Geigtech East Bay LLC v. Lutron Electronics Co., Inc., No. 1:2018cv05290 - Document 362 (S.D.N.Y. 2023)

Court Description: DECISION AND ORDER terminating (332) Motion in Limine in case 1:18-cv-05290-CM. GeigTech East Bay LLC ("GeigTech") seeks to preclude Lutron Electronics ("Lutron") from raising an affirmative defense of invalidity based on 35 U. S.C. § 325(e)(2), i.e., the PostGrant Review ("PGR") estoppel provision. Specifically, GeigTech argues that Lutron is estopped from asserting: (1) grounds already raised in Lutron's prior PGR petitions; and (2) grounds that Lutro n could have reasonably raised during PGR. Lutron counters that GeigTech has not met its burden to establish that PGR estoppel applies. Lutron is correct insofar as the Kirsch and Cid Quintas patents are concerned. In order to obtain the advantage of PGR estoppel, GeigTech has the burden to prove that the patents were or could reasonably have been discovered in a prior search. On this record, it has not satisfied that burden. However, Lutron does not dispute that the other patents that are the s ubject of this motion - the Colson, Fraczek, Mitsuhiro, Quill and Nichols patents - either were raised or reasonably could have been raised in post grant review. The same is true of claims arising under 35 U.S.C. §§ 101 and 112. Therefore, PGR estoppel applies, and Lutron may not rely on these patents/issues attrial, as further set forth. Accordingly, Lutron is estopped from challenging the asserted claims under 35 U.S.C. §§ 101 and 112. The Clerk of Court is directed to re move the motion at Docket 332 from the court's list of open motions. This constitutes the opinion and order of the court. It is a written opinion. (Signed by Judge Colleen McMahon on 12/21/2023) Filed In Associated Cases: 1:18-cv-05290-CM, 1:19-cv-04693-CM, 1:20-cv-10195-CM (mml)