Case: 22-1750 Document: 41 Page: 1 Filed: 02/07/2024
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC, ECOBEE, INC.,
Appellants
v.
ECOFACTOR, INC.,
Appellee
______________________
2022-1750, 2022-1767
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
01504, IPR2021-00792.
______________________
Decided: February 7, 2024
______________________
MATTHEW A. SMITH, Smith Baluch LLP, Washington,
DC, argued for all appellants. Appellant Google LLC also
represented by ELIZABETH LAUGHTON.
TIMOTHY J. CARROLL, Venable LLP, Chicago, IL, for appellant ecobee, Inc. Also represented by JUSTIN J. OLIVER,
Washington, DC; LAURA A. WYTSMA, Los Angeles, CA.
JONATHAN LINK, Russ August & Kabat, Washington,
DC, argued for appellee. Also represented by REZA
MIRZAIE, Los Angeles, CA.
______________________
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2 GOOGLE LLC v. ECOFACTOR, INC.
Before REYNA, TARANTO, and STARK, Circuit Judges.
REYNA, Circuit Judge.
Appellants Google LLC and ecobee, Inc. (collectively,
“Google”) appeal from a Final Written Decision of the
United States Patent and Trademark Office’s Patent Trial
and Appeal Board, which found the challenged claims of
U.S. Patent No. 8,498,753 not unpatentable. Google challenges the Board’s determination on the basis that the
Board made an erroneous claim construction of a limitation
in Claim 1. Google also argues that the Board’s Final Written Decision violates the Administrative Procedure Act because Google had no notice or an opportunity to address the
Board’s construction. We reverse the Board’s claim construction, vacate the Board’s Final Written Decision, and
remand.
BACKGROUND
U.S. Patent No. 8,498,753
EcoFactor, Inc. (“EcoFactor”) is the assignee of U.S. Patent No. 8,498,753 (the “’753 patent”), which is entitled
“System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat” and which relates generally
to climate control systems, such as heating and cooling systems (“HVAC” systems). The ’753 patent discloses a thermostat that takes into consideration factors like outside
weather conditions and the “thermal characteristics of individual homes in order to improve the ability to dynamically achieve the best possible balance between comfort
and energy savings.” ’753 patent, 2:1–6. The claimed objective of the ’753 patent is to reduce the cycling time of the
climate control system, HVAC, when a user seeks a specific
indoor temperature at a certain time. See, e.g., id. at 9:9–
10.
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GOOGLE LLC v. ECOFACTOR, INC. 3
Claim 1 is representative and recites the following: 1
1. [1a] A method for reducing the cycling time of a
climate control system, said method comprising:
[1b] accessing stored data comprising a plurality of
historic internal temperature readings taken
within a structure and a plurality of measurements
relating to a plurality of historic external temperatures outside said structure during at least one selected time period;
[1c] determining one or more thermal performance
values of said structure
[1d] by correlating at least one of the plurality of
historic internal temperatures with at least one of
the plurality of historic external temperatures that
both occur at a first time during the at least one
selected time period, and by correlating at least one
of the plurality of historic internal temperatures
with at least one of the plurality of historic external
temperatures that both occur at a second time during the at least one selected time period,
[1e] wherein said one or more thermal performance
values indicate a rate of change of temperature in
said structure in response to changes in outside
temperatures;
[1f] storing said one or more thermal performance
values of said structure;
[1g] retrieving a target time at which said structure
is desired to reach a target temperature;
1 The limitation numbering [1a]–[1m] follows the
numbering used by the parties both before the Board and
on appeal.
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4 GOOGLE LLC v. ECOFACTOR, INC.
