A Federal jury in the U.S. District Court for the Southern District of New York delivered a verdict against Lutron Electronics Co., finding that it had infringed on a window shade patent held by GeigTech East Bay, a South Carolina company. The jury awarded GeigTech $34.6 million in damages for Lutron’s infringement, a figure that Lutron called “grossly excessive.”
Learn more about Lutron losing to GeigTech
Lutron was accused of patent infringement and sued by GeigTech. GeigTech is a company related to, but independent of, J. Geiger Shading which was recently acquired by Savant, who was not a party to this action. GeigTech originally filed its first claim in 2018, asking the court for a $3.8 million judgment according to a GeigTech attorney with the Cole Schotz law firm. This battle has been raging on for six years.
Now Lutron may regret not settling right then in 2018, given the jury’s ultimate findings.
Six Years of Aggressive Back-and-Forth
GeigTech filed additional claims and, as is common in these matters, was countersued by Lutron. There were multiple patents and claims in the dispute, including patent infringement, unjust enrichment, and trade dress infringement – which covers misappropriation of the look and feel of a product.
Over the six years of this dispute, there was an aggressive back-and-forth. Lutron, for example, attempted to get the U.S. Patent and Trademark Office to invalidate GeigTech’s patents, as well as launching multiple court battles in the district court. Both sides won some points and lost others.
The Court Trimmed the Case Down to Six Claims on One Patent – the ‘717 Patent
The number of patents at issue and claims based on them was trimmed down – the judge found against GeigTech’s unjust enrichment and trade dress claims, for example. Ultimately, the court’s pruning trimmed the entire matter down to six claims of infringement on GeigTech’s U.S. Patent No. 10,294,717 (the ‘717 patent).
The GeigTech ‘717 patent is for a “shade bracket with concealed wiring.” At the time of invention by James Geiger in 2011, a South Carolina AV integrator, most motorized shade installations required that the mechanism, mechanical brackets, wiring, and shades be hidden behind a soffit, valance, or other fascia. Geiger sought to create a more fashionable, minimalist design that implemented elegant brackets with hidden wiring, such that the shade and assembly did not have to be hidden behind a soffit [see the image at the top of this post]. As one media outlet put it, “J. Geiger’s sleek bracket design has set new standards in the aesthetics and functionality of modern window treatments.”
Lutron Unlawfully Copied GeigTech Products
According to GeigTech, Lutron’s Palladiom Shading System unlawfully incorporates jamb, center, and end brackets that copy the GeigTech products. In essence, GeigTech is saying that Lutron stole their design and used it without permission, licensing agreement, or royalty payments.
After a trial that lasted approximately two weeks, the jury returned its verdict. The verdict form asked the jury to decide each of the claims on the ‘717 patent and presented the six claims next to two columns, one titled “Valid” and the other titled “Invalid.” The jury foreperson was to simply indicate which claims the jury found to be valid or invalid by marking the appropriate box next to the claim. The jury found all six of the GeigTech claims to be valid.
Jury Awards Almost 10 Times the Original Demand
The jury then determined that damages should be set at $34.6 million. And then the jury did something kind of remarkable. When the verdict form presented the question, “Has GeigTech shown by a preponderance of evidence that any portion of the accused statement is true?” the jury marked the form “Yes.” And then the jury foreperson added the following handwritten text at the bottom of the verdict form…
Lutron opted to poach [GeigTech’s] patented designs and intellectual property to try and remain competitive in a segment of the market that [GeigTech] cornered.
Jury in GeigTech East Bay LLC v. Lutron Electronics Co., Inc.
Jury: Lutron Infringement was ‘Willful’
That added message means that the jury found that Lutron’s infringement was “willful” and intentional…an important point. With the jury’s determination that the infringement was willful, GeigTech can now petition the court to triple the damage award.
This verdict underscores the importance of protecting intellectual property rights for businesses of all sizes. We are thrilled that this patent has withstood numerous challenges, scrutiny and legal manuevers and that our client has emerged victorious.
Douglas Kim, Kim, Lahey & Kilough, one of the firms representing GeigTech
There May Be More Lawsuits Coming
One other point about this litigation – as part of its defense, Lutron showed an assortment of shading products from a variety of brands that all incorporate designs that are similar to the Palladiom and GeigTech designs. These other shading products were from:
- Draper Flex Style Recharge
- Hunter Douglas Designer
- Coulisse Absolute 2.0
- Graber
- Crestron QMT3 and QMT5
- Screen Innovations
- Bandalux Premium Plus
- Mecho Electro Shade
- Rollease Acmeda 545
- Silent Gliss SG4800
- The Shade Store
With this decisive win for GeigTech, we may see more infringement litigation coming.
See more on Lutron by visiting lutron.com.
Learn more about GeigTech/J. Geiger by visiting jgeigershading.com.
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