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

Nature of the Document

The provided text is Lutron Electronics Co., Inc.’s letter motion under Federal Rule of Civil Procedure 37. Lutron asked for a discovery conference or an order requiring GeigTech to produce additional documents. The text does not include a court order or disposition of the motion.

Background

On December 11, 2023, Savant Systems, Inc. announced that it had completed a transaction to acquire assets from J Geiger Shading. GeigTech East Bay LLC does business as J Geiger Shading Technology. Lutron’s counsel then asked GeigTech for the transaction documents and communications with Savant concerning the value of the intellectual property involved, the litigation, and Lutron.

GeigTech responded that the transaction involved an asset-purchase agreement concerning assets it regarded as separate from the litigation and a license agreement involving intellectual property related to the litigation. GeigTech provided the license agreement on December 18, 2023, with an Attorneys-Eyes-Only designation under the parties’ protective order. According to Lutron’s letter, GeigTech did not provide the asset-purchase agreement, although GeigTech had indicated it would provide that agreement subject to a restriction on access by Lutron’s in-house counsel.

Lutron’s Discovery Arguments

Lutron argued that communications concerning the litigation or Lutron could be relevant to the strength of the parties’ claims, the financial consequences of infringement, and GeigTech’s trade-dress claims. Lutron also argued that documents concerning the valuation of GeigTech’s intellectual property could bear on damages, including a reasonable-royalty analysis based on a hypothetical negotiation and the factors commonly associated with the Georgia-Pacific framework.

Lutron emphasized that the license agreement covered intellectual property at issue in the litigation and other intellectual property in exchange for one lump payment of 52,334 shares of Savant common stock. Lutron argued that the agreement and related negotiations could help determine the value attributable to the intellectual property involved in this case.

Lutron further argued that the timing of the license agreement did not eliminate its discoverability merely because the agreement was made after the 2019 hypothetical-negotiation date. The letter distinguished between whether evidence ultimately may be admitted at trial and whether it must be produced during discovery.

Protective Order

Lutron opposed changing the parties’ agreed protective order. Lutron argued that the order expressly permits in-house counsel to access documents marked Attorneys’ Eyes Only and that GeigTech had not shown the extraordinary circumstances or compelling need required to modify that order. Lutron said GeigTech’s stated concern that the asset-purchase agreement contained proprietary and highly sensitive information did not meet that standard.

Disposition

The provided text does not state that the court granted, denied, or otherwise resolved Lutron’s discovery request. It is a party submission requesting relief, not a ruling. The supplied case information identifies Judge Colleen McMahon, while the document itself is addressed to Magistrate Judge Katharine L. Parker; the text does not explain that discrepancy.