PTAB

PGR2020-00013

Lutron Electronics Co Inc v. Geigtech East Bay LLC

Title: Mounting Bracket for Motorized Roller Shade
Brief Description: The ’717 patent relates to a mounting bracket system for motorized roller window shades. The invention is focused on a specific bracket design that features an internal passage or opening to route electrical wiring from a support surface (e.g., a wall) to the shade's motor, with the bracket configured to obscure the wiring from view for aesthetic purposes.

Prior Art Relied Upon: Malausa (European Patent # 2,357,309).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Malausa’s disclosed "fixing device 20" anticipates every limitation of independent claim 7. This device functions as the claimed bracket, is coupled to a support surface (wall), and supports a motorized roller shade assembly. Petitioner contended that a central opening in the device serves as the claimed "passage" for electrical wiring, and a cross-sectional figure in Malausa shows wiring passing through this opening from the wall to the motor. The solid construction of the fixing device inherently performs the function of obscuring the wiring when mounted. Furthermore, "abutment ridges" within Malausa's device were identified as meeting the claim limitation of a projection configured to engage the shade and limit its rotation.

Prior Art Relied Upon: Malausa (European Patent # 2,357,309).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Malausa's "fixing device 20" discloses nearly all elements of independent claim 15. The primary argument for obviousness centered on the claim limitation requiring "two mounting brackets." While Malausa explicitly illustrates only one bracket, Petitioner argued that a person of ordinary skill in the art (POSA) would have found it obvious to duplicate the disclosed bracket to support the other end of the roller shade assembly.
- Motivation to Combine (for §103 grounds): The motivation was based on the fundamental and well-known principle that a roller shade assembly requires support at both ends to function correctly. A POSA would therefore be motivated to provide a second bracket.
- Expectation of Success (for §103 grounds): A POSA would have had a high expectation of success in duplicating an existing component for its intended and conventional purpose, as it is a simple and predictable modification.

Prior Art Relied Upon: Malausa (European Patent # 2,357,309) and Geiger (European Design # 002017376-0001).
Core Argument for this Ground:
- Prior Art Mapping: This ground was presented as an alternative to Ground 2. Petitioner argued that Malausa teaches the primary bracket system, including the features for motor engagement and obscuring electrical wiring. To satisfy the "two mounting brackets" limitation, Petitioner pointed to Geiger, which discloses a complete roller shade assembly with two disk-shaped brackets.
- Motivation to Combine (for §103 grounds): A POSA implementing the system in Malausa would recognize the need for a second bracket. That POSA would combine Malausa with Geiger because Geiger provides a known and readily available two-bracket solution for the same type of apparatus, making it a simple and logical component to use to complete the system.
- Expectation of Success (for §103 grounds): Success would be expected because the combination merely involves adding a known component (a second bracket from Geiger) to a known system (Malausa) to achieve the predictable result of supporting both ends of the shade.
Additional Grounds: Petitioner asserted that claims 1-3 and 8-12 are unpatentable under 35 U.S.C. §112 for indefiniteness and lack of written description, based on the allegedly undefined and unsupported terms "first recess" and "second recess" recited as being part of the wiring passage.

Petitioner argued that the functional term "obscure" and its variants, as used in independent claims 7 and 15, required construction to clarify their scope for the prior art analysis.
For "wherein the bracket is configured to obscure the electrical wiring" (claim 7), Petitioner proposed the construction: "wherein the bracket is capable of hiding or blocking the electrical wiring from every viewpoint."
For "wherein the mounting bracket obscures a view of the electrical wiring" (claim 15), Petitioner proposed the construction: "wherein the bracket hides or blocks the electrical wiring from any single viewpoint."

Petitioner requests institution of post-grant review and cancellation of claims 1-3, 7-12, and 15-18 of Patent 10,294,717 as unpatentable.