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 

ECOFACTOR, INC., 

 Plaintiff, 

 v. 

ECOBEE, INC., 

 Defendant. 

Civil Action No. 6:20-cv-00078-ADA 

JURY TRIAL DEMANDED 

ECOFACTOR, INC., 

Plaintiff, 

 v. 

VIVINT, INC., 

Defendant. 

Civil Action No. 6:20-cv-00080-ADA 

 JURY TRIAL DEMANDED 

DEFENDANTS’ JOINT MOTION FOR SUMMARY JUDGMENT OF 

SUBJECT MATTER INELIGIBILITY UNDER 35 U.S.C. § 101 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 1 of 27
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TABLE OF CONTENTS 

Page 

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

II. STATEMENT OF UNDISPUTED MATERIAL FACTS ..................................................1

A. Summary of the ’488 and ’327 patents ....................................................................1

B. Summary of the ’382 patent .....................................................................................5

C. The asserted patents’ use of conventional components and calculations ................6

III. STATEMENT OF DISPUTED ISSUES TO BE DECIDED ..............................................8

IV. LEGAL STANDARD ..........................................................................................................8

V. ARGUMENT .......................................................................................................................9

A. All asserted claims of the ’488 patent are patent ineligible. ....................................9

1. Alice Step One: the ’488 claims are directed to the abstract idea of 

determining whether the HVAC system for a structure is on or off 

by comparing the actual inside temperature with a predicted 

estimation. ....................................................................................................9

2. Alice Step Two: the ’488 claims do not contain an inventive 

concept. ......................................................................................................13

B. All asserted claims of the ’327 patent are patent ineligible. ..................................14

1. Alice Step One: the ’327 claims are directed to the abstract idea of 

changing the thermostat setting in response to a request to reduce 

energy usage...............................................................................................14

2. Alice Step Two: the ’327 claims do not contain an inventive 

concept. ......................................................................................................16

C. All asserted claims of the ’382 patent are patent ineligible. ..................................17

1. Alice Step One: the ’382 claims are directed to the abstract idea of 

changing the thermostat setting based on a building’s occupancy. ...........17

2. Alice Step Two: the ’382 claims do not contain an inventive 

concept. ......................................................................................................19

VI. CONCLUSION ..................................................................................................................20

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TABLE OF AUTHORITIES 

 Page(s) 

Federal Cases 

Alice Corp. Pty. v. CLS Bank Int’l, 

573 U.S. 208 (2014) ......................................................................................................... passim

Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 

967 F.3d 1285 (Fed. Cir. 2020)..................................................................................................9 

Apple, Inc. v. Ameranth, Inc., 

842 F.3d 1229 (Fed. Cir. 2016)................................................................................................16 

Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.), 

687 F.3d 1266 (Fed. Cir. 2012)................................................................................................10 

Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 

827 F.3d 1341 (Fed. Cir. 2016)................................................................................................13 

BSG Tech LLC v. Buyseasons, Inc., 

899 F.3d 1281 (Fed. Cir. 2018)....................................................................................13, 16, 19 

CardioNet, LLC v. InfoBionic, Inc., 

816 F. Appx. 471 (Fed. Cir. 2020) ...........................................................................................12 

Chamberlain Group, Inc. v. Techtronic Indus. Co., 

935 F.3d 1341 (Fed. Cir. 2019)..........................................................................................12, 18 

ChargePoint, Inc. v. SemaConnect, Inc., 

920 F.3d 759 (Fed. Cir. 2019)............................................................................................12, 15 

Clairilogic, Inc. v. FormFree Holdings Corp., 

681 F. App’x 950 (Fed. Cir. 2017) ....................................................................................11, 18 

Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 

776 F.3d 1343 (Fed. Cir. 2014)................................................................................................13 

Enfish, LLC v. Microsoft Corp., 

822 F.3d 1327 (Fed. Cir. 2016)..........................................................................................12, 17 

McRO, Inc. v. Bandai Namco Games Am. Inc., 

837 F.3d 1299 (Fed. Cir. 2016)................................................................................................12 

OIP Tech., Inc. v. Amazon.com, Inc., 

788 F.3d 1359 (Fed. Cir. 2015)................................................................................................13 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 3 of 27
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Parker v. Flook, 

437 U.S. 584 (1978) .................................................................................................................11 

RecogniCorp, LLC v. Nintendo Co., Ltd., 

855 F.3d 1322 (Fed. Cir. 2017)....................................................................................11, 13, 19 

In re TLI Commc’ns Patent Litig., 

823 F.3d 607 (Fed. Cir. 2016)............................................................................................14, 15 

Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 

874 F.3d 1329 (Fed. Cir. 2017)..............................................................................14, 18, 19, 20 

Federal Statutes 

35 U.S.C. § 101 ...................................................................................................................... passim

35 U.S.C. § 112 ................................................................................................................................4 

Rules 

Federal Rule of Civil Procedure 56(a) .........................................................................................1, 9 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 4 of 27
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Defendants Google LLC, ecobee, Inc., and Vivint, Inc. move for summary judgment that 

the asserted claims of U.S. Patent Nos. 8,412,488 (“the ’488”), 8,738,327 (“the ’327”), and 

10,534,382 (“the ’382”) are directed to patent-ineligible subject matter under 35 U.S.C. § 101.1

I. INTRODUCTION 

The three patents asserted by EcoFactor claim conventional implementations of abstract 

ideas that do not improve any HVAC or computer technology and are ineligible for patent 

protection under 35 U.S.C. § 101. As explained below—notwithstanding their use of technical 

jargon such as “processors,” “servers,” “network,” “circuitry,” “code,” “memory”—the claims of 

the asserted patents are directed to abstract ideas and indeed are, by a named inventor’s as well 

as an EcoFactor expert’s own admissions, activities that can be performed by the human mind. 

