Judge McMahon Denies Unsubstantiated Bid for Preliminary Injunction
On September 5, 2018, Chief United States District Judge Colleen McMahon (S.D.N.Y.) issued a decision denying Plaintiff GeigTech's motion for preliminary injunction in its patent and trade dress infringement suit against Defendant Lutron. GeigTech's motion for expedited discovery was granted-in-part.
GeigTech's suit alleges that a bracket used in one of Lutron's roller window shade products infringes its U.S. Patent No. 9,237,821. In opposing GeigTech's bid for a preliminary injunction, Lutron argued that its brackets do not include key limitations under any reasonable claim construction and that GeigTech offered only attorney argument in support of its infringement allegations.
Judge McMahon sided with Lutron, concluding that GiegTech, by failing to offer any expert testimony, had not shown that Lutron's noninfringement defense "lacks substantial merit," and therefore that GeigTech had not demonstrated a likelihood of success on the merits of its patent claim. Judge McMahon also found that Lutron had raised substantial unrebutted questions about both the validity and enforceability of the '821 patent.
GeigTech's claim of trade dress infringement met a similar fate. A plaintiff seeking to protect an unregistered product design trade dress under the Lanham Act, as explained by the Court, must demonstrate that: 1) the design is either inherently distinctive or has achieved secondary meaning; 2) the design is non-functional; and 3) there is a likelihood of confusion between the plaintiff's product and the defendant's competing product.
Judge McMahon concluded that GeigTech had failed to demonstrate any of the above. The Court further admonished GeigTech for failing to provide any evidence of likelihood of confusion and for failing to provide any meaningful evidence to show that GeigTech's bracket design had achieved "secondary meaning." The Court also concluded that GeigTech had failed to show its trade dress was non-functional, noting that competitors had similar brackets, and that, in the Second Circuit, "a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors' ability to compete in the relevant market."
GeigTech fared better with its motion for expedited discovery, at least with respect to its patent infringement claim. Judge McMahon accepted GeigTech's contention that it was in danger of losing market share to its only competitor, Lutron, should discovery drag on. So the Court agreed to put the case on a "rocket docket." The Court, however, stayed discovery on GeigTech's trade dress claim until Lutron's anticipated motion to dismiss had been decided.
Case: GeigTech East Bay LLC v. Lutron Elecs. Co., 18-cv-5290(CM), Dkt. No. 57 (S.D.N.Y. September 5, 2018). The asserted patent is U.S. Patent No. 9,237,821.