IN THE 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 

JURY TRIAL DEMANDED 

ECOFACTOR, INC., 

 Plaintiff, 

 v. 

ECOBEE, INC., 

 Defendant. 

 Case No. 6:20-cv-00078-ADA 

 JURY TRIAL DEMANDED 

ECOFACTOR, INC., 

 Plaintiff, 

 v. 

VIVINT, INC., 

 Defendant. 

 Case No. 6:20-cv-00080-ADA 

 JURY TRIAL DEMANDED 

 

DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEF 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 1 of 29
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TABLE OF CONTENTS 

BACKGROUND ON ASSERTED PATENTS ...................................................................1

U.S. Patent No. 8,180,492 (“’492 Patent”) ..............................................................1

U.S. Patent No. 8,412,488 (“’488 Patent”) ..............................................................1

U.S. Patent No. 8,738,327 (“’327 Patent”) ..............................................................2

U.S. Patent No. 10,534,382 (“’382 Patent”) ............................................................3

DISPUTED CONSTRUCTIONS ........................................................................................3

“rate of change in inside temperature” (’488 patent claims 1, 9; ’327 patent 

claims 1, 11); “rate of change in temperature inside the [said] structure” (’488 

patent claims 8, 16; ’327 patent claims 5, 15) .........................................................3

“measurement[s]” [“measurement[s]”; “measurement of outside temperatures”; 

“temperature measurement inside a structure”; “temperature measurements 

from inside the structure”; “measurement of at least one characteristic of the 

building”; “measurement of the current outdoor temperature”] (’488, ’327, and 

’382 patents, all claims) ...........................................................................................7

’488 Patent Claims 1 and 9 – Indefiniteness ............................................................8

“user interface actions intended to alter a state of one or more of said 

[networked] electronic devices” (’492 patent claims 1, 10) ..................................11

“receiving [receives] input from one or more users” (’492 patent claims 1, 10); 

“said input from said one or more users” (’492 patent claims 1, 9, 10, 18) ..........16

“outside temperature” (’488 patent claims 1, 2, 9, 10; ’327 patent claims 1, 2, 

11, 12) ....................................................................................................................20

“programmable thermostat” (’327 patent claims 3, 13) .........................................21

AGREED CONSTRUCTIONS .........................................................................................22

 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 2 of 29
ii 

TABLE OF AUTHORITIES 

Page(s) 

Cases

Acacia Media Techs. Corp. v. New Destiny Internet Grp., 

405 F. Supp. 2d 1127 (N.D. Cal. 2005) ...................................................................................... 9

In re Collier, 

397 F.2d 1003 (C.C.P.A. 1968) .................................................................................................. 8 

Merck & Co. v. Teva Pharms. USA, Inc., 

395 F.3d 1364 (Fed. Cir. 2005) ................................................................................................ 12 

O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 

521 F.3d 1351 (Fed. Cir. 2008) ............................................................................................ 8, 16 

Wang Labs., Inc. v. Am. Online, Inc., 

197 F.3d 1377 (Fed. Cir. 1999) .......................................................................................... 14, 18 

 

 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 3 of 29
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TABLE OF EXHIBITS 

No. Exhibit 

1 Oct. 7, 2010 Office Action from prosecution history of U.S. Patent No. 8,180,492 

2 Feb. 7, 2011 Response from prosecution history of U.S. Patent No. 8,180,492 

3 Mar. 1, 2012 Response from prosecution history of U.S. Patent No. 8,180,492 

4 Aug. 2, 2011 Response from prosecution history of U.S. Patent No. 8,180,492 

5 Excerpts of Thomas G. Beckwith and Roy D. Marangoni Mechanical 

Measurements, 4th ed. 

6 Excerpts of “Merriam-Webster Dictionary, 10th ed. (1999)” 

7 Excerpts of “American Heritage Dictionary, 3d ed. (1993)” 

8 U.S. Patent No. 5,977,964 to Williams, et al. 

9 Excerpts of “Webster’s II New College Dictionary, (2001)” 

10 Page from Merriam-Webster, https://merriam-webster.com/dictionary/current 

11 Page from Merriam-Webster, https://www.merriamwebster.com/dictionary/rate%20of%20change 

12 Page from Merriam-Webster, https://www.merriamwebster.com/dictionary/user%20interface 

13 Excerpts of “Webster’s II New College Dictionary, (2001)” 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 4 of 29
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Defendants Google LLC, ecobee, Inc., and Vivint, Inc. hereby submit their Opening Claim 

Construction Brief. 

Background on Asserted Patents 

The four asserted patents generally cover management of HVAC systems. The claimed 

management features include determining whether someone is home to adjust temperatures, 

checking if an HVAC system is on or off, and handling requests to reduce energy usage. 

U.S. Patent No. 8,180,492 (“’492 Patent”) 

The ’492 patent issued May 15, 2012 from an application filed July 13, 2009. The patent 

tries to solve the problem of adjusting home temperatures based on occupancy. While motion 

sensors “involve considerable expense” and “cannot reliably detect presence,” the ’492 patent is 

directed to detecting occupancy based on user interaction: “detecting the use of networked 

consumer electronics devices as indications of occupancy.” ’492 at Abstract, 3:1-15. Independent 

claims 1 (method) and 10 (system) are essentially identical and each recite steps for determining 

occupancy, prompting the user about changing temperature, and then keeping a non-occupied 

temperature setpoint in response to input overriding the proposed change in temperature. 

