ICM Controls Corp. v. Honeywell International, Inc.

Filing 434

MEMORANDUM-DECISION AND ORDERED, that ICMs motion to preclude (Dkt. No. 393) is GRANTED in part and DENIED in part. The portions of the Dickens Report (Dkt. No. 393-12) related to the argument that an actuator device requires movement are EXCLUDED. The rest of the Dr. Dickenss testimony may proceed;. Signed by Senior Judge Lawrence E. Kahn on August 13, 2021. (sas)

Case 5:12-cv-01766-LEK-ATB Document 434 Filed 08/13/21 Page 1 of 5

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
ICM CONTROLS CORP., et al.,
Plaintiffs,
-against-

5:12-CV-1766 (LEK/ATB)

HONEYWELL INTERNATIONAL INC,
et al.,
Defendants.
MEMORANDUM-DECISION AND ORDER
I.

INTRODUCTION
This case is a long-running patent dispute between plaintiffs ICM Controls Corp. and

International Controls and Measurements Corp. (together, “ICM” or “Plaintiffs”), and defendants
Honeywell International, Inc. and Resideo Technologies, Inc. (together, “Honeywell” or
“Defendants”).1 ICM currently accuses Honeywell of infringing one patent related to ignition
systems for gas furnaces. Dkt. No. 7 (“Amended Complaint”); U.S. Patent No. 5,889,645 (the
“’645 Patent”).
Presently before the Court is ICM’s motion to preclude the opinions offered by
Honeywell’s expert James Dickens. Dkt. Nos. 393 (“Motion”); 393-1 (ICM’s Memorandum”);
393-12 (“Dickens Report”); 410 (“Opposition”); 415 (“Reply”). For the reasons that follow, the
Court grants ICM’s Motion in part and denies in part.
II.

BACKGROUND

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Resideo was added as a defendant in April 2019, after Honeywell spun off Resideo and
assigned it aspects of Honeywell’s business relevant to this suit. Dkt. Nos. 249, 251. For
consistency, the Court continues to refer to Defendants as “Honeywell,” as it has in previous
opinions.

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A detailed account of this case’s facts and procedural history can be found in the Court’s
June 14, 2017 summary judgment decision, Dkt. No. 146 (“June 2017 Memorandum-Decision
and Order”), and its December 3, 2019 decision, Dkt. No. 316 (“December 2019 MemorandumDecision and Order”).
III.

LEGAL STANDARD
Under Rule 702 of the Federal Rules of Evidence, the Court is charged with a

“gatekeeping” obligation with respect to expert testimony. Daubert v. Merrell Dow
Pharmaceuticals, Inc., 509 U.S. 579, 597 (1993). The trial judge must ensure “that an expert’s
testimony both rests on a reliable foundation and is relevant to the task at hand.” Id. Rule 702
provides:
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 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. “To determine whether a witness qualifies as an expert, courts compare the
area in which the witness has superior knowledge, education, experience, or skill, with the
subject matter of the proffered testimony.” United States v. Tin Yat Chin, 371 F.3d 31, 40 (2d
Cir. 2004). “Generally speaking, expert qualifications are liberally construed.” Rondout Valley
Cent. Sch. Dist. v. Coneco Corp., 321 F. Supp. 2d 469, 474 (N.D.N.Y. 2004) (citations omitted).
“Under Daubert, factors relevant to determining reliability include the theory’s
testability, the extent to which it has been subjected to peer review and publication, the extent to
which a technique is subject to standards controlling the technique’s operation, the known or
potential rate of error, and the degree of acceptance within the relevant scientific community.”

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Restivo v. Hessemann, 846 F.3d 547, 575–576 (2d Cir. 2017) (internal quotation marks and
citations omitted). The reliability inquiry is a “flexible one,” Daubert, 509 U.S. at 594, and the
factors to be considered “depend[] upon the particular circumstances of the particular case at
issue,” Kumho Tire Co., Ltd. v. Carmichael, 526 U.S. 137, 150 (1999). “In undertaking this
flexible inquiry, the district court must focus on the principles and methodology employed by the
expert, without regard to the conclusions the expert has reached or the district court’s belief as to
the correctness of those conclusions.” Amorgianos v. Natl. R.R. Passenger Corp., 303 F.3d 256,
266 (2d Cir. 2002). “Thus, when an expert opinion is based on data, a methodology, or studies
that are simply inadequate to support the conclusions reached, Daubert and Rule 702 mandate
the exclusion of that unreliable opinion testimony. Id. In other words, “[a] court may conclude
that there is simply too great an analytical gap between the data and the opinion proffered.” Gen.
Elec. Co. v. Joiner, 522 U.S. 136, 146 (1997). “Frequently, though, ‘gaps or inconsistencies in
the reasoning leading to [the expert’s] opinion . . . go to the weight of the evidence, not to its
admissibility.’” Restivo, 846 F.3d at 577 (quoting Campbell ex rel. Campbell v. Metro. Prop. &
Cas. Ins. Co., 239 F.3d 179, 186 (2d Cir. 2001)).
IV.

