Federal Circuit disposition — 24-2081

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: ECOFACTOR, INC.,
Appellant
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2024-2081
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/014,916.
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Decided: January 21, 2026
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MATTHEW AICHELE, Russ August & Kabat, Washing-
ton, DC, argued for appellant. Also represented by
K RISTOPHER D AVIS , R EZA MIRZAIE, J AMES P ICKENS , Los An-
geles, CA.
F AHD H. P ATEL , Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee John A. Squires. Also represented by MAUREEN
D ONOVAN Q UELER.
______________________
Case: 24-2081 Document: 41 Page: 1 Filed: 01/21/2026

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IN RE: ECOFACTOR, INC. 2
Before M OORE, Chief Judge, STARK, Circuit Judge, and
O ETKEN, District Judge.1
O ETKEN, District Judge.
EcoFactor, Inc. (“EcoFactor”) appeals from the decision
of the Patent Trial and Appeal Board (the “Board” or
“PTAB”) sustaining the Examiner’s rejection in an ex parte
reexamination of claims 1 through 16 of U.S. Patent No.
8,412,488 (the “’488 Patent”). We affirm.
I
The ’488 Patent, filed on March 1, 2012,2 discloses an
invention that “pertains to [the] use of communicating
thermostat combined with a computer network to verify
that demand reduction has occurred.” J.A. 33. The ’488
Patent relates to monitoring and controlling a heating,
ventilation, and air conditioning (“HVAC”) system to deter-
mine whether the HVAC system is “on” or “off.” Id. at 34-
36.
The ’488 Patent asserts sixteen claims. Representative
claim 1 reads as follows:
A system for monitoring the operational status of
an HVAC system comprising:
at least one HVAC control system associated with
a first structure that receives temperature measure-
ments from at least a first structure conditioned by at
least one HVAC system;
1 Honorable J. Paul Oetken, District Judge, United
States District Court for the Southern District of New
York, sitting by designation.
2 Because the ’488 Patent was filed on March 1,
2012, it is subject to patent laws in effect before the Amer-
ica Invents Act. Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, 125 Stat. 284 (2011).
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IN RE: ECOFACTOR, INC. 3
one or more processors that receive measurements
of outside temperatures from at least one source other
than said HVAC system,
wherein said one or more processors compares the
inside temperature of said first structure and the out-
side temperature over time to derive an estimation for
the rate of change in inside temperature of said first
structure in response to outside temperature, and
wherein said one or more processors compare an
inside temperature recorded inside the first structure
with said estimation for the rate of change in inside
temperature of said first structure to determine
whether the first HVAC system is on or off.
Id. at 37.
In 2021, Andrew S. Baluch on behalf of Google filed for
ex parte reexamination of the ’488 Patent. The Patent and
Trademark Office (the “PTO”) granted the reexamination
request. In a Non-Final Office Action, the Examiner re-
jected claims 1, 3 through 9, and 11 through 16 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over the combina-
tion of two other patents—Patent No. 2004/0117330 to Eh-
lers et al. (“Ehlers”) and Patent No. 2005/0159846 to Van
Ostrand et al. (“Van Ostrand”). J.A. 669-78. The Examiner
also rejected claims 2 and 10 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Ehlers, Van Ostrand, and a
third patent—Patent No. 6,789,739 to Rosen (“Rosen”). Id.
at 677-78.
In response, EcoFactor amended its two independent
claims, claims 1 and 9. J.A. 683-700. Whereas as-issued
claim 1 “compare[d] [i] an inside temperature recorded in-
side the first structure with [ii] said estimation for the rate
of change in inside temperature,” J.A. 37 (emphasis added),
amended claim 1 “compare[d] [i] an actual rate of change
in inside temperature recorded inside the first structure
with [ii] said estimation for the rate of change in inside
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IN RE: ECOFACTOR, INC. 4
temperature,” id. at 684 (emphasis in original). Claim 9
was similarly amended. Id. at 685.
The Examiner issued a Final Office Action, which re-
jected all sixteen claims on the basis that EcoFactor’s
amendments to claims 1 and 9 impermissibly enlarged the
scope of the claims. J.A. 707-08. The Final Office Action
also sustained the Non-Final Office Action’s rejection of all
claims under pre-AIA 35 U.S.C. § 103(a). Id. at 708-15.
EcoFactor then filed a Notice of Appeal to the Board.
The Board sustained the Examiner’s rejection of all
claims. The Board held that EcoFactor’s amendments to
the two independent claims, claims 1 and 9, impermissibly
enlarged the scope of the claims being reexamined. J.A. 6.
The Board also sustained the rejection of claims 1 and 9
under pre-AIA 35 U.S.C. § 103(a) because (1) the combina-
tion of prior art, specifically the Ehlers and Van Ostrand
patents, teaches claims 1 and 9, including, as relevant
here, the “Comparing Rates of Change” limitation and
(2) such combination is obvious. Id. at 9-15. The Board
ruled similarly on claims 3 through 8 and 11 through 16.
Id. at 18. The Board further concluded that EcoFactor
failed to raise any arguments with respect to the rejection
of claims 2 and 10 under § 103(a) and thus forfeited any
challenges. Id. at 6 n.2.