U.S. Patent No. 8,412,488 (“’488 Patent”) 

The ’488 patent issued April 2, 2013 from an application filed March 1, 2012, and 

addresses the problem of checking if an HVAC system is on or off based on outside and inside 

temperatures. The patent “comprises systems and methods for estimating the rate of change in 

temperature inside a structure,” in connection with “a system for offering peak demand reduction 

to electric utilities.” ’488 at Abstract, 1:22-25. The ’488 patent purports to use the “relationship 

between the inside temperature and the outside temperature to determine whether the climate 

control system is ‘on’ or ‘off.’” Id. at Abstract. The ’488 patent specification discloses 

embodiments in which temperature measurements and calculations based on temperature data over 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 5 of 29
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time are used to assess whether the operating status of the HVAC system in a structure is “on” or 

“off.” Id. at 3:25-4:15. Independent claims 1 and 9 of the ’488 patent are directed to a system and 

method for “monitoring the operation[al status] of an HVAC system,” comprising: (1) an HVAC 

control system associated with a first structure; and (2) one or more processors that are capable of: 

(i) receiving measurements of outside temperatures from a source other than the HVAC system; 

(ii) comparing a received inside temperature and the outside temperature; (iii) deriving an 

estimation for the rate of change in inside temperature of the structure in response to outside 

temperature; and (iv) comparing an inside temperature with the estimation for the rate of change 

in inside temperature to “determine whether the first HVAC system is on or off.” 

U.S. Patent No. 8,738,327 (“’327 Patent”) 

The ’327 patent issued May 27, 2014 from an application filed March 28, 2013, and is 

related to the ’488 patent. The ’327 patent purports to relate to “systems and methods for 

estimating the rate of change in temperature inside a structure.” ’327 at Abstract. The ’327 

Abstract states that, “[a]t least one thermostat located is [sic] inside the structure and is used to 

control an [sic] climate control system,” a “remote processor is in communication with said 

thermostat,” and “at least one processor compares the outside temperature” with “information 

reported . . . from the thermostat” in order to “determine whether the climate control system is ‘on’ 

or ‘off.’” Id. The ’327 patent explains that the “invention relates to the use of thermostatic HVAC 

controls . . . connected to a computer network as a part of a system for offering peak demand 

reduction to electric utilities.” Id. at 1:22-25. Independent claims 1 and 11 of the ’327 patent are 

directed to a system and method for controlling the operation of an HVAC system requiring: (1) a 

thermostat inside the structure, and (2) one or more remote servers. The remote servers are capable 

of: (i) receiving measurements of outside temperatures; (ii) communication with the thermostat; 

(iii) receiving inside temperatures from the thermostat; (iv) comparing the inside and outside 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 6 of 29
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temperatures to “derive an estimation for the rate of change in inside temperature of the structure 

in response to outside temperature”; (v) receiving a demand reduction request; and (vi) sending a 

signal to the thermostat to change the first setting to a second setting to reduce demand by the 

HVAC system. 

U.S. Patent No. 10,534,382 (“’382 Patent”) 

The ’382 patent issued January 14, 2020 from an application filed April 3, 2019. The 

patent purports to be directed to “systems and method for detecting the use of networked consumer 

electronics as indications of occupancy” for purposes of “automatically adjusting the temperature 

setpoint.” ’382 at Abstract. The ’382 patent states that the “state of occupancy is used to alter the 

setpoint on the thermostatic HVAC control to reduce unneeded conditioning of occupied 

spaces.” Id. Independent claims 1 and 17 are directed to systems for controlling an HVAC system 

at a user’s building that comprise, among other things, a set of processors that (i) receive first data 

including a measurement of at least one characteristic of the building, (ii) receive second data from 

a network connection, (iii) receive temperature setpoints corresponding to a desired temperature 

setting when the building is occupied or unoccupied, and (iv) execute instructions to determine 

whether the building is occupied or unoccupied, and based on that determination, control the 

HVAC system. 

Disputed Constructions 

“rate of change in inside temperature” (’488 patent claims 1, 9; ’327 patent 

claims 1, 11); “rate of change in temperature inside the [said] structure” 

(’488 patent claims 8, 16; ’327 patent claims 5, 15) 

Plaintiff’s Proposal Defendants’ Proposal

“the difference between two inside 

temperature measurements over a particular 

span of time between the measurements” 

“the difference between inside temperature 

measurements divided by the span of time 

between the measurements (i.e., ∆T/∆t)” 

The claims of both the ’488 and ’327 patents require a set of processors (or servers) that are 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 7 of 29
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configured to derive an estimate for the “rate of change in inside temperature” of a structure. See 

’488 at cl. 1, 9; ’327 at cl. 1, 11. Defendants propose that this term be construed to mean “the 

difference between inside temperature measurements divided by the span of time between the 

measurements (i.e., ∆T/∆t).” This construction is consistent with the intrinsic and extrinsic 

evidence, as discussed below. 

The term “rate of change” is well-understood to be “a value that results from dividing the 

change in a function of a variable by the change in the variable.” See Ex. 61

 (Merriam-Webster, 

10th ed. (1999), at 969); see also Ex. 11 (https://www.merriam-webster.com/dictionary/ 

rate%20of%20change (showing current definition unchanged from 1999)). In the ’488 and ‘327 

patents, the rate of change is for temperature, which is expressed, for example, as degrees 

Fahrenheit per second, degrees Celsius per hour, or the like. More generically, if the temperature 

T is a function of time t, then the “rate of change” of the temperature is, in mathematical terms, 

represented as “ΔT/Δt,” where ΔT refers to the difference in temperature and Δt is the span in time 

between those two measurements. The construction proposed by Defendants accurately reflects 

this well-understood meaning of a “rate of change.” 