The claims recite mathematical ideas such as comparing inside and outside temperatures over 

time, and functional results such as determining whether an HVAC system is on or off (’488), 

changing thermostat settings to reduce electricity demand (’327), and controlling an HVAC 

system based on building occupancy (’382)—all without defining any concrete, technological 

improvements. These claimed ideas are all abstract and do not embody any inventive concept. 

The asserted claims therefore fail both steps of the eligibility test under Alice Corp. Pty. v. CLS 

Bank Int’l, 573 U.S. 208 (2014). Accordingly, Defendants respectfully request that the Court 

grant this motion for summary judgment under § 101 and Federal Rule of Civil Procedure 56(a). 

II. STATEMENT OF UNDISPUTED MATERIAL FACTS 

A. Summary of the ’488 and ’327 patents 

1. The ’488 and ’327 patents are related—the latter being a “continuation” of the 

1

 This joint motion addresses all patent claims currently asserted by Plaintiff EcoFactor, Inc. 

against Google, a subset of which EcoFactor asserts against ecobee (claims from the ’327 and 

’382), and a different subset of which EcoFactor asserts against Vivint (claims from the ’382). 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 5 of 27
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former—and share the same specification and claim priority dating to provisional applications 

filed in August–September 2007.2

2. The ’488 and ’327 patents relate generally to HVAC systems and more 

particularly to the use of thermostats to verify that demand reduction has occurred. Ex. 1 at 

Abstract, 1:21-27. According to the patent specification, because HVAC systems can be a 

significant source of energy consumption, to reduce consumption during periods of peak 

demand, many utilities have programs whereby customers would agree to reduce usage during 

certain critical periods in exchange for incentives from the utility, like rebates. See id. at 1:57-

64, 2:15-26. These financial incentives, however, create a risk of fraud that a customer might 

tamper with their HVAC system to avoid reducing usage during a peak demand period as they 

agreed to do, thus requiring the utility to monitor and verify compliance. Id. at 2:53-59. 

3. The ’488/’327 specification describes a method to verify compliance with such 

demand reduction programs by proposing a system that predicts how the indoor temperature 

measured inside a structure changes in response to outside temperature. Ex.1 at 3:25-4:13. 

4. Under the proposed system, measurements for indoor and outdoor temperatures 

are compared over time to derive an estimation for the rate of change in inside temperature in 

response to an outside temperature. Ex. 1 at 7:48-54. The system then compares the estimation 

with an actual measurement to determine whether the HVAC system is on or off. Id. at 7:55-64. 

5. The ’488/’327 specification makes clear that at the time of the invention, only 

“conventional” components were necessary to practice the claimed inventions. See, e.g., Ex. 1 at 

5:19-46. In its “Detailed Description of Preferred Embodiments,” the specification discloses 

generic, routine, and/or well-known technology, including: 

2

 All citations herein to the common specification shared by the ’488 and ’327 patents will 

reference column and line numbers of the ’488 patent unless otherwise indicated. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 6 of 27
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 the “World Wide Web” (id. at 5:1–2); 

 “HTML” (id. at 5:5); 

 “websites” (id. at 5:9–12); 

 “local area networks, interactive television networks, telephone networks, wireless data 

systems, two-way cable systems, and the like” (id. at 5:16–18); 

 “conventional computers” (id. at 5:20); 

 “processors such as those sold by Intel and AMD” (id. at 5:22–23); 

 “general-purpose processors, multi-chip processors, embedded processors and the like” 

(id. at 5:24–25); 

 “handheld and wireless devices such as personal digital assistants (PDAs), cellular 

telephones and other devices capable of accessing the network” (id. at 5:26–28); 

 “browser[s] configured to interact with the World Wide Web,” such as “Microsoft 

Explorer, Mozilla, Firefox, Opera or Safari” (id. at 5:29–31); 

 “random access memory (RAM), electronically erasable programmable read only 

memory (EEPROM), read only memory (ROM), hard disk, floppy disk, CD-ROM, 

optical memory, or other method of storing data” (id. at 5:35–39); 

 “operating system such as Microsoft Windows, Apple Mac OS, Linux, Unix or the like” 

(id. at 5:40–42); and 

 “Ethernet, wireless protocols such as IEEE 802.11, IEEE 802.15.4, Bluetooth, or other 

wireless protocols” (id. at 6:24–26). 

6. EcoFactor asserts independent claim 1 and dependent claims 2, 5, and 8 of the 

’488 patent, and independent claim 1 and dependent claims 2, 5, and 8-10 of the ’327 patent. 

7. Claim 1 of the ’488 patent recites the following functions of a “system for 

monitoring the operational status of an HVAC system” that comprises an “HVAC control 

system” and “one or more processors”: 

(a) receive temperature measurements from a structure conditioned by an HVAC system; 

(b) receive outside temperature measurements from a source other than the HVAC system; 

(c) compare the inside temperature of the structure and the outside temperature over time 

to derive an estimation for the rate of change in the inside temperature in response to 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 7 of 27
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the outside temperature; and 

(d) compare a temperature recorded inside the structure with the estimation for the rate of 

change in inside temperature to determine whether the HVAC system is on or off.3

8. Similar to functions (a)-(c) of the ’488 patent above, claim 1 of the ’327 patent 

recites functions of a “system for controlling the operational status of an HVAC system” that 

comprises a “thermostat” in communication with “one or more servers” via a network: 

(a) receive temperature measurements from a structure conditioned by an HVAC system; 

(b) receive outside temperature measurements from a source other than the HVAC system; 

(c) compare the inside temperature of the structure and the outside temperature over time 

to derive an estimation for the rate of change in the inside temperature in response to 

the outside temperature. 

