Google LLC, et al. v. EcoFactor, Inc.

Docket No. 2022-1750, -1767 (IPR2020-01504, -00792 (https://cafc.uscourts.gov/opinions-orders/22-1750.OPINION.2-7-2024_2266326.pdf))

REYNA, TARANTO, STARK

February 7, 2024

Brief Summary:  Board implicitly construed claims; that construction was improper and led to a finding Google had not shown obviousness; decision vacated and remanded. Summary:   Google appealed from Board IPR final written decision (FWD) finding EcoFactor’s US 8,498,753 relating to thermostat-related systems and methods are not unpatentable.   Google’s IPR alleged obviousness in view of two US patents (Wedekind and Ehlers).  Representative claim 1 includes method steps 1a-1m, including 1m inputs [i]-[v] that are most relevant to this appeal.  The Board concluded that Google had not shown obviousness by a preponderance of the evidence, determining “that claim construction was unnecessary, and then concluded, based on the claim language, that the inputs [i]–[v] of the [1m] limitation were separate and distinct components that required distinctly different input data.”  Google argued “that the Board, despite stating otherwise, construed the [1m] limitation of Claim 1” and that this “implicit claim construction is wrong”.   The FC panel explained that “[c]laim construction is the judicial statement of what is and is not covered by the technical terms and other words of the claims” (Netword, FC 2001; HTC Corp., FC 2017; O2 Micro, FC 2008).  “Less clear, at times,” the FC panel wrote, “is 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” (Fleming, FC 2011; Amgen, FC 2019; HTC (“a claim construction occurred where the Board’s findings established the scope of the patented subject matter”); “the Board’s statement that it was not engaging in claim construction is not dispositive as to whether claim construction occurred”).  Further, it explained, “[i]f the outcome of the analysis of the claim term establishes the scope (e.g., boundaries) and meaning of the patented subject matter, the court (or the Board) has mostly likely construed the claim” (Netword; Trading Techs., FC 2013; “The point in the proceeding at which the analysis occurs is not dispositive.”  Avid Tech., FC 2016 and Hewlett-Packard, FC 2003).  The FC panel concluded that the Board did construe claim 1 (e.g., the Board cited FC panel decisions holding “[w]here a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention”).  It also found “that because Google ‘had notice of the contested claim construction issues and an opportunity to be heard,’ the Board’s claim construction of Claim 1 did not violate the APA” (Hamilton Brands, FC 2018).  The FC panel also found that “both the claim language and the specification support a broader construction than the Board accorded the [1m] limitation” (e.g., “the claim language and specification rebut any presumption that the five inputs listed in the [1m] limitation are distinct components that must be used distinctly from other listed inputs” (Powell, FC 2011) and therefore vacated and remanded the decision.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.