will properly preclude the entry of summary 

judgment.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). 

Further, according to Federal Rule of Civil Procedure 26, Google was required to identify 

all factual bases for, including identification of any documents or witnesses that it contends 

supports its affirmative defenses in response to EcoFactor’s interrogatories, and to supplement 

seasonably its responses with any new information. Federal Rule of Civil Procedure 37(c)(1) 

addresses sanctions for failing to disclose and states, “[i]f a party fails to provide information ... 

as required by Rule 26(a) or (e), the party is not allowed to use that information ... to supply 

evidence ... at a trial, unless the failure was substantially justified or is harmless.” Fed. R. Civ. 

P. 37(c)(1); Bitterroot Holdings, L.L.C. v. MTGLQ Inv’rs, L.P., 648 F. App’x 414, 419 (5th Cir. 

2016). Moreover, the party facing sanctions under Rule 37(c) has the burden of demonstrating 

that a violation of Rule 26 was substantially justified or harmless. See, e.g., Maguregui v. ADP, 

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LLC, No. EP-16-CV-121-PRM, 2017 WL 5473484 at *2 (W.D. Tex. Apr. 10, 2017); Brown v. 

AT&T Serv. Inc., 236 F. Supp. 3d 1000, 1005 (S.D. Tex. 2017). 

A. Summary Judgment Of Google’s Prosecution History Estoppel Affirmative 

Defense Is Appropriate Because Google Can Show No Properly Identified Facts In 

Support, And Their Position Is Wrong As A Matter Of Law 

EcoFactor respectfully moves for summary judgment as to Google’s prosecution history 

estoppel affirmative defense because Google has failed to properly adduce facts in support of its 

affirmative defense. The only substantive contentions or evidence provided were in Dr. 

Turnbull’s rebuttal report, long after Google had failed to substantively respond to discovery 

into its basis for this defense. This opinion should be stricken under Rule 37. But even if Dr. 

Turnbull’s opinions are not struck, his opinions cannot result in prosecution history estoppel as 

a matter of law. 

i. Google failed to properly adduce facts in support of its prosecution 

history estoppel affirmative defense. 

Google disclosed no factual bases for its prosecution history estoppel defense during 

discovery. While Google “incorporate[ed] by reference its claim construction briefing in this 

litigation,” that briefing raises no prosecution history estoppel issues related to the ‘488 patent. 

See generally Dkt. Nos. 34, 36, and 39. Furthermore, Google’s briefing does not cite to any of 

the ’488 patent’s file history as an exhibit. Id. Moreover, Google’s Dr. Turnbull’s declarations 

in support of Google’s claim construction briefing do not cite to the ’488 file history. See 

generally Dkt. Nos. 34-1 and 36-1. 

The only other purported evidence upon which Google might be able to rely is Dr. 

Turnbull’s late disclosed opinions, which should be properly excluded under Fed. R. Civ. P. 26 

and 37. Once excluded, these opinions cannot be considered for summary judgment. 

Google’s failure to disclose information related to its prosecution history estoppel 

affirmative defense is not substantially justified. Google has been aware of the ’488 patent since 

2018. Ex. E at 16-17. Furthermore, Dr. Turnbull’s October 6, 2020, declaration in support of 

Google’s claim construction briefing indicates he “reviewed the ’488 patent and its prosecution 

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history” in preparation for writing his declaration. Dkt. No. 34-1 at 7. Moreover, the ITC 

Investigation Complaint appendices Dr. Turnbull ultimately cites were filed on February 25, 

2021. Even so, Google failed to disclose any bases for its prosecution history estoppel positions 

related to the ’488 patent until Dr. Turnbull’s rebuttal expert report on October 22, 2021. Ex. F 

at ¶¶ 189-197. 

Google’s decision to wait until Dr. Turnbull’s rebuttal report to disclose its prosecution 

history estoppel positions has not been harmless. Had Google disclosed its support for this 

affirmative defense in its responses to EcoFactor’s interrogatories as required by the Federal 

Rules of Civil Procedure, EcoFactor could have developed further facts and information 

through discovery, and EcoFactor’s experts could have addressed the issue in their reports. 

The Court should therefore strike Dr. Turnbull’s analysis found in paragraphs 189-197 

under Fed. R. Civ. P. § 37(c), following Google’s failure to identify the theory as required by 

Fed. R. Civ. P. § 26. As a result, summary judgment is proper on this basis alone. 

ii. Even if Dr. Turnbull’s opinions are not struck, Google’s prosecution 

history estoppel position is wrong as a matter of law. 