Unlike the ’488 patent, however, ’327 claim 1 then does nothing with the derived estimation in 

function (c) above, but instead detours to the following functions: 

(d) receive a demand reduction request and determine whether the structure is associated 

with the request; and 

(e) if the structure is associated with the request, send a signal to the thermostat to change 

its setting to reduce electricity demand by the HVAC system. 

9. The asserted dependent claims of the ’488 and ’327 patents recite: 

 One or more processors (’488 patent) or servers (’327 patent) receive measurements of 

outside temperatures for geographic regions such as ZIP codes from sources other than 

said HVAC system. See Ex. 1, claim 2; Ex. 2, claim 2. 

 An HVAC system that comprises a programmable thermostat that communicates with a 

mesh networking protocol. See Ex. 1, claim 5. 

 The estimation in claim 1 is a prediction about the future rate of change in temperature 

3

 Google is concurrently moving for summary judgment of invalidity under 35 U.S.C. § 112 

based on the claim language “compare an inside temperature recorded inside the first structure 

with said estimation for the rate of change in inside temperature.” That motion, however, does 

not impact the Court’s analysis here under § 101 and Alice. Under either of EcoFactor’s experts’ 

inconsistent interpretations—the interpretation of its infringement expert Mr. de la Iglesia that 

the claim language requires comparing a predicted rate of change with an actual rate of change, 

or the interpretation of its validity expert Dr. Palmer that the same language requires comparing a 

predicted inside temperature with an actual temperature—the asserted claims are directed to an 

abstract idea and do not contain an inventive concept. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 8 of 27
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inside said structure. See Ex. 1, claim 8; Ex. 2, claim 5. 

 The second setting in claim 1 allows the inside temperature of the structure to increase to 

a certain temperature during a specified time interval. See Ex. 2, claim 8. 

 The second setting in claim 1 is based on an agreement between a homeowner and a 

demand reduction aggregator. See Ex. 2, claim 9. 

 The servers of claim 1 are further configured to send an alert to a user associated with the 

structure. See Ex. 2, claim 10. 

10. The ’488 and ’327 patent claims above refer to physical componentry such as an 

HVAC system, processors, servers, and a programmable thermostat, but only recite such 

componentry in the context of performing the functions above. 

B. Summary of the ’382 patent 

11. The ’382 patent also relates generally to HVAC systems and how to achieve 

energy savings by turning them off when a building is unoccupied. Ex. 3 at Abstract, 1:17-25, 

2:35-59. Although the prior art disclosed ways to accomplish such savings, the ’382 patent 

purports to provide a system to detect occupancy “without requiring the installation of additional 

hardware” by observing activity on a user’s “computer or other consumer electronic devices.” 

Id. at 3:15-41. Such activity may indicate that the building is occupied and the temperature 

setpoint should be changed. Id. at Fig. 7, 7:13-26, 8:7-10. 

12. Like the ’488 and ’327 patents, the claims of the ’382 patent recite generic 

componentry like “HVAC system,” “memory,” “processors with circuitry and code,” “sensors,” 

and “network.” See Ex. 3, claims 1-20. The ’382 specification makes clear that only 

conventional components were required to practice the claimed invention. See, e.g., id. at 4:63-

64, 5:31-32. The specification’s “Detailed Description of Preferred Embodiments” discloses the 

same generic, routine, and/or well-known technology as listed in paragraph 5, supra. See, e.g., 

id. at 4:24-7:2. 

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13. EcoFactor asserts the following claims of the ’382 patent, with the independent 

claims underlined: claims 1, 2, 6, 12, 15, 16, 17, and 19. 

14. Claims 1 and 17 recite the following sequence of largely identical functions: 

(a) receive “first data” including a measured characteristic (claim 1) or current temperature 

(claim 17) of the building; 

(b) receive “second data” from outside the building (claim 1) or including the outdoor 

temperature (claim 17); 

(c) store historical values of the first and second data; 

(d) receive non-occupancy and occupancy temperature setpoints; 

(e) receive user commands regarding HVAC temperature setpoints; 

(f) send user-specific data about the building and HVAC system; and 

(g) control the HVAC system based on determining whether the building is occupied.4

15. The asserted dependent claims of the ’382 patent add the following limitations: 

 The operational temperature is the second temperature setpoint corresponding to nonoccupancy when the system determines the building is unoccupied. See Ex. 3, claim 2. 

 A user is queried to confirm whether to change to a different setpoint after determining 

whether the building is occupied. See Ex. 3, claim 6. 

 Whether the building is occupied is determined by the first processor. See Ex. 3, claim 

12. 

 The interface allows the user to turn the HVAC system on or off. See Ex. 3, claim 15. 

 The interface allows the user to input that the building is unoccupied. See Ex. 3, claim 

16. 

 The instructions to control the HVAC system to provide heating or cooling are based in 

part upon historical values of the first and second data in claim 1. See Ex. 3, claim 19. 

C. The asserted patents’ use of conventional components and calculations 

16. The asserted patents acknowledge that the claimed inventions are carried out with 

4

 Claim 17 refers to receiving “third data” (not recited in claim 1) that informs whether the 

building is occupied. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 10 of 27
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“conventional” components. See, e.g., Ex. 1 at 5:19-33, 5:51-53; Ex. 3 at 4:63-66, 5:31-33. 

