United States District Court, D. Minnesota
N. ERICKSEN United States District Judge
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].
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. 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.
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
(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.
Court will address first the challenges to Pothier's
proffered testimony and then the challenges to Vaczek's
proffered rebuttal testimony.
ICM's Motion to Exclude Pothier's Testimony
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.
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.
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 ...