Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 1 of 23
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`GEIGTECH EAST BAY LLC,
`
` Plaintiff,
`
` v.
`
`LUTRON ELECTRONICS CO., INC.
`
` Defendant.
`
`LUTRON ELECTRONICS CO., INC.
`
` ECF CASE
`
` No. 1:18-cv-05290-CM
`
` Counterclaim-Plaintiff,
`
` v.
`
`GEIGTECH EAST BAY LLC and JAMES
`GEIGER,
`
` Counterclaim-Defendants.
`
`COUNTERCLAIM-PLAINTIFF LUTRON’S
`OPENING CLAIM CONSTRUCTION BRIEF
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 2 of 23
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ........................................................................................................ ii
`
`INTRODUCTION ........................................................................................................................ 1
`
`THE LAW OF CLAIM CONSTRUCTION ................................................................................. 4
`
`ARGUMENT ................................................................................................................................ 5
`
`“mounting brackets” ......................................................................................................... 5
`
`“recessed apertures therethrough constructed and arranged to receive a
`fastener” ............................................................................................................................ 7
`
`“the fastener is obscured by the window tube shade” ....................................................... 9
`
`The Law of Indefiniteness ....................................................................................9
`
`The Uncertainty of the Claim Term ....................................................................10
`
`“key” ............................................................................................................................... 14
`
`“projection” ..................................................................................................................... 16
`
`“the projection…is configured as a key to engage a tube shade clutch or a
`tube shade motor” ........................................................................................................... 16
`
`“pin” ................................................................................................................................ 17
`
`“the projection…is configured to receive a tube shade pin or a motorized
`tube shade pin” ................................................................................................................ 19
`
`i
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`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 3 of 23
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314
`(Fed. Cir. 2016) ............................................................................................................................. 5
`
`Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361 (Fed. Cir. 2004)
`....................................................................................................................................................... 4
`
`Merck & Co. Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005) ........................... 13
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2010 (2014) ............................................. 10
`
`NobelBiz, Inc. v. Glob. Connect, L.L.C., 701 F. App’x 994 (Fed. Cir. 2017) .............................. 5
`
`O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d
`1351 (Fed. Cir. 2008) .................................................................................................................... 5
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................................................. 5
`
`Statute:
`
`35 U.S.C. § 112(b) ...................................................................................................................... 10
`
`ii
`
`

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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 4 of 23
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`In accordance with the Scheduling Order of June 17, 2019 (Dkt. 93) and section III(C) of
`
`this Court’s Individual Practices and Procedures, Counterclaim-Plaintiff Lutron Electronics Co.,
`
`Inc. files this opening claim construction brief concerning U.S. Patent No. 9,237,821 (Dkt. 1-1),
`
`in relation to Lutron’s defamation claim against the Counterclaim-Defendants (collectively, “J
`
`Geiger”), along with the accompanying Declaration of Scott W. Breedlove and its exhibits.1
`
`INTRODUCTION
`
`Background on the Parties’ Contentions—As detailed in Lutron’s counterclaim for
`
`defamation, J Geiger knew from the beginning that Lutron did not infringe the ’821 patent. Yet
`
`GeigTech sued Lutron, at great cost to Lutron, for patent infringement in June 2018 as a pretext
`
`for issuing the J Geiger June 19, 2018 press release in which J Geiger published the false charges
`
`(and related false statements) to the world.
`
`At the time, J Geiger did not believe, and had no reasonable basis to believe, that the ’821
`
`patent was valid, enforceable, or infringed. Indeed, Lutron will demonstrate that the patent was
`
`not any of those things. From Lutron’s preliminary injunction response (Dkt. 44), the Court is
`
`generally familiar with some of the contentions and evidence already. For example, GeigTech
`
`accused the same Lutron bracket of infringing both claim 9 and claim 15, and the very same so-
`
`called “projection” on that bracket of being at once “configured as a key” and “configured to
`
`receive a tube shade pin,” though GeigTech declined at that time even to propose constructions for
`
`these terms. But still more has been discovered in the last 45 days that Lutron believes the Court
`
`should know by way of background.
