Judge McMahon Finds That No Construction Is Necessary: “Period. End of Story”
On May 5, 2022, United States District Court Colleen McMahon (S.D.N.Y.) issued a claim construction decision in a long-running set of patent and trade dress infringement and defamation actions between Plaintiff GeigTech East Bay LLC’s (“GeigTech”) and Defendant Lutron Electronics Co., Inc.’s (“Lutron”) concerning U.S. Patent Nos. 10,294,717 (“the ’717 patent”) and 10,822,872 (“the ’872 patent”), each of which is directed to wall brackets for use with motorized shade systems to conceal the system’s wiring.
As we’ve covered previously, Judge McMahon denied GeigTech’s motion for a preliminary injunction in 2018, and in 2021, denied GiegTech’s motion to dismiss and, instead, stayed one of the cases sua sponte pending a decision of the Patent Trial and Appeal Board (“PTAB”) regarding the validity of the ’717 patent. Since that decision, the PTAB found five claims of the ’717 patent invalid, but rejected the remainder of Lutron’s challenges.
The parties presented three claim construction disputes, each of which appears in each of the two patents.
The first concerned the term “A bracket configured to be coupled to a support surface.” Lutron proposed a construction that required that the bracket be “configured to fit over and be secured to a separate mounting plate,” while GeigTech argued that no construction was necessary. Judge McMahon agreed with GeigTech, rejecting “out of hand Lutron’s effort to have me construe this claim as limited to fit the preferred embodiment.” Rather, “the claim language requires no special interpretation; it is easily understood and speaks for itself,” concluding that “the jury will understand the plain English claim language perfectly without any further ‘redefinition’ by the court.”
The second dispute concerned the claim language “A side included in the bracket configured to engage the support surface so that the bracket extends from the support surface to carry a roller window shade assembly.” Like the first term, Judge McMahon rejected Lutron’s narrowing construction based on a preferred embodiment, and adopted GeigTech’s position that the plain and ordinary meaning should govern.
Finally, the parties disputed the construction of “configured to obscure the electrical wiring.” Judge McMahon had previously construed the word “obscured” in connection with the parent patent of the two patents-in-suit, finding that when something is “obscured, it cannot be seen because it is hidden or concealed by something else.”
In the PTAB proceeding for the ’717 patent, the PTAB construed the term as meaning “wherein the bracket hides or blocks the electrical wiring from any single viewpoint.” Judge McMahon rejected Lutron’s invitation to adopt this construction, noting that claim 15 of the ’717 patent recites “wherein the mounting bracket obscures a view of the electrical wiring.” Judge McMahon notes that she “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.”
However, Judge McMahon noted that “those critically important words – ‘a view’ – do not appear” in the remaining claims asserted in the litigation. Rather, those claims recite “a bracket configured to obscure the electrical wiring when the bracket is coupled to the support surface.”
For that reason, Judge McMahon explained, “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 [parent patent] – ‘you can’t see the wiring because the bracket is configured to hide it.’ Period. End of story.”
Not only was this consistent with the plain meaning of the word “obscured” and with every disclosed embodiment, but Judge McMahon also found that this construction is consistent with the stated purpose of the invention: “You don’t need to be a POSITA in mechanical engineering to understand that visible wires detract from aesthetically pleasing décor. . . . There was literally no other purpose for [the invention].”
The cases are GeigTech East Bay LLC v. Lutron Electronics Co., Inc.., Nos. 18-cv-5290 (CM) (S.D.N.Y.), 19-cv-4693 (CM) (S.D.N.Y.), and 20-cv-10195 (CM) (S.D.N.Y.).