Furthermore, in the context of the claim language—which requires a rate of change in inside 

temperature—the claimed “rate of change” relates to the difference between two inside 

temperature measurements divided by the span of time between those inside temperature 

measurements. For example, if the inside temperature measurement at 1pm is 70 degrees 

Fahrenheit and the inside temperature measurement at 2pm is 80 degrees Fahrenheit, the rate of 

change in inside temperature is 10 degrees Fahrenheit per hour (or 10°

F/1hr). This is consistent 

with the common specification of the ’488 and ’327 patents, which uses the term “rate” in the 

 

1

 “Exs. 1-13” refer to exhibits to the Declaration of Bijal Vakil, filed concurrently. 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 8 of 29
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context of the rate at which inside temperature measurement changes. The ’488 and ’327 patents 

explain that “basic versions of thermostats use components such as a coiled bi-metallic spring to 

measure actual temperature” while “electronic digital thermostats . . . use solid-state devices such 

as thermistors or thermal diodes to measure temperature.” ’488 at 1:36-46; ’327 at 1:36-46. The 

patents then explain that the “invention comprises systems and methods for estimating the rate of 

change in temperature inside a structure.” ’488 at Abstract; ’327 at Abstract (emphases added). 

For instance, in reference to Figure 6a, the patents explain that “[w]hen the air conditioning turns 

on, the inside temperature stays constant (or rises at a much lower rate) despite the rising outside 

temperature.” ’488 at 7:8-9; ’327 at 7:8-9 (emphases added). Similarly, in reference to Figure 8, 

the patents further explain that “[i]f the server determines that the temperature inside the house 

is rising at the rate predicted if the air conditioning is shut off, then the server confirms 508 that 

the air conditioning has been shut off.” ’488 at 7:57-60; ’327 at 7:57-60 (emphases added). 

EcoFactor agrees that “a rate of change in inside temperature” must consider the difference 

between two inside temperature measurements. But the rest of EcoFactor’s proposed construction 

is flawed for two reasons. First, by generically referring to a “difference . . . over a particular span 

of time,” EcoFactor’s proposed construction wrongly allows for a calculation that simply takes the 

difference between two temperature measurements at two different times. This overlooks a matter 

of elementary mathematics—a rate of change in mathematics is the difference of two 

measurements divided by the difference in time between those measurements. In other words, 

ൌ A	ݎ݋݂	݄ܽ݊݃݁ܥ	݂݋	݁ݐܴܽ

Aଶ െ Aଵ

ݐଶ െ ݐଵ

where ‘A’ equals the measured quantity and ‘t’ equals time.” Applying this mathematical principle 

to a rate of change in inside temperature, the formula would read: 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 9 of 29
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ଵ݌ܶ݁݉ െ ଶ݌ܶ݁݉ ൌ	 ݁ݎݑݐܽݎ݁݌ܶ݁݉	݅݊	݄ܽ݊݃݁ܥ	݂݋	݁ݐܴܽ

ଵ݌ܶ݁݉	݂݋	ܶ݅݉݁	െ 	ଶ݌ܶ݁݉	݂݋	ܶ݅݉݁

In mathematics, this formula may be represented as “ΔT/Δt,” as explained above and proposed in 

Defendants’ proposed construction. 

EcoFactor seeks to avoid this elementary mathematical principle and leave open the 

possibility—which it has pursued in related litigations involving related patents—that merely 

determining a difference between two temperature measurements at two different times is a rate 

of change in temperature. EcoFactor’s formulation would yield a value with units of temperature, 

which is not a rate of change. A rate of change in temperature must be expressed as units of 

temperature per unit of time—in other words, ΔT/Δt. 

Second, by using the phrase “over a particular time” instead of “over the particular time,” 

EcoFactor’s proposed construction also incorrectly suggests that the span of time used for 

calculating the rate of change can somehow be different than the actual span of time between the 

two inside temperature measurements. As discussed above, in order to actually calculate a rate of 

change in inside temperature, the difference in inside temperature measurements must be divided 

by the actual span of time between those temperature measurements.2

 

Accordingly, Defendants respectfully request that the Court adopt their construction and 

construe “rate of change in inside temperature” to mean “the difference between inside temperature 

measurements divided by the span of time between the measurements (i.e., ∆T/∆t).” 

 

2

 Additionally, the claims lack an antecedent basis for “the rate of change,” and are indefinite 

in that respect. 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 10 of 29
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“measurement[s]” [“measurement[s]”; “measurement of outside 

temperatures”; “temperature measurement inside a structure”; 

“temperature measurements from inside the structure”; “measurement of at 

least one characteristic of the building”; “measurement of the current 

outdoor temperature”] (’488, ’327, and ’382 patents, all claims) 

Plaintiff’s Proposal Defendants’ Proposal 

Plain and ordinary meaning; no 

construction necessary. 

“determination [of the claimed property] by 

an instrument by using standardized units” 

“Measurement” is a well-understood scientific term that should be defined for the jury. 

“[T]he process or the act of the measurement consists of obtaining a quantitative comparison 

between a predefined standard and a measurand.” See Ex. 5 (Thomas G. Beckwith & Roy D. 