`
`1 Lutron understands that, pursuant to this Court’s practices, this brief should be limited to
`the intrinsic evidence. Should the Court require extrinsic evidence as to one or more terms,
`however, Lutron requests the opportunity to supplement the record with such evidence.
`
`1
`
`

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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 5 of 23
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`Most prominently, J Geiger concealed more prior art during prosecution of the ’821 patent
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`than Lutron had previously suspected. The Court will recall the Somfy prior art that J Geiger had
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`worked with during development of their brackets but failed to disclose to the Patent Office, as
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`Lutron highlighted in the injunction briefing. Unbeknownst to Lutron at the time of that briefing,
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`however, there was yet more pertinent, concealed prior art with which Mr. Geiger was even more
`
`intimately familiar. The concealed art was branded with Geiger’s previous company, HeAVi LLC.
`
`It turns out that James Geiger himself was holding a document (the “HeAVi 2010 brochure") with
`
`a 2010 copyright date—i.e., well before the ’821 patent’s critical date—that pictured the same
`
`brackets he later used as figures in the ’821 patent (Figures 7A and 6A) to embody the very claims
`
`(claims 9 and 15) that GeigTech wrongly asserted against Lutron.
`
`Needless to say, Lutron contends that no reasonable Patent Examiner would have allowed
`
`the claims if J Geiger had disclosed the 2010 brochure and that Geiger and GeigTech breached
`
`their duty of candor with intent to deceive, such that the claims are unenforceable for this reason,
`
`in addition to the nondisclosure of the Somfy art. Below are images from the undisclosed, prior-
`
`art HeAVi 2010 brochure, side by side with the corresponding figures from the ’821 patent:
`
`2
`
`

`

`Case 1:18-cv-O5290-CM Document 99 Filed 08/01/19 Page 6 of 23
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`Images from HeAVi 2010 brochure
`
`Images from ’821 patent 120161
`
`No Visible Fastoer Motor Mount
`
`FIG . 7A
`
`
`
`
`No Visible Fastner Idler
`
`Breedlove Decl., Ex. A (“Lutron’s Invalidity Chart for HeAVi 2010”) at 2.
`
`.I Geiger does not deny
`
`that the HeAVi 2010 brochure was undisclosed prior art.2
`
`2 Instead J Geiger contends, inexplicably, that “the HeAVI 2010 reference does not disclose
`each and every element as required under § 102 including failing to at least disclose the outer
`circumferences of each disk-shaped mounting bracket is visible when holding a shade tube, and a
`projection configured as a key to engage a tube shade clutch or a tube shade motor.” Breedlove
`Decl., Ex. B (“J Geiger’s Response to Invaliditnynenforceability Contentions”) at 5.
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 7 of 23
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`Terms at Issue—The claim construction issues identified in the parties’ Joint Claim
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`Construction Statement (Dkt. 95) and addressed here are not all of the claim-scope disputes that
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`the parties would have had if GeigTech had not dropped its infringement claim. Rather, to focus
`
`on what J Geiger knew or should have known, Lutron focuses in this brief only on those claim-
`
`construction issues implicated in the parties’ briefing on GeigTech’s preliminary injunction motion
`
`as to which J Geiger had no reasonable basis for its position. With this context, the terms bolded
`
`below from claims 9 and 15 of the ’821 patent are addressed in this brief:
`
`9. A fastening device system for mounting a roller window shade, comprising:
`
`two disk-shaped mounting brackets, each having one side configured to bear
`against a flat surface and one side having a projection configured to hold an end of
`a tube shade, wherein each of the mounting brackets have two recessed apertures
`therethrough constructed and arranged to receive a fastener to secure the
`mounting bracket to the flat surface;
`
`wherein, when holding a window tube shade, the outer circumferences of each disk-
`shaped mounting bracket is visible and the fastener is obscured by the window
`tube shade; and
`
`wherein the projection of at least one of the mounting brackets is configured as a
`key to engage a tube shade clutch or a tube shade motor.
