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

Filing 163

CLAIM CONSTRUCTION DECISION: Finally, complete concealment is embodied in the description of the invention and in every single figure illustrating the detailed description - most especially in Figure 21, which illustrates the bracket that is configu red to accept the electrical wire and to obscure it when attached to the support (wall). I have noted previously that claim language cannot be limited to the preferred embodiment, even if only a single embodiment is disclosed. But where every disclos ed embodiment shows a bracket containing an interior passage that would fully obscure any electrical wires run there through - and where nothing in the disputed claim language in the patents in suit, or in anything else in the patents that is not dir ected to the disallowed "obscures a view" claims, suggests any other meaning for the word "obscures" -- adding the words "from at least one viewpoint" to the claim language goes well beyond anything claimed by the invent or in the claims here under construction. I thus adhere to the construction I put on "obscure/obscures/obscured" in connection with the '821 Patent. The jury will be told that the phrase means "you can't see the wires because the bracket is configured to hide them." (as further set forth herein). This constitutes the decision and order of the Court. It is a written opinion. (Signed by Judge Colleen McMahon on 5/5/2022) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM BY ECF TO ALL COUNSEL (kv)

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 1 of 23

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

- - - - - - - -- - - -- - - - - - -- X
GEIGTECH EAST BAY LLC,

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

-againstLUTRON ELECTRONICS CO ., INC. ,
Defendant.

- - - - - - -- -- - - - - - - - - - -X
CLAIM CONSTRUCTION DECISION
McMahon, J.:
In the second (19 Civ. 04693) and third (20 Civ. 10195) of three consolidated lawsuits 1
filed by GeigTech East Bay against Lutron Electronics- all of which allege that aspects ofLutron' s
"Palladiom" high end window shade system infringe plaintiffs patents - the parties have
submitted competing proposed claim constructions for three terms that appear in the two patents
in suit: U. S. Patent No. 10,294,717 ("the ' 717 Patent"), and U. S. Patent No. 10,822,872 ("the ' 872
Patent"). The ' 872 Patent is a continuation of the patent asserted in the first of GeigTech' s three
lawsuits, U.S. Patent No . 9,237,821 ("the '821 Patent")- as is the ' 717 Patent, which was asserted
in the second-filed lawsuit. In both lawsuits, GeigTech alleges that various aspects of the brackets
that secure the Palladiom window shade system to a ceiling or wall infringe on GeigTech' s
patented technology.
The convoluted procedural history of these matters, as well as related proceedings before
the Patent Trial and Appeal Board (PT AB), is recounted in a number of prior opinions, most

1

The parties agreed to con solidate the orig inal lawsuit - which no longer includes any patent claim s - and the
second-filed lawsuit; the court on its own motion add ed the third case when it was fi led .

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 2 of 23

recently at Docket No. 141 filed in the consolidated action (Decision and Order Denying Plaintiffs
Motion for Preliminary Injunction and Staying the Case). Unfortunately, in order to understand
fully some of Lutron' s claim construction arguments, it will be necessary to recount it yet again.

A. The Parties
Plaintiff GeigTech East Bay LLC ("GeigTech") does business as J. Geiger Shading
Technology. It is a South Carolina limited liability company with its principal place of business in
South Carolina.
GeigTech was founded by James Geiger, who is a "pioneer and entrepreneur in the field of
home integration" and has over twenty years ' experience in the field. (Com pl. at

~

10). Geiger

installed his first set of window shades around 1999 and first conceived of the patented concept at
issue in this case around 2011 , when he "devised a new solution for exposed window roller shades
.. . that did not require them to be hidden by the traditional methods." (Compl. at~~ 14, 16). In
2012, Geiger added to his system by devising "a method to conceal electrical wiring inside a
passage through the roller shade bracket." (Compl. at ~ 18). Geiger began marketing and selling
his "J Geiger Shading System" soon thereafter. (Compl. at~ 23).
Defendant Lutron Electronics Co. , Inc. ("Lutron") is a Pennsylvania corporation.
According to GeigTech ' s submissions in the first lawsuit, Lutron is an "industry leader in lighting
and shade control," offering more than 15,000 products worldwide with thousands of employees
and hundreds of millions of dollars in annual revenue . (Case No . 18-cv-5290, Dkt. No . 6).

B. The Patents and Claims in Suit
GeigTech holds the rights to the patent-in-suit, U.S. Patent No . 10,294,717 ("the ' 717
Patent"). The patent is entitled " Shade Bracket with Concealed Wiring," and was issued on May
21 , 2019. It generally covers a bracket that is to be coupled to some sort of support system (a

2

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 3 of 23

wall or ceiling, generally) for use with motorized shade and shade systems. (Dkt. No. 151-1 at
page 21 of 27). The "Background" section of the patent recites that "Current brackets and
mounts for roller window shades are typically bulky, visible, and may detract from the aesthetics
of the shade system. Hence, there remains a need for improved assembly for mounting shades
and shade systems, including motorized shades." (Id.).
The '717 Patent is, as mentioned above, a continuation in part of an earlier patent, the
' 821 Patent, application for which was filed on May 15, 2013. Insofar as is here relevant, the
' 821 Patent recites in haec verba the "Background" section, indicating that it, too, was intended
to solve the problem of "bulky, visible" aspects of a shade mounting system that detract from the
system's aesthetics.
GeigTech also holds the rights to the second patent-in-suit, U.S. Patent No. 10,822,872 (the
'872 Patent). The patent is entitled "Shade Bracket with Concealed Wiring" and was issued on
November 3, 2020. The '872 Patent states that it is a continuation of both the '821 and the '717
Patents.