Marangoni, Mechanical Measurements (4th Ed.) (“Mechanical Measurements”) at 1 (emphasis in 

original)). The claims use the term “measurement” in precisely this manner, to reflect 

determination of temperature with an instrument. The asserted claims all use the term 

“measurement” with respect to temperatures: “receives temperature measurements from inside the 

structure,” “receiving temperature measurements inside a structure from at least one thermostat,” 

“measurement of at least one characteristic of the building,” “measurement of the current 

temperature of the building by the sensor,” and “receive measurements of outside temperatures.” 

’327 at 9:30, 10:16-19; ’382 at 8:20-21, 9:14-15; ’488 at 9:47. 

The specification also makes clear that measurements are accomplished by instruments, 

such as sensors. See, e.g., ’488 at 1:37-38; ’327 at 1:37-38; ’382 at 1:37-38 (“[T]hermostats use 

components such as a coiled bi-metallic spring to measure actual temperature,”); ’488 at 6:63-65; 

’327 at 6:63-65 (“the bi-directional communication will also allow the thermostat to regularly 

measure and send to the server information about the temperature in the building.”); ’488 at 9:11-

13 (“The system installed in a subscriber’s home may optionally include additional temperature 

sensors at different locations within the building.”) (emphasis added); id. at 9:15-18 (“Additional 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 11 of 29
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temperature and/or humidity sensors may allow increased accuracy of the system, which can in 

turn increase user comfort, energy savings or both.”). 

The specification does not provide for the term “measurement” to mean a forecast. 

EcoFactor has asked the Court to give the term “measurement” its “plain and ordinary meaning,” 

but in both its infringement contentions in these cases and in related litigations involving related 

patents, EcoFactor has attempted to include forecasted temperatures as falling within the ambit of 

the meaning of the term “measurement.” They do not. Because there is an actual dispute between 

the parties as to what constitutes a “measurement,” construction of this term is necessary to 

determine the proper scope of the claims. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 

521 F.3d 1351, 1360 (Fed. Cir. 2008) (“When the parties raise an actual dispute regarding the 

proper scope of these claims, the court, not the jury, must resolve that dispute.) The term 

“measurement” should be given its meaning in the context of the claims—a “determination [of the 

claimed property] by an instrument by using standardized units.” 

’488 Patent Claims 1 and 9 – Indefiniteness 

Plaintiff’s Proposal Defendants’ Proposal

Plain and ordinary meaning; no construction 

necessary. 

Indefinite due to lack of essential structural 

connections, under In re Collier, 397 F.2d 

1003 (C.C.P.A. 1968), and its progeny. 

The asserted claims of the ’488 patent are invalid as indefinite because they list multiple 

components without reciting structural relationships between them. Claims 1 and 9 recite systems 

with two sets of components—“at least one HVAC control system” and “one or more processors.” 

However, the claims do not identify any structural relationship between any of those parts, and 

thus fail to inform the public about the scope of the claims with reasonable certainty. 

Under long-standing law, claims are indefinite if they fail to identify essential structural 

connections. See In re Collier, 397 F.2d 1003, 1005 (C.C.P.A. 1968) (affirming rejection of claim 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 12 of 29
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that “does not positively recite structural relationships of the two elements”). “Patents claiming a 

system, are indefinite under § 112 if the claim does not recite structural relationships of essential 

elements.” Acacia Media Techs. Corp. v. New Destiny Internet Grp., 405 F. Supp. 2d 1127, 1138 

(N.D. Cal. 2005). For example, a “sequence encoder” in a communication system was indefinite 

where the claim “omits disclosure of a cooperative relationship with the other elements” and there 

was “no specification of its input or its output.” Id. at 1138. 

The claims here are similarly deficient. Independent claims 1 and 9 are indefinite because 

they merely recite a catalog of elements, and fail to specify any structural relationship between the 

claimed components of the “HVAC control system” and the “one or more processors.” See 

Declaration of Don Turnbull (“Turnbull Decl.”) ¶ 46-53. Claims 1 and 9 recite functions 

associated with the HVAC control system (receiving temperature measurements) and the one or 

more processors (receiving measurements of outside temperatures, etc.), but they recite no 

structural relationship whatsoever. None of these functions provides insight into any structural 

relationship between the components. At most, the only overlap as to the functionality of the 

HVAC control system and the one or more processors is that both perform functions involving 

inside temperature measurements. However, the claims fail to recite which component provides 

these inside temperature measurements to the other component, or whether the HVAC control 

system, the one or more processors, or both receive the inside temperature measurements from 

some other component, or whether another configuration exists. Id. ¶ 47. 

The specification also fails to clarify the structural relationship between these components. 

Because there is no disclosure of an HVAC control system, it is not possible to infer from the 

specification any structural relationship between the HVAC control system and the one or more 

processors. For example, Figure 2 of the ’488 patent shows “in further detail” the “major 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 13 of 29
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elements” of the system, including computer 104, thermostat 108, HVAC unit 110, a server 

containing a database 106a and 106b, and a gateway 110, that connects the thermostat and 

computer to the Internet 102. ’488 at 5:47-67. But absent from this disclosure is any description 

of the identified “major element[s]” of the system. 

Further complicating the disclosures, all of the “major elements” of the system (apart from 

the HVAC system 110) are disclosed as comprising one or more processors, including computer 

104, server 106, and thermostat 108. See Turnbull Decl. ¶¶ 35-38, 49. Accordingly, a PHOSITA 

cannot infer from the specification any structural relationship regarding the one or more 

processors. The specification also teaches that “control of the HVAC system [] relies primarily on 

communication running from the server to the thermostat” (’488 at 6:61-62) and that “the system 

will be capable of numerous diagnostic and controlling functions beyond those of a standard 

thermostat” (id. at 6:67-7:2). See Turnbull Decl. ¶¶ 39-42, 50. The claims thus create many 

possible arrangements of these components, but no way to identify which infringe. See id. ¶¶ 51-

52. 

