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Honeywell Int'l, Inc. v. ICM Controls Corp.

United States District Court, D. Minnesota

August 27, 2014

Honeywell International Inc., Plaintiff,
ICM Controls Corp., Defendant

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Matthew L. Woods and Peter N. Surdo, Robins Kaplan Miller & Ciresi LLP, appeared for Plaintiff Honeywell International Inc.

Allen W. Hinderaker, Heather J. Kliebenstein, and Tong Wu, Merchant & Gould PC, appeared for Defendant ICM Controls Corp.

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JOAN N. ERICKSEN, United States District Judge.

Plaintiff Honeywell International Inc.'s (" Honeywell" ) amended complaint in this action asserts 19 counts against Defendant ICM Controls Corp. (" ICM" ) for alleged patent infringement, copyright infringement, Lanham Act violations, and a violation of Minn. Stat. § 325D.44. ECF No. 32. Honeywell's complaint alleges that ICM has been selling " direct knockoffs" of four Honeywell combustion control products used for controlling heating appliances. The relevant Honeywell products include two " oil primary controls" --R8184 and R7184. An oil primary control controls the fuel oil for an oil-based furnace, water heater, or boiler. The other two Honeywell products are gas ignition controls--S8610U and S8910U. A gas ignition control controls the gas ignition of a gas furnace, water heater, or boiler. Honeywell sells its gas ignition controls in the residential and light commercial replacement market, as replacements for a variety of original equipment manufacturer (" OEM" ) controls. It sells its oil primary controls in the residential and light commercial markets, as OEM and replacement units.

For each of Honeywell's four products, the amended complaint identifies a corresponding control product sold by ICM. Honeywell contends that the ICM 1510 Series corresponds to Honeywell's R7184, the ICM 1500 Series corresponds to Honeywell's R8184, the ICM 290 corresponds to Honeywell's S8610U, and the ICM 283 corresponds to Honeywell's S8910U. ECF No. 32 at 4-7. These ICM products form the target of Honeywell's trade dress infringement, false advertising, and state law claims. Honeywell alleges that certain installation manuals and labels for ICM's control products infringe its copyright interests. Honeywell also asserts four patents against particular ICM control products and certain ICM thermostats used in connection with combustion controls.

The case is before the Court on three summary judgment motions filed by Defendant ICM, ECF Nos. 241, 247, 260, as well as motions filed by both parties to exclude the proposed testimony of multiple expert witnesses for failure to meet the admissibility requirements of Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579, 113 S.Ct. 2786, 125 L.Ed.2d 469

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(1993), ECF Nos. 227, 234, 253, 266, 273. The motions and their dispositions are as follows:

1. ICM's motion for summary judgment of invalidity of U.S. Patent No. 5,812,061 (" '061 patent" ), U.S. Patent No. 7,055,759 (" '759 patent" ), and U.S. Patent No. 6,478,574 (" '574 patent" ), ECF No. 247 -- The motion is granted with respect to the '574 patent and otherwise denied.
2. ICM's motion for summary judgment of Honeywell's false advertising (false designation of origin) claim, ECF No. 241 -- The motion is granted.
3. ICM's motion for summary judgment of Honeywell's trade dress infringement claims, ECF No. 260 -- The motion is granted.
4. Honeywell's Daubert motion seeking to exclude testimony of Robert Stein, Leon Kaplan, and Adam Vaczek, ECF No. 273 -- The motion is denied on mootness grounds as to Mr. Stein. It is denied without prejudice as to Dr. Kaplan. The motion is granted in part and denied in part as to Mr. Vaczek.
5. ICM's Daubert motion to exclude the testimony of Akshay Rao, ECF No. 253 -- The motion is denied as moot.
6. ICM's Daubert motion to exclude the testimony of Justin Hughes, ECF No. 227 -- The motion is granted.
7. ICM's Daubert motion to exclude Carl Degen's testimony on reasonable royalties for the alleged patent infringement, ECF No. 266 -- The motion is denied.
8. ICM's Daubert motion to exclude miscellaneous testimony of David Schumacher, Carl Degen, and Thomas Gafford, ECF No. 234 -- The motion is denied as to Mr. Schumacher and in part as to Mr. Gafford on mootness grounds. The motion is denied as to Mr. Degen and in part as to Mr. Gafford without prejudice so that objections to particular testimony may be raised at trial, if appropriate.


