Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 1 of 4
`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 1 of 4
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
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`GEIGTECH EAST BAY LLC,
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`Plaintiff—Counterclaim Defendant,
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`—against-
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`18 Civ. 5290 (CM)
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`LUTRON ELECTRONICS CO, INC,
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`Defendant—Counterclaim Plaintiff,
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`-and—
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`JAMES GEIGER,
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`Additional Defendant on the Counterciaim
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`
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`CLAIM CONSTRUCTION
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`McMahon, C.J.:
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`The court, for its construction of eight contested claim terms':
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`“Mounting Brackets "
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`Plain and ordinary meaning. I suspect the term “mounting bracket” will be familiar to those
`who are skilled in the art and to many who are not — people who hang their own curtains, for
`example, and who purchase mounting brackets at Home Depot or Lowe’s. There is no warrant for
`extending the term beyond its commonly understood meaning; the limitations that are peculiar to
`the patented invention derive from other claim terms, not from the basic notion of a mounting
`bracket.
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`“Projection "
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`A projection is something that projects from a i.e., sticks out from a something else, in this
`case, from the mounting bracket. Plain meaning
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`'
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`The parties agree on the essentiais ofthc law of claim construction, and the court sees no need to recite several
`pages of legaE boiietplate prefatory to getting the ciaims construed. See Docket it 97 at pages 26 and Docket #
`99 at pages 4-5.
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`GeigTeeh East Bay LLC Ex. 20D?
`US. Patent No. 10,294,?1'?
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`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 2 of 4
`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 2 of 4
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`“Recessed apertures ihereihrough constructed and arranged to receive afnsrener "
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`Aperture is simply a fancy way of saying an opening or hole. So an “aperture therethrough
`constructed and arranged to receive a fastener” is nothing more than an opening or hole that goes
`through the mounting bracket and that is able to receive a fastener of some sort. That much is
`entirely straightforward. It is the plain and ordinary meaning of the words.
`
`iike
`The only question is the meaning of the adjective “recessed.” Again, recessed,
`aperture, is not a technical term. it is a commonly understood English word; something is recessed
`when it is set back from or sunk into something else. To stick with home improvement metaphors,
`recessed lighting is lighting that is set or sunk into the ceiling, rather than being flush mounted
`onto the surface of the ceiling. Therefore, recessed apertures must be set back from or sunk into
`something else. Otherwise, the adjective would be superfluous.
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`The issue that divides the patties is whether the patent limits the manner in which the
`apertures can be “recessed.” Lutron argues that the apertures must be set back from the outer (and
`so visible) “circumference” (really, the outer edge) of the mounting bracket. That is certainly they
`way the apertures appear in the preferred embodiment. GeigTech counters that the word “recessed”
`simply means “sunk into,” so the very fact that the apertures are drilled into and through the
`brackets means that they are “recessed.”
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`The specification is helpful here. See Viironics Corp. v. Concepn‘onic, Inc, 90 F. 3d 1576,
`1582 (Fed. Cir. 2005) (noting that the specification “is the single best guide to the meaning of a
`disputed term”). it states that, in one embodiment, the “apertures are configured (i.e., recessed)
`such that, in use, the means affixing the mount to the wall (or easing, etc.) are not visible.” (‘821
`patent, Col. 5 11. 47—54). The essence ot’GeigTech’s invention is that the shade’s wall mount cannot
`be seen, thereby making it more eiegant and of greater interest to high end decorators and their
`customers. it stands to reason, therefore, that as long as the apertures are drilled somewhere in the
`mounting bracket such that the wall mount cannot be seen, they are “configured (i.e., recessed)”
`in accordance with the claim language. 1 see no warrant in the claim language for requiring that
`the apertures be put in any particular location in the mounting bracket.
`I quite understand that
`putting the apertures too close to the edge seems unlikely to achieve the desired 7 and, from the
`patent’s point of view, necessary — rcsuit of hiding the wall mount. But the claim language does
`not specify the placement of the apertures and i see no warrant for imposing such a requirement.
`if it is physically possible to sink the apertures very close to the edge of the bracket and still keep
`the wall mount hidden, then an item would be covered by the literal ianguage of the patent claims
`taken as a whole. 1 wiii, therefore, not read Lutron’s limitation into the claim language.
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`“Thefnsfener is obscured by the window lube shade ”
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`The plain meaning of this phrase is: you can’t see the fastener because it is hidden by the
`window tube shade. This language is so clear you don’t even need one skilled in the art to interpret
`it. There is simply no ambiguity to it.