Scott Hublou, a named inventor on the ’488 and ’327 patents, also confirmed that he did not 

invent any of the hardware components recited in the patents, including the HVAC unit, the 

thermostat, the gateway, the computer, the laptop, a network, a utility server, a database, the 

hardware behind the demand reduction service server, and the hardware behind a database 

connected to the demand reduction server. See Ex. 4 at 126:13-22, 136:1-138:1. 

17. Mr. Hublou further confirmed that he could perform the “rate of change” 

calculation recited in the ’488 and ’327 patents “in his head.” Ex. 4 at 130:18-131:3. 

EcoFactor’s validity expert, John Palmer, likewise confirmed that the “rate of change” 

calculation being described in the ’488 and ’327 patent claims would be the equivalent of the 

slope between two different points on a graph. See Ex. 5 at 81:19-82:16 (“if you have a graph, 

then . . . a typical way of determining the slope of that graph is by looking at the temperature 

difference between two points divided by the time difference between the two points”), 93:12-

17. 

18. EcoFactor’s infringement expert, Erik de la Iglesia, described the material in 

column 7 of the ’488 and ’327 patents as being an application of Newton’s law of heating and 

cooling. See Ex. 6 at 78:18-20. As described by Mr. de la Iglesia in his expert report, “Newton’s 

laws of heating and cooling[] dat[e] back to approximately the year 1700” and “describe the rate 

of change of temperature as a function of time as being proportional to the difference between an 

object’s temperature and the temperature of its surroundings.” See Ex. 7 at 14. He goes on to 

say that Newton’s law “can easily be modified” to add “a heating or cooling device such as an 

HVAC system.” Id. at 15. 

19. Mr. Hublou also confirmed that the data and calculations in the provisional 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 11 of 27
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applications to which the asserted patents claim priority involved “rudimentary math on Excel 

spreadsheets and graphing.” Ex. 4 at 158:19-25. See also id. at 169:121-23 (Mr. Hublou tested 

his hypotheses using “Excel spreadsheets” and “crude types of calculations and graphing 

abilities”). Mr. Hublou collected the data that formed the basis of the provisional applications 

from thermostats at the houses of his friends and family and then used Excel to generate handdrawn graphs that formed the basis of the patent figures. See Ex. 4 at 172:4-21, 173:13-174:9. 

20. Mr. Palmer confirmed that a human could “sit there with a pencil and paper and 

write down a whole bunch of temperatures and times” and “then tak[e] that data and analyz[e] it” 

to “compar[e] inside and outside temperatures over time and develop[] from that an estimated 

rate of change,” as recited by the claims of the ’488 and ’327 patents. See Ex. 5 at 93:1-9, 94:7-

15 (“[W]ould it be theoretically possible for a person to collect a large amount of data? Yes. 

Would it be theoretically possible without any computational aid for that person to evaluate that 

large quantity of data in such a way as to provide a reasonable estimate of the rate of change over 

time in the context of a particular set of conditions? . . . [T]here are a few people that could.”). 

III. STATEMENT OF DISPUTED ISSUES TO BE DECIDED 

Whether claims 1, 2, 5, and 8 of the ’488 patent, claims 1, 2, 5, 8, 9, and 10 of the ’327 

patent, and claims 1, 2, 6, 12, 15, 16, 17 and 19 of the ’382 patent are invalid as directed to 

patent-ineligible subject matter under 35 U.S.C. § 101. 

IV. LEGAL STANDARD 

“Laws of nature, natural phenomena, and abstract ideas are not patentable” under 35 

U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). Under the twostep framework for determining invalidity under § 101 set out by the Supreme Court in Alice, the 

court must first determine whether a claim is “directed to” a patent ineligible abstract idea. Id. at 

217. If a claim is directed to an abstract idea, the court then considers the elements of each claim 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 12 of 27
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individually and “as an ordered combination” to determine whether the additional elements 

“transform the nature of the claim” into a patent-eligible application. Id. Patent eligibility under 

§ 101 is an issue of law. While the legal determination in Alice step two may contain underlying 

factual issues, where, as here, there are no material factual disputes, summary judgment should 

be granted. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 967 F.3d 1285, 1299 (Fed. Cir. 

2020) (finding “no dispute of any material fact” and granting summary judgment that the 

asserted claims are not patent eligible). Summary judgment should be granted “if the movant 

shows that there is no genuine dispute as to any material fact and the movant is entitled to 

judgment as a matter of law.” Fed. R. Civ. P. 56(a). 

V. ARGUMENT 

A. All asserted claims of the ’488 patent are patent ineligible. 

1. Alice Step One: the ’488 claims are directed to the abstract idea of 

determining whether the HVAC system for a structure is on or off by 

comparing the actual inside temperature with a predicted estimation. 

Though the asserted claims of the ’488 patent contain many words, stripped of excess 

verbiage, they express nothing more than the idea of using changes in indoor temperature in 

response to outdoor temperature to determine whether an HVAC system is on or off. But human 

beings have determined whether their HVAC system is on or off for years, which can be done 

through the process of mental deduction—noting the desired temperature setting on the device, 

noting the outdoor and actual indoor temperatures, noting the rate at which the home is heating 

or cooling, and concluding that the HVAC system was not actually on or off based on the 

disparity between expected and actual indoor temperatures. And, according to EcoFactor’s own 

expert, the relationship between indoor and outdoor temperature and using that to calculate a rate 

of change in indoor temperature is something that humans have been calculating since at least 

the early 1700s, when Newton first published his law of heating and cooling. See Ex. 7 at 14. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 13 of 27
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Independent claim 1 recites four simple functions, as set forth in Fact 7 above. See Ex. 1, 

claim 1. None of the asserted dependent claims (which depend from claim 1) add anything 

substantive to the four core functions recited above. Instead, they only recite generic 

components used in conventional ways. See, e.g., Ex. 1, claim 2 (the outside temperature 

measurements are for particular geographic regions); claim 5 (the HVAC system includes a 

programmable thermostat that communicates with a mesh networking protocol); claim 8 (the 

estimation of the rate of change is a prediction of future change in inside temperature). 

