Geigtech East Bay LLC v. Lutron Electronics Co., Inc.
Plaintiff: Geigtech East Bay LLC
Defendant: Lutron Electronics Co., Inc.
Case Number: 1:2018cv05290
Filed: June 12, 2018
Court: US District Court for the Southern District of New York
Office: Foley Square Office
County: XX Out of State
Presiding Judge: Colleen McMahon
Nature of Suit: Patent
Cause of Action: 35 U.S.C. ยง 271
Jury Demanded By: Plaintiff

Available Case Documents

The following documents for this case are available for you to view or download:

Date Filed Document Text
March 21, 2024 Opinion or Order Filing 499 BENCH TRIAL VERDICT. The court, for its findings of fact, conclusions of law and verdict on trade dress issues as further set forth in this Order. In light of the above findings of fact and conclusions of law, I conclude that GeigTech has not prov ed its trade dress claims under either the Lanham Act or the common law by a preponderance of the evidence, and I issue a defendant's verdict in favor of Lutron dismissing GeigTech's trade dress claims. (Signed by Judge Colleen McMahon on 3/21/24) (yv)
March 15, 2024 Opinion or Order Filing 467 MEMORANDUM TO COUNSEL. Since the jury concluded that nothing in the accused statement was defamatory, GeigTech and Mr. Geiger are entitled to a verdict on the defamation claim without regard to any unnecessary ancillary findings, and the jury shoul d have stopped right there ( as we did when reading the verdict). That they did not is my fault; my instructions were not sufficiently clear. I did not say on the verdict sheet, "If your answer to Question 1 is "NO," stop and report your verdict." I apologize to you for that oversight on my part. Fortunately, the two additional findings that were not read into the record upon the taking of the verdict do not render the verdict inconsistent or require any further discussion. But they need to be reported to you. Attached to this is a complete copy of the verdict sheet as filled out by the jury for your records. (Signed by Judge Colleen McMahon on 3/15/24) BY ECF TO ALL COUNSEL. (yv)
February 23, 2024 Opinion or Order Filing 438 FINDINGS OF FACT AND CONCLUSIONS OF LAW. The court, for its findings of fact and certain conclusions of law regarding certain issues pertaining to Lutron's inequitable defenses. I adopt as the guiding principles of law to be used in resolvin g this issue the following conclusions of law proposed by the parties: Lutron's Proposed Conclusions of Law: 1, 2, 3, 4. GeigTech's Proposed Conclusions of Law: 58, 59, 60, 61, 62, 63,64. I make the following findings of fact concerning in ventorship after trial: Lutron has failed to persuade me by clear and convincing evidence that Matthew Taylor was a co-inventor of the fastening device system in suit. In fact, Lutron has failed to persuade me of that by a preponderance of the evi dence. Therefore, there was no failure to disclose the identity of any co-inventor to the PTO, and no inequitable conduct in this regard. The second alleged item of inequitable conduct is the assertion of the validity of the '821 patent when it was invalid for violating the rule that a patent cannot be obtained on an invention that was offered commercially more than one year prior to the application for the patent. This presents a question of law for the court to decide. I can resolve any issues of fact myself and do not need the jury's assistance in that regard. Again, there really are few if any disputed issues of fact; what needs to be resolved is how to interpret the facts. I adopt the following conclusions of law to guide my evaluation of the evidence as further set forth in this Order. In sum, while I find by clear and convincing evidence that Mr. Geiger violated the on-sale bar, I cannot and do not find by clear and convincing evidence that he knew that he had done so and then made a deliberate decision not to advise the PTO of that fact during the prosecution of the '821 patent. That being so, I conclude that the '717 patent is not unenforceable on an "infectious unenforceability&q uot; theory. Whether Lutron infringed the '717 patent will be tried to the jury. The jury will also try the non-equitable issues relating to the validity of that patent. If there are any other equitable issues relating to the enforceability of the '717 patent, the court will address them after the jury reaches its verdict. This constitutes the decision of the court after bench trial. (Signed by Judge Colleen McMahon on 2/23/24) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (yv) BY ECF TO ALL COUNSEL.