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`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 3 of 4
`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 3 of 4
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`”key"
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`A structure against which a motor can torque. The term “key” is defined in the patent
`specification by the patentee.
`(See ‘821 patent at 5:10—12). The specification acts as a dictionary
`when it expressly defines terms. Vitrorlics. 90 F. 3d at 1582. That is precisely what the patentee
`has done here.
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`“the projection... . is configured as a key to engage a tube Shade clutch or tube shade motor ”
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`From earlier constructions, it is clear that the phrase, “The projection is configured as a
`key,” means that the projection is a structure against which a motor can torque (because the word
`“key” means “a structure against which a motor can torque”). The phrase “against which a motor
`can torque” did not require any further definition in connection with the disputed claim term “key”
`and it does not require any further definition here. A person skilled in the ait would readily
`understand that the key fulfills its function (i.e., it serves as a structure against which the motor
`can torque) by “engaging” the tube shade’s motor or its clutch. Lutron’s definition is really just a
`verbose way 0 f saying exactiy the same thing.
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`H
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`pm u
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`Plain meaning. A pin is a type of fastener, as even one not skilled in the art is well aware.
`There is no warrant for limiting the meaning of the term “pin” to a fastener of any particular shape
`or size, as Lutron tries to do; that is an obvious effort to limit the invention to a particular
`embodiment. Phillips v. AWH Corp. 415 F. 3d 1303, 1323 (Fed. Cir. 2005) (“[Courts] have
`expressly rejected the contention that if a patent describes only a single embodiment, the claims of
`the patent must be construed as being limited to that embodiment”); Alfiris,
`Inc. v. Symanrec
`Corp. 318 F. 3d E363, 1370 (Fed. Cir. 2003) (“Nor are claims ordinarily limited in scope to the
`preferred embodiment”).
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`”the profeclion....is configured to receive a tube Shade pin or a motorized tube shade pin. ”
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`Plain meaning. Lutron’s effort to insert the concept of circularity is yet another effort to
`limit the invention to a particular embodiment (one in which the pin is narrow and cylindrical).
`This effofl failed in the context of defining the term “pin” and it fails here — a pin is any fastener
`that can be received by the projection, with no specific configuration of either required by the
`claim language.
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`Notes on Claim Construction
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`The exercise in which I have just engaged is straightforward claim construction — i.e..,
`defining claim terms. After applying tools of claim construction, no claim remains ambiguous.
`Therefore, no effort was made during claim construction to address invalidity issues, 01' to worry
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`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 4 of 4
`Case 1:18-cv-05290-CM Document 107 Filed 09/30/19 Page 4 of 4
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`about prior art. See Liebel—Flcnwheim Co. v. Medrad, 1116., 358 F.3d 898, 91 1 (Fed. Cir. 2004); see
`also E. 1. du Pont de Nemours & Co. v. Phillips Petroleum Co, 849 F.2d 1430, 1434 (Fed. Cir.
`1988). If a particular construction renders the patent invalid, so be it, but that issue remains for
`another day.
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`Moreover, since these claims can be construed without reference to extrinsic evidence,
`there is absoiutely no warrant for Lutron to make claim construction arguments that refer to
`arguments made or not made by GeigTech in briefs on the motion for preliminary injunction. See
`V—Forman'on, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005) (“The intrinsic
`record in a patent case is the primary tool to supply the context for interpretation of disputed claim
`terms.” (citing Virrom'cs Corp, 90 F.3d at 1582)). GeigTech’s briefs, written to this court long
`after the patent issued, were not part of the file wrapper; they are not intrinsic evidence; they do
`not belong in the claim construction discussion. Should it turn out that Geig’i‘eeh made erroneous
`arguments to the court in light of the claims as construed, we can and will deal with that wholly
`separate issue at an appropriate time and in an appropriate way.
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`Request for Thoughts from the Parties
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`1 remind the parties that it was necessary to construe the disputed claims so that arguments
`could be made that relate to the alleged trade libel. The parties should think seriously about how
`far we need to go in terms of treating this as though it were a patent litigation; it is not at all clear
`to me that we would need to try the patent case in order to resolve the libel issue, because of the
`many possible defenses to libel (only one of which is truth).
`i would appreciate your respective
`thoughts on this issue.
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`Dated: September 30, 2019
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`BY ECF TO ALL COUNSEL
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`a2a a
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`
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`Chief Judge
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