`
`15. A fastening device system for mounting a roller window shade, comprising:
`
`[omitted limitations identical to those in claim 9]; and
`
`wherein the projection of at least one of the mounting brackets is configured to
`receive a tube shade pin or a motorized tube shade idler pin.
`
`THE LAW OF CLAIM CONSTRUCTION
`
` “It is well-settled that, in interpreting an asserted claim, the court should look first to the
`
`intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in
`
`evidence, the prosecution history.” Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361,
`
`1367 (Fed. Cir. 2004). “The specification is always highly relevant to the claim construction
`
`analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”
`
`4
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`

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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 8 of 23
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`Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc). The prosecution history
`
`may also show “how the inventor understood the invention and whether the inventor limited the
`
`invention in the course of prosecution, making the claim scope narrower than it would otherwise
`
`be.” Id. at 1317. Lutron’s proposed constructions adhere to these guiding principles.
`
`“When . . . parties raise an actual dispute regarding the proper scope of the[]claims, the
`
`court, not the jury, must resolve that dispute.” O2 Micro International Ltd. v. Beyond Innovation
`
`Technology Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). “A determination that a claim term ‘needs
`
`no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more
`
`than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the
`
`parties’ dispute.” O2 Micro, 521 F.3d at 1361.3
`
`ARGUMENT
`
`Claim Term
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`“mounting
`brackets”
`
`Support structures used as part of a
`mounting system
`
`No construction necessary; or,
`alternatively, plain and ordinary
`meaning.
`
`Why is this term disputed? Lutron agrees in principle that this term should have its plain
`
`and ordinary meaning. Indeed, Lutron’s proposed construction is that plain meaning. J Geiger’s
`
`litigation position in the preliminary-injunction briefing, however, creates the dispute.
`
`3 See also Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1319–
`20 (Fed. Cir. 2016) (discerning legal error where the district court, rather than resolving the
`claim-scope issues, had instructed the jury that the terms “portable” and “mobile” should be
`given their plain and ordinary meanings); NobelBiz, Inc. v. Glob. Connect, L.L.C., 701 F. App'x
`994, 997 (Fed. Cir. 2017) (discerning error where terms such as “replacement telephone number”
`and “outbound call” were not construed but were instead said to have “plain and ordinary
`meaning,” and explaining that “[t]he district court had the responsibility to determine the scope
`of the asserted claims”).
`
`5
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 9 of 23
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`Specifically, after having to admit that “J Geiger did use Somfy motors and is familiar with Somfy
`
`brackets,” J Geiger attempted to distinguish its alleged invention from the Somfy prior-art motor
`
`bracket and idler bracket that J Geiger had failed to disclose to the Patent Examiner:
`
`As an initial matter, the Somfy brackets that Lutron identifies as prior art are not
`designed to be standalone mounting brackets, but are designed to be the middle
`piece in a three piece mounting system. Geiger Reply Decl. at ¶ 17 (showing
`pictures of each piece). The Somfy motor bracket and idler bracket, depicted on
`pages 16-17 of Opposition, are fastened to separate Somfy mounting brackets that
`are attached to the wall. Id. There is then a third piece that attaches to the shade-
`motor that fits into the Somfy motor bracket. Id.
`
`Dkt. 48 (“J Geiger’s PI Reply”) at 3 (emphasis added). This argument built up to J Geiger’s
`
`conclusion: “Because of this three piece system, the accused Somfy brackets do not ‘bear against
`
`a flat surface’ (i.e., the wall) and, therefore, do not qualify as ‘mounting brackets’ under Claims 9
`
`or 15.” Id.
`
`In other words, to avoid apparent invalidity and inequitable conduct problems, J Geiger
`
`posited that “a flat surface” is limited to “the wall” (which they now concede is wrong) and that
`
`mounting brackets cannot be the claimed “mounting brackets” unless they are “standalone.” But
`
`however convenient this argument might have been for J Geiger’s PI Reply, it is unsupported by
`
`the patent specification and the claims’ plain meaning.
