Geigtech East Bay LLC v. Lutron Electronics Co., Inc.

Background

GeigTech East Bay LLC, doing business as J Geiger Shading Technology, sued Lutron Electronics Co., Inc. for allegedly infringing U.S. Patent No. 10,822,872, known as the ’872 patent. The patent concerns a bracket for a roller window shade that attaches to a wall or ceiling, allows electrical wiring to pass through it, and hides the wiring. GeigTech alleged that Lutron’s Palladiom Shading System used infringing brackets.

This was the third lawsuit involving the parties and Lutron’s Palladiom product. The two earlier cases involved different GeigTech patents, including the ’717 patent, which is a continuation of the ’821 patent. The court had consolidated and stayed those earlier cases while the Patent Trial and Appeal Board, or PTAB, reviewed Lutron’s challenge to the ’717 patent.

In this case, GeigTech moved for a preliminary injunction to prevent Lutron from making, marketing, or selling Palladiom products. GeigTech also moved to dismiss Lutron’s third counterclaim, which sought a declaration that the ’872 patent was unenforceable based on alleged inequitable conduct and the doctrine of equitable intervening rights. Lutron’s inequitable-conduct theories included an allegation that GeigTech failed to identify Matthew Taylor as a co-inventor and failed to disclose certain prior-art materials during prosecution of the earlier ’821 patent.

Preliminary Injunction

The court denied GeigTech’s motion for a preliminary injunction. A preliminary injunction is an extraordinary temporary order that requires the moving party to show, among other things, a likelihood of success on the merits. In a patent case, the patent owner must show that it is likely to prove infringement and likely to withstand substantial challenges to the patent’s validity, enforceability, or the alleged infringement.

The court found that Lutron had raised substantial questions about the ’872 patent’s validity. First, the court considered U.S. Patent No. 1,476,160, the Kirsch patent, which concerned a window-shade roller fixture and contained figures that the court viewed as substantially similar to figures in the ’872 patent. Although the Kirsch patent did not expressly discuss electrical wiring, the court concluded that its figures raised a substantial question about whether it would have been obvious to pass wires through gaps in the brackets and hide them.

Second, Lutron submitted a sworn affidavit from Matthew Taylor stating that he created the shade requirements and contributed the bracket concepts that ultimately became the ’872 patent. The court held that the affidavit created a factual question about inventorship. At the preliminary-injunction stage, Lutron did not have to prove conclusively that Taylor was a co-inventor; it only had to raise a substantial question about the patent’s vulnerability to an inventorship-based invalidity defense.

The court emphasized that its ruling did not finally decide that the ’872 patent was invalid or that GeigTech would ultimately lose its infringement claim. It held only that GeigTech had not shown that Lutron’s invalidity arguments lacked substantial merit. Because GeigTech failed to show a likelihood of success, the court did not analyze the other preliminary-injunction factors.

Stay and Counterclaim

The court denied GeigTech’s motion to dismiss Lutron’s third counterclaim without prejudice to renewal after the stay ends. The court did not decide the merits of that dismissal motion. It noted that the counterclaim and GeigTech’s arguments were substantially the same as those already pending in the stayed litigation involving the ’717 patent.

For judicial economy, the court consolidated this case with the two earlier cases and stayed the remainder of the litigation. The stay was set to last no longer than December 31, 2021. It would end earlier if the PTAB issued its decision on the remaining challenge to the ’717 patent; otherwise, the court stated that the stay would expire on December 31 and that litigation would proceed.

Disposition

The court denied the motion for a preliminary injunction. It also denied the motion to dismiss Lutron’s counterclaim without prejudice to renewal after the stay. The court directed the Clerk to consolidate this case with Case No. 18-cv-5290 and removed the two motions from the list of open motions.