Even if considered, Dr. Turnbull’s opinions cannot support a prosecution history 

estoppel defense as a matter of law. See Trading Techs. Int'l, Inc. v. Open E Cry, LLC, 728 F.3d 

1309, 1323 (Fed. Cir. 2013) (overturning summary judgment that prosecution history estoppel 

of a related patent applies to a patent at issue because “both [the patent at issue’s] claims and its 

relevant supporting disclosures” differ from the related patent). Here, the claims and supporting 

disclosures of the patent at issue (U.S. Pat. No. 8,412,488 (“the ’2,488 patent”2

) (Dkt. No. 28-

2)) both differ from the patent Dr. Turnbull points to (U.S. Pat. No. 8,886,488 (“the ’6,488 

patent” (Ex. G)). Specifically, Dr. Turnbull indicates that “EcoFactor amended independent 

claims 1 and 9 [of the ’6,488 patent] to add the word ‘predicted’ before ‘rates of change’” to 

distinguish other art. Ex. F at ¶ 190 (emphasis added). Dr. Turnbull opines that the underlying 

2 Referred to by the last four digits because the patent at issue here is a separate patent from the 

related patent Dr. Turnbull points to despite having the same last three numbers. 

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rationale for adding “predicted” in the ’6,488 patent should likewise apply to the ’2,488 patent 

at issue in this case. However, the ’2,488 patent at issue here has both different claim language 

and different disclosures than the ’6,488 patent Dr. Turnbull points to. Indeed, as Dr. Turnbull 

states, the independent claims of the ‘2,488 patent at issue here teach “an estimation,” but do 

not recite the language “predicted rates of change.” Id. at ¶ 191 (emphasis added). 

U.S. Pat. No. 8,412,488, claim 1[c] 

(Patent at issue in this case) 

U.S. Pat. No. 8,886,488, claim 1 

(Patent Dr. Turnbull points to)

“wherein said one or more processors 

compares the inside temperature of said first 

structure and the outside temperature over 

time to derive an estimation for the rate of 

change in inside temperature of said first 

structure in response to outside temperature” 

Dkt. No. 28-2 at 18. 

“calculate one or more predicted rates of 

change in said inside temperature 

measurements at said first location based on 

the status of the HVAC system.” Ex. F at ¶ 

190; Ex. G. 

Further, Mr. Turnbull admitted at his deposition that the dependent claims of the ’2,488 

patent at issue here recite “prediction,” while the independent claims only recite “estimation.” 

11/5/21 Deposition Transcript of Dr. Don Turnbull (Ex. H) at 23:1-26:12. Moreover, Mr. 

Turnbull acknowledged that the independent claims of the ‘2,488 patent are broader than its

dependent claims. Ex. H at 24:13-17. Additionally, the portions of the specification Dr. 

Turnbull cites from the ’2,488 patent at issue here are distinctly different than the disclosures in 

the specification of the ’6,488 patent. See Ex. F at ¶ 191; compare Dkt. No. 28-2 (the ’2,488 

patent) with Ex. G (the ’6,488 patent). Thus, summary judgment is appropriate on this basis 

alone as well. 

Accordingly, summary judgment should be granted in favor of EcoFactor on Google’s 

prosecution history estoppel affirmative defense. 

B. Google Fails to Adduce Evidence in Support of its Equitable Doctrines 

Affirmative Defenses 

EcoFactor respectfully moves for summary judgment as to Google’s equitable doctrines 

defenses because Google has not identified any factual support that would support a jury’s 

verdict in their favor. There is no issue for trial “unless there is sufficient evidence favoring the 

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non-moving party for a jury to return a verdict for that party.” Anderson, 477 U.S. at 249. 

Moreover, disputed facts that are “irrelevant and unnecessary” are not considered by a court 

when deciding a summary judgment motion. Id. at 248. 

Google cites no documents and points to no witness testimony in support of its plead

defenses of unclean hands, patent misuse, the doctrine of estoppel, prosecution laches, 

disclaimer, and/or waiver. See Dkt. 31 at 17, Ex. E at 14-16. Instead, Google’s sole basis for this 

myriad of equitable defenses is that 

Ex. E at 15. This singular allegation is insufficient as a matter of law, because each of Google’s 

equitable defenses requires actions during prosecution of a patent or a showing of facts beyond 

a purported delay in filing suit. 

The doctrine of unclean hands contemplates “egregious affirmative acts of misconduct 

intended to deceive both the PTO and the courts.” Therasense, Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276, 1285-87 (Fed. Cir. 2011) (emphasis added). Supreme Court cases addressing 

unclean hands involved “particularly egregious misconduct including perjury, the manufacture 

of false evidence, and the suppression of evidence.” Id. (citing Precision Instrument 

Manufacturing Co. v. Automotive Maintenance Machinery Co., 324 U.S. 806, 816–20 (1945); 

Hazel–Atlas Glass Co. v. Hartford–Empire Co., 322 U.S. 238, 240 (1944), overruled on other 

grounds by Standard Oil Co. v. United States, 429 U.S. 17; Keystone Driller Co. v. General 

Excavator Co., 290 U.S. 240, 243 (1933). Google’s lone purported support for this defense 

identifies no perjury, manufacturing of false evidence, suppression of evidence, nor any other 

acts of misconduct that could possibly be considered egregious. As a result, no reasonable jury 

could return a verdict in favor of Google on this issue. Thus, summary judgment denying 

Google’s unclean hands affirmative defense is appropriate. 

“[P]atent misuse arises from the equitable doctrine of unclean hands, and relates 

generally to the use of patent rights to obtain or to coerce an unfair commercial advantage.”