[1h] acquiring at least a first internal temperature
inside said structure at a third time prior to said
target time;
[1i] acquiring at least a first external temperature
relating to a temperature outside said structure at
the third time prior to said target time;
[1j] obtaining at least one forecasted temperature
forecasted to occur outside the structure at the target time;
[1k] retrieving at least said one or more thermal
performance values of said structure that indicate
said rate of change of temperature in said structure
in response to changes in outside temperatures;
[1l] retrieving at least one performance characteristic of said climate control system;
[1m] determining a first time prior to said target
time at which said climate control system should
turn on to reach the target temperature by the target time based at least in part on [i] said one or
more thermal performance values of said structure,
[ii] said performance characteristic of said climate
control system, [iii] said first internal temperature,
[iv] said first external temperature, and [v] the
forecasted temperature;
....
Id. at 9:9–54. Pertinent to this appeal is the [1m] limitation and inputs [i]–[v] recited in that limitation.
Proceeding Before the Board
Google filed a petition to institute an inter partes review (“IPR”) of claims 1–20 of the ’753 patent. J.A. 2.
Google asserted a single ground: that the combination of
U.S. Patent No. 5,197,666 (“Wedekind”) in view of U.S. Patent No. 6,216,956 (“Ehlers”) renders claims 1–20 obvious.
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GOOGLE LLC v. ECOFACTOR, INC. 5
J.A. 2, 11. The Patent Trial and Appeal Board (“Board”)
later instituted the IPR. J.A. 2.
Following institution, the parties disputed whether
Wedekind disclosed the portion of claim limitation [1m]
that reads “determining a first time prior to said target
time . . . based at least in part on . . . [iii] said first internal
temperature.” J.A. 18–21, 24–27 (emphasis added).
Google argued that Wedekind calculated a “first time prior
to said target time” based on thermal performance values
(input [i]) which are themselves calculated from internal
temperature values (input [iii]). See J.A. 433–35; see also
J.A. 439–40. Thus, according to Google, Wedekind’s “first
time prior to said target” was “based at least in part
on . . . [iii] said first internal temperature.” See J.A. 433–
35; see also J.A. 439–40 (emphasis added). EcoFactor disagreed, contending that each input in the [1m] limitation
was distinct and could not be intertwined as Google argued
or else it would render certain claim limitations meaningless. See J.A. 1263, 1265. Neither party explicitly argued
for claim construction to resolve the issue.
On March 3, 2022, the Board issued its Final Written
Decision in two joined IPRs, Nos. IPR2020-01504 and
IPR2021-00792. The Board concluded that Google had not
shown by a preponderance of the evidence that the challenged claims of the ’753 patent were unpatentable. J.A. 1,
30. In coming to its decision, the Board determined 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. See J.A. 25–
26. The Board found that Google’s theory of obviousness
did “not use each of the five distinct inputs,” but rather
double counted an input such that it uses “‘one or more
thermal performance values of said structure’ to satisfy
both inputs [i] and [iii].” J.A. 26. For this reason, the Board
found that Google’s obviousness theory, reliant on
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6 GOOGLE LLC v. ECOFACTOR, INC.
Wedekind, failed to show that the prior art taught the disputed limitation. J.A. 27.
Google timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
STANDARD OF REVIEW
We review the issue of claim construction of a patent
claim de novo with any underlying fact findings reviewed
for substantial evidence. Dionex Softron GmbH v. Agilent
Techs., Inc., 56 F.4th 1353, 1358 (Fed. Cir. 2023). We also
review de novo the Board’s compliance with the Administrative Procedure Act (“APA”). In re NuVasive, Inc.,
841
F.3d 966, 970 (Fed. Cir. 2016).
DISCUSSION
Google argues that the Board, despite stating otherwise, construed the [1m] limitation of Claim 1. According
to Google, the Board’s implicit claim construction is wrong
and requires reversal. EcoFactor contends that the Board
made no claim construction and that its findings are supported by substantial evidence. We first address whether
the Board construed Claim 1 of the ’753 patent.
I. The Board Construed the [1m] Limitation
A.
It is a bedrock principle of patent law that claims of a
patent define the scope of a patented invention and the patentee’s right to exclude. See Teva Pharm. USA, Inc. v.
Sandoz, Inc., 574 U.S. 318, 321 (2015); Markman v.
