NY Patent Decisions Blog

Judge McMahon Sua Sponte Stays Case Until End of Year: “Enough really is enough.”

On August 12, 2021, United States District Court Colleen McMahon (S.D.N.Y.) denied Plaintiff GeigTech East Bay LLC’s (“GeigTech”) motions for a preliminary injunction and to dismiss Defendant Lutron Electronics Co., Inc.’s (“Lutron”) counterclaims, and sua sponte stayed the case until the end of the year pending post grant review of a related patent.

GeigTech asserted that Lutron infringed U.S. Patent No. 10,822,872 (“the ’872 patent”) and sought a preliminary injunction.  The ’872 patent is a continuation of an earlier patent, which had been asserted against Lutron in a separate lawsuit brought by GeigTech.  That lawsuit was stayed pending a decision of the Patent Trial and Appeal Board (“PTAB”) in post grant review of that patent.

Judge McMahon first denied GeigTech’s request for a preliminary injunction.  Judge McMahon credited Lutron’s invalidity and inequitable conduct arguments, noting that GeigTech has failed to rebut Lutron’s “substantial questions of the validity of the ’872 patent,” and therefore failed to demonstrate a likelihood of success on the merits.

Judge McMahon then denied, without prejudice, GeigTech’s motion to dismiss, instead sua sponte staying the case until the end of the year.  Judge McMahon noted that Lutron raised substantially the same counterclaims in the earlier case, which GeigTech has moved to dismiss on similar grounds.  Judge McMahon reasoned that “given the identity in the arguments made by the parties regarding Lutron’s argument of unenforceability, any decision on the merits of these arguments will likely be applicable to both [cases].  Thus, it would be unwise to issue a decision in one case before the other.” 

Judge McMahon continued: “I confess that I am tired of waiting on the PTAB, and am uninterested in having more and more lawsuits filed, and more and more motions made.”  So, Judge McMahon sua sponte consolidated this case with the earlier one, and imposed a stay until the end of the calendar year.  The court concluded: “If the PTAB has not ruled by December 31, we will simply go ahead with litigation over the merits.  Enough really is enough.”  

Finally, although Judge McMahon denied GeigTech’s motion to dismiss without prejudice, she cautioned that “the odds that the Court is going to grant the motion to dismiss any of the affirmative defenses are slim” and that “[i]f I were GeigTech, I would not waste my client’s money on such a motion.”

The case is GeigTech East Bay LLC v. Lutron Electronics Co., Inc.., No. 20-cv-10195 (CM) (S.D.N.Y.).