Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 1 of 30
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`GEIGTECH EAST BAY LLC,
`
`Plaintiff-Counter Defendant,
`
`-against-
`
`LUTRON ELECTRONICS CO., INC.,
`
`Defendant-Counter Plaintiff,
`
`-against-
`
`James Geiger,
`
`Counter Defendant.
`
`Civil Action No. 1:18-cv-05290-CM
`
`JURY TRIAL DEMANDED
`
`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION
`STATEMENT IN RELATION TO THE DEFAMATION CAUSE OF ACTION
`
`

`

`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 2 of 30
`
`TABLE OF CONTENTS
`
`INTRODUCTION ................................................................................................................. 1
`I.
`LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION .................................... 2
`II.
`III. ARGUMENT ......................................................................................................................... 6
`A. Asserted Claims of the ’821 Patent ............................................................................... 7
`B. Disputed Claim Terms of the ’821 Patent ..................................................................... 7
`i. Mounting brackets ............................................................................................... 7
`ii.
`Projection ........................................................................................................... 11
`iii. Recessed apertures therethrough constructed and arranged to receive a fastener
`............................................................................................................................ 12
`iv. The fastener is obscured by the window tube shade .......................................... 14
`v.
`Key ..................................................................................................................... 17
`vi. The projection . . . is configured as a key to engage a tube shade clutch or a tube
`shade motor ........................................................................................................ 19
`vii. Pin ...................................................................................................................... 21
`viii. The projection . . . is configured to receive a tube shade pin or a motorized tube
`shade pin ............................................................................................................ 24
`IV. CONCLUSION .................................................................................................................... 25
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`

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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 3 of 30
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`3M Innovative Props. Co. v. Tredegar Corp.,
`725 F.3d 1315 (Fed. Cir. 2013)..................................................................................................4
`
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082, 1088 (Fed. Cir. 2003)....................................................................................3, 8
`
`Altiris, Inc. v. Symantec Corp.,
`318 F.3d 1363 (Fed. Cir. 2003)....................................................................................12, 19, 23
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313, 65 USPQ2d 1385 (Fed. Cir. 2003) ...................................................................5
`
`Apple Inc. v. Samsung Elecs. Co.,
`No. 12–CV–00630–LHK, 2013 WL 1502181 (N.D. Cal. Apr. 10, 2013) ..................12, 19, 23
`
`Aventis Pharms., Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013)..............................................................................................3, 8
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004)..................................................................................................5
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002)............................................................................................4, 18
`
`Funai Electronic Co. v. Daewoo Electronics Corp.,
`616 F.3d 1357 (Fed. Cir. 2010)..................................................................................................5
`
`Gemstar-TV Guide International, Inc. v. Int’l Trade Comm.,
`383 F.3d 1352 (Fed. Cir. 2004)..................................................................................................6
`
`Glaxo Wellcome, Inc. v. Andrx Pharms., Inc.,
`344 F.3d 1226 (Fed. Cir. 2003)..................................................................................................4
`
`Haemonetics Corp. v. Baxter Healthcare Corp.,
`607 F.3d 776 (Fed. Cir. 2010)..................................................................................................16
`
`i2 Techs., Inc. v. Oracle Corp.,
`2011 WL 209692 (E.D. Tex. Jan. 21, 2011) ..............................................................................9
`
`Intervet Inc. v. Merial Ltd.,
`617 F.3d 1282 (Fed. Cir. 2010)..................................................................................................4
`
`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
`
`ii
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`

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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 4 of 30
`
`Markman v. Westview Instr., Inc.,
`52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996) ..........................................2
`
`Nautilus, Inc. v. Biosig Inst., Inc.,
`134 S. Ct. 2120 (2014) .............................................................................................................16
`
`Omega Engineering, Inc. v. Raytek Corp.