Thus, the “character” of the claims as a whole is directed to the abstract idea of using 

temperature changes to determine whether an HVAC system is on or off. All four of the claimed 

essential functions—taking indoor and outdoor temperature measurements, calculating the rate 

of change of indoor temperature and comparing that to the predicted indoor temperature, and 

using that to determine whether an HVAC system is on or off—can be performed by a human 

doing computations—i.e., the original computer. Bancorp Servs., LLC v. Sun Life Assurance Co. 

of Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012). One of the patent’s inventors and 

EcoFactor’s own expert have admitted as much. See Ex. 4 at 130:18-131:3 (admitted he could 

perform the calculations recited in the patent claims “inside [his] head”); id. at 158:19-25 (data 

and calculations that led to the provisional applications to which the asserted patents claim 

priority involved “rudimentary math on Excel spreadsheets and graphing”); id. at 172:4-21, 

173:13-174:9 (collected data from thermostats in houses of friends and family and then used 

Excel to generate hand-drawn graphs that formed the basis of the patent figures); Ex. 5 at 93:1-9; 

94:7-15 (admitting that humans could carry out the steps and calculations required by the patent 

claims). 

Further reinforcing their abstractness, the asserted claims recite only aspirational results 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 14 of 27
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without explaining “how?”. Claim 1 contains no instructions for how the general-purpose 

computer is to perform the “estimation of the rate of change” calculation; the computer or the 

human mind can do this according to any algorithm or formula or consideration or deduction 

based on personal observation. The patent’s lack of algorithmic disclosure was confirmed by 

one of the inventors. Ex. 4 at 118:3-8. The claims are like those held invalid in Clairilogic, Inc. 

v. FormFree Holdings Corp., 681 F. App’x 950 (Fed. Cir. 2017), which required collecting data 

and then validating data “by applying an algorithm engine.” Id. at 952. They were directed to an 

abstract idea because the “the algorithm engine mentioned in the claim is not claimed, identified, 

or explained.” Id. at 954. 

EcoFactor might contend that the claimed invention calculates the rate of change in 

indoor temperature in response to outdoor temperature to determine whether the HVAC system 

is on or off. But this further confirms the claims’ abstract nature. Adding a law of nature, like 

Newton’s law of heating and cooling, to an abstract idea “does not render the claim nonabstract.” See RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017). 

Where “a claim is directed essentially to a method of calculating, using a mathematical formula, 

even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. 

Flook, 437 U.S. 584, 595 (1978). 

Or EcoFactor might argue that the idea embodied by the ’488 claims is, per the patent 

specification, to “use [a] communicating thermostat combined with a computer network to verify 

that demand reduction has occurred.” Ex. 1 at 1:25-27. But despite the patent specification’s 

description of various existing utility demand reduction programs, the ’488 claims do not recite 

demand reduction requests or verification. Compare Ex. 1 at 1:20-3:21 with ’488 claim 1. Even 

taking the specification’s description of the invention at face value, the idea of coupling a 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 15 of 27
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thermostat to a computer network, without reciting any improvements to either the thermostat or 

the computer network, is an abstract idea, like the one the Federal Circuit held invalid in 

ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019) (finding claimed 

invention to be “nothing more than the abstract idea of communication over a network for 

interacting with a device, applied in the context of electric vehicle charging stations”). 

Nor do the claims recite any “specific means or method that improves” upon the 

hardware used to implement the process described in the claim. McRO, Inc. v. Bandai Namco 

Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Instead, they focus on “a process that 

qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. 

Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). In fact, the patent specification 

makes clear that all mechanical and electronic componentry necessary to practice the asserted 

claims—like the HVAC system, processors, programmable thermostat, and mesh networking 

protocol—are “conventional.” See, e.g., Ex. 1 at 5:19-46. This also was confirmed by one of the 

named inventors, who admitted that he did not invent any of the hardware components claimed 

in the patent. See Fact 16 above. 

The fact that the claim recites physical components, such as an HVAC unit or a 

thermostat, “is not enough to save the claims from abstractness, where the claimed advance is 

directed to . . . using off-the-shelf technology for its intended purpose.” Chamberlain Group, 

Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1348 (Fed. Cir. 2019). See also CardioNet, LLC v. 

InfoBionic, Inc., 816 F. Appx. 471, 476 (Fed. Cir. 2020) (affirming ineligibility under § 101, in 

part because “the claims depend on methods that can be performed . . . without reciting . . . any 

nonconventional components or characteristics”). The claims are not “‘directed to a specific 

implementation of a solution to a problem in the software arts,’ such as an improvement in the 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 16 of 27
13 

functioning of a computer.” RecogniCorp., 855 F.3d at 1326 (quoting Enfish, 822 F.3d at 1338-

39). As a result, the claims fail Alice step one. 

2. Alice Step Two: the ’488 claims do not contain an inventive concept. 

To save otherwise abstract claims at step 2, “an inventive concept must be evident in the 

claims,” RecogniCorp, 855 F.3d at 1327, and must provide “significantly more” than the 

“ineligible concept itself,” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1289–90 (Fed. 