C. The Palladiom Shading System
Lutron manufactures and sells the Palladiom Shading System, which is a mechanized
window shade consisting of roller tubes with attached fabric shades, bottom rails, mounting
brackets, sensors, motors, and power supplies - basically, an automated window shade. Lutron
first began offering Palladiom products in 2017. It advertises the system as one that is "engineered
to be beautiful" by hiding certain aspects of traditional shading systems that customers found
aesthetically unpleasant. (Dkt. No. 33 at 2).
One aspect of the Palladiom System touted by Lutron is its use of exposed (i.e., visible)
but decorative brackets, which Lutron describes as a "classic L-shape ... that protrudes and is

3

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 4 of 23

used to secure the structure to a support surface - i.e. , a wall or ceiling." (Ibid.). The brackets are
made so that wires can be hidden and run through them without the wires' being "exposed" to
view. Palladiom System products "have won prestigious awards and are positioned at the top of
Lutron ' s window shading product range." (Id. at 5).
GeigTech asserts that the brackets the Palladiom System uses to secure itself to a support
surface infringe the ' 872 Patent. GeigTech observes that the Palladiom System "includes a side in
the bracket configured to engage the support surface so that the bracket extends away from the
support surface to carry a roller window shade assembly ." (Compl. at~ 42). This configuration
makes it so that the bracket lies "substantially flat" to fit onto a flat support surface. (Compl. at~
43) . GeigTech also claims that the System includes a "passage in the bracket configured to receive
an electrical wire extending from the support surface through the bracket to a motor carried by the
roller window shade assembly. " (Compl. at

~

44) . The brackets are configured "to obscure the

electrical wire when the bracket is coupled to the support surface and supports the roller window
shade assembly. " (Com pl. at ~ 48). GeigTech claims that all of these elements are claimed by the
' 872 Patent - in essence, that Lutron infringes on the patent by offering brackets that lie flat against
a support surface and by obscuring the electrical wiring that can be run through it.
D. The History of Litigation
All three lawsuits between GeigTech and Lutron involve the same allegedly infringing
product - Lutron ' s Palladiom Shading System. However, they involve (or at one time involved)
three different patents and three very different sets of infringement allegations.
1. First Infringement Case ("the Trade Dress Action")
GeigTech first filed suit against Lutron on June 12, 2018, alleging infringement of the ' 821
Patent and trade dress infringement.

4

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 5 of 23

-

Some history is in order.
In or about 2011, Geiger alleges that he conceived and developed an "elegant and distinct"
shading system that "also allowed for screws and wires to be concealed from view."2 Prior to that
time, brackets used to mount window shades were screwed directly into the wall or ceiling adjacent
to the window being covered; if they were hidden from view, it was by use of a ceiling pocket, a
valence or fascia. GeigTech claimed a "pioneering signature look" for the brackets used to mount
window shades in which all of the "ugly parts" - the mechanical devices that secure the shades to
the wall or ceiling - were hidden. This resulted in a "sleek" look that appealed to high end
decorators and their customers. Indeed, the invention may have come about in connection with a
high-end decorating job in Dallas on which Geiger worked . (Deel. of C. Matthew Taylor, Dkt. No.
40, Ex. 1).
The ' 821 Patent was issued on January 16, 2016 and is entitled "Assembly for Mounting
Shades." GeigTech ' s provisional application was filed on May 15, 2012. The Patent recites "a
system of fastening devices, e.g. , mounts, brackets, and assemblies for installing roller window
shades" that "provide for improved means for mounting window shades (roller shades), including
motorized shades, in which the portion of the mounting means (i.e ., the 'mount,' 'mounting plate,'
or ' mounting bracket') affixed to the supporting structure (e.g. , the window casing, walls, columns,
etc.) are hidden from view by the structure of the bracket or mounting bracket." (' 821 Patent, Dkt.
No . 151-3 at page 20 of 24). The fact that these items were "typically bulky, visible, and may
detract from the aesthetics of the shade system" was the justification for the invention; and in each
of the 23 figures of the patent, the many configurations always feature footless brackets, with no

2

I use the word "alleges" advisedly, as Lutron has submitted to the court an affidavit from one C. Matthew Tay lor the architect on the job for which this new bracketing system was allegedly invented - who claims that he is the
actu al inventor, or at least the co-inventor, of the '821 Patent. More on that later.

