Google LLC v. EcoFactor, Inc.

Background

Google filed this case seeking a declaration that it did not infringe four EcoFactor patents: U.S. Patent Nos. 8,740,100, 8,751,186, 9,194,597, and 10,584,890. EcoFactor answered and filed counterclaims alleging infringement of those patents. The parties’ accused products relate to smart thermostats, heating, ventilation, air-conditioning, and control systems.

Google moved to stay, or pause, the case while inter partes review (IPR)—a patent-validity review conducted by the Patent Trial and Appeal Board—proceeded for three of the four patents. The Board instituted review of all challenged claims of the ’100, ’186, and ’597 patents, but denied review and denied rehearing for the ’890 patent. The parties expected final written decisions on the three reviewed patents by August 2023.

Legal standard

The court explained that it has authority to manage its docket, including by staying a case during IPR. Courts generally consider three factors: the stage of the litigation, whether the review will simplify the case, and whether a stay would unfairly harm or disadvantage the party opposing it. The party seeking the stay bears the burden of showing that a stay is appropriate.

Court’s analysis

The first factor favored a stay. The parties had conducted virtually no discovery, the court had not issued its claim-construction order, and no trial date had been set. Although the parties had litigated a motion under patent law section 101 and claim-construction issues, the case remained at an early stage.

The second factor strongly favored a stay. The Board was reviewing three of the four patents, and 53 of the 70 claims EcoFactor asserted in the case were subject to possible invalidation. The court also found that overlap in the claims and subject matter could simplify issues involving the remaining patent, even though the Board had not instituted review of that patent.

The third factor—potential prejudice and disadvantage—also favored a stay. The court found that the timing of Google’s IPR petitions was neutral overall because Google’s delay was partly related to EcoFactor’s delay in identifying asserted claims and serving infringement contentions. The timing of Google’s stay motion favored a stay because Google filed it less than a month after IPR was instituted. The status of the review favored a stay because review had begun for three patents. The parties’ relationship was neutral because they disputed whether they were direct competitors, and EcoFactor’s failure to seek a preliminary injunction weakened its argument that monetary relief would be inadequate.

Disposition

After considering the factors, the court, in its discretion, GRANTED Google’s motion to stay pending conclusion of the IPR proceedings. The parties were ordered to file a joint status report every six months, and another joint report within five days after final written decisions issued on the ’100, ’186, and ’597 patents. The clerk was directed to administratively close the file.