Geigtech E. Bay v. Lutron Elecs. Co.

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GEIGTECH EAST BAY LLC, Plaintiff, v. LUTRON ELECTRONICS CO., INC., Defendant.

Nos. 18 Civ. 05290 (CM), 19 Civ. 04693 (CM), 20 Civ. 10195 (CM)

United States District Court, S.D. New York

December 21, 2023

DECISION AND ORDER

GeigTech East Bay LLC (“GeigTech”) seeks to preclude Lutron Electronics (“Lutron”) from raising an affirmative defense of invalidity based on 35 U.S.C. § 325(e)(2), i.e., the PostGrant Review (“PGR”) estoppel provision. Specifically GeigTech argues that Lutron is estopped from asserting: (1) grounds already raised in Lutron's prior PGR petitions and (2) grounds that Lutron could have reasonably raised during PGR. Lutron counters that GeigTech has not met its burden to establish that PGR estoppel applies.

Lutron is correct insofar as the Kirsch and Cid Quintas patents are concerned. In order to obtain the advantage of PGR estoppel GeigTech has the burden to prove that the patents were or could reasonably have been discovered in a prior search. On this record, it has not satisfied that burden.

However Lutron does not dispute that the other patents that are the subject of this motion - the Colson, Fraczek, Mitsuhiro, Quill and Nichols patents - either were raised or reasonably could have been raised in post grant review. The same is true of claims arising under 35 U.S.C. §§ 101 and 112.

Therefore, PGR estoppel applies, and Lutron may not rely on these patents/issues at trial.

I. PGR Estoppel Presents a Question of Law for Resolution by the Court

As an initial matter, I must first decide whether PGR estoppel is a question of law or fact. Lutron argued in its brief that there is a genuine issue of fact over whether PGR estoppel applies. However, this position seemed nonsensical to me. Genuine issues of material fact are resolved by the ultimate fact finder, which in this case will be a jury. But judges, not juries, decide what issues parties are or are not legally barred from raising. The District of Delaware concluded as much in Innovative Memory Sys., Inc, v. Micron Tech., Inc., No. CV 14-1480-RGA, 2022 WL 4548644, at *5 (D. Del. Sept. 29, 2022), and the court's reasoning in the case seemed correct to me. I asked the parties to clarify their positions.

In their responsive letters, GeigTech agreed that whether GeigTech could argue PGR estoppel presented the court with a question of law, which the court should decide. Lutron danced around the question but ultimately agreed that the issue was not for a jury to decide - it insisted that there was no genuine issue of fact precluding summary judgment in its favor on the question, but agreed that, were the court to find a genuine issue of fact, any ensuing trial would be a bench trial.

So, it appears we are all in agreement that the court will decide whether Lutron can be precluded from asserting invalidity due to PGR estoppel. And I conclude that GeigTech has not met its burden to prove that Kirsch and Cid Quintas are patents that Lutron actually knew about or that a skilled searcher conducting a diligent search reasonably could have been expected to discover during post-grant review (assuming this presents a question of law) - or even to raise a genuine issue of fact (if it presents an issue of fact for the court to rule one), since GeigTech did not bother to present the expert testimony needed to raise such an issue. Therefore, Lutron is not estopped to assert Kirsch and Cid Quintas at trial. It is estopped from asserting the other five patents and Sections 101 and 112.

II. Relevant Procedural History

The court assumes the parties' familiarity with the facts and the procedural history of the case. An extensive discussion of both is available in the court's August 12, 2021, Decision and Order Denying Plaintiffs Motion for Preliminary Injunction and Staying the Remainder of the Case, (Dkt. No. 141), and May 5, 2022, Claim Construction Decision. (Dkt. No. 163).

On September 20, 2023, the court issued a decision and order on multiple motions to . strike, motions to exclude the opinions and proposed testimony of multiple experts and motions for summary judgment. (Dkt. No. 308). On October 10, 2023, GeigTech asked the court to clarify its ruling on the issue of PGR estoppel. (Dkt. No. 331). But the court had made no such ruling. GeigTech had raised and briefed this argument in a first plaintiffs motion for summary judgment, but that motion was stricken. As a result, all arguments raised therein but not raised (and briefed) on the second motion were deemed forfeited. Because GeigTech failed to adequately raise the PGR estoppel issue in its second plaintiffs motion for summary judgment, GeigTech's second motion for summary judgment on PGR estoppel grounds was denied, and the court deemed PGR estoppel abandoned as an issue on summary judgment.

However, the court has since concluded that it is necessary to decide the issue of estoppel in limine. (Dkt No. 343).

III. Relevant Facts

A. The Patents

GeigTech holds the rights to the patents-in-suit - U.S. Patent Nos. 10,294,717 (the “‘717 Patent”) and 10,822,872 (the “‘872 Patent”). (Dkt. No. 202, ¶ 21). The ‘872 patent states that it is a continuation of several prior patents filed by GeigTech, including U.S. Patent No. 9,237,821 (the ‘“821 Patent”) and the ‘717 patent. Id. at ¶ 18.