5

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 6 of 23

visible mounting structure. The lack of visibility of the hardware was emphasized in the Summary
of the Invention, and the words "invisible mount. .. fastening device" appear repeatedly. (Breedlove
Ex.Cat 1-2, and Ex. D at 1:0003-0007; the '821 Patent, Dkt. No. 151-3 at page 20 of 24). The
claims asserted that this result was achieved via the use of a mounting bracket that was secured to
a mounting plate that attaches to the wall or ceiling, wherein the bracket obscures the plate from
view. (See Id. , the '821 Patent).
In GeigTech's original lawsuit, it asserted that the jamb brackets in Lutron's Palladiom
System' s infringed two claims of the '821 Patent, in that "at least one of the mounting brackets is
configured as a key to engage a tube shade clutch or a tube shade motor" and that "at least one of
the mounting brackets is configured to receive a tube shade pin or a motorized tube shade idler
pin." ('821 Patent, Claims 9, 15; Case No. 18-cv-5290, Dkt. No. 1, Ex. A at 24). The parties
referred to these elements as the "key" and "pin" elements; these elements were central to
achieving the desired "sleek" look by rendering invisible the ugly, bulky mechanical elements that
were used to attach the shade to the wall or ceiling. GeigTech did not allege that the infringing
aspect of the Palladiom System's jamb brackets was its support structure to a wall or ceiling- only
the brackets ' "key" and "pin" elements. Needless to say, the parties disagreed over how the terms
"key" and "pin" should be construed. The court resolved this disag~eement by issuing a claim
construction decision in connection with eight contested claim terms on September 30, 2019. (Dkt.
No. 107)
Ironically, on October 5, 2018 - one month after the denial of GeigTech's motion for a
preliminary injunction on September 5, 2018 (Dkt. No. 57) - GeigTech had voluntarily dismissed
its claim that Lutron had infringed the ' 821 Patent. (Dkt. No. 63). That did not dispose of the
lawsuit, because the complaint in the first lawsuit contained a trade dress claim that relates to the

6

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 7 of 23

-

design of the Palladiom jamb brackets; this claim remains pending. For that reason, this case is
referred to as the "Trade Dress Action." Lutron' s counterclaim for defamation also remains
pending. 3
2. Second Infringement Case ("the '717 Action")
GeigTech filed a second suit against Lutron on May 21 , 2019, this time alleging
infringement of U.S. Patent No . 10,294,717. Not at all coincidentally, that was the day the '717
Patent was allowed. The '717 Patent was based on an application (the '687 application) that was
filed on Mary 31, 2018 - which was within a month of the filing of the Trade Dress Lawsuit. It
was filed as a continuation of the claims in the parent '821 Patent. A "continuation application" is
a patent application filed by an applicant who wants to pursue additional claims to an invention
that was disclosed in an earlier application of the applicant (the "parent application) that has not
yet been issued or abandoned. The continuation uses the same specification as the pending patent
application, claims the priority based on the filing date of the parent, and names at least one of the
inventors named in the parent application. See Wikipedia, "Continuing Patent Application,"
https ://en.wikipedia.org/wiki/Continuing_patent_application (last visited May 5, 2022).
The ' 717 Patent recites eighteen claims for "A bracket configured to be coupled to a
support surface and configured to support a roller window shade assembly." (Case No. 19-cv4693, Dkt. No. 5). GeigTech accused Lutron of infringing at least five of the patent' s claims by
using similar support brackets. 4 For example, one allegedly infringing aspect is that the Palladiom

3

The great complication in this case is that Lutron's libel claim relates to GeigTech ' s public accusation that Lutron
infringed the ' 821 patent - which kept the patent issues in the case, despite the fact that GeigTech had discontinued
its patent infringement claim. That is why the court engaged in claim construction - because in order to resolve the
libel claim, we will have to try the issue of patent infringement in any event.
4
For example, Claim 4 of the '7 17 Patent - one of the claims that GeigTech accused Lutron of infringing - recites,
in relevant part (Case No. l 9-cv-4693 , Dkt. No. 5, Ex. A): A bracket configured to be coupled to a support surface
and configured to support a roller window shade assembly, the bracket comprising:
a side configured to bear against the support surface such that the bracket extends away from the
support surface and is adjacent an end of the roller window shade assembly;

7

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 8 of 23

System "includes a side configured to bear against the support surface such that the bracket extends
away from the support surface and is adjacent to an end of the roller window shade assembly." (Id.
at

~

43). Another allegedly infringing aspect is "a bracket configured to obscure the electrical

wiring ... wherein the side of the bracket is at least substantially flat to facilitate the side to bear
against a substantially flat support surface." (Id. at~ 49). Figure 21 - not included in the original
provisional patent application but added to the PCT patent application on May 15, 2013 illustrated an opening in the bracket itself through which wiring could be passed, presumably in
order to shield it from view. (Dkt. No. 151-1 at page 19 of 27).
And with that, the focus of litigation began to shift, from the " sleek" design that was
facilitated by the "key" and "pin" elements and the use of a mounting bracket (the '821 patent) to
the fact that the bracket itself was configured to obscure the electrical wiring that was used to
power the motorized shade. (Independent Claim 1, '717 Patent at col. 10:28-36). The justification
for the invention - the desire to avoid bulky, visible elements that detract from the aesthetics of a
shade mount - remained exactly the same. (See '717 Patent at col. 1:27-31).
On August 9, 2019, Lutron filed its answer and several counterclaims against GeigTech.
Lutron seeks to have the '717 patent declared invalid or unenforceable, for multiple reasons,
including anticipation, obviousness, and prosecutorial misconduct due to Geiger's failure to
disclose certain prior art to the PTO in connection with the prosecution of the parent (' 821) patent.
(Case No. l 9-cv-4693, Dkt. No. 23). GeigTech filed a motion to dismiss Lutron's counterclaims

a passage extending through the bracket from the side to an area of the bracket adjacent the roller
window shade assembly;
wherein the passage is configured to receive electrical wiring therethrough such that the electrical
wiring can pass from the support surface to the roller window shade assembly to power a motor of
the roller window shade assembly; wherein the bracket is configured to obscure the electrical
wiring when the bracket is coupled to the support surface and supports the roller window shade
assembly .. ..

