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

Background

The court had previously issued a claim-construction decision concerning the patent terms the parties had identified as disputed. Later, expert reports revealed disagreements about two additional phrases in the ‘717 patent: “adjacent” in claim element 8[c] and “extends away” in claim element 1[a]. Claim construction is the court’s process for determining what patent-claim language means.

Lutron’s technical expert, Dr. Eric Maslen, interpreted “adjacent” to mean adjoining or touching and used that interpretation to support a noninfringement opinion concerning Lutron’s Palladiom system. GeigTech’s expert, Dr. Nancy Perkins, testified that “adjacent” meant nearby. On “extends away,” Maslen argued that the entire bracket had to extend away from the support surface, while GeigTech argued that only the portion holding the window shade assembly needed to do so.

Construction of “Adjacent”

The court rejected Lutron’s proposed definition of “adjacent” as “adjoining,” meaning touching. The court found that the patent’s claims, figures, and specification did not require the relevant parts to touch. It also relied on dictionary definitions and decisions from other courts stating that objects can be adjacent without touching.

The court construed “adjacent” to mean “lying nearby or close to, but not necessarily touching.” It applied that construction to both uses of “adjacent” in the relevant claim limitation: the opening’s first end near the first surface and its second end near the second surface.

Construction of “Extends Away”

The court stated that the phrase “extends away from” did not need an elaborate definition because it ordinarily means that the bracket sticks out or projects away from the support surface. The actual dispute concerned what part of the bracket must extend away.

The court rejected Lutron’s position that the entire bracket must extend away. It concluded that the claim requires one side or portion of the bracket to bear against the support surface, while a portion of the bracket extends away from that surface and is adjacent to an end of the roller window shade assembly. The court adopted that construction but did not include GeigTech’s proposed additional language referring to the portion that holds the window shade assembly.

Expert Testimony

The court ruled that Maslen could not introduce at trial opinions about “adjacent” based on the rejected interpretation requiring adjoining or touching. If he used the term at trial, he had to follow the court’s construction.

Although Lutron argued that Perkins had also used an incorrect interpretation, Lutron had not formally asked the court to exclude her testimony. The court stated that Perkins should use the court’s construction rather than define “adjacent” simply as “nearby.”

The court also excluded Maslen from testifying about “extends away” based on his prior incorrect understanding that the relevant “bracket” meant the whole bracket rather than a portion. Perkins did not offer an opinion on that subject, so her testimony was unaffected.

Result

The opinion is a second claim-construction decision and an associated ruling on expert testimony. It sets the meanings of the two disputed patent terms and restricts Maslen’s testimony as described above. The opinion does not state a final determination of patent infringement.