Google Unit Ends IPR Challenges Over Thermostat Patents

http://www.law360.com/articles/691997/google-unit-ends-ipr-challenges-over-thermostat-patents

By Erin Coe

Law360, San Diego (August 17, 2015, 6:12 PM ET) -- Nest Labs Inc., a trendy thermostat maker under Google Inc., has agreed to terminate three inter partes review challenges over two Allure Energy Inc. patents covering thermostat technology, according to filings with the Patent Trial and Appeal Board on Friday, a couple of months after Allure settled a related infringement suit against the company.
According to the filings, Nest Labs and Allure have jointly moved for orders to end the inter partes reviews — one involving U.S. Patent Number 8,509,954 and two involving U.S. Patent Number 8,571,518 — in light of a settlement agreement reached in July.

Attorneys representing the parties declined to comment Monday.

Nest Labs sought a review of the ‘954 patent, which relates to an energy management system and method, in August 2014, alleging that claims 2-7 and 15 were obvious based on prior art. The PTAB instituted a trial in March.

In addition, Nest Labs in August 2014 requested a review of the ‘518 patent, which relates to a proximity detection module on a thermostat, alleging claims 1-9, 11 and 12 were obvious, and the PTAB instituted a trial in March. It also sought a second review of the ‘518 patent in October, asserting that claims 1-9 and 12 of the patent were obvious and claims 1 and 8 were anticipated. The PTAB agreed to institute a trial in May.

Nest Labs launched the proceedings at the PTAB after Allure, which designs and sells home environment and energy management products, accused it in a Texas federal court in 2013 of infringing and inducing others to infringe the ‘954 and ‘518 patents, as well as U.S Patent Number 8,442,695 with its Nest Learning Thermostat.

It also claimed that Green Mountain Energy Co. and Reliant Energy Retail Holdings LLC were infringing the same patents with their energy programs for Nest Labs’ Nest Learning Thermostat.

Allure and the defendants notified the court in June that they had reached a settlement agreement following mediation proceedings.

In January 2014, Google and Nest Labs announced that the technology giant would buy the thermostat maker for $3.2 billion in cash, in a deal that gave Google a burgeoning business dedicated to reinventing and modernizing products such as thermostats and smoke alarms.

The patents-in-suit are U.S. Patent Numbers 8,509,954 and 8,571,518.

Nest Labs is represented by Stuart Nelson of Fish & Richardson PC.

Allure is represented by John Artz of Dickinson Wright PLLC.

The cases are Nest Labs Inc. v. Allure Energy Inc., case numbers IPR2014-01426, IPR2015-00181 and IPR2014-01424, in the Patent Trial and Appeal Board.

--Additional reporting by Kelly Knaub. Editing by Christine Chun.