A person of ordinary skill in the art would understand that the HVAC control system and 

HVAC system are separate and distinct components because claims 1 and 9 refer to them 

separately. See id. ¶ 50. Thus, the ’488 patent introduces more ambiguity about whether the 

HVAC control system corresponds to any component of the system and how it might interact with 

any other component. The same is true for “one or more processors,” which could correspond to 

any of the “major elements” or combination of elements in the system. Id. ¶ 35-38, 49. 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 14 of 29
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“user interface actions intended to alter a state of one or more of said 

[networked] electronic devices” (’492 patent claims 1, 10) 

Plaintiff’s Proposal Defendants’ Proposal

Plain and ordinary meaning; no 

construction necessary. 

“a user intentionally interacting with the 

device’s graphic user interface to alter the 

device’s state and indicate whether the 

structure is occupied” 

The disputed phrase appears in the following limitations of claims 1 and 10: 

From claim 1: “determining whether one or more networked electronic devices

inside said structure are in use, wherein said networked electronic devices comprise 

a graphic user interface comprising a display, wherein said networked electronic 

devices receive input from one or more users and wherein use of said networked 

electronic devices comprises at least one of cursor movement, keystrokes or other 

user interface actions intended to alter a state of one or more of said networked 

electronic devices by one or more users;” 

From claim 10: “one or more electronic devices having at least a graphic user 

interface comprising a display wherein said electronic devices receive input from 

one or more users and wherein use of said electronic devices comprises at least one 

of cursor movement, keystrokes or other user interface actions intended to alter a 

state of one or more of said electronic devices by one or more users wherein 

activity of one or more networked electronic devices indicates whether said 

thermostat should be changed from said first temperature setpoint to said second 

temperature setpoint;” 

Defendants’ construction clarifies for a jury that a user intentionally interacts with the 

claimed graphic(al) user interfaces of the electronic devices, and that those actions also indicate 

whether a structure is occupied. This proposal explains that the invention looks for user interaction 

with devices to see if the user might be home, so that it can ask the user about adjusting the 

temperature. 

First, the language and ordering of the claims themselves support this construction. The 

independent claims each require determining whether networked electronic devices are “in use,” 

where the “use” comprises “at least one of cursor movement, keystrokes or other user interface 

actions intended to alter a state.” E.g., ’492 cl. 1 (emphasis added). Accordingly, the claims 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 15 of 29
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explain that “user interface actions” are intentional—“intended to alter a state”—and that cursor 

movement and keystrokes are examples of such actions. Furthermore, the altered “state” relates 

to occupancy of the structure because, “in response to use” of the claimed devices, the system 

determines that the HVAC system is set to a temperature setpoint “indicating that said structure is 

deemed to be non occupied.” Id. The claims further specify that the “networked electronic devices 

comprise a graphic user interface comprising a display” (claim 1), or “electronic devices having 

at least a graphic user interface comprising a display” (claim 10). Therefore, the claimed electronic 

devices each have a graphic user interface with a display, through which the system can detect 

“user interface actions.” If the user did not interact through the “graphic user interface[s],” those 

recited interfaces would be meaningless. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 

1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim 

is preferred over one that does not do so.”). 

Second, the specification also supports this construction because the disclosed 

embodiments all involve users intentionally interacting with a graphic user interface. For example, 

Figure 1 depicts computers for user interaction, which can be “conventional computers,” 

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

other devices capable of accessing the network,” or “microprocessor-controlled home 

entertainment equipment including advanced televisions, televisions paired with home 

entertainment/media centers, and wireless remote controls.” ’492 at 4:61-5:7. The computers also 

“utilize a browser” and “provide information, sound, graphics and text.” Id. at 5:8-24. These 

examples are all consistent with home occupants using a device’s graphic user interface, and the 

system detecting that use for occupancy information. 

In another example, Figure 6 “represents the screen of a computer or other device 104 using 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 16 of 29
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a graphical user interface connected to the Internet”: 

Id. at 6:33-34, Fig. 6. “The screen shows that a browser 1200 is displayed on computer 104. In 

one embodiment, a background application installed on computer 104 detects activity by a user of 

the computer, such as cursor movement, keystrokes or otherwise, and signals the application 

running on server 106 that activity has been detected.” Id. at 6:35-40. Figure 7 further confirms 

that the system detects an intentional action on the graphic user interface of a computer to 

determine occupancy.3

 Figure 7 depicts “a flowchart showing the steps involved in the operation 

of one embodiment of the subject invention”: 

 

3

 In their August 2, 2011 response during prosecution, the applicants stated that they consider 

Figure 7 to embody the claims: “Applicant has amended the pending claims to more clearly focus 

on aspects of the embodiments shown in Figure 7 . . . .” Ex. 4 at 6. 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 17 of 29
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Id. at 6:52-53, Fig. 7 (excerpt). “In step 1302, computer 104 transmits a message to server 106 

via the Internet indicating that there is user activity on computer 104.” Id. at 6:52:57 (emphases 

added). Therefore, all of these descriptions require intentional interactions with a computer. By 

contrast, the specification expressly distinguishes motion sensors (passive sensors without a 

graphic user interface), warning that they “involve considerable expense” and “cannot reliably 

detect presence” in a home. Id. at 2:61-3:21. The ’492 patent describes and enables only 

interactions through a graphical user interface. See Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 

1377, 1382 (Fed. Cir. 1999) (construing “frame” based on “[t]he only system that is described and 

enabled in the ’669 specification and drawings”). 

