Lutron Electronics Co. v. Crestron Electronics, Inc.

970 F. Supp. 2d 1229, 2013 WL 4881570, 2013 U.S. Dist. LEXIS 131291
CourtDistrict Court, D. Utah
DecidedSeptember 12, 2013
DocketCase No. 2:09-CV-00707 CW
StatusPublished
Cited by4 cases

This text of 970 F. Supp. 2d 1229 (Lutron Electronics Co. v. Crestron Electronics, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Utah primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Lutron Electronics Co. v. Crestron Electronics, Inc., 970 F. Supp. 2d 1229, 2013 WL 4881570, 2013 U.S. Dist. LEXIS 131291 (D. Utah 2013).

Opinion

MEMORANDUM DECISION AND ORDER

CLARK WADDOUPS, District Judge.

INTRODUCTION

This case is before the court on claims for patent infringement. During a hearing on June 26 through Juñe 28, 2013, the court addressed two motions for summary judgment, a motion to strike, and five Daubert motions. Although most issues were resolved during the hearing, the court took several matters under advisement. This memorandum decision addresses Crestron’s motion for summary judgment on Lutron’s claim that it infringed U.S. Patent No. 5,905,442 (the '442 Patent) and the date by which Crestron may be hable for inducing infringement. It also addresses Crestron’s challenge to two expert opinions about the non-obviousness of the '442 Patent. For the reasons discussed below, the court denies Crestron’s motion for summary judgment on Lutron’s claim for direct infringement, but limits the acts that infringe to those where a control device was coupled, by wire, to an electrical device. Because material issues of fact exist regarding when Crestron may be liable for inducing infringement, the court denies summary judgment on that issue. Finally, the court concludes the two experts may not opine on whether there is a nexus to commercial success. If sufficient foundation is laid, however, they may testify about copying as an indicium of nonobviousness.

[1233]*1233 FACTUAL BACKGROUND

The '442 Patent provides a “method and apparatus for controlling and determining the status of electrical devices from remote locations.” '442 patent, 2 (Dkt. No. 177, Ex. A). Lutron asserts its RadioRA and Homeworks Wireless products embody the '442 Patent. The RadioRA product provides a “whole-home wireless lighting control system” that “uses light switches and dimmers that include a tiny two-way radio, in .communication with-master units and repeaters, to create a lighting control network.” Lutron Mem. in Opp’n to Mot. .for Sum. J., at v. (Dkt. No. 474). The Home-works Wireless product is similar to RadioRA, but it allows “for larger applications” and “all communications are actively managed by a central processor.” Id.

Lutron also holds U.S. Patent No. 5,982,103 (the '103 patent). The '103 Patent is specific to a control device, such as dimmers and switches, that employs an antenna and fits at least partially within the small area of an electrical wall box. See '103 Patent, col. 1:26 32 (Dkt. No. 177, Ex. B). The RadioRA and Homeworks Wireless products are marked not only with the '442 Patent, but with the '103 Patent as well.

ANALYSIS

I. MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 5,905, 4421

A. Control Device Coupled to an Electrical Device

Crestron contends it cannot be liable for direct infringement of the '442 Patent because none of its products meet all of the structural limitations of the '442 Patent. Some claims in the '442 Patent are apparatus claims; others are method claims. The court focuses on the apparatus claims first.

i. Claims 1 and 62

Claims 1 and 62 of the '442 Patent address an “ [apparatus for controlling at least one electrical device by remote control.” '442 Patent, col. 34:39 40, col. 39:37 39 (Dkt. No. 177, Ex. A). The claims state, in relevant part, that the apparatus is comprised of “at least one control device coupled to the electrical device by a wire connection for providing power to the electrical device.” Id. at col. 34:41 43 (emphasis added). Crestron contends that it does not make, use, offer for sale, or sell any products- that have a control device connected by wire to an electrical device. Crestron argues- that it sells its control devices only to distributors who ultimately connect it to an electrical device. It therefore contends it cannot be liable for direct infringement.

The Federal Circuit has cautioned that “in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed.Cir.2010) (quotations and citation omitted). Here, the issue before the court is whether a “control device coupled to the electrical device” must be structurally present in the apparatus or whether the apparatus must merely be capable -of satisfying this claim limitation for it to infringe directly. If the claim merely recites capability, then “an accused device need only be capable of operating in the described mode” for infringement to occur. Id. (quotations and citation omitted). Crestron contends, however, that Claims 1 and 62 do not merely recite capability. Instead, Crestron argues these claims require the control device actually [1234]*1234to be connected, by wire, to an electrical device for direct infringement to occur.

“To infringe an apparatus claim, the device must meet all of the structural limitations.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311 — 12 (Fed.Cir.2005) (citations omitted), Typically, an. apparatus claim “depend[s] upon structural limitations and not upon statements of function.” In re Michlin, 45 C.C.P.A. 1028, 256 F.2d 317, 320 (1958) (citations omitted); see also Hewlett-Packard Co. v. Bausch & Bomb Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990) (stating “apparatus claims cover what a device is, not what a device does ”). (emphasis in original); but see Finjan, Inc., 626 F.3d at 1204-05 (focusing on an apparatus claim’s functionality). The Federal Circuit applied this concept in Cross Medical.

The patent at issue in that case “involve[d] orthopedic surgical implants used to stabilize and align the bones of a patient’s spine.” Cross Medical, 424 F.3d at 1297. The relevant claim language stated the apparatus was comprised of “an anchor seat means which has a lower bone interface operatively joined to said bone segment.” Id. at 1303 (emphasis added). The Federal Circuit concluded the “lower bone interface” met the requirement of being “operatively joined” only “when the interface and the bone , segment are connected and in contact.” Id. at 1306. Cross Medical argued, however, that Medtronic infringed its patent because Medtronic’s device was capable of being operatively joined to the bone segment by a surgeon. While Medtronic’s device may have been capable of that, the Federal Circuit concluded the claim embodied a structural limitation. Id. at 1312. Thus, mere capability was not enough for direct infringement. Because the “anchor seat of the device [did] not contact bone until the surgeon implant[ed] it,” the Court, concluded Medtronic did not directly infringe. Id.

Lutron contends Cross Medical is inapplicable, and instead, cites Finjan, Inc. to support that the '442 Patent simply explains how the apparatus works rather than requiring installation as is required for a method claim.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
970 F. Supp. 2d 1229, 2013 WL 4881570, 2013 U.S. Dist. LEXIS 131291, Counsel Stack Legal Research, https://law.counselstack.com/opinion/lutron-electronics-co-v-crestron-electronics-inc-utd-2013.