`334 F.3d 1314 (Fed. Cir. 2003)..................................................................................................5
`
`Phillips v. AWH,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ....................................................................... passim
`
`Roger Brown Phd v. 3m Air Products and Chemicals Inc Revlon Inc,
`265 F.3d 1349 (Fed. Cir. 2001)......................................................................................9, 11, 15
`
`Salazar v. Procter & Gamble Co.,
`414 F.3d 1342 (Fed. Cir. 2005)..................................................................................................6
`
`SuperGuide Corp. v. DirecTV Enters., Inc.,
`358 F.3d 870 (Fed. Cir. 2004)............................................................................................14, 17
`
`Teleflex Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)..................................................................................................2
`
`Teva Pharms. USA Inc. v. Sandoz Inc.,
`135 S. Ct. 831 (2015) .................................................................................................................2
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)..............................................................................................3, 18
`
`Statutes
`
`35 U.S.C. §112 .................................................................................................................................4
`
`35 USC § 112(b) ............................................................................................................................16
`
`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 5 of 30
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`In accordance with the Scheduling Order of June 17, 2019 (Dkt. 93), Counter Defendants
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`GeigTech East Bay LLC and James Geiger (collectively “J Geiger”) submits their opening claim
`
`construction statement.
`
`I.
`
`INTRODUCTION
`
`On January 19, 2016, the United States Patent and Trademark Office (“USPTO”) issued
`
`U.S. Patent No. 9,237,821 (“the ’821 patent”), entitled Assembly for Mounting Shades, attached
`
`as Exhibit A.1 The ’821 patent discloses fastening devices used for installing roller window
`
`shades. The system includes various embodiments of mounting brackets for holding a roller
`
`shade tube. The mounting brackets are configured so that an outer circumference of the
`
`mounting brackets is visible when holding the roller shade tube, but the fasteners that secure the
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`mounting brackets to a surface are obscured from view by the roller shade tube.
`
`On June 12, 2018, J Geiger filed suit against Counter-Plaintiff Lutron Electronics, Co.,
`
`Inc. (“Lutron”) for infringement of the ’821 patent. J Geiger later withdrew its allegation of
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`patent infringement of the ’821 patent and the patent infringement claim was dismissed on
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`October 9, 2018. Dkt. 64. On April 4, 2019, the Court dismissed all of Lutron’s counterclaims
`
`except for Lutron’s defamation claim and stated, “[s]ince the factual assertion underlying the
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`June 19, 2018 Press Release - the basis for Lutron's defamation claim - is that Lutron infringed J
`
`Geiger's patent, this matter is now a patent infringement case again. Accordingly, the parties
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`have fourteen days from the date of this Memorandum Decision and Order to exchange proposed
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`constructions of claim terms.” Dkt. 82 at 23.
`
`The parties have submitted their Joint Claim Construction Statement to the Court (Dkt.
`
`No. 95), which sets forth the proposed constructions for the claim terms in dispute. In support of
`
`1 Citations to the ’821 patent (Ex. A) herein will be indicated as “column:line(s).” referring to the
`column and line numbers of the patent.
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`1
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 6 of 30
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`its proposed constructions for the disputed claim terms, J Geiger submits this Opening Claim
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`Construction Statement, which includes: 1) relevant principles of claim construction, and 2)
`
`arguments supporting J Geiger’s proposed constructions for the disputed claim terms, including
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`citations to the intrinsic evidence as appropriate.
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`Contrary to Lutron’s improper claim construction that is contrary to the facts and
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`inconsistent with applicable case law, J Geiger’s proposed constructions are consistent with the
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`context of the claim language, specification, case law and the understanding of a person of skill
`
`in the art at the time of the invention.
`
`In view of the pending defamation cause of action, J Geiger’s claim constructions as set
`
`forth herein show that J Geiger had a good faith basis to know and believe at the time it
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`published the press release that Lutron was infringing at least one claim of the ’821.
`
`II.
`
`LEGAL PRINCIPLES GOVERNING CLAIM CONSTRUCTION
`
`Patent claims define the scope of an invention, and their construction is a matter of law
`
`exclusively for the court. Phillips v. AWH, 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc);
`
`Markman v. Westview Instr., Inc., 52 F.3d 967, 997 (Fed. Cir. 1995) (en banc), aff’d 517 U.S.
`
`370, 372 (1996). Teva Pharms. USA Inc. v. Sandoz Inc., 135 S. Ct. 831, 841 (2015). “It is a
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`‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the
`
`patentee is entitled the right to exclude’.” Phillips, 415 F.3d at 1312 (citations omitted). Claim
`
`construction therefore “begins and ends in all cases with the actual words of the claim.” Teleflex
`
`Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002) (citation omitted) (holding
`
`district court erred by importing limitation from specification into claim term).
