US Court of Appeals confirms Patent Board’s decision in the Google vs EcoFactor case
US Court of Appeals confirms Patent Board’s decision in the Google vs EcoFactor case
The search engine giant had filed for re-examination of the US Patent in 2021
The US Court of Appeals for the Federal Circuit (CAFC) has confirmed the decision of the Patent Trial and Appeal Board (PTAB), sustaining an examiner’s rejection in an ex parte re-examination of claims of EcoFactor Inc.’s smart thermostat technology patent related to Google.
In 2021, the search engine giant filed for re-examination of US Patent No.8,412,488, granted in 2013. The reexamination request was accepted.
However, an examiner rejected claims 1, 3 through 9 and 11 through 16 in a non-final office action as unpatentable over the combination of US Patent No.2004/0117330 (Ehlers) and US Patent No.2005/0159846) (Van Ostrand) and claims 2 and 10 as unpatentable over Ehlers, Van Ostrand, and a third patent, No. 6,789,739 (Rosen).
Meanwhile, EcoFactor amended its two independent claims, 1 and 9, in response to the non-final rejection. The original claim 1 compared:
[i] an inside temperature recorded inside the first structure with
[ii] said estimation for the rate of change in inside temperature, whereas the amended claim 1 compared:
[i] an actual rate of change in inside temperature recorded inside the first structure with
[ii] said estimation for the rate of change in inside temperature. Claim 9 contained similar amendments.
Thereafter, the examiner rejected all 16 claims in a Final Office Action.
He explained, “EcoFactor’s amendments to claims 1 and 9 impermissibly enlarged the scope of the claims.”
Meanwhile, the Final Office Action also sustained the non-final office action’s rejection of all claims under pre-AIA 35 U.S.C. § 103(a).
At this, EcoFactor appealed before the Board, which affirmed the examiner’s rejection.
Thus, EcoFactor submitted before the Appeals Court against the conclusion that its amendments enlarged the claims.
It argued, “An actual rate of change in inside temperature is necessarily calculated using the inside temperature values implicated in the original limitation.”
However, the court rejected the argument. It reasoned, “Calculating an actual rate of change entails using actual temperature values… it has little bearing on enlargement.”
The Court of Appeals held that, after comparing the amended text to the original, “a system comparing an actual rate of change would not have infringed the original patent, but it would infringe the amended patent.”
The court added that as a result, the amended claim was broader than the original in one respect. “EcoFactor expanded the scope of its claims during reexamination in violation of 35 U.S.C. § 305.”
Recently, EcoFactor was also subjected to a widely watched en banc Appeals Court decision, wherein the full (but split bench) held that a district court’s order denying Google’s motion for a new trial on damages following a $20 million damages award for EcoFactor should be repealed.