 Third, the prosecution history also confirms that the applicants considered “user interface 

actions” to be intentional interactions with the graphic user interface that alter the device’s state to 

indicate whether the structure is occupied. As noted above, the issued claims rely on “use” to 

indicate whether the structure is “occupied” or “non occupied.” ’492 cl. 1. In an October 7, 2010 

Office Action, the Examiner rejected the pending claims as anticipated by Williams (U.S. Patent 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 18 of 29
15 

No. 5,977,964). See Ex. 1 at 2 (mis-identified as “5,977,864”). Specifically, the Examiner found 

that Williams discloses “determining whether one or more networked electronic devices inside a 

structure are in use.” Id. In their following Examiner interview and February 7, 2011 response, 

the applicants contended that “Williams does not 1) monitor usage of a networked electronic 

device to determine non-occupancy.” See Ex. 2 at 7. Meanwhile, they amended claim 1 to add 

the entire disputed limitation: 

wherein said networked electronic devices comprise a graphic user interface 

comprising a display, wherein said networked electronic devices receive input 

from one or more users and wherein use of said networked electronic devices 

comprises at least one of cursor movement, keystrokes or other user interface 

actions intended to alter a state of one or more of said networked electronic devices 

by one or more users 

Id. at 2 (emphases added). The applicants also amended claim 10 to include these features. See 

id. at 3. Thus, in response to the rejection, the applicants narrowed the claims to require each 

device to have a graphic user interface with a display, while arguing that Williams did not disclose 

user interactions with a graphic user interface to determine non-occupancy. That is precisely what 

Defendants’ construction clarifies. 

Fourth, the extrinsic evidence also confirms that a PHOSITA would understand “user 

interface actions” to be intentional interactions. A “user interface” is understood to be “software 

that is designed to allow a computer user to interact with the operating system of a machine or 

system (such as by selecting presented options or entering text commands).” Ex. 12 (User 

interface, MERRIAM-WEBSTER.COM, https://www.merriam-webster.com/dictionary/user 

%20interface (last visited Oct. 1, 2020)). The intrinsic and extrinsic evidence agree that a user 

interface is provided for a “user to interact,” as Defendants’ construction clarifies. In fact, the two 

examples of user interface actions provided by claim 1 of the ’492 patent (“cursor movement” and 

“keystrokes”) mirror the two dictionary examples above (“selecting presented options or entering 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 19 of 29
16 

text commands”). The extrinsic evidence also confirms that by reciting that the “networked 

electronic devices comprise a graphic user interface comprising a display,” claim 1 requires that 

the “user interface actions” are a “a user intentionally interacting with the device’s graphic user 

interface.” A PHOSITA would understand a “graphical user interface” to be “[a]n interface for 

issuing commands to a computer utilizing a pointing device, such as a mouse, that manipulates 

and activates graphical images on a monitor.” Ex. 9 (Graphical user interface, WEBSTER’S II NEW 

COLLEGE DICTIONARY (2001)). A PHOSITA would understand that the electronic device’s 

graphical user interface is the interface that the user interacts with. 

 By contrast, EcoFactor’s proposal of “plain and ordinary meaning” is not helpful to a lay 

jury because it does not explain the scope of “user interface actions” or the meaning of “intended 

to alter a state.” EcoFactor’s infringement contentions indicate that “use” includes information 

from “activity sensors,” which are simply passive motion sensors, but the specification expressly 

distinguishes such motion sensors from the invention, as noted above. Because the parties present 

a clear dispute as to claim scope, the Court should construe the term. See O2 Micro, 521 F.3d at 

1361. 

“receiving [receives] input from one or more users” (’492 patent claims 1, 

10); “said input from said one or more users” (’492 patent claims 1, 9, 10, 18) 

Plaintiff’s Proposal Defendants’ Proposal

Plain and ordinary meaning; no 

construction necessary. 

“a user inputting a response to a prompt on 

the graphic user interface [display] of the 

one or more networked electronic devices” 

The disputed phrases appear in the following limitations of claims 1, 9, 10, and 18: 

From claim 1: “in response to said prompting, receiving input from said one or 

more users to keep said first HVAC temperature setpoint . . . keeping said first 

HVAC temperature setpoint based upon said input from said one or more users.” 

From claim 9: “The method of claim 1 in which said first HVAC temperature 

setpoint is varied automatically based on said input from said one or more users.” 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 20 of 29
17 

From claim 10: “wherein said application in response to said prompting, receives 

input from said one or more users to keep said first HVAC temperature setpoint . 

. . wherein said thermostat is kept at said first temperature setpoint based upon said 

input from said one or more users.” 

From claim 18: “The system of claim 10 in which said first temperature setpoint 

is varied automatically based on said input from said one or more users.” 

The ’492 patent requires user input to decide whether to keep the temperature setpoint the 

same. Defendants’ construction explains this function to the jury and ties it to the claimed features 

of a graphic(al) user interface. 

As shown above for the “user interface actions . . .” term, the claim language itself supports 

Defendants’ construction. Claims 1 and 10 recite networked electronic devices with a “graphic 

user interface comprising a display.” All claims require “prompting said one or more users . . . 

that said one or more of said user’s input should be obtained.” Claim 10 also specifies that the 

application “provides electronic notice” to the user. “[I]n response to said prompting,” the system 

“receiv[es] input from said one or more users” to keep the current temperature setpoint, and then 

“based upon said input” does subsequently keep the current temperature setpoint. Claims 9 and 

18 also use the same antecedent basis in “said input” to refer to specific input received in response 

to said prompting. Accordingly, the components and steps in the claims show that user “input” 

responds to a prompt on the graphic user interface of the electronic devices. 

