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

Filing 438

FINDINGS OF FACT AND CONCLUSIONS OF LAW. The court, for its findings of fact and certain conclusions of law regarding certain issues pertaining to Lutron's inequitable defenses. I adopt as the guiding principles of law to be used in resolvin g this issue the following conclusions of law proposed by the parties: Lutron's Proposed Conclusions of Law: 1, 2, 3, 4. GeigTech's Proposed Conclusions of Law: 58, 59, 60, 61, 62, 63,64. I make the following findings of fact concerning in ventorship after trial: Lutron has failed to persuade me by clear and convincing evidence that Matthew Taylor was a co-inventor of the fastening device system in suit. In fact, Lutron has failed to persuade me of that by a preponderance of the evi dence. Therefore, there was no failure to disclose the identity of any co-inventor to the PTO, and no inequitable conduct in this regard. The second alleged item of inequitable conduct is the assertion of the validity of the '821 patent when it was invalid for violating the rule that a patent cannot be obtained on an invention that was offered commercially more than one year prior to the application for the patent. This presents a question of law for the court to decide. I can resolve any issues of fact myself and do not need the jury's assistance in that regard. Again, there really are few if any disputed issues of fact; what needs to be resolved is how to interpret the facts. I adopt the following conclusions of law to guide my evaluation of the evidence as further set forth in this Order. In sum, while I find by clear and convincing evidence that Mr. Geiger violated the on-sale bar, I cannot and do not find by clear and convincing evidence that he knew that he had done so and then made a deliberate decision not to advise the PTO of that fact during the prosecution of the '821 patent. That being so, I conclude that the '717 patent is not unenforceable on an "infectious unenforceability&q uot; theory. Whether Lutron infringed the '717 patent will be tried to the jury. The jury will also try the non-equitable issues relating to the validity of that patent. If there are any other equitable issues relating to the enforceability of the '717 patent, the court will address them after the jury reaches its verdict. This constitutes the decision of the court after bench trial. (Signed by Judge Colleen McMahon on 2/23/24) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (yv) BY ECF TO ALL COUNSEL.