Judge McMahon Rules on Motions in Limine

On January 5, 2024, Judge McMahon (S.D.N.Y.) decided Plaintiff GeigTech East Bay LLC (“GeigTech”)’s and Defendant Lutron Electronics Co. (“Lutron”)’s motions in limine.

Lutron moved in limine to exclude, among other things, the following:

1. Mention of the Patent Trial and Appeal Board’s inter partes review or post grant review decisions. Lutron moved to exclude any mention of IPR or PGR decisions. The Court denied the motion and held that GeigTech could inform the jury that the PTAB reconsidered the patent-in-suit, including some of the claims in suit, struck some of them as obvious or anticipated by prior art, and upheld others. However, the Court granted the motion with respect to GeigTech’s ability to use a gratuitous PTAB comment about Lutron’s copying the patent-in-suit.
2. Daubert rulings and criticism of experts from unrelated cases. Lutron moved to preclude GeigTech from introducing Daubert rulings and criticism of experts from unrelated cases. The Court denied the motion but allowed cross examination of GeigTech’s experts to the extent that they were previously precluded based on their qualifications related to the issues in this case.
3. Excluding Evidence about Lutron’s overall revenues. The Court denied Lutron’s motion but allowed GeigTech to rely on the relative size of the parties in its presentation on the issue of relative bargaining power in a hypothetical negotiation for determining damages.
4. Evidence or arguments about claim construction positions not accepted by the Court. The Court granted the motion.

GeigTech moved in limine to exclude the following:

1. Evidence or argument comparing the accused devices to any preferred embodiments or non-accused product or method for the purpose of making its non-infringement arguments. The Court granted the motion only insofar as Lutron was permitted to compare its product with GeigTech’s product for purposes of addressing the trade dress infringement claim (as distinct from the patent infringement claim).
2. Reliance on advice of counsel with respect to the patent infringement. GeigTech moved to bar Lutron from arguing that it relied on the advice of counsel. Lutron argued that GeigTech was trying to give the jurors the misleading impression that Lutron designed an infringing product without consulting lawyers. The Court granted the motion but ruled, to be fair, that if GeigTech itself opens the door by asking questions—like it did in depositions—about who was present at such design meetings at Lutron, the Court would not stop a witness from giving a true and complete answer.
3. Evidence that relates to Lutron’s equitable defenses. GeigTech argued that equitable defenses including inequitable conduct are solely for the Court and thus should not be introduced to the jury. The Court denied the motion. The Court noted that certain facts relate to both equitable defenses and substantive defenses that the jury is to decide, such as invalidity and infringement, and thus it was proper to try any issues that overlap.
4. Evidence that GeigTech’s infringement theories read on or encompass prior art. Lutron clarified that it intended to argue that the patent-in-suit is invalid over the prior art, and did not intend to argue that it does not infringe the patent-in-suit merely because it is practicing the prior art. The Court ruled that Lutron’s approach was permissible.
5. Evidence of Lutron’s patents relating to the accused product. GeigTech sought to preclude Lutron from introducing evidence of its own patents relating to the accused product. The Court denied the motion, ruling that Lutron may introduce evidence relating to its research and development effort, including patent applications, for any relevant purpose.

Case: GeigTech East Bay LLC v. Lutron Elecs. Co., No. 18 Civ. 05290 (CM), Dkt. No. 364 (S.D.N.Y. Jan. 5, 2024)