`
`Generally, the words of a claim “are given their ordinary and customary meaning, which
`
`is the meaning a term would have to a person of ordinary skill in the art at the time of the
`
`invention” after reviewing the intrinsic evidence, i.e., the claims, the specification, and the
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 7 of 30
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`prosecution history. Philips, 415 F.3d at 1312-13. By focusing on how a person of ordinary skill
`
`in the art would understand the claims, a court can avoid impermissibly narrow constructions
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`that import limitations from the specification into a claim or confine claims to specific
`
`embodiments. Id. at 1323.
`
`To determine the meaning of a claim, a court should consider the intrinsic evidence – the
`
`claims, the specification, and the prosecution history – before any extrinsic evidence is relied
`
`upon. Id. at 1317-19; see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-83 (Fed.
`
`Cir. 1996) (where “an analysis of the intrinsic evidence alone will resolve any ambiguity in a
`
`disputed claim term . . . it is improper to rely on extrinsic evidence”). In reviewing the intrinsic
`
`evidence, a court should first look to the claims themselves. Phillips, 415 F.3d at 1314. In many
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`cases, “the claims themselves provide substantial guidance as to the meaning of particular claim
`
`terms.” Philips, 415 F.3d at 1314. This includes examining the context in which a disputed term
`
`is used in an asserted claim. Id. (quoting ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088
`
`(Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered in
`
`determining the ordinary and customary meaning of those terms”)); see also Aventis Pharms.,
`
`Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013) (“Claims . . . must be construed
`
`in light of the appropriate context in which the claim term is used”). It also includes reviewing
`
`other asserted and unasserted claims because differences among claims can be particularly
`
`enlightening as to the meaning of a disputed term. Philips, 415 F.3d at 1314-15 (“For example,
`
`the presence of a dependent claim that adds a particular limitation gives rise to a presumption
`
`that the limitation in question is not present in the independent claim”).
`
`In addition, the claims must be read “in the context of the entire patent, including the
`
`specification.” Id. at 1313, 1315-16. The specification “is always highly relevant to the claim
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 8 of 30
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`construction analysis . . . [and] the single best guide to the meaning of a disputed term.” Id. at
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`1315 (quoting Vitronics, 90 F.3d 1582). Because inventors are required to provide a “full, clear,
`
`concise, and exact” description of their invention, “the specification necessarily informs the
`
`proper construction of the claims.” See 35 U.S.C. §112, ¶1 and Phillips, 415 F.3d at 1316.
`
`A patentee is free to provide any definition for a claim term, often in the specification,
`
`regardless of the term’s ordinary meaning. Id. at 1316. When the patentee has defined a claim
`
`term in the specification, the inventor's definition controls over any other source. CCS Fitness,
`
`Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The specification "‘acts as a
`
`dictionary when it expressly defines terms used in the claims or when it defines terms by
`
`implication.’" Phillips, 415 F.3d at 1321 (quoting Vitronics, 90 F.3d 1582).
`
`While figures are part of the specification, “one of the cardinal sins of patent law [is]
`
`reading a limitation from the written description into the claims.” Phillips, 415 F.3d at 1320
`
`(citation omitted). When a claim term has an accepted meaning, that meaning is generally not
`
`subject to restriction to the specific examples in the specification. Glaxo Wellcome, Inc. v. Andrx
`
`Pharms., Inc., 344 F.3d 1226, 1233 (Fed. Cir. 2003) It is established that “as a general rule[,]
`
`claims of a patent are not limited to the preferred embodiment . . . or to the examples listed
`
`within the patent specification.” Id.; see also Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287
`
`(Fed. Cir. 2010) (holding that the trial court erred by limiting the claim terms to particular
`
`examples in the specification, and stating “construing the claims in light of the specification does
`
`not, however, imply that limitations discussed in the specification may be read into the claims”);
`
`3M Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1321 (Fed. Cir. 2013) (ruling the
`
`trial court erred by improperly importing into the claims limitations from examples in the
`
`specification, and stating “limitations discussed in the specification may not be read into the
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`4
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 9 of 30
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`claims”); Funai Electronic Co. v. Daewoo Electronics Corp., 616 F.3d 1357, 1371 (Fed. Cir.