The ‘717 Patent is classified as “E06B 9/50” and “A47H 1/13” under the Cooperative Patent Classification (“CPC”) system. Id. at ¶ 34. E06B is the classification for “Fixed or Movable Closures for Openings in Buildings, Vehicles, Fences, or Like Enclosures, in General, e.g. Doors, Windows, Blinds, Gates.” (Dkt. No. 201-14). The subclassification “9” refers to “Screening or protective devices for (wall or similar} openings, with or without operating or securing mechanisms; Closures of similar construction.” Id. A47H 1/13 is the subclassification for “Brackets or adjustable mountings for both roller blinds and drawable curtains.” (Dkt. No 206, ¶ 34).

Cid Quintas is a Spanish patent titled “Combined multiple mechanism for shades, curtains and the like with complementary housing structure.” (Dkt. No. 201-30). Cid Quintas was published in 2009 and is classified as E06B 9/56 under the CPC. Id.

Kirsch is a United States patent issued in 1923 and titled “Window Shade Roller Fixture.” (Dkt. No. 201-31). Kirsch is classified as E06B 9/50 under the CPC. (Dkt. Nos. 201-29, 201-31).

B. The Searches

1. The Global and Desai Searches

In August 2018, prior to PGR, Lutron engaged third-party search vendor Global Prior Art Inc. (“Global”) to conduct a prior art search for the ‘821 Patent. (Dkt. No. 207-31, ¶ 3). In December 2018, Lutron did the same for the ‘687 patent application (which eventually became the ‘717 Patent). TcZat ¶ 8. Global's searches did not yield Cid Quintas or Kirsch. Id. at ¶ 13.

In 2019, Lutron prepared to file PGR proceedings against the ‘717 Patent. (Dkt. No. 20732, ¶ 3). As part of its preparation, Lutron asked Nirav Desai to review Global's search results and conduct his own prior art search. Id at ¶¶ 2-5. Desai's search also did not yield Kirsch or Cid Quintas. Id. at ¶ 5. Desai and his team spent approximately 25 hours conducting this search. Id. 2.

The PGR Proceedings

On January 2, 2020, Lutron filed two petitions for PGR with the Patent Trial and Appeal Board. The PGR petitions challenged the validity of the claims of GeigTech's ‘717 patent. In both PGRs (PGR2020-00013 and PGR2020-00012) Lutron asserted the Colson, Fraczek, Mitsuhiro, and Quill patents against the ‘717 Patent. (Dkt. No. 202, ¶¶ 40, 43). Lutron also argued that the asserted patent claims were invalid under 35 U.S.C. § 112. Id. at ¶ 40. Lutron did not assert the Kirsch or Cid Quintas patents. The final decision in the PGR proceeding was issued in August of 2020.

3. The 2020 Koptiw Search

In the summer of 2020 - whether before the PGR's decision or not, the record does not reveal - Lutron had patent attorney Michael Koptiw (“Koptiw”) perform yet another set of prior art searches for the '717 Patent. (Dkt. No. 207-33, ¶ 4). Koptiw is a graduate of the Stevens Institute of Technology and Rutgers Law School. He holds five patents of his own and specializes in complex patent litigation, invalidity analysis and infringement studies. He has an impressive resume and multiple publications. See Attorney Profile: Michael A. Koptiw, https://www.condoroccia.com/attomey/michael-a-koptiw/. Most important, he has conducted hundreds of prior art searches over sixteen years in practice. (Dkt. No. 207-33, ¶ 3).

For his 2020 searches, Koptiw used a third-party commercial prior art search tool called Innography - an artificial intelligence powered search engine that uses text clustering analysis without requiring exact keyword matches. Id. at ¶ 6. The Innography dataset contains 48 million full-text English patent documents and 14 full-text translated jurisdictions, including Spain. Id.

Koptiw used Innography's keyword and semantic search feature to conduct the search. Koptiw selected keywords he derived from the ‘717 Patent claims, including, but not limited to: “motorized,” “roller shades,” “automated,” “electrical drive,” “passage,” “motor in tube,” “concealed,” “obscured,” and “wires.” Id. at ¶ 8. Koptiw decided - given the language in the ‘717 Patent claims and file history - that these terms would return the most relevant prior art. Id.

Koptiw's initial search returned approximately 4,000 results. Koptiw then utilized Innography's analytical tools to craft subsequent searches, in order to obtain a smaller subset of patents to review. Koptiw then “deduped” (i.e., removed duplications among) the entries of this subset and eliminated family members. Id. at ¶ 10. Neither Kirsch nor Cid Quintas was in the resulting final set....