The standards applicable to summary judgment as well as to Daubert motions are well established and well known. Summary judgment is proper " if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). To support an assertion that a fact cannot be or is genuinely disputed, a party must cite " to particular parts of materials in the record," show " that the materials cited do not establish the absence or presence of a genuine dispute," or show " that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A)-(B). " The court need consider only the cited materials, but it may consider other materials in the record." Fed.R.Civ.P. 56(c)(3). In determining whether summary judgment is appropriate, a court must view facts that the parties genuinely dispute in the light most favorable to the nonmovant, Ricci v. DeStefano, 557 U.S. 557, 586, 129 S.Ct. 2658, 174 L.Ed.2d 490 (2009), and draw all justifiable inferences from the evidence in the nonmovant's favor, Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Federal Rule of Evidence 702 governs the admissibility of expert testimony. It provides that

A witness who is qualified as an expert by knowledge, skill, experience, training,

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or education may testify in the form of an opinion or otherwise if:
(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and methods; and
(d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702.

The factors that a district court may consider in making reliability and relevancy determinations include: " (1) whether the theory or technique can be or has been tested; (2) whether the theory or technique has been subjected to peer review or publication; (3) whether the theory or technique has a known or potential error rate and standards controlling the technique's operation; and (4) whether the theory or technique is generally accepted in the scientific community." Russell v. Whirlpool Corp., 702 F.3d 450, 456-57 (8th Cir. 2012) (citing Daubert, 509 U.S. at 593-94).[1] But the " evidentiary inquiry is meant to be flexible and fact specific, and a court should use, adapt, or reject Daubert factors as the particular case demands." Unrein v. Timesavers, Inc., 394 F.3d 1008, 1011 (8th Cir. 2005). As long as the expert's proffered opinions appear reliable and relevant, no single requirement for admissibility exists. Id.

The " traditional and appropriate means of attacking shaky but admissible evidence" are " [v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof." Daubert, 509 U.S. at 596. The Daubert inquiry should therefore focus on " principles and methodology" rather than on the " conclusions that they generate." Daubert, 509 U.S. at 595. Similarly, the factual basis of an expert's opinion generally " goes to the credibility of the testimony, not the admissibility, and it is up to the opposing party to examine the factual basis for the opinion in cross-examination." Bonner v. Isp Techs., 259 F.3d 924, 929-30 (8th Cir. 2001) (quoting Hose v. Chicago Northwestern Transp. Co., 70 F.3d 968, 974 (8th Cir. 1996)).

With these standards in mind, the Court turns to each of the motions.

1. ICM's Motion for Summary Judgment of Invalidity of the '061 Patent, the '759 Patent, and the '574 Patent

ICM seeks summary judgment of invalidity of three of the four patents [2] that Honeywell has asserted against it in this action. ICM contends that claims 1-4 and 9 of the '061 patent are invalid for failure to meet the enablement and written description requirements of 35 U.S.C. § 112, first paragraph.[3] ECF No. 249 at 1. ICM alleges that claims 3,7, and 8 of the

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'759 patent are invalid for lack of an adequate written description. Id. For the '574 patent, ICM takes the position that claim 1 is invalid for indefiniteness, i.e. for failure to meet the definiteness requirement of 35 U.S.C. § 112, second paragraph. Id. The relevant patent law and its application to ICM's contentions about each of the three patents are discussed next.