February 5, 2024 Opinion or Order Filing 417 ORDER denying (406) Motion re: (406 in 1:18-cv-05290-CM) MOTION Strike From Lutron's Trial Witness List Two Previously Undisclosed Corporate Representatives . in case 1:18-cv-05290-CM. For the reasons set forth in my oral ord er at the Final Pretrial Conference today, GeigTech's Motion to Strike is denied. The Clerk is directed to terminate the motion at Docket Number 406. (Signed by Judge Colleen McMahon on 2/5/24) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM. (yv) BY ECF TO ALL COUNSEL.
January 16, 2024 Opinion or Order Filing 372 ORDER denying 365 Letter Motion to Compel. Lutron's request is DENIED. (Signed by Judge Colleen McMahon on 1/16/24) (yv)
January 5, 2024 Opinion or Order Filing 364 DECISION ON MOTIONS IN LIMINE granting (310) Motion in Limine; granting in part and denying in part (311) Motion in Limine; granting in part and denying in part (313) Motion in Limine; terminating (314) Motion in Limine; granting (316) Motion in Limine; denying without prejudice (317) Motion in Limine; terminating (319) Motion in Limine; denying (320) Motion in Limine; granting (322) Motion in Limine; denying (325) Motion in Limine; terminating (327) Motion in Limine; denying (329) M otion in Limine in case 1:18-cv-05290-CM. The court, for its rulings on the parties' motions in limine: Motion #1 (Dkt #320): GeigTech moves in limine to preclude Lutron from introducing evidence or argument comparing the accused devices to the preferred embodiments, the specification, or any non-accused product or method for the purposes of making its noninfringement arguments. GeigTech believes that Lutron intends to do this in order to get around the court's claim constructi on decisions. So I am not going to forbid Lutron from showing GeigTech's product to the jury. Indeed, ifGeigTech fails to show its product to the jury, it risks having its trade dress/Lanham Act claims dismissed at the close of its case. Thi s is a matter that is appropriately handled by the court in its jury instructions. The motion is, therefore, denied. Motion #2 (Dkt #323): GeigTech moves in limine to bar Lutron from arguing that it relied on the advice of counsel in connection with the patent infringement case, specifically insofar as it relates to the '821 patent, the parent patent to the '717 patent. Apparently two Lutron witnesses testified that they relied on the opinion of counsel (in house counsel at Lut ron) on this subject. GeigTech's motion is, therefore, granted. However, if GeigTech itself opens the door by asking questions like the questions it asked at deposition, I will not stop the witness from giving a true and complete answer. M otion #3 (Dkt. #326): GeigTech moves in limine for an order precluding Lutron from presenting evidence before the jury that relates to Lutron's equitable defenses, including specifically inequitable conduct. GeigTech argues that these defense s are for the court, not the jmy, to evaluate, so presenting evidence about them before the jury would confuse and mislead the jurors in violation of Fed. R. Ev. 402 and 403. The motion is DENIED. I agree with Lutron that the solution is to try any issues that overlap between equitable defenses and jury issues to the jury, and to use the jury's findings in an advisory capacity only when ruling on matters that are remitted to the court. It is up to the parties to identify precisely what th ose issues are and to identify any and all evidence that either side intends to introduce on those questions. They parties have ten business days to give me a list of issues and a compendium of ALL the relevant evidence (I mean give me the evidence, not simply citations) - in an issue by issue format (if some evidence is relevant to multiple issues, then be sure to cite it individually on each issue to which it relates). Then the parties have five business days to provide me with objections, if any, to the use of a particular identified piece of evidence on a particular question. I particularly need to be able to identify whether any piece of evidence is relevant only to an equitable defense and not to an issue that goes to the jury. If there is little or no such evidence (Lutron insists that there is none, and GeigTech has not specifically identified any) the trial will be much simplified. The parties should understand that ifthere is any evidence that relates solely to an equi table defense that is triable by the court and does not overlap with an issue that gets tried to the jury, I will be hearing that evidence, together with argument on the issues that the court must decide, while the jury is deliberating. Motion #4 (Dkt.