Lutron, Crestron Settle Infringement Suit Over Wireless RF Patent

"How do you get a New Jersey company to be sued in Utah?” Kevin Barnes asked Consumer Electronics Daily, following the news Tuesday that Lutron and Crestron settled a patent infringement lawsuit dating back to August 2009. Barnes, founder of Lifestyle Electronics, Orem, Utah -- a dealer defendant in the suit -- said, “Well, you grab three of their dealers, who have done almost no Crestron wireless at the time, and you list them on the lawsuit.” Prior to being named in the lawsuit, Lifestyle Electronics had sold just $1,400 of Crestron wireless products, Barnes said.

Lutron, based in Coopersburg, Pa., filed the suit in the U.S. District Court in Salt Lake City, against Crestron, based in Rockleigh, N.J., and named two other Utah-based dealers -- Lava Corp., Heber City, and now-defunct Audio Vision Systems, Orem -- according to court documents. “Because you have three out of the four being sued being located in Utah, then we'll just roll that fourth one into Utah as well,” Barnes said of the filing in his state. Lutron’s motivation for having the case heard there was that previous lawsuits against Utah-based Control4 and Vantage Controls had gone in Lutron’s favor, Barnes said. Both Control4 and Vantage are now Lutron licensees following settlements arising out of Lutron lawsuits filed in Utah, according to court documents.

As part of the settlement announced Tuesday, Crestron has signed a license agreement and will pay royalties on past and future sales of products that use Lutron’s RF patents, which Lutron first built into its RadioRA and Grafik Eye wireless lighting dimming products, it said. Also as part of the settlement, Crestron will engineer around Lutron’s design patent, Lutron said. Lutron added that it has also licensed its RF patents to Vantage Controls, Leviton, Cooper Wiring and Control4.

The patents involved Crestron products’ ability to wirelessly and remotely control a system of lighting dimmer switches and the ability to determine remotely the power status of the dimmer switches over RF, the lawsuit said. It charged that Crestron’s iLux products infringed its U.S. Patent No. 5,949,200, “Wall mountable Control System with Virtually Unlimited zone Capacity.” And, the suit claimed, Crestron’s infiNET products infringed its 5,982,103, “Compact Radio Frequency Transmitting and Receiving Antenna and Control Device Employing Same,” and 5,905,442, “Method and Apparatus for controlling and Determining the Status of Electrical Devices from Remote Locations,” patents. The patents expire in 2016.

The three Utah custom integrators were charged with offering “to use, to offer to sell and/or sell” Crestron products incorporating the three patents.

Lutron “named three dealers that had nothing to do with the development of the product listed on the lawsuit for five years,” Barnes said. In the first two days after Lutron filed the suit in 2009, Crestron agreed to pay all of the dealers’ legal expenses and to indemnify them of any future liability in exchange for “being helpful to Crestron,” which included responding to depositions and working with Crestron lawyers, Barnes said. The dealers were removed from the lawsuit “a couple of months ago,” Barnes said.

On what ramifications being named as a defendant in a vendor-on-vendor lawsuit could have on the dealer-vendor relationship going forward, Barnes said, “Heaven forbid Sonance suing SpeakerCraft and listing me on the lawsuit because I sold SpeakerCraft. … It’s that ridiculous,” he said. The situation was all the more vexing to Barnes, who had sold only one home theater using Crestron’s wireless product. His warning to other dealers is, “This could happen to you."

Russ Winegar, principal of Lava Corp., told us, “It was a bit of a surprise that Lutron would include us as being active in the lawsuit.” He called his company a “sideshow” to the suit overall. “Crestron stepped up and took all the liability and let us off the hook for anything,” he said. Winegar said his company was deposed “quite a few times,” and he had to answer “thousands of questions that had absolutely nothing to do with the product that was in the case.”

Crestron declined to comment on the case. Lutron said it couldn’t comment on the case other than what it provided in the news release.