8

Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 9 of 23

and to strike its affirmative defenses insofar as they asserted that the patent was invalid or
unenforceable.
Before the Court decided the motion to dismiss, Lutron notified the Court that it had filed
two petitions for post grant review ("PGR") with the PTAB. The PGRs challenged the validity of
the claims of GeigTech's ' 717 Patent; if sustained, they could invalidate the patent. The parties
asked for a stay of the litigation until a final PTAB decision issued. The court granted that stay on
January 28, 2020.
On August 26, 2020, the parties filed a proposed stipulation asking the court to consolidate
the Trade Dress Action with the '717 Action, given the significant overlap of the evidence
concerned in both cases. At that time, the parties advised the court that the PTAB had denied
Lutron's first PGR challenging the '717 Patent. However, the PTAB granted the second PGR and
was instituting a fuller review of those claims, and the parties asked that the court stay both lawsuits
until the PTAB finished its full review. (Case No. l 8-cv-5290, Dkt. No. 126).
The court granted the proposed order and consolidated and stayed both lawuits on
September 10, 2020. (Case No. 18-cv-5290, Dkt. No. 128).
3. The Third Litigation: ("the '872 Action")
GeigTech procured a third patent relating to the "sleek" mechanical window shade
mounting system on November 3, 2020, when the PTO issued U.S . Patent No . 10,822,872. Once
again, on the very same day- and notwithstanding the stay that the court had entered at the parties'
request just three months earlier - GeigTech commenced a third lawsuit against Lutron, this time
alleging that the Palladiom System's end and center brackets, which were used to secure the system
to a support surface (in contrast to the jamb brackets that allegedly infringed the ' 821 Patent in the
trade dress case), infringed the '872 Patent. GeigTech' s complaint is extremely similar to those it

9

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 10 of 23

filed against Lutron in the previous two litigations, with many of the same pictures of the Palladiom
System being used as descriptions for how the product allegedly infringes on GeigTech ' s patent.
GeigTech ' s complaint in the ' 872 Action alleges that Lutron' s Palladiom System of
mechanized window shades infringes on "at least" claims 1-4 of the '872 Patent. Claim 1 - the
only independent claim of the four- describes, in relevant part ('872 Patent, Dkt. No. 1, Ex. A at
26):
A fastening device for supporting a roller window shade assembly comprising:
a bracket configured to be carried by a support surface;
a side included in the bracket configured to engage the support surface so that
the bracket extends away from the support surface to carry a roller window
shade assembly;
a passage included in the bracket configured to receiving an electrical wire
extending from the support surface through the bracket to a motor carried by
the roller window shade assembly; and,
wherein the bracket is configured to obscure the electrical wire when the
bracket is coupled to the support surface and supports the window shade
assembly . .. .
On January 15, 2021 , Lutron filed an answer and countercomplaint against GeigTech,
asserting twelve affirmative defenses and four counterclaims. Among the defenses and
counterclaims are Lutron ' s assertion that the ' 872 Patent is unenforceable on the ground of
inequitable conduct. This time, the inequitable conduct included GeigTech ' s alleged failure to
nam e an inventor of the ' 872 Patent in the application. The omitted inventor was an architect
named C. Matthew Taylor, who had worked with Geiger on the construction project for which the
"sleek" shade mounting assembly was first devised back in 2010. In a sworn statement, Taylor
declared that he, not Geiger, had the idea for, and created the sketches of, the brackets claimed in
the ' 872 Patent. (Deel. of C. Matthew Taylor, Dkt. No. 40, Ex. 1).
The court denied GeigTech ' s motion for a preliminary injunction predicated on the ' 872
Patent and to strike Lutron's affirmative defenses relating to inequitable conduct. (Dkt. No. 141).
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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 11 of 23

i.