#328): GeigTech moves in limine for an order precluding Lutron from presenting evidence or argument that its infringement theories read on or encompass prior art. Lutron responds that it has no intention of arguing prior art to rebut GeigT ech's infringement claim, but insists that it must be allowed to argue prior art in order to convince the jury that the patent is invalid. Lutron is correct. So I cannot and will not preclude Lutron from arguing, as it apparently intends to d o, that the '717 patent is invalid because it was anticipated by the prior art -including specifically any prior art that relates to the concealment of wiring in the manner in which Lutron's product conceals the wiring. And while Lutron cannot argue that Palladiom does not literally infringe the patent merely because it is practicing the prior art, we shall see whether GeigTech has the "exceptional linguistic dexterity" to argue that any product of Lutron's that is "closely aligned" with the prior art literally infringes a valid patent. GeigTech can rest assured that Lutron will not be permitted to argue "practicing the prior art" as a defense to literal infringement. Motion #5 (Dkt. #3 30): Finally, GeigTech moves in limine to preclude Lutron from introducing evidence of its own patents relating to the Palladiom shade. The motion is DENIED. Lutron may introduce evidence of its own research and development, including patent appli cations, for any relevant purpose. To the extent a limiting instruction is required, GeigTech may fashion one for the court's consideration. This constitutes the decision and order of the court. It is a written decision. The Clerk is directed to remove the following motions from the court's list of open motions: those at Dockets# 310, 311, 313, 314, 316, 317, 319, 320, 323, 326, 328 and 330. (Signed by Judge Colleen McMahon on 1/5/24) BY ECF TO ALL COUNSEL. Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (yv)
January 3, 2024 Opinion or Order Filing 363 SECOND CLAIM CONSTRUCTION DECISION. The court issued its original claim construction decision on May 5, 2022, (Dkt. No. 163). However, it became apparent some months ago that the parties did not agree on the meaning of two additional terms - " ;adjacent" and "extends away" - as used in the '717 patent. Since the parties' experts rely on opposing definitions of these terms, claim construction will also determine whether I will allow or disallow certain expert tes timony related to these two disputed terms. Once these disputed claims are construed, I will also make a final ruling about whether any of the proposed expert testimony about "adjacent" or "extending away" will be allowed or e xcluded. The court finds that Maslen's testimony using this interpretation cannot be introduced at trial. To the extent Maslen's testimony at trial uses the term "adjacent", he must adhere to the term's proper construction, i.e., "lying nearby or close to, but not necessarily touching." This constitutes the opinion and order of the court. It is a written opinion and as further set forth in this Order. (Signed by Judge Colleen McMahon on 1/3/24) (yv)
December 21, 2023 Opinion or Order Filing 362 DECISION AND ORDER terminating (332) Motion in Limine in case 1:18-cv-05290-CM. GeigTech East Bay LLC ("GeigTech") seeks to preclude Lutron Electronics ("Lutron") from raising an affirmative defense of invalidity based on 35 U. S.C. § 325(e)(2), i.e., the PostGrant Review ("PGR") estoppel provision. Specifically, GeigTech argues that Lutron is estopped from asserting: (1) grounds already raised in Lutron's prior PGR petitions; and (2) grounds that Lutro n could have reasonably raised during PGR. Lutron counters that GeigTech has not met its burden to establish that PGR estoppel applies. Lutron is correct insofar as the Kirsch and Cid Quintas patents are concerned. In order to obtain the advantage of PGR estoppel, GeigTech has the burden to prove that the patents were or could reasonably have been discovered in a prior search. On this record, it has not satisfied that burden. However, Lutron does not dispute that the other patents that are