In late February 2021, EcoFactor, Inc. filed a second complaint before the International Trade Commission (ITC) naming as respondents in the proposed investigation Alphabet (Google), Carrier Global, ecobee, Honeywell, Johnson Controls, Resideo Technologies, and Siemens (337-TA-3535). Infringement of five patents is alleged, with EcoFactor's sights set on the provision of certain smart thermostats, prompting five proposed respondents-Carrier (1:21-cv-00328), ecobee (1:21-cv-00323), and Emerson Electric (1:21-cv-00317) in the District of Delaware; Alphabet (Google) (3:21-cv-01468) and Resideo Technologies (3:21-cv-01496), in the Northern District of California-to file subsequent declaratory judgment actions over the same set of patents, perhaps to avoid EcoFactor filing yet more litigation in either the District of Massachusetts, where this metastasizing campaign started in late 2019, or the Western District of Texas, where it spread in early 2020.

EcoFactor bills itself as delivering "smart home energy management services that improve energy efficiency, reduce energy bills and vastly 25 increase demand response efficacy-all while maintaining consumer comfort", touting its "patented big-data analytics and machine learning algorithms" as collecting and processing "massive amounts of residential data . . . to continually monitor, adapt and learn for optimum energy savings". To establish a domestic industry in support of its existing ITC investigation, EcoFactor pleaded, among other things, that licensed products sold under the Trane (a division of Ingersoll Rand) brand practice at least one claim of each of the four patents asserted in the ITC complaint.

A hearing was just held in that ITC investigation, in November 2020. The set of respondents originally included Daikin Industries and Schneider Electric, in addition to Alarm.com, APX Holdings (Vivint), ecobee, and Google, but settlements ended the disputes with those two defendants/respondents. The investigation originally covered claims from four EcoFactor patents (8,131,497; 8,423,322; 8,498,753; 10,018,371), but on the verge of the hearing in the investigation, EcoFactor dismissed all but claims 1, 2, and 5 of the '497 patent (asserted against ecobee, Google, and Vivint); claims 1, 2, and 5 of the '322 patent (asserted against Alarm.com, Google, and Vivint); and claim 9 of the '371 patent (asserted against only Google). (The '753 patent was dropped entirely.)

Among additional prehearing denials, Administrative Law Judge (ALJ) David P. Shaw also denied a motion for summary determination on the domestic industry issue, filed by the remaining respondents, ALJ Shaw indicating that genuine issues of material fact persist regarding "whether or not complainant's investments and activities are properly attributable to the EcoFactor platform, or the EcoFactor platform in conjunction with the Simple Thermostat". Post-hearing briefing is underway with no initial final determination yet made, while parallel district court actions, filed in 2019 in the District of Massachusetts against the three respondents, at the hearing remain stayed to await the ITC outcome.

In January 2020, EcoFactor upped the ante, filing separate suits in the Western District of Texas against the same six defendants, this time asserting four patents not at issue in the first ITC action. Two of those newly asserted patents (8,412,488; 8,738,327) belong to a family of 13 from which the '497 and '322 patents are drawn, the family having an earliest estimated priority date in August 2007. The other two (8,180,492; 10,534,382) issued in a family of four, none previously asserted, having an earliest estimated priority date in July 2008. All of the patents generally relate to various aspects of energy and temperature management systems.

USPTO records indicate that EcoFactor holds more than three dozen US patents, four more of which it has now asserted in the second ITC complaint (8,019,567; 8,596,550; 8,886,488; 10,612,983), together with the '322 patent. The subject matter of the patents is in the same space, with the '567, '488, and '983 patents generally related to monitoring and tracking the efficiency of HVAC systems by comparing a building's internal temperature with an outside temperature over time and tracking its power state and the '550 patent generally related to manually changing the temperature settings for a thermostat that already has "long-term", or "scheduled", programming. Each proposed respondent that has filed a declaratory judgment action has done so over the subset from these five that EcoFactor asserted against it in the ITC complaint.

Meanwhile, in the West Texas cases (one of which, against Alarm.com, EcoFactor voluntarily dismissed without prejudice in favor of refiling in the District of Massachusetts), a short stay has been imposed, by joint request, until either March 14 or District Judge Alan D. Albright rules on a pending motion to transfer (filed by Google, to move the case to the Northern District of California). The court held a claim construction hearing in December 2020.

Google has also filed eight petitions for inter partes review (IPR) of seven of EcoFactor's asserted patents: three of them, filed in May 2020, saw no trial instituted, while institution decisions remain pending as to the other five, two of which were filed last fall; the other three, throughout January 2021. 2/26, EcoFactor v. Alphabet (Google), Carrier Global, ecobee, Honeywell, Johnson Controls, Resideo Technologies, Siemens, ITC; 3/1, Google v. EcoFactor, Northern District of California; 3/1, Emerson Electric v. EcoFactor, District of Delaware; 3/2, ecobee, District of Delaware; 3/2, Resideo, Northern District of California; 3/3, Carrier, District of Delaware.

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