Westview Instruments, Inc.,
517 U.S. 370, 372 (1996); Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc). Claims are “the life of the patent,” defining the limits of the patent’s scope. 2 WILLIAM C. ROBINSON, THE LAW
OF PATENTS FOR USEFUL INVENTIONS §505, at 111 (1890).
That scope, the Supreme Court explained, “must be known
for the protection of the patentee, the encouragement of the
inventive genius of others, and the assurance that the
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GOOGLE LLC v. ECOFACTOR, INC. 7
subject of the patent will be dedicated ultimately to the
public.” Gen. Elec. Co. v. Wabash Appliance Corp.,
304 U.S.
364, 369 (1938); see also Motion Picture Pats. Co. v. Universal Film Mfg. Co.,
243 U.S. 502, 510 (1917).
It is also well understood that “[c]laim construction
serves to define the scope of the patented invention and the
patentee’s right to exclude.” HTC Corp. v. Cellular Comms.
Equip., LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017); see O2
Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d
1351, 1360 (Fed. Cir. 2008). “Claim construction is the judicial statement of what is and is not covered by the technical terms and other words of the claims.” Netword, LLC
v. Centraal Corp.,
242 F.3d 1347, 1352 (Fed. Cir. 2001) (internal quotation marks omitted).
Less clear, at times, 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. While the line between these two inquiries can
be fine, the answer could be critical given the different
standard of review applicable to each issue on appeal. Dionex, 56 F.4th at 1358 (reviewing claim construction determination based on intrinsic evidence de novo); Fleming v.
Cirrus Design Corp.,
28 F.4th 1214, 1221–22 (Fed. Cir.
2022) (reviewing question of whether asserted prior art discloses claim limitation for substantial evidence); Amgen
Inc. v. Hospira, Inc.,
944 F.3d 1327, 1335 (Fed. Cir. 2019)
(noting that infringement presents a question of fact reviewed for substantial evidence when tried to a jury).
To determine whether a court, or the Board, has construed a claim, it is helpful to look to the outcome of the
tribunal’s analysis. See HTC Corp., 877 F.3d at 1367 (determining that a claim construction occurred where the
Board’s findings established the scope of the patented subject matter). If 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
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8 GOOGLE LLC v. ECOFACTOR, INC.
mostly likely construed the claim. See Netword,
242 F.3d
at 1352; see also Trading Techs. Int’l, Inc. v. Open E Cry,
LLC,
728 F.3d 1309, 1319 (Fed. Cir. 2013). Claim construction may be undertaken prior to or in tandem with the tribunal’s review of the allegedly infringing technology or
prior art. The point in the proceeding at which the analysis
occurs is not dispositive. 2
B.
In view of the foregoing backdrop, we turn back to the
Board’s assessment of the ’753 patent’s [1m] limitation on
appeal. We conclude that the Board construed Claim 1.
The Board stated that “[b]ecause no express construction is needed for our decision, we do not construe any of
the claim limitations.” J.A. 15. The Board later concluded,
however, that the [1m] limitation “recites five distinct inputs upon which the time is based at least in part” and thus
it “requires that each of those inputs be a distinct component of the calculation of the ‘first time prior to said target
time.’” J.A. 25. In support of this conclusion, the Board
cited several Federal Circuit cases for the proposition that
2 The Board performs both claim construction and
factfinding application of the claims, as do trial judges in
non-jury cases. However, there are times when different
decisionmakers have responsibility for claim construction
and factfinding application of the construction. For example, a trial judge construes a claim and gives that construction to a jury for application to facts. In this instance, the
jury’s application does not establish a claim construction,
nor does a post-verdict opinion’s substantial evidence review of the application for reasonableness, taking the furnished construction as a given. See Avid Tech., Inc. v.
Harmonic, Inc., 812 F.3d 1040, 1048–49 (Fed. Cir. 2016);
Hewlett-Packard Co. v. Mustek Sys., Inc.,
340 F.3d 1314,
1320–21 (Fed. Cir. 2003).
