UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

ECOFACTOR, INC.,

Plaintiff, 

v. 

GOOGLE LLC, 

Defendant. 

Civil Action No. 6:20-cv-00075 (ADA) 

JURY TRIAL DEMANDED 

GOOGLE LLC’S STATEMENT REGARDING MOOTNESS OF PLAINTIFF’S 

MOTION TO STRIKE EXPERT OPINIONS ON NON-INFRINGING ALTERNATIVES

Case 6:20-cv-00075-ADA Document 131 Filed 12/03/21 Page 1 of 5
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Defendant Google LLC (“Google”) files this statement in response to Plaintiff 

EcoFactor’s (“EcoFactor”) Motion to Strike Expert Opinions on Non-Infringing Alternatives 

(ECF 109 (unsealed version) and 110 (sealed version)). Plaintiff’s motion should be denied as 

moot because it concerns a non-infringing alternative that Google has agreed not to pursue or 

present at trial. 

 Specifically, EcoFactor’s motion relates to a non-infringing alternative discussed in the 

Rebuttal Expert Report of Dr. Don Turnbull Regarding Non-Infringement of U.S. Patent Nos. 

8,412,488, 8,738,327, and 10,534,382 (“Google’s Non-Infringement Expert Report”) and relied 

upon at paragraph 174 of the Expert Report of W. Todd Schoettelkotte Relating to EcoFactor’s 

Damages (“Google’s Damages Expert Report”). This non-infringing alternative was identified 

in EcoFactor’s Motion: “the algorithm utilized by the HVAC Monitoring features could be 

modified to remove the use of calculated inside temperature and instead utilize a calculated 

enthalpy to represent both the indoor and outdoor environments.” ECF 109 at 1 (quoting 

Google’s Non-Infringement Expert Report at ¶ 454). 

 On December 1, 2021, Google represented to EcoFactor in writing that Google no longer 

intended to rely on this non-infringing alternative at trial and asked EcoFactor to withdraw its 

motion on mootness grounds. See Ex. A. On December 2, 2021, EcoFactor responded, 

requesting that Google file a notice of non-opposition stating that the expert opinions concerning 

the modified design of the HVAC Monitoring algorithm that utilizes enthalpy were withdrawn 

“thereby mooting the motions.” Id. 

Because the only relief sought in Plaintiff’s Motion to Strike Expert Opinions on NonInfringing Alternatives relates to a non-infringing alternative that utilizes enthalpy, which will 

not be pursued by Google in this case, this Court should deny EcoFactor’s motion as moot. See, 

Case 6:20-cv-00075-ADA Document 131 Filed 12/03/21 Page 2 of 5
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e.g., Click-to-Call Technologies LP v. Ingenico, Inc., 2021 WL 4692404, at *2 (W.D. Tex. Aug. 

30, 2021) (denying motion to exclude expert testimony after granting motion for summary 

judgment of invalidity); Kinetic Concepts, Inc. v. Bluesky Med. Corp., 2010 WL 11463274, at *1 

(W.D. Tex. Oct. 18, 2010) (denying motion for judgment as a matter of law of no patent 

infringement as moot after ruling that the patents in suit were invalid as obvious); Lemaire 

Illumination Technologies, LLC v. HTC Corp., 2019 WL 1489065, at *3 (E.D. Tex. Apr. 4, 

2019) (denying motion for partial judgment on the pleadings as moot because it only addressed 

claims that had subsequently been disclaimed). 

 

Case 6:20-cv-00075-ADA Document 131 Filed 12/03/21 Page 3 of 5
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Date: December 3, 2021 Respectfully submitted, 

By: /s/ Bijal V. Vakil 

Shamita Etienne-Cummings (CA Bar No. 202090) 

(admitted to the Western District of Texas) 

Allen & Overy LLP 

1101 New York Avenue, NW 

Washington, DC 20005 

Telephone: (202) 683-3810 

Email: GoogleEcofactorWDTX@AllenOvery.com 

Bijal V. Vakil (CA Bar No. 192878) 

(admitted to the Western District of Texas) 

Eric Lancaster (admitted Pro Hac Vice) 

Allen & Overy LLP 

550 High Street, 2nd Floor 

Palo Alto, CA 94301 

Telephone: (650) 388-1703 

Anna Porto 

Jennifer A. Huber 

Kristin E. Hucek 

Leo Lam 

Matthias Kamber 

Patrick E. Murray 

Eugene M. Paige 

Robert A. Van Nest 

Keker, Van Nest & Peters LLP 

633 Battery Street 

San Francisco, CA 94111-LLP 

Telephone: (415) 397-7188 

econest-kvp@keker.com 

Michael E. Jones 

Potter Minton PC 

110 N. College, Suite 500 

Tyler, TX 75702 

Telephone: (903) 597-8311 

Email: mikejones@potterminton.com 

Counsel for Google LLC 

Case 6:20-cv-00075-ADA Document 131 Filed 12/03/21 Page 4 of 5
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CERTIFICATE OF SERVICE 

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on December 3, 2021, all counsel of record who have appeared in this case are being served 

with a copy of the foregoing via electronic mail. 

Dated: December 3, 2021 /s/ Bijal V. Vakil_______________ 

 Bijal V. Vakil 

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