C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1372 (Fed. Cir. 1998) (emphasis added). 

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Google provides no facts to support a jury’s finding of EcoFactor’s use of its patent rights to 

obtain or coerce an unfair economical advantage. An alleged delay in filing suit can hardly be 

called coercion. Therefore, summary judgment should be granted denying Google’s patent 

misuse affirmative defense. 

“An equitable estoppel is raised when there is some intended deception in the conduct 

or declarations of the party to be estopped.” Hobbs v. McLean, 117 U.S. 567, 580 (1886). 

Google has identified no intent and no deception on the part of EcoFactor. To the extent Google 

is relying on silence as some purported indicia of intent, “mere silence must be accompanied by 

some other factor which indicates that the silence was sufficiently misleading as to amount to 

bad faith.” Hemstreet v. Computer Entry Sys. Corp., 972 F.2d 1290, 1295 (Fed. Cir. 1992) 

(emphasis in original). Even so, Google has not identified any other factor which would provide 

a reasonable jury with a basis on which to find in favor of Google on this affirmative defense. 

Therefore, summary judgment denying Google’s equitable estoppel affirmative defense should 

be granted. 

“[P]rosecution laches may render a patent unenforceable when it has issued only after an 

unreasonable and unexplained delay in prosecution.” Symbol Techs., Inc. v. Lemelson Med., 

Educ. & Rsch. Found., 422 F.3d 1378, 1385 (Fed. Cir. 2005) (emphasis added), amended on 

reh'g in part sub nom. Symbol Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., LP, 429 

F.3d 1051 (Fed. Cir. 2005). Similarly, the “doctrine [of prosecution disclaimer] does not apply 

unless the disclaimer is both clear and unmistakable” in an “applicant’s statements to the PTO.” 

Tech. Properties Ltd. LLC v. Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017) 

(emphasis added). Here, Google has adduced no evidence that indicates any activity relating to 

the prosecution of the asserted patents. Thus, summary judgment denying both Google’s 

prosecution laches and disclaimer defenses is appropriate.

Finally, to the extent Google’s sole support is meant to indicate some sort of delay in 

filing suit, this does not support a finding of waiver. Indeed, other courts have granted summary 

judgment on “Defendant’s waiver and acquiescence defenses" that “center[ed] on Plaintiff’s 

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delay in filing suit.” Sprint Commc'ns Co. L.P. v. Charter Commc'ns, Inc., No. CV 17-1734-

RGA, 2021 WL 982726, at *11 (D. Del. Mar. 16, 2021). “Plaintiff's silence is not enough to 

show that it had an ‘actual intention’ to relinquish its patent rights or that it ‘made an 

affirmative grant of consent or permission’ to Defendants’ conduct.” Id. Therefore, summary 

judgment should be granted denying Google’s patent misuse affirmative defense. 

Accordingly, Google has not established any disputed material fact on which a jury 

might reasonably return a verdict in its favor. Accordingly, summary judgment should be 

granted in favor of EcoFactor on all of Google’s equitable defenses.

C. Google’s Collateral Estoppel, Improper Venue, and Failure to State a Claim 

Defenses Are Moot 

Google previously litigated its “Sixth Defense” claiming that “[v]enue for this case is 

not proper in this district.” Dkt. No. 31 at 17. On May 27, 2020, Google moved to transfer 

venue, which the Court denied on April 16, 2021. See Dkt. Nos. 23, 25, 31, and 62. Google then 

petitioned to the Federal Circuit for a writ of mandamus, which likewise declined to order 

transfer. Dkt. No. 85. Therefore, Google has already litigated this defense. 

Separately, Google’s “Fifth Defense” and “Ninth Defense” relate to collateral estoppel 

and failure to state a claim, respectively. Dkt. No. 31 at 17-18. On November 16, 2021, Google 

indicated that it “will no longer pursue its collateral estoppel and failure to state a claim 

defenses.” 11/16/21 Email from Google’s Counsel (Ex. I). Therefore, these defenses have been 

withdrawn or abandoned. 

Accordingly, Google’s collateral estoppel, improper venue, and failure to state a claim 

defenses are moot. Therefore, summary judgment should be granted in favor of EcoFactor. 

IV. CONCLUSION 

For the foregoing reasons, the Court should strike and/or exclude paragraphs 189-197 of 

Dr. Turnbull’s rebuttal expert report, and enter summary judgment on Google’s prosecution 

history estoppel, unclean hands, laches, disclaimer, patent misuse, waiver, collateral estoppel, 

improper venue, and failure to state a claim affirmative defenses. 

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Date: November 19, 2021 Respectfully submitted, 

/s/ Reza Mirzaie 

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 

12424 Wilshire Boulevard 12th Floor 

Los Angeles, California 90025 

Tel: 310-826-7474 

Fax: 310-826-6991 

rak_ecofactor@raklaw.com 

Attorneys for Plaintiff EcoFactor, Inc.

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CERTIFICATE OF SERVICE

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

November 19, 2021 via electronic service. 

 /s/ Reza Mirzaie 

 Reza Mirazie 

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