DISCUSSION
For the reasons that follow, the Court excludes the portions of the Dickens Report

discussing that an actuator device requires movement. ICM’s Motion is denied in all other
respects.
A. Invalidity Opinions
In light of the Court’s recent decision, Dkt. No. 433, granting ICM’s motion for summary
judgment on Honeywell’s invalidity claims, Dr. Dickens’s invalidity opinions are now moot.
Therefore, ICM’s Motion with respect to this portion of the Dickens Report is denied as moot.

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B. Actuation Must Produce a Physical Output
ICM contends that Dr. Dickens should be precluded from testifying that an actuator
device must produce physical movement because this argument was never previously disclosed.
See ICM’s Mem. at 19–20. In the Court’s prior decision, it found that Honeywell did not
previously disclose its argument that an actuator device must produce a physical output. See Dkt.
No. 428 (“July 1, 2021 Memorandum-Decision and Order”) at 4–7. The arguments put forth here
are largely duplicative of the arguments addressed in the Court’s prior decision. See id.
Consistent with the July 1, 2021 Memorandum-Decision and Order, the Court finds that Dr.
Dickens’s testimony discussing that an actuator device must produce a physical output should be
excluded. For this reason, the Court grants ICM’s Motion to exclude this portion of Dr.
Dickens’s report.
C. Waveforms Generated by Simulating Circuits
ICM also seeks to preclude Dr. Dickens’s infringement circuit simulations. ICM alleges
that Dr. Dickens’s simulated waveforms that compare the “Patent Circuit” to an “Alleged DOE
Circuit” do not align with the accused products or the asserted claims of the ’645 Patent and are
therefore irrelevant to the case. See ICM’s Mem. at 21–27.
Honeywell responds that Dr. Dickens’s testimony should be permitted because it is
relevant for rebutting ICM’s doctrine of equivalents (“DOE”) infringement claims. Opp’n at 17–
18. For the DOE, “[t]o establish infringement, every limitation set forth in a patent claim must be
found in an accused product or process exactly or by a substantial equivalent.” Laitram Corp. v.
Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). In determining whether a limitation is met
by a substantial equivalent, one test is the function-way-result test, which asks whether the
accused structure performs substantially the same function, in substantially the same way, to

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achieve substantially the same result as set forth in the patent claims. Graver Tank & Mfg. Co. v.
Linde Air Products Co., 339 U.S. 605, 608 (1950).
The Court agrees with Honeywell. Dr. Dickens circuit simulations attempt to simulate
how the ’645 Patent’s claimed circuit would perform if modified based on what ICM alleges to
be equivalent under the DOE. See Dickens Rpt. ¶¶ 99, 110, 114, 124, 172, 203, 216. This alleged
equivalent is titled the “Alleged DOE Circuit.” The purpose of these simulations is to
demonstrate that the accused products are not equivalent to the “Alleged DOE Circuit” and
therefore do not infringe the ’645 Patent under the DOE. See id. The weight assigned to Dr.
Dickens’s simulated waveform testimony and whether Dr. Dickens’s ultimate conclusion is
correct that the accused products do not infringe the ’645 Patent is best left to a fact finder. For
these reasons, the Court denies ICM’s Motion to exclude this portion of Dr. Dickens’s testimony.
V.

CONCLUSION
Accordingly, it is hereby:
ORDERED, that ICM’s motion to preclude (Dkt. No. 393) is GRANTED in part and

DENIED in part. The portions of the Dickens Report (Dkt. No. 393-12) related to the argument
that an actuator device requires movement are EXCLUDED. The rest of the Dr. Dickens’s
testimony may proceed; and it is further
ORDERED, that the Clerk serve a copy of this Memorandum-Decision and Order on the
parties in accordance with the Local Rules.
IT IS SO ORDERED.
DATED:

August 13, 2021
Albany, New York

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