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

Background

The court issued findings of fact and conclusions of law after a February 20, 2024 bench trial concerning Lutron’s inequitable-conduct defenses. Lutron argued that GeigTech had failed to disclose Matthew Taylor as a co-inventor of the invention underlying the ’821 patent. Lutron also argued that Geiger had failed to disclose a pre-application commercial sale that triggered the on-sale bar under the pre-America Invents Act version of 35 U.S.C. § 102(b). Lutron contended that these acts made the ’717 patent unenforceable under an “infectious unenforceability” theory.

Co-Inventorship

The court found that Geiger contributed to the fastening system for the roller window shades. Taylor may have sketched a general idea for part of a bracket, but the court found that Taylor did not solve the problem of creating a bracket that hid the fasteners. Taylor testified that Geiger should receive credit for the mechanics of how the brackets worked in the shading system.

The court held that Lutron failed to prove by clear and convincing evidence—and also failed to prove by a preponderance of the evidence—that Taylor was a co-inventor of the fastening device system covered by the relevant claims of the ’821 patent. The court therefore found no failure to disclose a co-inventor and no inequitable conduct on that basis.

On-Sale Bar and the ’821 Patent

The court applied the pre-America Invents Act on-sale bar. Under that rule, the claimed invention is barred from patenting if it was both ready for patenting and the subject of a commercial offer for sale more than one year before the patent application’s filing date. The court identified May 15, 2011, as the critical date because the provisional application was filed on May 15, 2012.

The court found that the fastening system had been reduced to practice no later than February 23, 2011. A mock-up used the same three types of brackets ultimately installed at the Charbon residence, and the court credited testimony that the shades operated while the fasteners remained hidden. The court found that later work involved fitting and installing the broader shading system, not modifying the patented fastening invention.

The court also found that Geiger’s January 18, 2011 proposal was a commercial offer for sale covering the shading system and its component parts, including the custom brackets. The court relied on evidence that Geiger received a 50% deposit, that the parts were ordered, and that the architect approved installation after seeing a working mock-up. The court concluded that the ’821 patent was invalid under § 102(b).

Inequitable Conduct and the ’717 Patent

The invalidity finding concerning the ’821 patent was only the first step in Lutron’s defense to the ’717 patent. To prove inequitable conduct, Lutron had to establish by clear and convincing evidence both that the withheld information was material and that the patent applicant specifically intended to deceive the patent office. Negligence or gross negligence was not enough, and intent could not be inferred from materiality alone.

The court found that the Charbon sale was material because a qualifying pre-critical-date sale would prevent the patent from issuing or invalidate an issued patent. But the court found no clear and convincing evidence that Geiger knew the sale violated the on-sale bar and deliberately decided not to disclose it during prosecution of the ’821 patent.

The court credited Geiger’s testimony that he knew little or nothing about patent law and had not heard of the on-sale bar when he applied for the patent. Lutron pointed to an incorrect priority claim in the provisional application, but the court found that this evidence supported more than one reasonable inference and did not establish an intent to deceive. The court also found that later disclosures during prosecution of the ’717 patent did not show Geiger’s state of mind during prosecution of the ’821 patent.

Result and Further Proceedings

The court concluded that the ’717 patent was not unenforceable under Lutron’s infectious- unenforceability theory. The opinion stated that whether Lutron infringed the ’717 patent, along with non-equitable validity issues concerning that patent, would be tried to a jury. The court said it would address any remaining equitable enforceability issues after the jury’s verdict.