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

Filing 364

DECISION ON MOTIONS IN LIMINE granting (310) Motion in Limine; granting in part and denying in part (311) Motion in Limine; granting in part and denying in part (313) Motion in Limine; terminating (314) Motion in Limine; granting (316) Motion in Limine; denying without prejudice (317) Motion in Limine; terminating (319) Motion in Limine; denying (320) Motion in Limine; granting (322) Motion in Limine; denying (325) Motion in Limine; terminating (327) Motion in Limine; denying (329) M otion in Limine in case 1:18-cv-05290-CM. The court, for its rulings on the parties' motions in limine: Motion #1 (Dkt #320): GeigTech moves in limine to preclude Lutron from introducing evidence or argument comparing the accused devices to the preferred embodiments, the specification, or any non-accused product or method for the purposes of making its noninfringement arguments. GeigTech believes that Lutron intends to do this in order to get around the court's claim constructi on decisions. So I am not going to forbid Lutron from showing GeigTech's product to the jury. Indeed, ifGeigTech fails to show its product to the jury, it risks having its trade dress/Lanham Act claims dismissed at the close of its case. Thi s is a matter that is appropriately handled by the court in its jury instructions. The motion is, therefore, denied. Motion #2 (Dkt #323): GeigTech moves in limine to bar Lutron from arguing that it relied on the advice of counsel in connection with the patent infringement case, specifically insofar as it relates to the '821 patent, the parent patent to the '717 patent. Apparently two Lutron witnesses testified that they relied on the opinion of counsel (in house counsel at Lut ron) on this subject. GeigTech's motion is, therefore, granted. However, if GeigTech itself opens the door by asking questions like the questions it asked at deposition, I will not stop the witness from giving a true and complete answer. M otion #3 (Dkt. #326): GeigTech moves in limine for an order precluding Lutron from presenting evidence before the jury that relates to Lutron's equitable defenses, including specifically inequitable conduct. GeigTech argues that these defense s are for the court, not the jmy, to evaluate, so presenting evidence about them before the jury would confuse and mislead the jurors in violation of Fed. R. Ev. 402 and 403. The motion is DENIED. I agree with Lutron that the solution is to try any issues that overlap between equitable defenses and jury issues to the jury, and to use the jury's findings in an advisory capacity only when ruling on matters that are remitted to the court. It is up to the parties to identify precisely what th ose issues are and to identify any and all evidence that either side intends to introduce on those questions. They parties have ten business days to give me a list of issues and a compendium of ALL the relevant evidence (I mean give me the evidence, not simply citations) - in an issue by issue format (if some evidence is relevant to multiple issues, then be sure to cite it individually on each issue to which it relates). Then the parties have five business days to provide me with objections, if any, to the use of a particular identified piece of evidence on a particular question. I particularly need to be able to identify whether any piece of evidence is relevant only to an equitable defense and not to an issue that goes to the jury. If there is little or no such evidence (Lutron insists that there is none, and GeigTech has not specifically identified any) the trial will be much simplified. The parties should understand that ifthere is any evidence that relates solely to an equi table defense that is triable by the court and does not overlap with an issue that gets tried to the jury, I will be hearing that evidence, together with argument on the issues that the court must decide, while the jury is deliberating. Motion #4 (Dkt.#328): GeigTech moves in limine for an order precluding Lutron from presenting evidence or argument that its infringement theories read on or encompass prior art. Lutron responds that it has no intention of arguing prior art to rebut GeigT ech's infringement claim, but insists that it must be allowed to argue prior art in order to convince the jury that the patent is invalid. Lutron is correct. So I cannot and will not preclude Lutron from arguing, as it apparently intends to d o, that the '717 patent is invalid because it was anticipated by the prior art -including specifically any prior art that relates to the concealment of wiring in the manner in which Lutron's product conceals the wiring. And while Lutron cannot argue that Palladiom does not literally infringe the patent merely because it is practicing the prior art, we shall see whether GeigTech has the "exceptional linguistic dexterity" to argue that any product of Lutron's that is "closely aligned" with the prior art literally infringes a valid patent. GeigTech can rest assured that Lutron will not be permitted to argue "practicing the prior art" as a defense to literal infringement. Motion #5 (Dkt. #3 30): Finally, GeigTech moves in limine to preclude Lutron from introducing evidence of its own patents relating to the Palladiom shade. The motion is DENIED. Lutron may introduce evidence of its own research and development, including patent appli cations, for any relevant purpose. To the extent a limiting instruction is required, GeigTech may fashion one for the court's consideration. This constitutes the decision and order of the court. It is a written decision. The Clerk is directed to remove the following motions from the court's list of open motions: those at Dockets# 310, 311, 313, 314, 316, 317, 319, 320, 323, 326, 328 and 330. (Signed by Judge Colleen McMahon on 1/5/24) BY ECF TO ALL COUNSEL. Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (yv)