A. Legal framework for assessing ICM's claims of invalidity

A patent is presumed valid and a party challenging its validity bears the burden of establishing its invalidity. See 35 U.S.C. § 282(a). Invalidity must be established by clear and convincing evidence. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 (Fed. Cir. 2010). The first paragraph of § 112 contains two separate description requirements: a written description requirement and an enablement requirement. Id. at 1344. The second paragraph of § 112 requires a patent specification to conclude with one or more claims " particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. A patent claim that fails to meet the enablement, written description, or definiteness requirements of § 112 is invalid. Id. § 282, ¶ 2(3).

To meet the enablement requirement, the specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention without undue experimentation. MagSil Corp. v. Hitachi Global Storage Techs., 687 F.3d 1377, 1380 (Fed. Cir. 2012). The specification need not " describe how to make and use every possible variant of the claimed invention, for the artisan's knowledge of the prior art and routine experimentation can often fill gaps, interpolate between embodiments, and perhaps even extrapolate beyond the disclosed embodiments, depending upon the predictability of the art," but " when a range is claimed, there must be reasonable enablement of the scope of the range." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Enablement is a question of law based on underlying factual determinations. Takeda Pharm. Co. v. Zydus Pharms. USA, Inc., 743 F.3d 1359, 1369 (Fed. Cir. 2014).

To satisfy the written description requirement, the specification " must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application, i.e., that the patentee invented what is claimed." LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Ariad, 598 F.3d at 1351 (noting that disclosure is the " hallmark of written description" and so " possession as shown in the disclosure" is key). The test entails " an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art" as to whether the specification " describe[s] an invention understandable to that skilled artisan and show[s] that the inventor actually invented the invention claimed." Ariad, 598 F.3d at 1351. Although a question of fact, compliance with the written description requirement is amenable to summary judgment when no reasonable jury could find in favor of the nonmoving party. PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008). The enablement and written description requirements usually rise and fall together, LizardTech, 424 F.3d at 1345, but they need not necessarily, see Ariad, 598 F.3d at 1352. Both are evaluated as of the effective filing date of the patent. Id. at 1351; AK Steel, 344 F.3d at 1244.

The Supreme Court recently articulated the relevant standard applicable to the definiteness requirement of the

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second paragraph of § 112. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2128-30, 189 L.Ed.2d 37 (2014). Under that standard, a patent's claims, when " viewed in light of the specification and prosecution history," must " inform those skilled in the art about the scope of the invention with reasonable certainty." Id. Recognizing that some " modicum of uncertainty" is the price to be paid for appropriate incentives for innovation, the Supreme Court nonetheless confirmed that a patent " must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them." Id. (internal quotation marks omitted). Patents are not directed to lawyers or the public generally, but to those skilled in the relevant art. Id. Indefiniteness is, therefore, gauged from the perspective of one of skill in the art as of the time of patent application. See id. at 2130. Although an indefiniteness claim might have factual issues on which it depends, the determination is " a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).

B. ICM's claim of lack of enablement and written description for claims 1-4 and 9 of the '061 patent

ICM's invalidity argument for the relevant claims of the '061 patent focuses on the term " value differentiator," which first appears in the claims in independent claim 1. The '061 patent is titled " Sensor Condition Indicating System" and, in the words of the specification, the invention " comprises apparatus for signaling the approximate numeric value encoded in a variable input signal." '061 patent col. 2 ll. 62-64. In simplified terms, claim 1 of the patent provides that the apparatus includes (a) a " value differentiator" that receives an input signal and provides a " range signal," reflecting which one of a set of predetermined, non-overlapping value ranges the input signal falls within; and (b) a " signaling unit" that receives the range signal and provides a human perceptible signal corresponding to the range signal received. Id. claim 1. The specification describes using the claimed invention in a furnace or boiler to generate a light or sound signal for signaling when the sensor that detects the presence of a flame in the furnace or boiler is malfunctioning. Id. col. 1 l. 44 -- col. 3 l. 11.

Based on the specification's definition of the term " value differentiator," the Court previously ...

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