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GOOGLE LLC v. ECOFACTOR, INC. 9
“[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.” J.A. 25–26
(cleaned up) (first quoting Becton Dickinson & Co. v. Tyco
Healthcare Group, LP,
616 F.3d 1249, 1254 (Fed. Cir.
2010); and then citing Engel Indus., Inc. v. Lockformer Co.,
96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). On this basis, the
Board determined that “[t]here is nothing in the asserted
claims to suggest that one piece of data can be used to satisfy multiple inputs.” J.A. 26 (citing CAE Screenplates, Inc.
v. Heinrich Fiedler GmbH & Co.,
224 F.3d 1308, 1317 (Fed.
Cir. 2000)). The Board then rejected Google’s theory of unpatentability because it did “not use each of the five distinct
inputs” and instead “effectively ignore[d] a claim limitation
by double counting.” J.A. 26 (“Petitioner uses the ‘one or
more thermal performance values of said structure’ to satisfy both inputs [i] and [iii].”).
As an initial matter, the Board’s statement that it was
not engaging in claim construction is not dispositive as to
whether claim construction occurred. We have found implicit claim constructions even when the Board does not
recognize that it is construing a claim. For example, in
HTC, we held that “[d]espite no express construction of [a
claim term] below, [the] Board[’s] findings establish[ed] the
scope of the patented subject matter.” HTC Corp., 877 F.3d
at 1367. Those “findings,” we concluded, amounted to
claim construction. See
id.
We agree with Google that the Board’s assessment of
the [1m] limitation amounts to claim construction. Here,
the outcome of the Board’s assessment established the
scope of the [1m] limitation. The [1m] limitation lists five
enumerated inputs on which the timing for the system to
activate is “based at least in part on.” ’753 patent, 9:9–10:3.
However, there is nothing on the face of the claim to discern the scope and boundaries of those inputs, e.g., whether
one input may be calculated based on another input, and
whether they must be distinct or may be entwined. Id. To
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10 GOOGLE LLC v. ECOFACTOR, INC.
determine, as the Board did, that no input can be based in
part on another input and that each input must be distinct,
is to establish a limit to the scope of the [1m] claim limitation. Thus, the Board’s assessment resulted in a construction of the claim. See Netword,
242 F.3d at 1350
(concluding that the Board effectuated claim construction
where its determination “establish[ed] the scope and
boundaries of the subject matter that is patented”); see also
HTC Corp.,
877 F.3d at 1367. The limiting impact of the
Board’s determination is evidenced by the Board’s rejection
of Google’s argument that a prior art reference’s measurement could satisfy both the input for [i] and the input
for [iii]. See J.A. 26. Had the Board instead interpreted
the inputs of [1m] as non-distinct, its basis for rejecting
Google’s argument would evaporate.
The cases relied on by the Board support our determination that the Board engaged in claim construction. Each
of the cases the Board cited relates to interpreting claims
in the claim construction context. See Becton, 616 F.3d
at 1254; Engel, 96 F.3d at 1404–05; CAE,
224 F.3d at 1317.
And the Board relied on these cases to determine the scope
and meaning of the claims, a claim construction inquiry.
We conclude that the Board’s assessment qualified as
claim construction.
II. The Board’s Claim Construction is Erroneous
We next turn to the Board’s claim construction. Google
argues that the Board’s claim construction is erroneous for
two reasons: (1) the Board’s claim construction violated the
APA; and (2) the limitations imposed by the Board related
to the [1m] inputs are not supported by the intrinsic record
or case law. Appellant Br. 44–57.
A.
The Board’s claim construction did not violate the APA.
“[T]he Board may adopt a claim construction of a disputed
term that neither party proposes without running afoul of
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GOOGLE LLC v. ECOFACTOR, INC. 11
the APA.” Qualcomm Inc. v. Intel Corp., 6 F.4th 1256,
1262–63 (Fed. Cir. 2021) (collecting cases). The Board,
however, cannot, without notice and opportunity for the
parties to respond, change theories midstream by adopting
a claim construction in its final written decision that neither party requested nor anticipated. SAS Inst., Inc. v.