`
`2010) (rejecting attempt to limit claim term to the preferred embodiment).
`
`To assist the courts in avoiding the improper importation of limitations from the
`
`specification into the claims, “it is important to keep in mind that the purposes of the
`
`specification are to teach and enable those of skill in the art to make and use the invention and to
`
`provide a best mode for doing so.” Phillips, 415 F.3d at 1323.
`
`In addition to the specification, a court construing claim terms may consider the
`
`prosecution history, which “provides evidence of how the PTO and the inventor understood the
`
`patent.” Phillips, 415 F.3d at 1317. “Yet, because the prosecution history represents an ongoing
`
`negotiation between the PTO and the applicant, rather than the final product of that negotiation,
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`it often lacks the clarity of the specification and thus is less useful for claim construction
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`purposes.” Id.
`
`While the prosecution history may be used to clarify the meaning of claim term, it may
`
`not be used to narrow claim term unless the broader interpretation has been expressly disclaimed
`
`or disavowed in the prosecution history. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
`
`(“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based
`
`on the specification or prosecution history when those sources expressly disclaim the broader
`
`definition”); see also Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1327, 65
`
`USPQ2d 1385 (Fed. Cir. 2003) (“the prosecution history may not be used to infer the intentional
`
`narrowing of a claim absent the applicant’s clear disavowal of claim coverage, such as an
`
`amendment to overcome a rejection”). “[F]or prosecution disclaimer to attach, our precedent
`
`requires that the alleged disavowing actions or statements made during prosecution be both clear
`
`and unmistakable.” Omega Engineering, Inc. v. Raytek Corp. 334 F.3d 1314, 1325-26 (Fed. Cir.
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 10 of 30
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`2003). Statements that simply distinguish the invention from the prior art should not be used to
`
`narrow the meaning of a claim term. See Gemstar-TV Guide International, Inc. v. Int’l Trade
`
`Comm., 383 F.3d 1352, 1375 (Fed. Cir. 2004) (“statements in the prosecution history [did] not
`
`indicate a disavowal or disclaimer of claim scope…but merely provide[d] an example to
`
`illustrate differences between the invention and the prior art”).
`
`When considering the prosecution history, the Court must not read limitations included in
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`statements made by a USPTO examiner, especially when the limitation is contrary to the claim’s
`
`plain language. This is because the unilateral statements of an examiner do not create a clear and
`
`unambiguous disavowal of claim scope. Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1347
`
`(Fed. Cir. 2005). This is true even where the applicant fails to rebut or otherwise respond to the
`
`examiner’s statements. Id.
`
`III.
`
`ARGUMENT
`
`J Geiger’s claim constructions are based on the plain meaning of the words of the claims
`
`and intrinsic evidence as would be understood by a person of ordinary skill in the art at the time
`
`of the invention. These constructions provided a good faith basis for J Geiger to believe Lutron
`
`was infringing the ’821 patent at the time it published its press release. In contrast, Lutron
`
`violates several claim construction canons in its attempt to complicate the plain meaning of the
`
`claim terms in order to confuse the issue of infringement to make it appear that J Geiger could
`
`not have had good faith bases to believe there was infringement of the ’821 patent. Lutron’s most
`
`blatant error is limiting the scope of the independent claims by improperly reading numerous
`
`additional limitations into the claim terms. Lutron’s proposed constructions contradict the
`
`intrinsic evidence and plain meaning of the claim terms to a person of skill in the art. For these
`
`and the reasons explained in detail below, the Court should adopt J Geiger’s proposed
`
`construction of the disputed claim terms.
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 11 of 30
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`A.
`
`Asserted Claims of the ’821 Patent
`
`As indicated in the parties’ Joint Claim Construction Statement (Dkt. 95), the parties
`
`dispute the construction of eight (8) terms appearing in claims 9 and 15 of the ’821 Patent. These
`
`terms are shown in bold below.
`
`Claim 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.
`
`Claim 15 - 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 to receive a
`tube shade pin or a motorized tube shade idler pin.
`
`In claim 9, the term “key” is disputed independently and as part of the phrase “the
`
`projection . . . is configured as a key to engage a tube shade clutch or a tube shade motor.”