Cir. 2018). The asserted ’488 claims, however, involve no more than the performance of “wellunderstood, routine, and conventional activities,” and thus lack an inventive concept. Content 

Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347–48 (Fed. Cir. 

2014). 

Instead of disclosing “a specific technical solution,” the ’488 asserted claims “simply 

us[e] generic computer concepts in a conventional way,” Bascom Glob. Internet Servs., Inc. v. 

AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016), and thus do not “transform the 

claimed abstract idea into a patent-eligible application,” regardless of whether the steps are 

considered “individually” or “as an ordered combination,” OIP Tech., Inc. v. Amazon.com, Inc., 

788 F.3d 1359, 1363 (Fed. Cir. 2015). The asserted independent claims use a processor or 

HVAC system to perform conventional functions that any computer or generic piece of hardware 

might perform, e.g., recording various temperature values and calculating a rate of change in 

such values. Ex. 1 at 9:25-45. Nothing in the claims requires any specific new computer or 

concrete technology to achieve these results. 

In fact, rather than providing any novel technical solution, the ’488 patent makes clear 

that these electrical and mechanical components are being used in conventional ways. See, e.g., 

Ex. 1 at 5:19-33 (“[i]n one embodiment, computers [] and servers [] are conventional computers” 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 17 of 27
14 

that include “processors such as those sold by Intel and AMD”), 5:51-53 (“The HVAC units may 

be conventional air conditioners”). Additionally, one of the patent inventors disavowed having 

made any inventive contribution to such components, thereby confirming their conventional 

nature. Ex. 4 at 126:13-22; 136:1-138:1. 

By only reciting generic components performing conventional functions, the claims fail 

to specify how any of claimed elements, such as the processor, programmable thermostat, or 

HVAC system, actually achieve the desired results. Instead, the claims use only “generic 

functional language to achieve the[] purported solutions.” Two-Way Media Ltd. v. Comcast 

Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017). Here, “[n]othing in the claims . . . 

requires anything other than conventional computer and network components operating 

according to their ordinary functions,” and thus they fail to pass muster at Alice step two. Id. 

See also In re TLI Commc’ns Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016) (claims ineligible 

where “the recited physical components behave exactly as expected according to their ordinary 

use”). 

B. All asserted claims of the ’327 patent are patent ineligible. 5

1. Alice Step One: the ’327 claims are directed to the abstract idea of 

changing the thermostat setting in response to a request to reduce 

energy usage. 

The asserted claims of the ’327 patent recite functions that reflect nothing more than the 

abstract idea of telling the thermostat to turn off the HVAC system in response to a request from 

a utility to reduce energy usage. After removing extraneous verbiage,6 independent claim 1 of 

5

 As discussed above, the ’488 and ’327 patents share a specification and have many overlapping 

claim elements. To the extent that the claim elements are overlapping, the arguments above with 

respect to the ’488 patent are incorporated by reference here. Defendants will only separately 

address in this section the ’327 claim elements that differ from those of the ’488 patent. 

6

 The first several limitations of ’327 claim 1 track those of ’488 claim 1. But then ’327 claim 1 

proceeds to recite limitations relating to demand reduction request verification that diverge from 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 18 of 27
15 

the ’327 patent recites the following functional sequence: (1) receiving a request from a utility to 

reduce energy usage, (2) determining whether that home is participating in the demand reduction 

program, and (3) if so, responding to that request by sending a signal to change the thermostat 

setting. As explained above, these functions of coupling a thermostat with a computer network 

to receive and verify demand reduction requests is similar to the abstract idea in ChargePoint of 

“communication over a network for interacting with a device,” applied to the context of HVAC 

systems. See id., 920 F.3d at 768. 

 Similarly, the ’327 dependent claims do not substantively add to these core functions. 

Instead, they recite generic components used in a conventional manner, like servers receiving 

outside temperatures for geographic zones (claim 2) or servers configured to send an alert to the 

home’s owner or occupant (claim 10). The claims do not define any technological 

improvements upon such components, but merely recite the functions they must carry out. See, 

e.g., Ex. 2 at 5:19-46 (referring to “conventional” computer and HVAC equipment). See also 

Ex. 4 at 126:13-22; 136:1-138:1. 

Like those of the ’488 patent, all of the essential functions of the ’327 asserted claims can 

be performed by humans. In fact, the demand reduction verification recited in ’327 claim 1 does 

not rely on any computations or calculations at all. It simply requires receiving a request, 

checking that request against a list of participating structures, and then acting on the request by 

sending a signal to change the thermostat setting of any participating structure. Devoid of any 

claim limitations on how the enumerated functions are carried out, the claim language would 

cover any thermostat communicating over a computer network with a utility about demand 

reduction requests, “thus preempting the entire industry’s ability to use” computer-connected 

’488 claim 1 and that seem unrelated to the preceding limitations. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 19 of 27
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thermostats to help utilities reduce power consumption at peak times. See ChargePoint, 920 

F.3d at 770. For these reasons, these claims are abstract and therefore fail Alice step one. 

2. Alice Step Two: the ’327 claims do not contain an inventive concept. 

The claims of the ’327 patent likewise fail Alice step two because they lack an inventive 

concept; they merely provide a “wholly generic computer implementation,” Alice, 573 U.S. at 

223, and recite nothing more than the ineligible concept itself. Buyseasons, 899 F.3d at 1289-90. 