`
`There is nothing about the claim term “mounting brackets” that requires them to be
`
`standalone brackets. Claims 9 and 15 themselves indicate that these brackets are part of a “system
`
`for mounting” a roller window shade. The word “system” suggests there could be more than one
`
`component. Thus, Lutron’s proposed plain-meaning construction for “mounting brackets” is
`
`“support structures used as part of a mounting system.”
`
`The patent’s written description supports this construction, stating that “[i]n some
`
`embodiments, the mounting bracket is a one-piece, disk-shaped device.” ’821 patent at 3:51-53.
`
`This description contemplates that in other embodiments, even the bracket itself would not be one
`
`6
`
`

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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 10 of 23
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`piece. Relatedly, while the described embodiment is a “one-piece, disk-shaped device,” the
`
`asserted claims themselves explicitly pick out just one of these adjectives (disk-shaped) and not
`
`the other (one-piece). The Court’s construction of this claim term should therefore resolve the
`
`parties’ claim-scope dispute by confirming that the term does not require “standalone” brackets
`
`but instead encompasses support structures used as part of a mounting system.
`
`Claim Term
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`“recessed apertures
`therethrough
`constructed and
`arranged to receive
`a fastener”
`
`Holes through the bracket that are
`set back away from its visible outer
`circumference and are made to
`receive a fastener
`
`No construction necessary; or,
`alternatively, plain and ordinary
`meaning.
`
`Why is this term disputed? The Court may recall this illustration in Lutron’s opposition to
`
`the motion for a preliminary injunction:
`
`Dkt. 44 (“Lutron’s PI Response”) at 17. In reply, J Geiger argued, “There is nothing to indicate
`
`that the Somfy brackets have recessed apertures in the bracket to receive a fastener (e.g., screw).”
`
`J Geiger’s PI Reply at 4. But the screw holes in the Somfy bracket look nearly identical to the
`
`7
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 11 of 23
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`screw holes in Fig. ”EA. So, J Geiger’s argument remains a mystery; and its attempt to again hide
`
`behind “plain and ordinary meaning,” without revealing what it thinks the plain meaning should
`
`be, is inappropriate.
`
`The word “recessed" suggests the apertures, or screw holes, are set back or secluded in
`
`some way. But set back from what? The patent specification does not explicitly address that
`
`question, but it does provide useful clues. First are Figures TF'A and 7D:
`
`FIG. 7A
`
`HQ 79
`
`
`
`The only apparent way in which the two apertures ('55) are set back from something is that they
`
`are set back away from the outside rim (outer circumference) of the disk. And this makes sense in
`
`the context of the alleged invention.
`
`Indeed,
`
`the patent’s written description confirms the
`
`significance of this spatial relationship between the apertures and the disks outer circumference:
`
`“The apertures (755) are configured (i.e., recessed) such that, in use, the means affixing the mount
`
`to the wall (or casing, etc.) are not visible. Hence, in use, the outer circumference 0'13) of the
`
`motor mount is visible." ’821 patent at 5:64-67.
`
`In short, while the disk’s outer circumference is visible, the securing screws (affixing
`
`means, or fasteners) are not. Claims 9 and 15 explain that “the outer circumferences of each disk-
`
`shaped mounting bracket is visible and the fastener is obscured by the window tube shade“
`
`(emphasis added). As can be envisioned from Figure 10 of the patent, if the apertures were not set
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 12 of 23
`
`back away from the visibfe outer circumference of the disk (and toward its center), the window
`
`tube shade would have a harder time obscuring the fasteners screwed through those apertures:
`
`FlG. 10
`
`
`
`
`
`Thus, the Court’s construction should confirm the teaching of the patent and construe
`
`“recessed apertures therethrough constructed and arranged to receive a fastener” as “holes through
`
`the bracket that are set back away from its visible outer circumference and are made to receive a
`
`fastener.”
