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Honeywell International Inc. v. ICM Controls Corp.

United States District Court, D. Minnesota

January 26, 2017



          JOAN N. ERICKSEN United States District Judge

         Before the Court are dueling Daubert motions in this intellectual property case involving devices used with heating, ventilating, and air conditioning (“HVAC”) systems. Defendant ICM Controls Corp. (“ICM”) moves to exclude certain testimony of one of Plaintiff Honeywell International Inc.'s (“Honeywell”) expert witnesses, Richard Pothier [Dkt. No. 427]. Honeywell moves to exclude certain testimony of an ICM expert witness, Adam Vaczek [Dkt No. 420].

         These are not the first Daubert motions to be considered in this case. On August 27, 2014, the Court ruled on five earlier Daubert motions, including another Honeywell motion to exclude testimony by Vaczek, which the Court granted in part and denied in part. See Dkt. No. 338 (“August 2014 Order”). The Court also ruled on ICM's motions for partial summary judgment, finding one of Honeywell's patents to be invalid and granting the motions as to Honeywell's false advertising and trade dress infringement claims. See Id. at 2, 17 n. 9, 26, 42; see also Dkt. No. 359, at 5. After the Court decided those motions, one of Honeywell's experts, David Schumacher, unfortunately passed away. See Dkt. No. 360. The Court allowed Honeywell to substitute Pothier as an expert witness in Schumacher's stead. See Dkt. Nos. 398, 408. In allowing the substitution, the magistrate judge rejected ICM's assertions that Pothier introduced new subject matter and relied on documents that Schumacher had not relied on. The Court affirmed the magistrate judge's order.[1] Dkt. No. 408. After the parties exchanged expert reports-Honeywell offering Pothier's replacement report, ICM responding with a rebuttal report by Vaczek, and Pothier replying-and had an opportunity to conduct discovery relating to these reports, the parties filed the Daubert motions now under consideration.


         The standard for the admission of expert testimony is well established. This opinion builds on the Court's citation and application of the relevant law in its August 2014 Order. To reiterate, a witness “who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise” if:

(a) the expert's . . . 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. Under the United States Supreme Court's interpretation of Rule 702 in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), and its progeny, “[t]here is no single requirement for admissibility as long as the proffer indicates that the expert evidence is reliable and relevant.” Unrein v. Timesavers, Inc., 394 F.3d 1008, 1011 (8th Cir. 2005).

         The Court will address first the challenges to Pothier's proffered testimony and then the challenges to Vaczek's proffered rebuttal testimony.

         A. ICM's Motion to Exclude Pothier's Testimony

         ICM does not seek to exclude Pothier's testimony entirely and does not challenge his qualifications generally. Rather, ICM targets Pothier's testimony related to Honeywell's copyright infringement claims in this case (Counts V through XII), focusing on three topics: originality of the allegedly infringed materials, substantial similarity between the alleged infringed and infringing materials, and a causal nexus with regard to damages.

         Honeywell's copyright claims allege that the labels and product manuals that ICM has included with the sale of certain HVAC-related products infringe Honeywell's copyrights in its own labels and manuals used with its competing products. In its August 2014 Order, the Court set out some of the relevant law in its evaluation of Honeywell's earlier motion to exclude Vaczek's testimony. Because the parties' arguments with regard to the current Daubert motions echo many of the same themes, another review of the key copyright law is necessary.

         To establish copyright infringement, two elements must be proven: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ'ns, Inc. v. Rural Tel. Servs. Co., 499 U.S. 340, 361 (1991); see also Rottlund v. Pinnacle Corp., 452 F.3d 726, 731 (8th Cir. 2006) (citation omitted). To obtain a valid copyright, a work must “possess the requisite originality.” See Feist, 499 U.S. at 344, 348. “Original” means merely that “the work was independently created by the author . . . and that it possesses at least some minimal degree of creativity.” Id. at 345. But obtaining a copyright in a work does not serve as an impregnable shield against all copying, because only original elements are protectable. “The mere fact that a work is copyrighted does not mean that every element of the work may be protected.” Id. at 348 (emphasis added). Thus, “[o]thers may copy the underlying facts” in a copyrighted work, “but not the precise words used to present them.” Id. Ideas too can be copied. Id. at 350; see also Toro Co. v. R & R Prods. Co., 787 F.2d 1208, 1212 (8th Cir. 1986). Because ideas are not copyrightable, the factfinder must “filter out ideas and scènes à faire” in determining whether the works are substantially similar. Frye v. YMCA Camp Kitaki, 617 F.3d 1005, 1009 n.3 (8th Cir. 2010); see also Hartman v. Hallmark Cards, Inc., 833 F.2d 117, 121 (8th Cir. 1987) (affirming the conclusion that two works were not substantially similar in expression and “also agree[ing]” that “any remaining apparent similarities are either noncopyrightable ideas, scènes à faire, or of an insubstantial nature”). Scènes à faire are “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic;” in other words, they ...

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