Like the ’488 claims discussed in section V.A.2 supra, the ’327 claims merely recite generic 

components—like an HVAC system, thermostat, and servers—performing conventional 

functions. See, e.g., Ex. 2 at 5:19-33, 5:51-53; Ex. 4 at 126:13-22, 136:1-138:1. The claims use 

generic components in a conventional way and do not transform the abstract idea into a patenteligible concept. And, as admitted in the patent specification, the functions of receiving a 

demand reduction request and reacting to the receipt of a demand reduction request from a utility 

were also familiar concepts. See, e.g., Ex. 2 at 2:15-3:17. Accordingly, they cannot provide the 

necessary inventive concept. 

Moreover, the ’327 claims do not recite the method by which the demand reduction is 

performed. They describe only a result, by claiming generic servers that are “configured” to 

receive a demand reduction request, “determine” whether the structure is participating in a 

demand reduction program, and then “send a signal” to the thermostat to change the HVAC 

setting if so. Nothing in the claims explains how any of this is to be done, and thus, the claimed 

method is not inventive. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016) 

(“a claim that merely describes an ‘effect or result dissociated from any method by which [it] is 

accomplished’ is not directed to patent-eligible subject matter”). 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 20 of 27
17 

C. All asserted claims of the ’382 patent are patent ineligible. 

1. Alice Step One: the ’382 claims are directed to the abstract idea of 

changing the thermostat setting based on a building’s occupancy. 

The asserted claims of the ’382 patent are directed to the abstract idea of changing the 

temperature setpoint on a thermostat based on whether a building is occupied. When stripped of 

extraneous verbiage, the independent claims (’382 claims 1, 17) each recite the following 

sequence of identical steps or functions: (a) receive “first data” including a measured 

characteristic (claim 1) or current temperature (claim 17) of the building; (b) receive “second 

data” from outside the building (claim 1) or including the outdoor temperature (claim 17); (c) 

store historical values of the first and second data; (d) receive non-occupancy and occupancy 

temperature setpoints; (e) receive user commands regarding HVAC temperature setpoints; (f) 

send user-specific data about the building and HVAC system; and (g) control the HVAC system 

based on determining whether the building is occupied. 

The asserted dependent claims do not add anything substantive to the core idea above, 

reciting only generic components used in ways that would be ordinarily understood by one of 

skill in the art. For example, claim 2 describes setting a different temperature setpoint if the 

building is unoccupied, claim 6 describes sending a query to a user to confirm a change in 

temperature in response to an occupancy determination, claim 15 describes an interface 

configured to allow a user to turn the HVAC system on or off or, as in claim 16, to allow the user 

to input that the building is currently unoccupied, and claim 19 allows the processors controlling 

the HVAC system to set the operational temperature based on historical values. 

These claims are directed to the same core, abstract idea of changing the temperature 

setpoint of a building based on a determination of occupancy in which “computers are invoked 

merely as a tool.” Enfish, 822 F.3d at 1335-36. The claims recite conventional mechanical and 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 21 of 27
18 

electronic componentry, such as an HVAC system, memory, processors with circuitry and code, 

sensors, and a network. The patent admits that at the time of the invention, only “conventional” 

components were necessary to practice the asserted claims. See, e.g., Ex. 3 at 4:38-5:25. 

In addition to being directed to an abstract idea in which conventional computers and 

electrical components are being invoked merely as tools, all of the ’382 patent’s essential 

functions can be performed by a human. The crux of the ’382 claims is changing the thermostat 

setting based on a building’s deemed occupancy. But determining whether a person is in a 

particular structure, and then turning the dial on the thermostat, is a function that people have 

been performing for as long as they have had thermostats. It is common practice, for example, 

for a family prior to going on vacation, knowing their home will be unoccupied for a long period 

of time, to turn down the temperature on the thermostat in the colder months or up in the warmer 

months to save electricity. Automating this manual activity using generic components does not 

make the ’382 patent claims any less abstract. See Chamberlain Group, 935 F.3d at 1348 (“the 

mere physical nature of [the] claim elements . . . is not enough to save the claims from 

abstractness, where the claimed advance is directed to the wireless communication of status 

information using off-the-shelf technology for its intended purpose”). 

Further, independent claim 1 contains no instructions for how the general-purpose 

computer is to “execute instructions” with respect to changing the temperature based on an 

occupancy determination; the computer or the human mind can do this according to any 

algorithm or formula or consideration. The patent discloses no formula or consideration for how 

this is to be done. See Two-Way Media, 874 F.3d at 1337. At their core, these claims are like 

those held invalid in Clairilogic, which were directed to an abstract idea because “the algorithm 

engine mentioned in the claim is not claimed, identified, or explained.” 681 F. Appx. at 954. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 22 of 27
19 

“[A] method for collection, analysis, and generation of information reports, where the claims are 

not limited to how the collected information is analyzed or reformed, is the height of 

abstraction.” Id. Here, reciting a litany of limitations in which a processor is “designed to 

execute instructions” regarding occupancy, without even purporting to define those instructions, 

is the very definition of abstract under Alice step one. 

2. Alice Step Two: the ’382 claims do not contain an inventive concept. 

The otherwise abstract claims of the ’382 patent can only be saved if there is “an 

inventive concept [] evident in the claims,” RecogniCorp, 855 F.3d at 1327, which must provide 

“significantly more” than the “ineligible concept itself.” Buyseasons, 899 F.3d at 1289-90. The 

’382 claims’ “wholly generic computer implementation,” Alice, 573 U.S. at 223, does not supply 

the inventive concept necessary to pass muster under Alice step two. 

