Exhibit 8

Case 2:23-cv-00103-JRG-RSP Document 183-2 Filed 10/25/24 Page 1 of 6 PageID #: 9666
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UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

ECOFACTOR, INC.,

 Plaintiff,

 v. 

ECOBEE, INC.,

 Defendant.

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

JURY TRIAL DEMANDED

ECOFACTOR, INC.,

 Plaintiff,

 v. 

ECOBEE, INC.,

Defendant.

Case No. 6:21-cv-00428-ADA

JURY TRIAL DEMANDED

LEAD CASE

ORDER REGARDING MOTIONS IN LIMINE

The Court, having considered the Motions in Limine filed by Plaintiff EcoFactor, Inc. 

(“EcoFactor”) and Defendant ecobee, Inc. (“ecobee”) (Dkt. Nos. 124, 127, 153) and the parties’ 

arguments at the May 11, 2023 Pretrial Conference, rules as follows: 

Motion Ruling

ecobee’s Motion in Limine No. 1: Given 

that EcoFactor Will Present Multiple 

Infringement Experts, the Court Should 

Preclude It from Providing Cumulative and 

Duplicative Testimony (Dkt. No. 124) 

Denied. 

ecobee’s Motion in Limine No. 2: 

EcoFactor Should Not Be Permitted to 

Denied. The only source code printouts 

that will be sent to the jury will be 

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Motion Ruling

Send ecobee’s Source Code Printouts to 

the Jury (Dkt. No. 124) 

printouts specifically discussed during 

the trial.

ecobee’s Motion in Limine No. 3: 

EcoFactor May Not Present Evidence or 

Argue that It Practices Any of the Asserted 

Patents (Dkt. No. 124) 

Denied. However, if Defendant 

believes that Plaintiff attempts to put in 

evidence on this issue that was not 

disclosed in discovery, then Defendant 

can approach and request exclusion. 

ecobee’s Motion in Limine No. 4: The 

Court Should Exclude Evidence and 

Argument that ecobee’s Knowledge of 

EcoFactor’s Existence or Product 

Offerings Equates to Notice or Knowledge 

of the Asserted Patents (Dkt. No. 124) 

Granted. 

ecobee’s Motion in Limine No. 5: The 

Court Should Exclude Evidence or 

Argument that the DSJ Agreements 

Contain an Agreement to a $5.16 Royalty 

(Dkt. No. 124) 

Denied. 

ecobee’s Motion in Limine No. 6: The 

Court Should Exclude Speculative 

Evidence Concerning Daikin, Schneider, 

and JCI’s Contractual Intent That is 

Beyond Any Witness’s Personal 

Knowledge (Dkt. No. 124) 

Granted. No fact witness should talk 

about anything that is beyond that 

person’s knowledge. 

ecobee’s Motion in Limine No. 8: 

EcoFactor May Not Present Evidence of 

the Outcome of the Google Trial, Including 

the Verdict or Damages Award (Dkt. No. 

124) 

Granted. 

ecobee’s Motion in Limine No. 9: The 

Court Should Exclude References to 

Generac’s Acquisition of ecobee and the 

Acquisition Price (Dkt. No. 124) 

Defendant shall notify Plaintiff by the 

start of trial whether Defendant wants 

to introduce evidence about operating 

losses. If so, Plaintiff can address the 

Generac acquisition and acquisition 

price. If not, Plaintiff cannot introdude 

evidence of the Generac acquisition or 

price.

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Motion Ruling

ecobee’s Motion in Limine No. 10: 

EcoFactor May Not Rely on Documents It 

Produced for the First Time in Connection 

with Its Pre-trial Disclosures (Dkt. No. 

124) 

Denied. 

EcoFactor’s Motion in Limine No. 1: To 

preclude references to litigation involving 

EcoFactor and ecobee other than 

EcoFactor’s claims against ecobee at issue 

in this trial, and to preclude references to 

EcoFactor’s litigation matters against other 

parties except for those settled by licenses 

(Dkt. No. 127) 

Tentatively granted. Nothing about 

other litigation unless Plaintiff opens 

the door. Plaintiff can object on the 

basis that they did not open the door. 