EcoFactor timely appealed from the Board’s final writ-
ten decision. The Board had jurisdiction pursuant to 35
U.S.C. § 134(b) and 35 U.S.C. § 306 and we have jurisdic-
tion over this appeal under 28 U.S.C. § 1295(a)(4)(A).
II
“We review the Board’s legal conclusions de novo, and
the Board’s factual findings underlying those determina-
tions for substantial evidence.” In re Giannelli, 739 F.3d
1375, 1378–79 (Fed. Cir. 2014) (citations omitted).
“Whether amendments made during reexamination en-
large the scope of a claim is a matter of claim construction,
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IN RE: ECOFACTOR, INC. 5
which this court reviews de novo.” Creo Prods., Inc. v.
Presstek, Inc., 305 F.3d 1337, 1344 (Fed. Cir. 2002).
III
The Board provided two independent grounds for sus-
taining the Examiner’s rejections of EcoFactor’s claims: im-
proper enlargement and obviousness. To prevail,
EcoFactor would need to succeed on its challenges to both
grounds. We need not reach obviousness because we con-
clude that the Board properly sustained the Examiner’s re-
jections of EcoFactor’s claims for improper enlargement.
“In any reexamination proceeding . . . , the patent
owner will be permitted to propose any amendment to his
patent and a new claim or claims thereto, in order to dis-
tinguish the invention as claimed from the prior art . . . , or
in response to a decision adverse to the patentability of a
claim of a patent.” 35 U.S.C. § 305. However, “[a] patentee
is not permitted to enlarge the scope of a patent claim dur-
ing reexamination.” Creo Prods., Inc., 305 F.3d at 1344
(citing 35 U.S.C. § 305). “Claims that are impermissibly
broadened during reexamination are invalid[.]” Predicate
Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298,
1302 (Fed. Cir. 2008).
To determine if an amendment enlarges the scope of a
patent claim, courts “must analyze the scope of the claim
prior to reexamination and compare it with the scope of the
claim subsequent to reexamination.” Creo Prods., Inc., 305
F.3d at 1344. “An amended or new claim has been enlarged
if it includes within its scope any subject matter that would
not have infringed the original patent.” Quantum Corp. v.
Rodime, PLC, 65 F.3d 1577, 1580 (Fed. Cir. 1995). “[T]he
words of a claim will be given their ordinary meaning to
one of skill in the art unless the inventor appeared to use
them differently.” Id.
The Board correctly rejected EcoFactor’s amended
claims for enlargement. During reexamination, EcoFactor
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IN RE: ECOFACTOR, INC. 6
amended the last limitation of independent claims 1 and 9.
Because the other claims are dependent on claims 1 and 9,
all claims rise and fall with these amendments. Repre-
sentative claim 1 was amended as reproduced below, with
the underlined language having been added to the claim
during reexamination:
“[W]herein said one or more processors compare an ac-
tual rate of change in inside temperature recorded in-
side the first structure with said estimation for the rate
of change in inside temperature of said first structure
to determine whether the first HVAC system is on or
off.”
J.A. 684.
The text of the amendment enlarges the scope of the
claim. The original limitation required comparing (i) in-
side temperature at a point in time with (ii) the estimated
rate of change in temperature. In contrast, the as-
amended limitation requires comparing (i) the actual rate
of change in inside temperature with (ii) the estimated rate
of change. In other words, the original limitation required
comparing a temperature value with an estimated rate of
change in temperature over time, whereas the as-amended
limitation requires comparing an actual rate of change in
temperature over time with the estimated rate of change
in temperature over that same time. Thus, a system com-
paring an actual rate of change would not have infringed
the original patent, but it would infringe the amended pa-
tent.
EcoFactor argues against this conclusion on the basis
that an actual rate of change in inside temperature is nec-
essarily calculated using the inside temperature values im-
plicated in the original limitation. EcoFactor is correct that
calculating an actual rate of change entails using actual
temperature values. But that has little bearing on enlarge-
ment. As the Board explained, “comparing one or more
temperatures to a rate of change is not equivalent to
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IN RE: ECOFACTOR, INC. 7
comparing a rate of change to a rate of change.” J.A. 8. A
system that infringes the as-amended claim must measure
the inside temperature at multiple points in time, but the
relevant question for purposes of claim construction is
what that system compares with the estimated rate of
change to determine whether the HVAC system is on or off.
The as-amended claim compares a different value to the
estimated rate of change than the as-issued claim. Because
the as-amended claim is broader in at least this one re-
spect, EcoFactor expanded the scope of its claims during
reexamination in violation of 35 U.S.C. § 305. See Tillot-
son, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed.
Cir. 1987) (“A reissue claim that is broader in any respect
is considered to be broader than the original claims even
though it may be narrower in other respects.”). “To con-
clude otherwise would force us to alter what [EcoFactor]
chose to claim as its invention in the original . . . patent.”
Quantum Corp., 65 F.3d at 1581.
IV
We have considered EcoFactor’s remaining arguments
and find them unpersuasive. Accordingly, for the foregoing
reasons, we affirm the judgment of the Board.
AFFIRMED
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