ComplementSoft, LLC,
825 F.3d 1341, 1351 (Fed.
Cir. 2016), rev’d on other grounds, SAS Inst., Inc. v. Iancu,
138 S. Ct. 1348 (2018); see Qualcomm, 6 F.4th at 1263.
The record establishes that the parties disputed the
meaning and scope of the [1m] limitation during the IPR
proceeding under the same framework now on appeal. 3
Starting with its petition, Google argued that the prior art
disclosed inputs [i], [iii], and [iv] because the reference used
inputs [iii] and [iv] to determine input [i]. J.A. 438–39.
EcoFactor argued that Google’s use of the same value for
two inputs contravened the plain language of the claim,
which required distinctly different measurements. See
J.A. 1263, 1265. Google responded in its Reply that there
“is no negative limitation that would prevent” using inputs
[iii] and [iv] to calculate input [i]. See J.A. 1456. In its SurReply, EcoFactor opposed Google’s argument that the
value in the prior art, a historical temperature measurement, could be used to satisfy the two inputs. See J.A.
1922. According to EcoFactor, this would render parts of
the claim limitation meaningless. Id. While an explicit
3 For this same reason, we reject EcoFactor’s argument that Google forfeited its claim construction argument
on appeal. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d
1283, 1290 (Fed. Cir. 2015) (finding no waiver when a
party’s “argument on [an] issue ha[d] been sufficiently consistent” at trial and at the appellate level); see also In re
Google Tech. Holdings LLC,
980 F.3d 858, 862 (Fed. Cir.
2020) (“[This] court mainly uses the term ‘waiver’ when applying the doctrine of ‘forfeiture.’”).
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12 GOOGLE LLC v. ECOFACTOR, INC.
claim construction was not proposed by either party, both
parties recognized that the core issue related to the scope
and boundaries of the five inputs enumerated in [1m] and,
thus, were afforded both notice and opportunity to address
this issue. We hold, therefore, 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 Beach Brands,
Inc. v. f’real Foods, LLC,
908 F.3d 1328, 1339 (Fed Cir.
2018).
B.
We turn now to whether the Board’s claim construction
of the [1m] limitation was erroneous. The claim construction dispute before us is decided solely on intrinsic evidence. 4 The Board determined that the five inputs 5 in the
4 “We are generally hesitant to construe patent
claims in the first instance on appeal.” MyMail, Ltd. v.
ooVoo, LLC, 934 F.3d 1373, 1380 (Fed. Cir. 2019). “Our
hesitancy is intended to avoid conflating de novo review
with an independent analysis.” Id.; see also Wavetronix
LLC v. EIS Elec. Integrated Sys.,
573 F.3d 1343, 1355 (Fed.
Cir. 2009). However, in this case, we are effectively reviewing the Board’s claim construction of the [1m] limitation.
In any event, the parties agree that this claim construction
dispute can be decided purely on the intrinsic record. Notably, at oral argument, EcoFactor’s counsel conceded that
if we conclude that the Board erred and that Google’s reading of the claim is correct, reversal on that construction is
appropriate. See Oral Arg. 31:20–31:32; see also
id. at
31:33–32:12.
5 The five inputs include: [i] “said one or more thermal performance values of said structure,” [ii] “said performance characteristic of said climate control system,” [iii]
“said first internal temperature,” [iv] “said first external
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GOOGLE LLC v. ECOFACTOR, INC. 13
[1m] limitation are “distinct component[s]” that “must be
used distinctly from the other listed input[s],” primarily relying on Becton, 616 F.3d at 1253–54 and Engel, 96 F.3d at
1404 for its conclusion. J.A. 25–27. For the reasons discussed below, we conclude that the Board erroneously construed the [1m] limitation, which is not limited to inputs
that are entirely separate and distinct.