-

Proceedings Before the PTAB
Lutron commenced two proceedings before the PTAB seeking to have the '717 Patent

stricken on a variety of grounds. It failed in one but succeeded in invalidating several of the patent's
claims in the other.
In the first proceeding (PGR 2020-00012), Lutron sought a Post Grant Review (PGR) of
Claims 1-6 and 8-15 of the ' 717 Patent as anticipated by the Colson application (WO 2013/052084
A 1, published April 11 , 2013) - and, as to claims 6 and 11 , by the Fraczek patent (U.S. Patent No.
6,817,402 Bl , issued Nov. 16, 2004). These sources disclosed architectural opening coverings
(Colson) and a universal bracketing and cap system for multiple cassette roller shades (Fraczek).
Lutron challenged the claims as both anticipated (35 U.S.C. § 102) and as obvious (35 U.S.C. §
103).
Per PTAB procedures, a petitioner like Lutron must make a preliminary showing that it is
likely to succeed in invalidating at least one claim in order to obtain a full PGR hearing on the
merits of the challenge. The PTAB concluded that Lutron failed to clear this hurdle in both respects
in regard to the Colson/Fraczek challenge. With respect to anticipation/novelty, Lutron failed to
convince the PT AB that, as to at least one of the challenged claims, a single prior art reference
(Colson) likely set forth "each and every element .... either expressly or inherently described .... "
in the challenged claims. Verdegaal Bros. Inc. v. Union Oil Co., 814 F. 2d 628, 631 (Fed. Cir.
1987); Finisar Corp. v. DirectTV Group, Inc ., 523 F. 3d 1323, 1334 (Fed. Cir. 2008). With respect
to obviousness, Lutron failed to convince the PTAB that either Colson or Fraczek likely rendered
the challenged claims unpatentable. KSR Int 'l Co. v. Teleflex, 550 U.S. 398, 406 (2007). As a
result, the PTAB denied Lutron ' s request for a full hearing on this petition and dismissed it. I
expect that this court will ultimately be required to address the same arguments in these lawsuits.

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 12 of 23

However, the PTAB held a full hearing on Lutron' s second PRG (2020/00013) and
sustained a number of its arguments, though not all of them.
In 2020/00013 , Lutron challenged the patentability of claims 1-3 , 7-12 and 15-18 of the
' 717 Patent. The PTAB concluded that Lutron had satisfied its preliminary burden - that is, it
demonstrated that it was likely to succeed in establishing that at least some of the challenged claims
(specifically, claims 7 and 15-18) were unpatentable. As a result, it held a hearing as to all of
Lutron ' s claim challenges.
After hearing, the PTAB adhered to its earlier position and struck claims 8 and 15-18 as
unpatentable, while rejecting Lutron' s assertion that the other challenged claims were
unpatentable.
Lutron challenged claim 7 as being anticipated by Malausa (EP 2 357 309 Al , published
August 17, 2011) and claims 15-18 as being obvious in light ofMalausa and an earlier disclosure
by Geiger himself (Geiger, European Design Registration No. 002017376-0001 ). The other claims
were challenged for indefiniteness pursuant to 35 U.S.C. § 112.
Malausa disclosed a "wall mounting device for a head of a tubular gearmotor for awnings
and the like," and generally relates to devices for mounting or fixing a tubular gearmotor used with
awnings, blinds, curtains or similar items to a wall or a box. (2020/00013 , Decision at 4 3). The
PT AB agreed that Malausa rendered claims 7 and 15-18 unpatentable for the reasons assigned. 5
Specifically, and insofar as is relevant to these lawsuits, Malausa compelled the conclusion that
Independent Claim 15 was not patentable because it disclosed the key element of Claim 15 - an
"opening for electrical wiring" that "obscures a view of the electrical wiring. " Malausa both
disclosed an opening that was configured in such a way that electrical wiring could run through it

5

That being so, the PT AB declined to reach the issue of whether claim s 15-18 were obvious in light of Geiger.

12

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 13 of 23

and taught, or at least suggested to one skilled in the art, that the wiring should be inserted into an
inner cavity of an element, such that the wiring was housed inside the second element with the
view to the interior blocked by what we have come to know in this litigation as the mounting
device (the device that secures the bracket system to an adjacent wall). The PTAB relied in part
on the testimony of Lutron's expert, Dr. Messner, who testified without contradiction that:
... bringing the wiring through the bracket to the window shade is a simple solution that
results in an aesthetically pleasing bracket that provides power to the window shade.
Similar techniques have also been well-known for decades in brackets used to mount
other powered equipment, such as display signs or heated towel racks .
For this reason, the PTAB overturned claims 15-18 of the '717 Patent (16 through 18 being
dependent claims that depended on claim 15) as obvious and claim 7 as anticipated. The PTAB
rejected Lutron's other arguments and did not strike the rest of the challenged claims.
And so we arrive at claim construction for disputed terms used in the '717 Patent and the
'872 Patent.

LEGAL STANDARD
In interpreting disputed patent claims, the court looks first to the intrinsic evidence of
record - the patent itself, the claim language, the specification, and the prosecution history, if in
evidence. Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F. 3d 1361, 1367 (Fed. Cir. 2004).
The specification is always highly relevant to claim construction analysis. The Federal Circuit has
indicated that the specification is "the single best guide to the meaning of a disputed term,"
(Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Circ. 2005) (en bane)), and the Supreme Court
has held that claims are to be construed "in light of the specifications and both are to be read with
a view to ascertaining the invention. United States v. Adams, 383 U.S. 39, 39 (1966) .
Claim construction is a straightforward process. Markman v. Westview Instruments, Inc.,
517 U.S. 370, 372 (1996). The words of a claim are generally given their ordinary and customary

