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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LUTRON ELECTRONICS CO., INC.
`Petitioner
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`v.
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`GEIGTECH EAST BAY LLC
`Patent Owner
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`Case IPR2020-00958
`Patent 10,294,717
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`PETITIONER LUTRON ELECTRONICS CO., INC.’S NOTICE RANKING
`PETITIONS FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,294,717
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Introduction
`Petitioner Lutron Electronics Co., Inc. (“Lutron”) filed four petitions against
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
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`the ’717 patent: currently-filed IPR2020-00957 and -00958, and previously-filed
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`PGR2020-00012 and -00013. The IPR petitions have the same prior art arguments
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`as the PGR petitions, and are being filed solely to preserve Lutron’s ability to
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`challenge the validity of the ’717 patent before the PTAB. The ’717 patent was
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`asserted against Lutron, and the § 315(b) bar is May 31, 2020. Thus, in the unlikely
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`event that the PTAB finds that the ’717 patent is not PGR eligible—either at
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`institution or final written decision—Lutron is filing the same prior art arguments
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`in these IPRs to preserve their PTAB challenge.
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`All four petitions should be instituted. This is so even if the PTAB—as it
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`should—finds the ’717 patent is PGR eligible and institutes the PGRs. Proceeding
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`otherwise would result in Lutron having its rights arbitrarily taken away if the
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`PTAB does not uphold PGR eligibility at Final Written Decision (“FWD”). And
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`because the IPR petitions present the same prior-art arguments, there will be no
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`additional burden to the Board or the parties to proceed on all four petitions.
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`II. Ranking of the Petitions
`The -00012 PGR and -00957 IPR petitions are based on Colson and
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`challenge claims 1-5, 8, 10, and 12-15 (“the Colson Petitions”). The -00013 PGR
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`and -00958 IPR petitions are based on Malausa and Colson and challenge claims 6-
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`- 1 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`8, 11, and 15-18 (“the Malausa/Colson Petitions”). To comply with providing a
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`“ranking” when two or more petitions are filed against the same patent, Lutron
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`asks the PTAB to consider the merits of the petitions in the following order at least
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`because the PGR petitions contain all the prior-art arguments found in the IPR
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`petitions plus additional non-prior-art arguments, and because the Colson Petitions
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`address all claims that are asserted by Patent Owner in the related litigation: (A)
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`PGR2020-00012; (B) PGR2020-00013; (C) IPR2020-00957; and (D) IPR2020-
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`00958.
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`III. The PTAB should institute all four petitions because the equities favor
`Lutron and doing so would result in no additional burden.
`While the PTAB has the discretion under § 314(a) to deny multiple petitions
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`filed against the same patent, it should institute all petitions because every General
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`Plastic factor weighs heavily in Lutron’s favor. 35 U.S.C § 314(a); see General
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`Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19
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`at 5 (P.T.A.B. Sep. 6, 2017) (precedential).
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`First, the two IPR petitions do not present the potential inefficiency or
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`prejudice that concerned the Board in General Plastic. General Plastic, Pap. 19,
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`17. They do not contain new prior art or arguments, and Lutron has not modified
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`the Grounds in response to the PGR POPRs. Id., 16-17. For example, factor 2
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`assumes different art in the follow-on petition, which is not the case here. Factor 3
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`assumes the follow-on petition attempts to cure deficiencies raised in the POPR,
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`- 2 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`giving the petitioner a tactical advantage. Lutron has not done so here. As such,
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`General Plastic Factors 1-3 weigh in favor of Petitioner. Id
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`Factors 4 and 5 (timing of the filings): Lutron has explained that the follow-
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`on petitions are necessary merely as a rights-preserving mechanism given the
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`timing of the expected institution decisions in the PGRs and the § 315(b) bar. The
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`currently-known facts show the ’717 patent is PGR eligible. But if the PTAB
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`disagrees at PGR institution, or facts are developed during the PGR trials and the
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`PTAB disagrees at FWD, it will be too late for Lutron to file IPR petitions. So
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`Lutron must file now. Lutron filed near the IPR bar date to allow for further
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`developments in the litigation, specifically to determine whether Patent Owner
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`would continue pursuing its various claims against Lutron after reviewing the prior
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`art Lutron presented in the PGR petitions. Indeed, just days before they were due,
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`Patent Owner took an extension of time to file its POPRs in those proceedings.