“When construing claim terms, we first look to, and primarily rely on, the intrinsic evidence, including the claims
themselves, the specification, and the prosecution history
of the patent, which is usually dispositive.” Sunovion
Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,
1276 (Fed. Cir. 2013). Here, the claim language supports
a broader reading of the [1m] limitation, which must allow
for any of the five claimed inputs to potentially be used to
calculate another claimed input. The claim language
broadly recites that “a first time” is determined “based at
least in part on” each of the five inputs. ’753 patent, 9:47–
61 (emphasis added). This language places no constraint
on the manner in which the inputs are used. A patentee
“is free to choose a broad term and expect to obtain the full
scope of its plain and ordinary meaning unless the patentee
explicitly redefines the term or disavows its scope.”
Thorner v. Sony Comput. Ent. Am. LLC,
669 F.3d 1362,
1367 (Fed. Cir. 2012). There is no such redefinition or disavowal here.
Additionally, the specification supports a broader construction of the [1m] limitation than the Board’s construction. The specification contains no restrictive language and
does not explicitly require that the claim inputs be separate. To the contrary, the specification contemplates an
embodiment in which one claimed input is calculated based
on at least one other claimed input. See ’753 patent, 5:47–
temperature,” and [v] “the forecasted temperature.” ’753
patent, 9:50–54.
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14 GOOGLE LLC v. ECOFACTOR, INC.
49. “We normally do not interpret claim terms in a way
that excludes embodiments disclosed in the specification.”
Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir.
2008). In this instance, the Board’s claim construction excluding such an embodiment is incorrect.
In construing the [1m] limitation, the Board relied on
Becton, 616 F.3d at 1253–54, and Engel, 96 F.3d at 1404.
These cases, however, do not mandate the Board’s narrow
construction of the [1m] limitation. These cases do not create a per se rule that separately listed claim elements are
distinct components, regardless of the intrinsic record. Indeed, in Becton, we looked to the specification to confirm
that the claim element “spring means” was separate from
a hinged arm element.
616 F.3d at 1254. Rather, we have
explained that there is a “presumption” that separately
listed claim limitations may indicate separate and distinct
physical structure, but that presumption may always be rebutted in the context of a particular patent. See, e.g., Powell v. Home Depot U.S.A., Inc.,
663 F.3d 1221,1231–32 (Fed.
Cir. 2011). Here, the claim language and specification re- but any presumption that the five inputs listed in the [1m]
limitation are distinct components that must be used distinctly from other listed inputs.
In construing the [1m] limitation, the Board also relied
on CAE, 224 F.3d at 1317, to support what appears to be a
claim differentiation determination that “nothing in the asserted claims [] suggest[s] that one piece of data can be
used to satisfy multiple inputs.” J.A. 26. But the doctrine
of claim differentiation only creates a rebuttable presumption that each claim in a patent has a different scope; it is
a guide, not a rigid rule of claim construction. See Curtiss-Wright Flow Control Corp. v. Velan, Inc.,
438 F.3d 1374,
1380–81 (Fed. Cir. 2006). Here, the claim language and
the specification rebut such a presumption.
In sum, both the claim language and the specification
support a broader construction than the Board accorded
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GOOGLE LLC v. ECOFACTOR, INC. 15
the [1m] limitation. The proper construction of the term
must allow for any of the five claimed inputs to potentially
be used to calculate another claimed input. We agree, then,
with Google’s proposed construction, which simply “require[s] that each of the five inputs be used at some point
during the determination of the first time prior to said target time.” Appellant Br. 52 (emphasis and quotation marks
omitted). Based on the foregoing, we vacate the Board’s
Final Written Decision and remand with instructions that
the Board apply this construction on remand.
CONCLUSION
We conclude that the Board construed the [1m] limitation in Claim 1 and that its construction is erroneous. We
therefore reverse the Board’s construction, vacate the
Board’s Final Written Decision, and remand for further
proceedings under the correct construction of the [1m] limitation.
VACATED AND REMANDED
COSTS
No costs.