`
`In claim 15, the term “pin” is disputed independently and as part of the phrase “the
`
`projection . . . is configured to receive a tube shade pin or a motorized tube shade pin.”
`
`B.
`
`Disputed Claim Terms of the ’821 Patent
`
`Each of the disputed claim terms is discussed individually below.
`
`i.
`
`Mounting brackets
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 12 of 30
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`Disputer Claim Term
`
`J Geiger Proposed
`Construction
`
`Lutron Proposed
`Construction
`
`“mounting brackets”
`
`No construction necessary; or,
`alternatively, plain and ordinary
`meaning.
`
`Support structures used as part
`of a mounting system
`
`In the context of the patent claims, specification and prosecution history, a plain reading
`
`of the claim language itself provides all the construction necessary to a person skilled in the art.
`
`As the Court in Philips stated, “the claims themselves provide substantial guidance as to the
`
`meaning of particular claim terms.” Philips, 415 F.3d at 1314. This includes examining the
`
`context in which a disputed term is used in an asserted claim. Id. (quoting ACTV, Inc. v. Walt
`
`Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the
`
`claim also must be considered in determining the ordinary and customary meaning of those
`
`terms”)); see also Aventis Pharms., Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.
`
`2013) (“Claims . . . must be construed in light of the appropriate context in which the claim term
`
`is used”).
`
`The claim language describes the “mounting brackets” as two disk-shaped components
`
`with one side that bears against a flat surface and one side having a projection to hold a tube
`
`shade end. 9:9-12, 10:25-28. Further, the “mounting brackets” are defined in the context of the
`
`claim to include recessed apertures that receive a fastener to secure the mounting brackets to the
`
`flat surface. 9:12-15, 10:28-31. Based on the plain and ordinary meaning of the disputed claim
`
`language, “mounting brackets” in the context of the claims clearly describes in certain terms that
`
`a mounting bracket is a component that attaches to a flat surface and supports a window tube
`
`shade. The wording is self-explanatory and no construction is necessary for a person skilled in
`
`the art to understand the meaning of the claim language.
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 13 of 30
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`Further, the specification describes various embodiments involving the term “mounting
`
`brackets.” In particular, the specification of the ’821 patent states:
`
`“Embodiments of the present invention provide for improved means for mounting
`window shades (roller shades), including motorized shades, in which the portion
`of the mounting means (i.e., the “mount”, “mounting plate”, or "mounting
`bracket”) affixed to the supporting structure (e.g., the window casing, walls,
`columns, etc.) are hidden from view by the structure of the bracket or mounting
`bracket. In some embodiments, the mounting bracket is a one-piece, disk-
`shaped device, having recessed apertures to receive means to secure the
`mounting plate, and further configured either to connect to the shade motor
`or clutch; or to hold a shade idler pin or pin. The disk-shape is selected for
`aesthetic reasons: to harmonize visually with the round nature of the shade tube,
`but other shapes of mounting plates are possible.” 3:45-58 (emphasis added).
`
`“Another embodiment of the invention provides for a fastening device system for
`securing a motorized shade, in which the mounting bracket for each end of the
`shade tube is a single piece rather than a mount and bracket assembly. More
`specifically, FIG. 6 shows views of an idler mount disk-shaped mounting
`bracket (620) having one side (621) configured to bear against a flat surface and
`one side having a projection (622) having a bore (623) configured to receive an
`idler pin.” 5:39-47 (emphasis added).
`
`“The fastening device system of this embodiment further comprises a motor
`mount disk-shaped mounting bracket having one side configured to bear against
`a flat surface and one side having a projection configured as a key to engage the
`motor. See FIG. 10. More specifically, FIG. 7 shows views of a motor mount
`disk-shaped mounting bracket (720) having one side configured to 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.” 5:55-64
`(emphasis added)
`
`The disputed term “mounting brackets” is not a technical term, is not assigned any
`
`special meaning in the specification, and is easy for a person skilled in the art to understand. See
`
`Roger Brown Phd v. 3m Air Products and Chemicals Inc Revlon Inc, 265 F.3d 1349, 1352 (Fed.