Nothing in the claims defines any technical improvement upon existing HVAC systems, 

memory, processors, sensors, or networks, notwithstanding their recitation of such terms. And, 

as with the ’488 and ’327 patents, the ’382 specification confirms that the named inventors did 

not contemplate anything beyond the conventional. The specification does no more than 

describe a litany of generic, routine, and/or well-known technology. See, e.g., Ex. 3 at 4:45-49 

(the “World Wide Web”); 4:64-66 (“conventional computers that are equipped with 

communications hardware such as modem or a network interface card”); 4:66-67, 5:1-2 

(“general-purpose processors” like “those sold by Intel and AMD”); and 5:10-12 (“browser[s] 

configured to interact with the World Wide Web,” such as “Microsoft Explorer, Mozilla, 

Firefox, Opera or Safari”). Even the HVAC-specific aspects of the claimed invention are 

conventional. See, e.g., Ex. 3 at 5:31-33 (“HVAC units may be conventional air conditioners, 

heat pumps, or other devices for transferring heat into or out of a building”); 5:54-58 (thermostat 

includes a “temperature sensing means [], which may be a thermistor, thermal diode or other 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 23 of 27
20 

means commonly used in the design of electronic thermostats”). 

There is nothing in either the claims or specification of the ’382 patent besides “generic 

functional language to achieve the[] purported solutions.” Two-Way Media, 874 F.3d at 1339. 

Without any purported improvement on existing computer hardware upon which the claimed 

inventions are implemented, the inquiry under Alice step two “therefore must turn to any 

requirements for how the desired result is achieved.” Id. Because there is nothing in the claims 

that “requires anything other than conventional computer and network components operating 

according to their ordinary functions,” the asserted claims of the ’382 patent do not contain an 

inventive concept and therefore fail Alice step two. Id.

VI. CONCLUSION 

For the foregoing reasons, summary judgment of invalidity under 35 U.S.C. § 101 should 

be granted for the asserted claims of the ’488, ’327, and ’382 patents. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 24 of 27
21 

Date: November 19, 2021 Respectfully submitted, 

KEKER, VAN NEST & PETERS LLP 

/s/ Robert A. Van Nest, 

with permission by Michael E. Jones 

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) 

633 Battery Street 

San Francisco, CA 94111-1809 

Telephone: 415 391 5400 

Facsimile: 415 397 7188 

econest-kvp@keker.com 

POTTER MINTON 

Michael E. Jones (TX Bar No. 10929400) 

mikejones@potterminton.com 

Patrick C. Clutter (TX Bar No. 24036374) 

patrickclutter@potterminton.com 

110 N. College, Suite 500 

Tyler, Texas 75702 

Tel: 903-597-8311 

Fax: 903-593-0846 

Shamita Etienne-Cummings 

Allen & Overy LLP 

1101 New York Avenue, NW 

Washington, DC 20005 

Telephone: (202) 683-3810 

Bijal V. Vakil 

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 

Attorneys for Defendant GOOGLE LLC

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 25 of 27
22 

Date: November 19, 2021 /s/ Daisy Manning 

Rudolph A. Telscher, Jr. 

Missouri Bar No. 41072* 

rudy.telscher@huschblackwell.com 

Kara R. Fussner 

Missouri Bar No. 54656* 

kara.fussner@huschblackwell.com 

Daisy Manning 

Missouri Bar No. 62134* 

daisy.manning@huschblackwell.com 

HUSCH BLACKWELL LLP 

190 Carondelet Plaza, Suite 600 

St. Louis, MO 63105 

314.480.1500 Telephone 

314.480.1505 Facsimile 

Ryan B. Hauer 

Illinois Bar No.6320758* 

ryan.hauer@huschblackwell.com 

HUSCH BLACKWELL LLP 

120 South Riverside Plaza, Suite 2200 

Chicago, IL 60606 

312.655.1500 Telephone 

312.655.1501 Facsimile 

*Admitted Pro Hac Vice 

Jennifer P. Ainsworth 

WILSON, ROBERTSON & CORNELIUS, P.C. 

909 ESE Loop 323, Suite 400 

Tyler, Texas 75701 

(903) 509-5000 Main 

(903) 509-5001 Direct 

(903) 509-5092 Fax 

Email: jainsworth@wilsonlawfirm.com 

Manny J. Caixeiro 

VENABLE, LLP 

2049 Century Park East, Suite 2300 

Los Angeles, CA 90067 

310-229-9900 

Fax: 310-229-9901 

Email: MJCaixeiro@venable.com 

Timothy J. Carroll 

Vivian Sandoval 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 26 of 27
23 

Steve M. Lubezny 

VENABLE LLP 

227 West Monroe Street, Suite 3950 

Chicago, IL 60606 

312-820-3400 

Fax: 312-820-3401 

Email: tjcarroll@venable.com 

vsandoval@venable.com 

smlubezny@venable.com 

Attorneys for Defendant ecobee, Inc. 

Dated: November 19, 2021 /s/ Fred I. Williams “by permission”

 Fred I. Williams 

fwilliams@wsltrial.com 

Williams Simons & Landis PLLC 

601 Congress Ave., Suite 600 

Austin, TX 78701 

Tel: 521-543-1354 

Todd E. Landis 

tlandis@wsltrial.com 

Williams Simons & Landis PLLC 

2633 McKinney Ave., Ste. 130 #366 

Dallas, TX 75204 

Tel: 562-543-1357 

John Wittenzellner 

jwittenzellner@wsltrial.com

Williams Simons & Landis PLLC 

1735 Market St., Suite A #435 

Philadelphia, PA 19103 

Tel: 512-543-1373 

Attorneys for Defendant Vivint, Inc. 

Case 6:20-cv-00075-ADA Document 111 Filed 11/19/21 Page 27 of 27