In the specification, the applicants disclose using the graphical user interface on household 

devices to receive user input in response to a prompt. As noted above, Figure 6—the sole figure 

of an onscreen example of the claimed prompting and input—shows a computer screen displaying 

a pop-up to the user: 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 21 of 29
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The specification explains that in this embodiment, a server “signal[s] the background application 

running on computer 104 to trigger a software routine that instantiates a pop-up window 1202 that 

asks the user if the server should change the current setpoint, alter the overall programming of the 

system based upon a new occupancy pattern, etc. The user can respond by clicking the cursor on 

‘yes’ button 1204 or ‘No’ button 1206.” ’492 at 6:40-49 (emphases added). Similarly, in 

describing the flowchart in Figure 7, the specification states that “the application transmits a 

command to computer 104 directing the browser to display a message informing the user that the 

current setting assumes an unoccupied house and asking the user in step 1312 to choose whether 

to either keep the current settings or revert to the pre-selected setting for an occupied home.” Id.

at 7:6-15. These disclosures show that all embodiments in the specification involve a user 

inputting a response to a prompt on a graphic user interface of a networked electronic device, such 

as computer 104. See Wang, 197 F.3d at 1382 (construing claims based on embodiments). 

Meanwhile, the specification distinguished passive motion sensors, which do not involve user 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 22 of 29
19 

input. See ’492 at 2:61-3:21. 

During prosecution, the applicants amended the claims to specify that the networked 

electronic devices (which must have a graphical user interface with a display) both prompt the user 

and receive input. In a March 1, 2012 response, the applicants amended claim 1 to clarify that 

“said prompting sends a message to at least one of said networked electronic devices.” Ex. 3 at 2 

(underlining in original). They also added the limitation of “in response to said prompting, 

receiving input,” and the requirement of keeping the temperature setpoint based upon “said input,” 

not merely any kind of “user response to said electronic notice.” Id.; see also id. at 3 (showing 

same amendments to claim 10). The applicants then argued that cited prior art did not teach 

“allowing the user to override the change by retaining the non-occupied setting.” Id. at 12 

(emphasis added). This matches the pop-up example in Figure 6, which offers the user a binary 

“Yes/No” choice to override the temperature change, and further supports Defendants’ position. 

The extrinsic evidence also confirms that a PHOSITA would understand that the 

“receiv[ed] input from said one or more users” “in response to said prompting” is on the graphic 

user interface [display] of the one or more networked electronic devices. A “user interface,” such 

as a graphical user interface, is “software that is designed to allow a computer user to interact with 

the operating system of a machine or system (such as by selecting presented options or entering 

text commands).” Ex. 12 (User interface, MERRIAM-WEBSTER.COM, https://www.merriamwebster.com/dictionary/user%20interface (last visited Oct. 1, 2020)). The intrinsic evidence’s 

disclosure of the user input as “the user select[ing] to retain the current setting” (see ’492 at 7:14, 

7:16-17 (“the user elects to change the setting”), FIG. 6) agrees with the extrinsic evidence’s 

disclosure of a user interface as allowing a user to “select[] presented options.” Id. (emphasis 

added). The intrinsic and extrinsic evidence agree that user interfaces—such as graphical user 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 23 of 29
20 

interfaces—allow users to make selections of presented options.

Plaintiff’s reliance on “plain and ordinary meaning” does not aid a jury to understand how 

user “input” relates to the hardware components and prompting feature in the claims. On the other 

hand, Defendants’ construction matches the intrinsic evidence and clarifies that a user “input[s]” 

a response to a prompt on the graphic user interface of the networked electronic devices, and helps 

a jury understand how the devices, interfaces, and prompting work together. 

“outside temperature” (’488 patent claims 1, 2, 9, 10; ’327 patent claims 1, 2, 

11, 12) 

Plaintiff’s Proposal Defendants’ Proposal 

“the temperature at a location outside (or 

external to) [the structure]” 

“the actual temperature at a location outside (or 

external to) [the structure]” 

The parties agree that the term “outside temperature” in the claims of both the ’488 and 

’327 patents refers to the temperature at a location outside, or external to, the structure. The only 

dispute is whether the “outside temperature” must be the actual outside temperature, as Defendants 

propose, or whether it can be a temperature that is not the actual outside temperature, as EcoFactor 

contends. The specifications of the ’488 and ’327 patents support Defendants’ construction. 

The ’488 and ’327 patents teach that the disclosed system measures temperature directly 

outside a building: “The outside temperature near house A is 96 degrees Fahrenheit.” ’488 at 8:6-

7; ’327 at 8:6-7. The ’488 and ’327 patents explain that “[b]y comparing outside temperature, 

inside temperature, thermostat settings, cycling behavior of the HVAC system, and other variables, 

the system will be capable of numerous diagnostic and controlling functions beyond those of a 

standard thermostat.” ’488 at 6:65-7:2; ’327 at 6:65-7:2. For instance, the patents explain that “if 

the air conditioning is shut off on a hot afternoon, given a known outside temperature, it will be 

possible to predict how quickly the temperature in the house should rise.” ’488 at 4:6-10; ’327 at 

4:6-10. The patents then further explain that the ability for the system to “confirm with a high 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 24 of 29
21 

degree of certainty” that a climate control system “has indeed been shut off” is “[b]ecause the 

server is aware of the outside temperature.” ’488 at 8:12-21; ’327 at 8:12-21. Thus, the ’488 and 

’327 patents make clear that the “outside temperature” is the actual, known, temperature outside 

the structure. 