the s ubject of this motion - the Colson, Fraczek, Mitsuhiro, Quill and Nichols patents - either were raised or reasonably could have been raised in post grant review. The same is true of claims arising under 35 U.S.C. §§ 101 and 112. Therefore, PGR estoppel applies, and Lutron may not rely on these patents/issues attrial, as further set forth. Accordingly, Lutron is estopped from challenging the asserted claims under 35 U.S.C. §§ 101 and 112. The Clerk of Court is directed to re move the motion at Docket 332 from the court's list of open motions. This constitutes the opinion and order of the court. It is a written opinion. (Signed by Judge Colleen McMahon on 12/21/2023) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (mml)
October 10, 2023 Opinion or Order Filing 343 RESPONSE TO LETTERS FROM PARTIES. I am perfectly happy to go back and take a look at that one issue - without so much as another word's being written on the subject - and get back to the parties with a merits ruling. But that ruling will not be made in connection with a motion in limine. It is not a proper subject for a motion in limine. The ball is in Lutron's court. (Signed by Judge Colleen McMahon on 10/10/23) BY ECF TO ALL COUNSEL. (yv)
October 4, 2023 Opinion or Order Filing 335 ORDER: An order was filed under seal in the above-captioned case on September 20, 2023. The Clerk of Court is directed to unseal the Decision and Order at Docket Number 308. (Signed by Judge Colleen McMahon on 10/4/2023) (mml)
September 25, 2023 Opinion or Order Filing 309 TRIAL NOTICE: Please take notice that the above captioned matter has been scheduled for a Final Pretrial Conference before the Honorable Colleen McMahon, United States District Judge, on Thursday, February 8, 2024 at 10:00 a.m., in courtroom 24A, at the U.S. District Courthouse, 500 Pearl Street, New York, New York 10007. Trial has been re-scheduled for Monday, February 24, 2024 at 9:30 a.m. Parties are directed to file all trial documents required by Judge McMahon's Individual Practices. O riginals must be filed in the Clerk's Office and courtesy copies are to be provided to chambers. SO ORDERED., ( Final Pretrial Conference set for 2/8/2024 at 10:00 AM in Courtroom 24A, 500 Pearl Street, New York, NY 10007 before Judge Colleen McMahon., Jury Trial set for 2/24/2024 at 09:30 AM before Judge Colleen McMahon.) (Signed by Judge Colleen McMahon on 9/25/2023) (ama)
August 24, 2022 Opinion or Order Filing 182 ORDER terminating 176 Motion for Discovery. In light of the parties' representation that the discovery dispute raised at ECF No. 176 is resolved, the discovery conference previously scheduled on August 25, 2022 at 2:00 p.m. is adjourned sine die. The Clerk of the Court is respectfully requested to terminate the motion at ECF No. 176. SO ORDERED.. (Signed by Magistrate Judge Katharine H. Parker on 8/24/2022) (kv)
May 5, 2022 Opinion or Order Filing 163 CLAIM CONSTRUCTION DECISION: Finally, complete concealment is embodied in the description of the invention and in every single figure illustrating the detailed description - most especially in Figure 21, which illustrates the bracket that is configu red to accept the electrical wire and to obscure it when attached to the support (wall). I have noted previously that claim language cannot be limited to the preferred embodiment, even if only a single embodiment is disclosed. But where every disclos ed embodiment shows a bracket containing an interior passage that would fully obscure any electrical wires run there through - and where nothing in the disputed claim language in the patents in suit, or in anything else in the patents that is not dir ected to the disallowed "obscures a view" claims, suggests any other meaning for the word "obscures" -- adding the words "from at least one viewpoint" to the claim language goes well beyond anything claimed by the invent or in the claims here under construction. I thus adhere to the construction I put on "obscure/obscures/obscured" in connection with the '821 Patent. The jury will be told that the phrase means "you can't see the wires because the bracket is configured to hide them." (as further set forth herein). This constitutes the decision and order of the Court. It is a written opinion. (Signed by Judge Colleen McMahon on 5/5/2022) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM BY ECF TO ALL COUNSEL (kv)