`
`shade”
`
`“the fastener is
`
`obscured by the
`window tube
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`Indefinite; construction: the fastener
`is largely hidden not by the bracket No construction necessary; or,
`itself, but by the window tube shade
`alternatively, plain and ordinary
`[Lutron contends the term scope is
`meaning.
`indefinite, even as so construed]
`
`
`The Law of Indefiniteness
`
`A patent must “conclude with one or more claims particularly pointing out and distinctly
`
`claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 13 of 23
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`U.S.C. § 112(b). Section 112(b) “mandates clarity” in the claims. Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120, 2123 (2014). In particular, “a patent’s claims, viewed in light
`
`of the specification and prosecution history, [must] inform those skilled in the art about the scope
`
`of the invention with reasonable certainty.” Id. at 2129. The Supreme Court’s “reasonable
`
`certainty” standard ensures that a patent is “precise enough to afford clear notice of what is
`
`claimed, thereby ‘apprising the public of what is still open to them.’” Id. (citations omitted).
`
`The Uncertainty of the Claim Term
`
`By its plain meaning, this claim term requires that [1] some viewer’s line of sight to [2] the
`
`fastener is obstructed by [3] the window tube shade. But no competitor could determine whether
`
`its brackets meet this claim limitation, for a very simple reason: None of the three critical
`
`elements—neither the viewer, the fastener, nor the tube shade—is part of the claimed brackets.
`
`Obscuring or hiding the fasteners, as claimed, would at a minimum depend on the
`
`location/perspective of the viewer and the relative location and size of the tube shade. Yet the
`
`patent provides no specifications for these unclaimed variables.
`
`These uncertain variables, and the “obscured” claim term’s dependency on them, are
`
`critical and give rise to a fatal defect in the claims. Moreover, it is a defect that J Geiger
`
`consciously added by claim amendment, as discussed below.
`
`Endless illustrations could demonstrate the significance of the uncertain variables,
`
`including the ’821 patent’s Figure 10 above, but one need look no further than the Complaint itself.
`
`There, J Geiger included a view of the previously-accused Lutron jamb bracket where these
`
`variables, particularly viewing angle and size of the tube shade, make all the difference:
`
`10
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 14 of 23
`
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`Imagefrom Compiaint, Dkr. I at 13
`
`In this case, the fasteners are screws that fasten the metal bracket to the wall. They are not Visible,
`
`though, because the metallic bracket itself is obstructing the View. So, if the bracket were made
`
`completely of transparent material, the viewer who took this photo would be able to see the screws
`
`(unless the tube shade were made much larger).
`
`In other words, from the Viewing angle in this
`
`photo and with the particular tube shade shown, it is not the window tube shade that obscures the
`
`View of the fasteners; it is the bracket itself.
`
`Among the many reasons this distinction is important, consider J Geiger’s claim
`
`amendment during prosecution that led to the claim term at issue:
`
`wherein, in—use when holding a window tube shade, the outer circumferences of
`
`each disk-shaped mounting bracket is visible and the fastening means is obscured by the bracket
`
`window tube shade.
`
`11
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 15 of 23
`
`Breedlove Decl., Ex. C (“’821 Patent Preliminary Amendment”) at 7 (Nov. 14, 2014 preliminary
`
`amendment to then claim 7, now claim 9).4 Thus, the claim was expressly modified to give up
`
`claim scope that would include the claimed bracket obscuring the view of the fasteners/screws and
`
`instead to require the unclaimed tube shade to do the obscuring.5
`
`A person of ordinary skill in the art, however, cannot determine, with anything close to
`
`“reasonable certainty,” what is encompassed by such a nebulous requirement. This is particularly
`
`true given that (a) there is no hint about viewing angles and (b) the location and size of the window
`
`tube shade remains unclaimed and unspecified.