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`It has become clear, however, that Patent Owner intends to continue with its
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`baseless allegations of patent validity and infringement against Lutron. In its
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`POPRs to the PGR petitions, for example, Patent Owner dedicates over seven
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`pages to present unfounded and irrelevant allegations of infringement and copying
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`against Lutron concerning the ’717 patent and another of its patents, U.S. Patent
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`No. 9,237,821 (a parent patent of the ’717 patent). But Patent Owner did not even
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`attempt to link these allegations to any substantive argument on the merits of
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`- 3 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`validity. Nor does Patent Owner mention that it subsequently dropped its
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`allegations of infringement regarding the ’821 patent. Lutron takes this thinly-
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`veiled attempt to prejudice the Board as an indication that Patent Owner has no
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`intention of withdrawing its baseless claims. And even more concerning, in
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`response to product and installation complaints from one of Patent Owner’s
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`customers, Patent Owner recently has gone so far as to assert yet another patent
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`from this portfolio against that customer after it chose to use Lutron products,
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`indeed, a patent that Patent Owner has never raised with Lutron. See Notice of
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`Removal, Mathieu Rosinsky v. GeigTech East Bay LLC, No. 9:20-cv-80769 (S.D.
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`Fla. May 11, 2020), ECF No. 1. Because of Patent Owner’s continued assertion of
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`its invalid patents, and because the § 315(b) bar is expiring, Lutron must act now to
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`prevent the serious prejudice that would occur if the PGR petitions are denied on
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`eligibility grounds. Accordingly, General Plastic factors 4 and 5 weigh in
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`Petitioner’s favor.
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`Factors 6 and 7: instituting the IPRs in addition to the PGRs will place no
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`additional burden on the finite resources of the PTAB because the arguments in the
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`IPRs are based on the same prior art and identical arguments found in the PGRs.
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`For the same reason, the IPRs will have no impact on the PTAB’s ability to issue a
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`FWD within one year of institution of any of the proceedings. Indeed, the PTAB
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`will be able to align the schedules of the IPR and PGR proceedings with minimal
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`- 4 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`difficulty. Lutron is amenable to consolidated trials, depositions, and hearings,
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`minimizing any burden on the PTAB and Patent Owner. On balance, any
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`incremental burden on the PTAB or Patent Owner is outweighed by the potential
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`prejudice to Lutron if it precluded Lutron from challenging a patent it has wrongly
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`been accused of infringing.
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`Further, as explained in the ranking document filed with the PGR petitions,
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`Lutron is filing two IPR petitions instead of one for the same reasons it filed two
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`PGR petitions—the structure and number of claims of the ’717 patent. Each of the
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`8 independent claims has at least 5 elements recited after the preamble, making it
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`difficult to cover all of the claims in a single petition.
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`Thus, all General Plastic factors weigh in favor of institution of all petitions,
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`or at least both IPR petitions if PGR is denied, such that “the potential for abuse of
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`the review process by repeated attacks on patents”—the concern expressed in
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`General Plastic—is not an issue here. General Plastic, Pap. 19, 17. The Board
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`should decline to use its discretion to deny institution of any petition under Section
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`314(a) and institute all four petitions.
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`- 5 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Nirav N. Desai/
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`Nirav N. Desai (Reg. No. 69,105)
`Jason D. Eisenberg (Reg. No. 43,447)
`Counsel for Petitioner
`Lutron Electronics Co., Inc.
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`Date: May 30, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 6 -
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` Case IPR2020-00958
`U.S. Patent No. 10,294,717
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that on May 30, 2020, a true and correct
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`copy of the foregoing PETITIONER LUTRON ELECTRONICS CO., INC.’S
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`NOTICE RANKING PETITIONS FOR INTER PARTES REVIEW OF U.S.
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`PATENT NO. 10,294,717 was served in its entirety on the following parties via
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`overnight courier:
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`KIM AND LAHEY LAW FIRM, LLC
`3620 Pelham Rd.
`PMB #6
`Greenville, SC 29615
`PAIR Correspondence Address for
`U.S.P.N. 10,294,717
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`Gary R. Sorden
`901 Main Street, Suite 4120
`Dallas, TX 75202
`Additional address known to Petitioner
`as likely to effect service
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`Marcella M. Bodner
`25 Main Street
`Hackensack, NJ 07601
`Additional address known to Petitioner
`as likely to effect service
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Date: May 30, 2020
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`/Nirav N. Desai/
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`Nirav N. Desai (Reg. No. 69,105)
`Jason D. Eisenberg (Reg. No. 43, 447)
`Counsel for Petitioner
`Lutron Electronics Co., Inc.
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