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 14 of 23

meaning. Phillips v. AWHCorp., 415 F.3d at 1313. In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art may be readily apparent even to lay judges
and claim construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words. Id. at 1314. There is a "heavy presumption that
a claim term carries its ordinary and customary meaning." CCS Fitness, Inc. v. Brunswick Corp.,
288 F. 3d 1359, 1366 (Fed. Cir. 2002).
ANALYSIS
For the most part the parties agree on the meaning of the words used in the asserted claims.
There are three disputed claim terms. Each of these terms appears in both patents in suit (the '717
Patent and the '872 Patent). They are used identically in the two patents and can be construed
identically for both lawsuits. The parties' disputed claim construction summary is attached to this
opinion as Exhibit 1; it was attached to Dkt. No. 150 as Attachment 1.
Claim Construction

I.
i.

"A bracket configured to be coupled to a support surface"
I reject out of hand Lutron's effort to have me construe this claim as limited to fit the

preferred embodiment of the ' 821 Patent (the parent patent of the two patents in suit). This
litigation was, in its earliest days, about a shade mounting system using a bracket that was
configured to be secured to a mounting plate. But insofar as this is a patent suit, it is no longer
about a shade mounting system using a bracket that is configured to be secured to a mounting
plate. We have left that issue far behind us. Now the patent case is about a system for mounting a
shade that incorporates a bracket with a feature that hides electrical wiring from view. The
narrower claims relating to the system that incorporated a mounting plate, which appear in the
' 821 Patent, have been withdrawn from litigation. The original preferred embodiment is relevant

14

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 15 of 23

only insofar as the Lutron Palladiom shade system is alleged to infringe on GeigTech's trade dress,
as shown in that particular embodiment.
There is nothing about the disputed claim term as used in the '717 or the '872 Patents- the
patents in suit in these lawsuits - that limits the claimed bracket to a bracket that is coupled to a
mounting plate, which in tum is coupled (attached) to a support surface (i.e., to the wall). Using a
mounting plate is, of course, one way to couple a bracket to a support surface; and as we learned
in connection with the '821 patent, it solves the aesthetic problem that the patentee sought to
eliminate - hiding the ugly parts of the mounting system (such as the wiring), so as to achieve a
sleek look that is favored by interior decorators and their high-end clientele. But use of a mounting
plate is not the only way that a bracket can be coupled to a support surface; and the language of
the claim does not limit in any way the means that can be used to accomplish the coupling. What
is claimed in this language is not a particular type of mounting system, but a particular type of

bracket - a bracket configured so that it (the bracket) can be coupled (attached) to a support surface
(generally, in the case of window shades, to a wall, though there is no such limitation in the claim
language) . Is that a different and broader claim than was asserted in the parent ' 821 Patent? Yes
indeed. Does that mean the claim language must be limited to that used in the parent patent, as
Lutron wishes the court to do? Certainly not.
I also reject Lutron's suggestion that, by ruling that claim language should be given its
plain and ordinary meaning, this (or any) court is somehow dodging its obligation to engage in
construction. In this particular case, the claim language requires no special interpretation; it is
easily understood and speaks for itself. In so concluding, the court is in fact engaging in claim
construction. The words used have no particular technical meaning, and I agree with GeigTech

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 16 of 23

that the jury will understand the plain English claim language perfectly without any further
"redefinition" by the court.

''A [side/first surface] configured to bear against the support surface [such that the

ii.

bracket extends away from the support surface and is adjacent to an end of the roller
window shade assembly]" (the '717 Patent)
"A side included in the bracket configured to engage the support surface so that the
bracket extends away from the support surface to carry a roller window shade
assembly" (the '872 Patent)
Despite the slight variation in terminology, these are essentially identical terms in the two
patents in suit.
GeigTech again argues that the plain meaning of the words suffices, and that all these
phrases say is that the bracket has to be configured so that it can be attached in some way to the
support surface (Docket No. 151 at page 4). GeigTech notes that the words do not require that the
brackets be attached to the support surface in any particular way or by any identified fastening
method.
As with the preceding claim language, Lutron argues that the bracket must be configured
to fit over and secured to a separate mounting plate, which is in turn to be affixed to a support
surface - again, trying to limit the claim language to the preferred embodiment of the '821 Patent,
the parent patent that is in suit only because Lutron's libel claim is in suit.
Again, I side with GeigTech. If the patentee had wanted to limit his invention to a bracket
mounting system that used a separate mounting plate, he could have used words to make his
intention clear. He did use such words in the claims of the '821 patent. The '717 and '872 Patents
are directed more broadly than was the '821 Patent. The fact that several of the embodiments
described in the specification refer to the original invention, with its two-piece invisible mount
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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 17 of 23

fastening device comprising a mounting plate and a bracket, does not mean that the claim language
should be so limited. It is improper to limit claim language as limited to a disclosed embodiment
- even if the patent describes only a single embodiment- absent the patentee's clear expression of
intent to limit the scope of the claims. N. Star Innovations, Inc. , v. Hirshfeld, 2021 WL 5121180,
at *5 (Fed. Cir. Nov. 4, 2021).
No such clear intent is expressed in the language of either patent in suit.

iii.

