A previous post discussed Honeywell’s patent infringement suit against Nest Labs (Nest) asserting seven thermostat control patents. Since then Nest has requested that the U.S. Patent and Trademark Office (USPTO) reexamine all seven of the patents-in-suit.
A reexamination proceeding allows a third party to submit prior art to the USPTO in connection with a patent and have that patent re-enter the prosecution, or examination, process with respect to the submitted prior art. For the USPTO to grant the request, the requester must demonstrate that the prior art raises a “substantial new question of patentability.”
Even though the reexamination fee is hefty ($17,750), it is still in most cases a cheaper way of trying to invalidate a patent than by federal court litigation.
Over the last couple of months, starting on August 17th, the USPTO has been issuing office actions rejecting the reexamined claims of Honeywell’s patents one by one. The seventh and last Honeywell patent was rejected by an office action issued October 11th.
The list of patents and the respective office actions are provided below:
7,634,504, entitled “Natural Language Installer Setup for Controller,” describes inventions directed at simplifying methods that use natural language to program a thermostat (’504 Patent). Here is the office action issued in connection with the ’504 Patent.
7,142,948, entitled “Controller Interface With Dynamic Schedule Display,” describes methods for operating a thermostat including calculating the time anticipated to reach a particular set temperature (’948 Patent). Here is the office action issued in connection with the ’948 Patent.
6,975,958, entitled “Profile Based Method for Deriving a Temperature Setpoint Using a ‘Delta’ Based On Cross-Indexing a Received Price-Point Level Signal,” describes a method for reducing energy costs by controlling a thermostat from information stored in a remote location (’958 Patent). Here is the office action issued in connection with the ’958 Patent.
7,584,899, entitled “HVAC Controller,” describes an HVAC controller that has a rotatable part which can control one or more parameters of the HVAC system (’899 Patent). Here is the office action issued in connection with the ’899 Patent.
7,159,789, entitled “Thermostat with Mechanical User Interface” (’789 Patent), describes an apparatus for locating a non-rotating part of a thermostat inside of a rotating part, while allowing the rotating part to set and/or control different parameters of the thermostat. Here is the office action issued in connection with the ’789 Patent.
7,159,790 entitled “Thermostat with Offset Drive,” (’790 Patent), is related to the ’789 Patent and describes the same inventions. Here is the office action issued in connection with the ’790 Patent.
7,476,988, entitled “Power Stealing Control Devices” (’988 Patent), describes a power stealing device, whereby a thermostat can divert, or skim, a small amount of electrical charge from a home’s electrical system. Here is the office action issued in connection with the ’988 Patent.
The accused products are the Nest Thermostats (shown above).
Obviously, these office actions are a string of good news for Nest. Note, however, that these are initial rejections. Honeywell can, and certainly will, argue against the rejections and/or amend the claims to overcome them.
Eric Lane is a patent attorney at McKenna Long & Aldridge LLP in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at email@example.com