October 7, 2021 Opinion or Order Filing 146 POST-CONFERENCE ORDER, After conferring with the parties, I suggest the following tentative schedule for dealing with patent-related issues: Geig-Tech to submit to a list of asserted claims by October 22, 2021. Geig-Tech to submit infringement c ontentions by November 5, 2021. The parties to submit a list of agreed-upon claim constructions and disputed claim terms by November 12, 2021. Lutron to submit invalidity contentions by November 19, 2021. Opening Markman briefs (limited to intrins ic evidence) are due on December 10, 2021. These will be simultaneous briefs. Responsive Markman briefs (limited to intrinsic evidence) are due on January 10, 2022. I am fine with modest adjustments to this schedule if the parties can agree on them by Tuesday, October 12, 2021. My goal is to get these cases - long delayed by virtue of the PT AB process - moving again. For that reason, I want short dates, as opposed to the longer dates contemplated in this District's model patent rules. Bef ore this case morphed from a trade dress case into a patent case, the parties had been engaged in written discovery. I would like them to finish that process while the early patent matters are being taken care of. However, depositions should abide further order of the court. (Brief due by 12/10/2021., Responses to Brief due by 1/10/2022) (Signed by Judge Colleen McMahon on 10/7/2021) (kv)
September 27, 2021 Opinion or Order Filing 145 CALENDAR NOTICE: Please take notice that the above captioned matter has been re-scheduled for a Telephone conference on Thursday, October 7, 2021 at 10:00 A.M. before the Honorable Colleen McMahon, United States District Judge. Parties should dial i n at 1(888) 363-4749, access code (9054506) to join the conference. Any scheduling difficulties must be brought to the attention of the Court in writing and faxed to Chambers at (212) 805-6326. So Ordered. ( Telephone Conference set for 10/7/2021 at 10:00 AM before Judge Colleen McMahon.) (Signed by Judge Colleen McMahon on 9/27/2021) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (vfr)
January 11, 2021 Opinion or Order Filing 138 ORDER terminating 136 Motion. Response is not needed because the answer is: Any document produced in the earlier case can be used in the later case for any purpose. If someone has a problem with document production, your recourse is to take it to the Magistrate Judge - not to suggest that relevant documents that have been produced cannot be used. (Signed by Judge Colleen McMahon on 1/11/2021) (mml)
September 10, 2020 Opinion or Order Filing 129 MEMO ENDORSED ORDER denying without prejudice to renewal 111 Motion for Sanctions. ENDORSEMENT: I have just stayed this case by agreement of the the parties. I direct the Clerk of Court to mark this motion off calendar (denied without prejudice to renewal when the stay is lifted.) (Signed by Judge Colleen McMahon on 9/9/2020) (mml)
Access additional case information on PACER

Use the links below to access additional information about this case on the US Court's PACER system. A subscription to PACER is required.

Access this case on the New York Southern District Court's Electronic Court Filings (ECF) System

Search for this case: Geigtech East Bay LLC v. Lutron Electronics Co., Inc.
Search News [ Google News | Marketwatch | Wall Street Journal | Financial Times | New York Times ]
Search Web [ Unicourt | Legal Web | Google | Bing | Yahoo | Ask ]
Plaintiff: Geigtech East Bay LLC
Represented By: Michael Robert Gilman
Represented By: Jeffrey Ira Kaplan
Represented By: Brian King
Represented By: Gary Sorden
Search News [ Google News | Marketwatch | Wall Street Journal | Financial Times | New York Times ]
Search Finance [ Google Finance | Yahoo Finance | Hoovers | SEC Edgar Filings ]
Search Web [ Unicourt | Justia Dockets | Legal Web | Google | Bing | Yahoo | Ask ]
Defendant: Lutron Electronics Co., Inc.
Represented By: Scott W. Breedlove
Represented By: Kyle Douglas Gooch
Represented By: James D. Herschlein
Represented By: Paul C. Llewellyn
Represented By: John S Torkelson
Search News [ Google News | Marketwatch | Wall Street Journal | Financial Times | New York Times ]
Search Finance [ Google Finance | Yahoo Finance | Hoovers | SEC Edgar Filings ]
Search Web [ Unicourt | Justia Dockets | Legal Web | Google | Bing | Yahoo | Ask ]

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?