EcoFactor’s Motion in Limine No. 2: To 

preclude evidence or argument regarding 

inter partes reviews, ex parte

reexaminations, or other post-grant 

proceedings (Dkt. No. 127) 

Granted. 

EcoFactor’s Motion in Limine No. 3: The 

parties shall not offer evidence or argument 

regarding no-longer asserted patents, 

dropped patent claims, non-asserted 

infringement theories, no-longer asserted 

non-infringement theories, and no-longer 

asserted invalidity theories (Dkt. No. 127) 

Granted. 

EcoFactor’s Motion in Limine No. 4: To 

preclude evidence or argument regarding 

prior art not elected by ecobee for trial, 

including evidence or argument about how 

any such non-asserted prior art indicates 

that a claim element was known in the prior 

art (Dkt. No. 127) 

Granted

EcoFactor’s Motion in Limine No. 5: To 

preclude fact witnesses from offering 

expert evidence construing claim language 

or comparing it to ecobee products, 

EcoFactor products, or prior art (Dkt. No. 

127) 

Granted solely with respect to fact 

witnesses offering claim construction 

opinions. 

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Motion Ruling

EcoFactor’s Motion in Limine No. 6: To 

preclude evidence or argument regarding 

comparisons of accused products to prior 

art (Dkt. No. 127) 

Granted. 

EcoFactor’s Motion in Limine No. 7: To 

preclude evidence or argument regarding 

equitable defenses not being decided by the 

jury (Dkt. No. 127) 

Mooted by the following stipulation: 

The parties shall be precluded from 

introducing evidence, testimony, or 

argument before the jury that relates 

only to equitable defenses or 

counterclaims (i.e., evidence that does 

not also serve another evidentiary 

purpose relevant to jury issues). 

EcoFactor’s Motion in Limine No. 8: To 

preclude evidence or argument that is 

derogatory of the USPTO or its examiners, 

such as that they are mistake-prone or 

prone to error (Dkt. No. 127) 

Mooted by the following stipulation: 

The parties shall be precluded from 

introducing evidence, testimony, or 

argument bolstering or disparaging 

the U.S. Patent Office, its examiners, or 

the process for prosecuting patent 

applications or granting patents in the 

United States. This does not preclude 

factual evidence as to the operations of 

the USPTO. 

EcoFactor’s Motion in Limine No. 9: To 

preclude evidence or argument that if the 

jury were to award EcoFactor the damages 

that it is seeking, this would increase the 

price of ecobee’s products, put ecobee’s 

manufacturers or partners out of business, 

or lead to lost jobs (Dkt. No. 127) 

Granted. See PTC Tr. at 138:17-139:2. 

EcoFactor’s Motion in Limine No. 10: To 

preclude evidence or argument regarding 

EcoFactor’s attorney fee agreements or 

payments to EcoFactor’s litigation 

counsel, Russ August & Kabat (Dkt. No. 

127) 

Mooted by the following stipulation: 

The parties shall be precluded from 

introducing evidence, testimony, or 

argument regarding funding of the 

litigation or regarding any comment on 

attorney-fee compensation including 

amounts or structure 

EcoFactor’s Motion in Limine No. 11: To 

preclude evidence or argument regarding 

how often a party’s experts have worked 

Denied. 

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Motion Ruling

with the party’s counsel outside the context 

of this action (Dkt. No. 127) 

EcoFactor’s Motion in Limine No. 12: To 

preclude references to EcoFactor as 

“litigious,” “troll,” “pirate,” “profiteer,” 

“extortionist,” “shell-company,” 

“engaging in a shakedown,” “in the 

business of filing lawsuits,” “stick up,” 

“hold up,” or like terms (Dkt. No. 127) 

There should be nothing derogatory 

said about either party. 

EcoFactor’s Motion in Limine No. 13: To 

preclude reliance upon ecobee’s own 

patents and physical SMART thermostat, 

which threaten juror confusion and were 

untimely disclosed (Dkt. No. 153) 

Withdrawn as to ecobee’s own physical 

prior art SMART thermostat.

Granted solely as to introducing 

ecobee’s own patents into evidence. 

SIGNED this 1st day of June, 2023. 

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