`
`As for viewing angles, again the patent’s Figure 10 (see supra) helps to make the point. If
`
`there were any doubt that the window tube shade in that figure is not blocking the viewer’s line of
`
`sight to the screws that fasten the bracket to the wall, consider shifting the viewer slightly to the
`
`left to be exactly perpendicular to the visible outer circumference of the bracket. From that
`
`straight-on viewing angle, it is even more apparent that the fastener is not obscured by the window
`
`tube shade, but instead by the bracket.
`
`Does the claim term require that the fastener be obscured by the window tube shade from
`
`every possible viewpoint? Or only from one possible viewpoint? Or from some fraction of
`
`4 Later, in an Aug. 25, 2015 amendment, “the fastening means” was changed to “a fastener.”
`Dkt. 36-3 at 5.
`
`5 The patent’s written description likewise confirms the patentee made his choice consciously:
`
`In one embodiment, the fastening device system comprises two one-piece, disk-
`shaped mounting brackets, one for each end of a shade tube, wherein the mounting
`brackets are configured such that, in use, the outer circumference of the brackets
`are visible; the mounting means being largely hidden within the bracket or by the
`shade.
`
`’821 patent at 1:31-36 (emphasis added). By claim amendment, J Geiger chose the shade to do
`the obscuring.
`
`12
`
`

`

`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 16 of 23
`
`viewpoints in between? For any given fastener and window tube shade, some viewing angle can
`
`always be found from which the line of sight to the fastener is obstructed by the tube shade (simply
`
`arrange the viewer so that the shade is directly between him and the fastener). For this claim term
`
`to be meaningful, there must be more to it than an obscured view from merely some angle. See
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim
`
`construction that gives meaning to all the terms of the claim is preferred over one that does not do
`
`so.”).
`
`The conundrum only intensifies when factoring in the location and size of the tube shade.
`
`The patent claims have no requirements or specification for the window tube shade. Indeed, the
`
`claimed system is “for mounting a roller window shade” of unspecified kind; so, the shade is
`
`merely a prop in the claim, not a part of the claimed system. Any shade may be used. How, then,
`
`is a person of ordinary skill in the art to assess whether an unspecified shade is obscuring the
`
`screws fastening the bracket to the wall, for example? Considering again the images from the
`
`Complaint (at page 13) and from Figure 10 of the ’821 patent (see supra for both images), the
`
`shades in those images would be more likely to obscure views of the screws if the shades were
`
`larger, and less likely to obscure views if they were smaller. The patent offers no hint whether the
`
`infringement assessment should consider the smallest possible shade tube or the largest; with the
`
`shade tube as close to the bracket as possible, or as far away as possible; with the viewer looking
`
`straight on to the bracket, from a 45-degree angle, or from the most acute angle possible.
`
`So, when J Geiger proposes “plain and ordinary meaning” for this claim term, what could
`
`they mean? And why have they again declined to specify what that meaning is? The answer is
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`that there is no plain and ordinary meaning that a person of ordinary skill in the art can reasonably
`
`discern from the patent in order to identify, objectively, where infringement stops and non-
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`13
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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 17 of 23
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`infringement begins, or vice versa. For these reasons, the Court should hold that, in the context of
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`the patent claims, this claim term is indefinite.
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`Claim Term
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`“key”
`
`Structure that radially protrudes
`from a shaft to transmit torque
`between the shaft and a receiving
`component
`
`A structure against which the
`motor can torque.