While similar, the main difference is that EcoFactor’s construction does not clarify that the 

temperature is the actual measurement outside a structure, as the patents do. Accordingly, 

Defendants respectfully request that the Court adopt their proposed construction and construe 

“outside temperature” to mean the “the actual temperature at a location outside (or external to) [the 

structure].” 

 “programmable thermostat” (’327 patent claims 3, 13) 

Plaintiff’s Proposal Defendants’ Proposal

“thermostat that uses microprocessor-based 

circuitry to control the switch and operate 

based upon user determined protocols for 

temperature vs. time” 

“thermostat that uses microprocessorbased circuitry to control the switch and 

to store and operate based upon user 

determined protocols for temperature vs. 

time” 

The only dispute is whether the thermostat that operates based upon user-determined 

protocols for temperature vs. time must also “store” those protocols as proposed by Defendants. 

The specification describes modern “electronic digital thermostats” as “thermostats [that] use 

solid-state devices such as thermistors or thermal diodes to measure temperature, and 

microprocessor-based circuitry to control the switch and to store and operate based upon userdetermined protocols for temperature vs. time.” ’327 at 1:40-44 (emphasis added). The 

specification then equates that definition with “programmable thermostats”: “[t]hese 

programmable thermostats generally offer . . . .” Id. at 1:47. 

Thus, the patentee acknowledged that the “programmable thermostats” are thermostats that 

are, in part, capable of storing protocols. This makes sense because a programmable thermostat 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 25 of 29
22 

would need to “store” its programming in order to operate. Defendants’ proposed construction is 

consistent with the meaning of programmable as well as the claim language and the intrinsic 

evidence. 

Agreed Constructions 

The parties agree to the following constructions: 

Term Claims Agreed Construction 

“setpoint” ’492 patent claims 1, 8-10, 

17, 18 

“a temperature setting for a thermostat to 

achieve or maintain” 

“compare(s)” ’488 patent claims 1, 9; 

’327 patent claims 1, 11 

“analyze to determine one or more 

similarities or differences between” 

“measurement of the 

current outdoor 

temperature” 

’382 patent claim 5 “measurement of the outdoor 

temperature at the present time” 

 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 26 of 29
23 

Date: October 6, 2020 Respectfully submitted, 

By: /s/ Michael E. Jones 

Michael J. Songer (Pro Hac Vice) 

Shamita Etienne-Cummings (CA Bar No. 202090) 

(admitted to the Western District of Texas) 

White & Case LLP 

701 Thirteenth Street NW 

Washington, DC 20005 

Telephone: (202) 626-6496 

Email: WCGoogleEcofactorWDTex@whitecase.com 

Bijal V. Vakil (CA Bar No. 192878) 

(admitted to the Western District of Texas) 

White & Case LLP 

3000 El Camino Real 

Two Palo Alto Square, Suite 900 

Palo Alto, CA 94306 

Telephone: (650) 213-0324 

Email: WCGoogleEcofactorWDTex@whitecase.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 

 

By: /s/ Jennifer Parker Ainsworth 

Jennifer Parker Ainsworth 

Texas State Bar No. 00784720 

Wilson, Robertson & Cornelius P.C. 

909 ESE Loop 323, Suite 400 

Tyler, TX 75701 

Telephone: (903) 509-5000 

jainsworth@wilsonlawfirm.com 

Timothy Carroll 

Tim.carroll@dentons.com 

Manny J. Caixeiro 

Manny.caixeiro@dentons.com 

Dentons US LLP 

233 South Wacker Drive, Suite 5900 

Chicago, IL 60606 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 27 of 29
24 

Telephone: (312) 876 8000 

Rudolph A. Telscher, Jr. 

rudy.telscher@huschblackwell.com

Kara R. Fussner 

Kara.Fussner@huschblackwell.com

Daisy Manning 

daisy.manning@huschblackwell.com

Husch Blackwell LLP 

190 Carondelet Plaza, Suite 600

St. Louis, MO 63105 

Telephone: 314-480-1500 

Ryan B. Hauer 

Ryan.Hauer@huschblackwell.com 

Husch Blackwell LLP 

120 South Riverside Plaza, Suite 2200 

Chicago, IL 60606 

Telephone: 312-526-1572 

Counsel for ecobee, Inc. 

By: /s/ Fred I. Williams

Fred I. Williams (Lead Attorney)

State Bar No. 00794855 

fwilliams@wsltrial.com

Jonathan Hardt 

State Bar No. 24039906 

jhardt@wsltrial.com 

Williams Simons & Landis PLLC 

327 Congress Avenue, Suite 490

Austin, TX 78701 

Telephone: (512) 543-1354 

Todd E. Landis (admitted pro hac vice)

State Bar No. 24030226 

tlandis@wsltrial.com

Williams Simons & Landis PLLC 

2633 McKinney Avenue, Suite 130 #366 

Dallas, TX 75204 

Telephone: (512) 543-1357 

Counsel for Vivint, Inc. 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 28 of 29
25 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on October 6, 2020, the foregoing was served on all 

counsel of record by ECF. 

/s/ Michael E. Jones 

Michael E. Jones 

Case 6:20-cv-00075-ADA Document 34 Filed 10/06/20 Page 29 of 29