"configured to obscure the electrical wiring"
In every asserted claim in both patents in suit, the disputed phrase "configured to obscure

the electrical wiring" appears in the following sentence: "Wherein the bracket is configured to

obscure the electrical wiring when the bracket is coupled to the support surface and supports the
window shade assembly." (Emphasis added).
This court has had occasion to construe the word "obscure[ d]" before - specifically, in
connection with the ' 821 Patent, the parent patent. In that patent, a window shade "obscured" a
fastener. In resolving the parties' dispute over the meaning of that term, I announced that there
was no ambiguity about the meaning of the word "obscured:" when something is obscured, it
cannot be seen because it is hidden or concealed by something else. 6 I have not changed my mind
about the meaning of the word "obscure" as used in any of these three related patents. The idea
behind all three patents is to make window shade installations more aesthetically pleasing by
hiding the " ugly," unsightly parts that are used to mount or to power the window shade. The
"Background" section of the patents - identically worded in all three patents - makes that perfectly
clear.

6

The precise phrase under construction in the ' 821 Patent was " the fastener is obscured by the window shade," and
the court's construction was "you can't see the fastener because it is hidden by the window shade." (First Claim
Construction Decision , Docket No. 107).

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 18 of 23

In the PT AB proceeding, the PTAB was asked to construe the phrase "configured to
obscure the electrical wiring" as used in challenged (and now stricken) claims 15-18. At Lutron's
urging, the PTAB construed the phrase "configured to obscure the electrical wiring" to mean
"wherein the bracket hides or blocks the electrical wiring/ram any single viewpoint." (2022-00013
Decision at 19). GeigTech took the position before the PTAB that Lutron ' s suggestion should be
rejected because, inter alia, this court had already construed the analogous (and substantively
identical) phrase in the ' 821 Patent without any suggestion that the electrical wiring could be
blocked from one viewpoint but seen from another. Indeed, GeigTech urged the PTAB simply to
adopt my construction of the analogous ' 821 language, and to conclude that this disputed claim
term means "you can't see the electrical wiring because it is hidden by the bracket." The PTAB
nonetheless concluded that requiring the wiring to be obscured from every viewpoint was not
compelled by the claim language.
Lutron now urges this court to adopt the PTAB ' s reasoning and to construe the phrase
"configured to obscure the electrical wiring" in the same manner the PTAB did. GeigTech asks
the court to adhere to its previous construction of the term .
The critically important thing to note in resolving this dispute - and the absolutely
dispositive fact - is that the PTAB ' s reasoning was a function of specific language used in
Independent Claim 15 of the ' 717 Patent and its dependent claims - language that differs in a
critical respect from the language the court is here construing. In the now-disallowed claims
(Claims 15, 16, 17 and 18 of the '717 Patent), the patentee claimed the following: "Wherein the
mounting bracket obscures a view of the electrical wiring ." (Emphasis added) By inserting the
words "a view" into the phrase "the mounting bracket obscures the electrical wiring," the patentee
plainly indicated that the mounting bracket did not need to obscure the electrical wiring from every

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 19 of 23

-

view - only from "a" view. I would likely have reached the same result as the PTAB had I been
asked to construe the language of Claims 15, 16, 17 and 18.
But those critically important words - "a view" - do not appear in the claims in suit.
In Claims 1, 4, 6, 8, 13 and 14 of the ' 717 patent and Claim 1 of the '872 Patent-the claims here
in issue - the patentee uses the following language: "a bracket configured to obscure the electrical
wiring when the bracket is coupled to the support surface." There is absolutely no mention of the
bracket's obscuring just "a view" of the wiring in the claims that remain in suit. That makes a
very big difference in how one construes the phrase "configured to obscure the electrical wiring."
Without the limitation conferred by the patentee' s use of the phrase "a view" in the now-disallowed
claims, the plain meaning of the phrase "configured to obscure the electrical wiring" is exactly
what I said was meant by similar language "is obscured by the window shade" in the '821 Patent
- "you can't see the wiring because the bracket is configured to hide it." Period. End of story.
"Obscures" is a plain English word, not a technical term; one need not consult a dictionary,
let alone any other source, to know that it means "hides" or "conceals." Something is "obscured"
if it is hidden or concealed. And something that is hidden or concealed cannot be seen. Wiring that
can be seen - from any view - is not "obscured" by the bracket. It is perhaps "partly obscured,"
but it is not "obscured." Therefore, if the wiring can be seen from certain vantage points, it does
not fall within the claim language used in Claims 1, 4, 6, 8, 13 and 14 of the ' 717 Patent and Claim
1 of the ' 872 Patent. 7
I remind the parties that a court engaged in claim construction is not supposed to redefine
words; " ... .we do not redefine words. Only the patentee can do that." Thorner v. Sony Computer

7
To the extent that the PTAB believed its construction was consistent with or identical to this court's claim
construction of the phrase used in the ' 821 Patent, it was wrong. However, because the PT AB was construing claim s
that included a Iimitation - " a view" - that does not appear in the ' 821 Patent, its construction cannot be said to be
inconsistent with this court' s ruling in the now-discontinued lawsuit predicated on the parent patent.