`
`There is little dispute about what the claimed “key” does. In mechanical engineering, it is
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`involved in transmitting torque. A traditional door key in a person’s hand, for example, allows the
`
`torque from the person’s hand-rotation motion to transfer to the mechanics inside the door’s key
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`slot (assuming the key fits the slot, of course). This transferred torque causes the door to lock or
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`unlock. There are other ways to transfer torque, but J Geiger amended claim 9 during prosecution
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`to require a “key” structure. Now, however, J Geiger seeks to expand that term to any structure at
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`all that performs the torque function. J Geiger’s proposal—“a structure against which the motor
`
`can torque”—should be rejected as it would transmute a structural term into a purely functional
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`one.6
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`The patent uses the noun “key” in its standard, mechanical-engineering sense. This is
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`evidenced by the only embodiment of a key illustrated in the patent, specifically one like “key
`
`(740)” in Figures 7A & 7D (see supra). See ’821 patent at 5:59-64 (“More specifically, FIG. 7
`
`6 In J Geiger’s most recent patent no. 10,294,717, purportedly sharing the same original
`application as the ’821 patent, J Geiger sought and obtained otherwise narrower claims that
`eliminate the express reference to a “key” structure while still claiming the function. See, e.g.,
`’717 patent claim 15 (“wherein the projection of at least one of the mounting brackets is
`configured to engage a clutch or a motor of the roller window shade assembly to prevent
`rotation of at least a portion of the clutch or the motor”) (emphasis added). Conspicuously
`absent is the phrase “as a key” between “configured” and “to engage.”
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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 18 of 23
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`shows views of a motor mount disk-shaped mounting bracket (720) having one side configured to
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`bear against a flat surface (e.g., a wall, window casing) and one side (721) having a projection that
`
`provides a key (740) against which the shade motor can torque.”). This key is shaped like a star
`
`or a plus sign, with structure in the form of four protrusions radiating from a small center shaft.
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`This protruding structure allows “key (740)” to engage a portion of the motor and use resistance
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`torque to prevent that portion from rotating when the motorized shade is mounted. Without the
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`protruding structure—if there were only a cylindrical shaft with a circular cross-section—the shaft
`
`would not engage with the portion of the motor and could not prevent it from rotating.
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`J Geiger’s formless, structure-less proposed construction of “key” led them to make odd
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`infringement allegations against Lutron during the preliminary-injunction briefing. For example,
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`J Geiger identified (a) two “projections” on the then-accused Lutron Palladiom bracket that they
`
`said were “configured as a key” (though the two pieces look nothing like a key) and (b) a mandrel
`
`on the tube shade that they argued was “part of the motor that slides into the key.” J Geiger’s PI
`
`Reply at 5 (emphasis added). J Geiger had it backwards at best: things do not slide into keys; keys
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`slide into other things, like key holes and slots. This is exactly what the ’821 patent contemplates,
`
`as explained above, and is exactly what is shown in the patent’s figures.
`
`The Court should therefore reject J Geiger’s proposed construction that is all function and
`
`no form. Instead, the Court should construe “key” in its ordinary structural sense as “structure that
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`radially protrudes from a shaft to transmit torque between the shaft and a receiving component.”
`
`15
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`

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`Case 1:18-cv-05290-CM Document 99 Filed 08/01/19 Page 19 of 23
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`Claim Term
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`“projection”
`
`Structure that extends outward from
`the side of the bracket opposite the
`flat surface
`
`No construction necessary; or,
`alternatively, plain and ordinary
`meaning.
`
`This term and Lutron’s proposed construction confirms that the “projection,” which is used
`
`in both claim 9 and claim 15, is structure projecting, or extending, out from the side of the bracket
`
`opposite the flat surface. This construction is useful to set up the next claim term and appears to
`
`be uncontroversial from all descriptions of the alleged disk-shaped-bracket invention in the patent.
`
`See, e.g., ’821 patent Figs. 6-8. Despite the parties’ conference to discuss possible agreement on
`
`constructions, it is not clear why J Geiger would dispute this construction.
`
`Claim Term
`
`Lutron Proposed Construction
`
`J Geiger Proposed Construction
`
`“the projection . . .
`is configured as a
`key to engage a
`tube shade clutch
`or a tube shade
`motor”
`
`The projection is configured as a
`key that slides, along the axis of the
`tube shade clutch/motor, into a
`corresponding slot within the shade,
`thereby allowing the clutch/motor
`to transmit torque through the key
`
`A structure against which the
`motor can torque to engage a tube
`shade clutch or a tube shade
`motor.
`
`As discussed above