Google wins appeal in bid to switch off smart thermostat patent
US appeals court says PTAB erred in deciding that EcoFactor patent was not unpatentable | Judges examined whether the board's conclusion amounted to claim construction.
Google has successfully appealed a US Patent Trial and Appeal Board (PTAB) decision that upheld the claims of a thermostat patent belonging to smart home energy company EcoFactor.
On Wednesday, February 7, the US Court of Appeals for the Federal Circuit determined that the board had erred in its claim construction regarding EcoFactor’s patent, and remanded the case for further proceedings.
The patent in dispute, US number 8,498,753 is titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat” and relates to temperature control systems such as heating and cooling systems (HVAC).
California-based EcoFactor provides automated control and monitoring solutions for thermostat settings in the home with the aim of reducing energy usage.
Google challenged the ‘753 patent on the basis that the combination of two pieces of prior art rendered claims 1-20 obvious, but the PTAB found in March 2022 that the tech giant had failed to show by a preponderance of evidence that this was the case.
In its decision, the board determined that claim construction was unnecessary, but then made a conclusion based on one of the claim limitations that certain inputs were separate and distinct components that required different input data.
Appealing these findings, Google argued that the PTAB had in fact construed the claim and that its construction was flawed, and that it had not been given notice or opportunity to address the construction.
Construed or compared
After hearing the appeal, Circuit Judges Jimmie Reyna, Richard Taranto and Leonard Stark said that it was well understood that claim construction served to define the scope of a patented invention and the patentee’s right to exclude.
Less clear was “whether a court or other tribunal has construed a claim or whether it has simply compared the claim to prior art or an allegedly infringing technology”, they added, noting that the answer to this could be critical given the standard of review applicable to each issue on appeal.
Ultimately, the judges agreed with Google that the board’s assessment did amount to claim construction, and that its determination was erroneous.
“Both the claim language and the specification support a broader construction that the Board accorded [the limitation],” wrote Judge Reyna.
However, the board’s claim construction did not violate the Administrative Procedure Act (APA), the judges said, because Google “had notice of the contested claim construction issues and an opportunity to be heard”.
The Federal Circuit vacated the board’s final written decision on the ‘753 patent and remanded the case for further proceedings under the correct construction of the limitation at issue. No costs were awarded.
Google ordered to pay $20m over Nest
In 2022, a Texas federal jury ruled that technology in Google’s Nest smart thermostat infringed another patent belonging to EcoFactor, US patent number 8,738,327.
EcoFactor alleged that Google’s Nest Learning Thermostat used a feature known as “early-on” that calculated when to heat or cool a home based on certain factors.
Google was ordered to pay $20 million in damages. It argued that EcoFactor’s patents were invalid and said at the time that it planned to appeal.
