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

Background

Geigtech holds rights to two patents involved in the case: U.S. Patent Nos. 10,294,717 and 10,822,872. Geigtech asked the court to prevent Lutron from asserting certain invalidity defenses at trial under the post-grant-review estoppel provision, 35 U.S.C. § 325(e)(2). That provision bars a post-grant-review petitioner from arguing that a patent claim is invalid on a ground it raised, or reasonably could have raised, during the review.

Geigtech argued that estoppel applied both to invalidity grounds Lutron actually raised in its earlier post-grant-review proceedings and to grounds Lutron could reasonably have raised. Lutron argued that Geigtech had not met its burden of proving that estoppel applied.

Prior Post-Grant Reviews and Searches

Lutron filed two post-grant-review petitions challenging Geigtech’s ’717 patent. In those proceedings, Lutron asserted the Colson, Fraczek, Mitsuhiro, and Quill patents and argued that claims were invalid under 35 U.S.C. § 112. Lutron did not assert Kirsch or Cid Quintas. The Nichols patent was owned by Lutron during the relevant period, so the court found that Lutron knew about it.

Lutron conducted multiple prior-art searches. Searches by Global Prior Art, Nirav Desai, Michael Koptiw, and Lincoln IP did not find Kirsch. Those searches also did not find Cid Quintas, except for Koptiw’s 2021 search, which found it through unusual methods involving patent figures and related patent references. The court stated that it was unclear how Lutron eventually discovered Kirsch.

Geigtech offered Google Patents searches that located Kirsch and Cid Quintas using selected keywords, classification information, and a filing-date filter. The court found that these searches showed that the patents could be located using those search strings. But Geigtech did not provide expert or other explanatory evidence showing that a skilled searcher, unaware of those patents, reasonably would have selected the same terms and methods in a diligent search.

Legal Standard

The court treated PGR estoppel as a legal issue for the court to decide rather than an issue for a jury. It applied the standard that a ground could reasonably have been raised if the petitioner actually knew about the patent or if a skilled searcher conducting a diligent search reasonably could have been expected to discover it. Geigtech had to prove that standard by a preponderance of the evidence, meaning that its showing had to be more likely true than not.

The court also rejected Geigtech’s request to exclude evidence about Lutron’s prior-art searches. Although Lutron had not disclosed the search evidence earlier, the court found that Lutron had no reason to disclose it until Geigtech raised PGR estoppel. The court also noted that Geigtech had first disclosed its own search evidence at the same stage, and excluding Lutron’s evidence would unfairly require excluding Geigtech’s evidence as well.

Rulings on Kirsch and Cid Quintas

The court denied Geigtech’s motion to estop Lutron from relying on Kirsch and Cid Quintas. Geigtech’s search strings located both patents, satisfying the first part of its evidentiary showing. But the court found that Geigtech had not shown why those search criteria would reasonably be part of a skilled searcher’s diligent process.

The court viewed Geigtech’s searches as constructed with hindsight because Geigtech already knew which patents it wanted to find. The court explained that the relevant question was not whether someone could eventually construct a search that found the patents, but whether it was more likely than not that an ordinarily skilled searcher would have used that search during a reasonably diligent investigation.

The court also rejected Geigtech’s arguments that Lutron’s eventual discovery of Cid Quintas proved that it could have found the patent earlier, that testimony from Lutron’s technical expert established the required diligence, or that shared patent classifications made the searches inadequate. The court found that Lutron’s technical expert was not an expert in prior-art searches and that Geigtech offered no expert evidence on how skilled searchers ordinarily use classifications or choose search terms.

Rulings on the Other Patents and Statutory Grounds

The court granted Geigtech’s motion as to the Colson, Fraczek, Mitsuhiro, Quill, and Nichols patents. Lutron did not dispute that it had asserted four of those patents during post-grant review or that it knew about Nichols. The court therefore held that PGR estoppel applied and that Lutron could not rely on those patents at trial.

The court also granted Geigtech’s motion as to invalidity challenges under 35 U.S.C. §§ 101 and 112. Lutron had raised Section 112 during post-grant review and did not provide a reason why it could not have reasonably raised a Section 101 challenge. The court held that Lutron was estopped from asserting those statutory grounds.

Disposition

The court denied Geigtech’s motion as to Kirsch and Cid Quintas and granted it as to the Colson, Fraczek, Mitsuhiro, and Quill patents, the Nichols patent, and claims under Sections 101 and 112. The Clerk of Court was directed to remove the motion from the list of open motions. Judge Colleen McMahon stated that the decision constituted the court’s opinion and order.