`
`Cir. 2001) (concluding that non-technical terms of art do not require elaborate interpretation.); i2
`
`Techs., Inc. v. Oracle Corp., 2011 WL 209692, at *4 (E.D. Tex. Jan. 21, 2011) (“The plain
`
`language of the term is understandable; therefore, [the disputed terms] do not require
`
`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`9
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 14 of 30
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`construction”). Accordingly, the plain and ordinary meaning of the claim language is consistent
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`with other use of “mounting brackets” in the context of the specification.
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`The disputed claim term “mounting brackets,” when read in the context of the claim
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`language and the relevant portions of the specification, does not require the mounting brackets to
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`be part of a multiple component “mounting system” as Lutron’s proposed construction suggests.
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`In general terms, the two disk-shaped mounting brackets can be considered a part of a “fastening
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`device system” as provided in the preamble of the claims and as generally described in the
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`specification as cited above. However, Lutron’s construction confuses the issue and can be read
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`to require that mounting brackets be part of a support structure involving other components. The
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`specification describes other embodiments of mounting means that involve multiple components
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`that cooperate to mount the tube shade. See, e.g., 4:16-24, describing the fastening device system
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`in terms of a mounting plate cooperating with a mounting bracket. Such arrangements are
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`expressed in other claims, for example, claim 1 that specifically calls for a mounting plate and a
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`bracket. The claim language in claims 9 and 15, however, are not limited to being part of a multi-
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`component system. Differences among claims can be particularly enlightening as to the meaning
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`of a disputed term. Philips, 415, F.3d at 1314-15. Neither claims 9 and 15 nor the specification
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`describe the “mounting brackets” as being limited to part of a multi-component arrangement as is
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`expressed in other embodiment in the specification and claims. Accordingly, the scope of claims
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`9 and 15 are not limited to such an embodiment, based on the plain and ordinary meaning of the
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`term “mounting brackets” to a person skill in the art in view of the use of “mounting brackets” in
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`the specification as detailed above. The Federal Circuit has made clear that a cardinal sin of
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`patent law is improperly importing a limitation from the specification into the claims. Phillips,
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`415 F.3d at 1316. “It is equally problematic, of course, to construe a claim to exclude a preferred
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`COUNTER DEFENDANTS’ OPENING CLAIM CONSTRUCTION STATEMENT
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 15 of 30
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`embodiment.” Nikon, 308 F.Supp.2d at 1088. As such, Lutron’s construction is inconsistent with
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`the context of the claim language and relevant embodiments described in the specification and
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`should be rejected as improperly reading limitations into the claims.
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`ii.
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`Projection
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`Disputer Claim Term
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`J Geiger Proposed
`Construction
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`Lutron Proposed
`Construction
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`“projection”
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`No construction necessary; or,
`alternatively, plain and ordinary
`meaning.
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`Structure that extends outward
`from the side of the bracket
`opposite the flat surface
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`The claim language describes one side of the mounting bracket having a “projection
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`configured to hold an end of a tube shade.” Further, in the context of the claim language, the
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`term “projection” is described as “wherein the projection of at least one of the mounting brackets
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`is configured as a key to engage a tube shade clutch or a tube shade motor.” Based on the plain
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`and ordinary meaning of the disputed claim term, “projection” in the context of the claims
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`clearly describes in certain terms a structure that extends from a surface of one side of the
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`mounting bracket. The wording is self-explanatory and no construction is necessary for a person
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`skilled in the art to understand the meaning of the claim language.
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`The disputed term “projection” is not a technical term, is not assigned any special
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`meaning in the specification, and is easy for a person skilled in the art to understand. Brown, 265
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`F.3d at 1352) (concluding that non-technical terms of art do not require elaborate interpretation.).
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`Accordingly, the plain and ordinary meaning of the claim language is consistent with other use
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`of “projection” in the specification (see, e.g. 5:43-47) as would be understood by a person skilled
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`in the art. The prosecution history does not provide any discussion of the term. As such, the
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`Court should adopt the plain and ordinary meaning of the disputed claim term “projection” as
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`being a structure that extends from a surface of one side of the mounting bracket.
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`Case 1:18-cv-05290-CM Document 97 Filed 08/01/19 Page 16 of 30
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`Lutron’s proposed construction requires that the projection be on the side of the bracket
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`opposite t