Judge Admits/Excludes Patent Expert Witnesses in Honeywell Heating Patent Dispute

Kristin Casler

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— Updated on June 22, 2020


Honeywell International, Inc. v. ICM Controls Corp., No. 11-569 (JNE/TNL), U.S. District Court for the District of Minnesota; August 27, 2014


Plaintiff Honeywell International Inc. asserts 19 counts against defendant ICM Controls Corp. It is accused of alleged patent infringement, copyright infringement, Lanham Act violations, and state law violations.

Defendant’s Patent Expert Witnesses:

ICM presented expert witness testimony from Robert Stein, Leon Kaplan and Adam Vaczek.

Vaczek proposes to testify regarding the copyright infringement claims. He has more than 30 years in the HVAC industry. Vaczek opines regarding the content of certain Honeywell product manuals and labels. He includes whether they contain factual information necessary for contractor use, methods of operation, standard industry concepts and words, or common directives that can only be written a few ways. Vaczek concluded that Honeywell’s manuals and labels for the controls at issue contain little, if any content unique to Honeywell. Or even that is not determined by the features or functions of the controls themselves. He also opined regarding the differences and similarities in the Honeywell and ICM manuals.

Admissibility of Defense Patent Expert Witnesses:

Judge Joan N. Erickson for the U.S. District Court for the District of Minnesota found portions of Vaczek’s report inadmissible. The comparison conducts a forbidden “analytical dissection” aimed at rebutting similarity of expression. The judge said it may contain some admissible content. However, it is too intertwined with the impermissible content and will be excluded in its entirety. Moreover, his first opinion already largely covers that content and is admissible in relevant part.

Vaczek’s first opinion contains material relevant to the question of the strength and scope of protected elements in Honeywell’s labels and manuals. He includes the application of the merger and scenes a faire defenses pled by ICM, the judge said.

“In particular, the section identifies various pieces of information that need to be contained in the manuals and labels in light of the product functions, product features, and industry expectations,” the judge said. “This information is especially relevant as some of the registrations of the items at issue reflect that the copyright interest is in the compilation of the information.”

The judge said this opinion also identifies the content that is factual in nature. While the factual nature of a work does not preclude copyright protection, it may affect the strength and scope. Vaczek’s experience gives him specialized knowledge that will be helpful to the jury. This portion of Vaczek’s testimony also passes muster under Daubert v. Merrell Dow Pharmaceuticals (509 U.S. 579 [1993]), the judge held.

Additionally, Vaczek may share his knowledge about the necessity and typicality of particular content, including whether technical characteristics are generally expressed in a particular manner. However, he may not opine on whether there are limited forms of expression for the content or whether a particular expression is the most basic or simple one, the judge held.

Stein’s report relates to the false designation of origin claim. The ICM products display “Made in the USA.”. Because the court dismissed that claim, Honeywell’s motion to exclude Stein was denied as moot.

Kaplan’s survey on heating, ventilation, and air conditioning (HVAC) contractor purchasing behavior relates to any equitable award of a disgorgement of profits, assuming trade dress infringement or false advertising, under 15 U.S.C. § 1117 or, assuming copying infringement, under 17 U.S.C. § 504(b). Honeywell argues that Kaplan’s conclusions are not grounded in any accepted principle of trade dress law. Honeywell also argues that Kaplan’s opinions addressing the relative importance of HVAC contractors’ product-purchasing considerations are not relevant to the trade dress, copyright, and “Made in the USA” false advertising claims.

The judge held that since all but the copyright claims were dismissed, and ICM does not plan to present Kaplan’s study to the jury, the motion to exclude is denied without prejudice.

Admissibility of Plaintiff Patent Expert Witnesses:

ICM moved to exclude Honeywell’s patent expert witnesses: Dr. Akshay Rao, Justin Hughes and Carl Degen.

Like Stein, Rao must be excluded as his testimony on trade dress and false advertising is moot, the judge said.

Hughes opines on the copyrightability of the user manuals. The judge found Hughes’ analysis “is inextricably linked with his articulation of the nature of copyright law and his opinion about its correct application. The entire thrust of his analysis is an identification of the copyright law that should apply and an assessment that Mr. Vaczek’s opinions disregard the law or are irrelevant in light of it. To allow him to testify in the manner proposed by his report would be to allow him to impermissibly invade the province of the Court and the jury.”

The judge said Hughes’ testimony does not meet the expert-qualification and helpfulness requirements of Federal Rule of Evidence 702. Honeywell did not show that he has the HVAC technical or industry expertise to challenge Vaczek’s opinions.

The judge found Honeywell demonstrated admissibility of Degen’s reasonable royalty opinions by a preponderance of the evidence. It has adequately shown that Degen’s analysis is not deficient for treating the accused products as the smallest salable patent-practicing unit rather than as a multi-component product subject to the entire market value rule. Degen’s use of the accused products as the smallest salable patent-practicing unit does not warrant exclusion of his opinion, the judge said.


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