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 20 of 23

Entertainment Am LLC, 669 F. 3d 1362 1366 (Fed. Cir. 2012). The patentee chose to redefine more precisely, to limit - the meaning of "obscures" only in connection with Claim 15 and its
dependent claims - the claims where the bracket obscures the wiring only from "a view" - in the
'717 Patent. But the patentee did not elect to place such a limitation on Claims 1, 4, 6, 8, 13 or 14
in the '717 Patent, or on Claim 1 in the '872 Patent. I will not infer that his decision to use the
phrase "a view" in some claims but not others was unintentional; I will not extend the PTAB' s
reasoning to claims where the patentee did not use the phrase "obscures a view."
Not only is the court' s construction of this phrase consistent with the plain English meaning
of the claim language itself; it is consistent with the language in the parent application - parroted
in each succeeding application - to the effect that the purpose of the invention was to hide bulky
and ugly mechanical features so as to achieve a sleek, decorative, aesthetically pleasing look that
window shade mounting systems had theretofore lacked. You don't need to be a POSITA in
mechanical engineering to understand that visible wires detract from aesthetically pleasing decor.
They destroy the sleek look that high end decorators and their suppliers (like Mr. Geiger) want to
achieve for their clients. That is why decorators are always looking for ways to hide things like
wires. The whole point of the Geiger shade mounting invention[ s] was to hide the ugly features -

i.e., things like wires. Mr. Geiger made that clear every time he filed a new patent application.
There was literally no other purpose for his inventions.
No customer looking for a sleek and aesthetically pleasing window shade assembly would
be content with one that hid the wires only from some angles or some viewpoints, while they
remained visible from others. The very idea is counterintuitive - as well as inconsistent with
solving the problem that Mr. Geiger was trying to solve. Reading the claim language in a manner
consistent with the Supreme Court's admonition in United States v. Adams - where, as noted

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 21 of 23

above, the Court said that it was fundamental to construe claims "with a view to ascertaining the
invention" - it is simply not possible to construe this particular language, as extending to a bracket
that is not configured to hide the ugly wires from view - unless, of course, the language is
modified, as it was in the disallowed claims that were construed by the PTAB. Here there is no
such modification.
Finally, complete concealment is embodied in the description of the invention and in every
single figure illustrating the detailed description - most especially in Figure 21, which illustrates
the bracket that is configured to accept the electrical wire and to obscure it when attached to the
support (wall). I have noted previously that claim language cannot be limited to the preferred
embodiment, even if only a single embodiment is disclosed. But where every disclosed
embodiment shows a bracket containing an interior passage that would fully obscure any electrical
wires run therethrough - and where nothing in the disputed claim language in the patents in suit,
or in anything else in the patents that is not directed to the disallowed "obscures a view" claims,
suggests any other meaning for the word "obscures" -- adding the words "from at least one
viewpoint" to the claim language goes well beyond anything claimed by the inventor in the claims
here under construction.
I thus adhere to the construction I put on "obscure/obscures/obscured" in connection with
the '821 Patent. The jury will be told that the phrase means "you can't see the wires because the
bracket is configured to hide them."
This constitutes the decision and order of the Court. It is a written opinion.

Dated: May 5, 2022

U.S .D.J.

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 22 of 23

BY ECF TO ALL COUNSEL

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Case 1:18-cv-05290-CM Document 163 Filed 05/05/22 Page 23 of 23
Case 1:18-cv-05290-CM Document 150 Filed 12/09/21 Page 3 of 3

ATTACHMENT 1
U.S. Patent No. 10,294,717
Claim Term
" A bracket configured to be
coupled to a support surface"
Claims l , 4, 6, 8, 13, and 14

"a [side]/ [first surface]
configured to bear against the
support surface [such that the
bracket extends away from the
support surface and is adjacent
an end of the roller window
shade assembly]"

GeigTech
No construction necessary
and/or plain and ordinary
meaning.

Lutron
A bracket configured to fit
over and be secured to a
separate mounting plate, which
is in turn affixed to a support
surface.

No construction necessary
and/or plain and ordinary
meaning

a [side/first surface] configured
to abut the support surface,
where the rest of the bracket
extends away from the support
surface to be adjacent an end of
the roller window shade
assembly.

No construction necessary
and/or plain and ordinary
meaning

able to obscure the electrical
wiring from at least one
viewpoint.

Claims 1, 4, 6, 8, 13, and 14

" configured to obscure the
electrical wiring"
Claims 1, 4, 6, 8, 13, and 14

U.S. Patent No. 10,822,872
Claim Term
"a bracket configured to be
carried by a support surface"
Claim l

"a side included in the bracket
configured to engage the
support surface so that the
bracket extends away from the
support surface to carry a roller
window shade assembly"

Gei2Tech
No construction necessary
and/or plain and ordinary
meaning.

L utron
A bracket configured to fit
over and be secured to a
separate mounting plate, which
is in turn affixed to a support
surface.

No construction necessary
and/or plain and ordinary
meaning

a side of the bracket configured
to abut the support surface,
where the rest of the bracket
extends away from the support
surface to carry the roller
window shade assembly.

No construction necessary
and/or plain and ordinary
meaning

able to obscure the electrical
wire from at least one
viewpoint.

Claim 1
"configured to obscure the
electrical wire"
Claim l