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

Decision Date09 August 2021
Docket Number5:12-CV-1766 (LEK/ATB)
Citation554 F.Supp.3d 409
Parties ICM CONTROLS CORP., et al., Plaintiffs, v. HONEYWELL INTERNATIONAL INC., et al., Defendants.
CourtU.S. District Court — Northern District of New York

Allen W. Hinderaker, Pro Hac Vice, Tong Wu, Heather J. Kliebenstein, Pro Hac Vice, Rachel Zimmerman Scobie, Pro Hac Vice, Eric Chad, Paige Stradley, Merchant & Gould P.C., Minneapolis, MN, John G. Powers, James P. Youngs, Hancock Estabrook, LLP, Nina I. Brown, New House School of Public Communication, Syracuse, NY, for Plaintiff ICM Controls Corp.

Allen W. Hinderaker, Pro Hac Vice, Tong Wu, Heather J. Kliebenstein, Pro Hac Vice, Rachel Zimmerman Scobie, Pro Hac Vice, Eric Chad, Paige Stradley, Merchant & Gould P.C., Minneapolis, MN, John G. Powers, Hancock Estabrook, LLP, Nina I. Brown, New House School of Public Communication, Syracuse, NY, for Plaintiff International Controls and Measurements Corp.

Jeffrey D. Schulman, Pillinger, Miller Law Firm, Syracuse, NY, Neil L. Sambursky, Pillinger Miller Tarallo, LLP, Garden City, NY, John M. Caracappa, Katherine Cappaert, Thomas C. Yebernetsky, Steptoe & Johnson LLP, Washington, DC, for Defendants Honeywell International, Inc., Resideo Technologies, Inc.


Lawrence E. Kahn, Senior U.S. District Judge


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 for partial summary judgment. Dkt. Nos. 392 ("ICM's Motion"); 392-1 ("ICM Memorandum"); 411 ("Opposition"); 417 ("ICM's Reply"). For the reasons that follow, the Court grants ICM's Motion in its entirety.


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 Memorandum-Decision and Order").


A court "shall grant summary judgment 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) ; see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251–52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party moving for summary judgment bears the initial burden of showing, through the production of admissible evidence, that no genuine issue of material fact exists. Salahuddin v. Goord, 467 F.3d 263, 272–73 (2d Cir. 2006). The movant may meet this burden by showing that the nonmoving party has "fail[ed] to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

If the moving party satisfies its burden, the nonmoving party must move forward with specific facts showing that there is a genuine issue for trial. Salahuddin, 467 F.3d at 273. In that context, the nonmoving party must do more than "simply show that there is some metaphysical doubt as to the material facts." Matsushita Electric Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). "Conclusory allegations, conjecture and speculation ... are insufficient to create a genuine issue of fact." Kerzer v. Kingly Mfg., 156 F.3d 396, 400 (2d Cir. 1998).


ICM moves for partial summary judgement on Honeywell's claims, which include invalidity, false marking, lack of standing, and inequitable conduct. The Court finds Honeywell failed to meet its burden on each of these claims. ICM's Motion is therefore granted in its entirety.

A. Invalidity

Honeywell originally asserted invalidity claims against the ’645 Patent under 35 U.S.C. §§ 101, 102, 103, and 112. Dkt. No. 277 ¶¶ 27–127. Honeywell's claims made under §§ 101 and 112 were dropped in Honeywell's Opposition. Opp'n at 1 n.1. Therefore, the remaining invalidity claims arise from § 102 which involves anticipation, and § 103 which involves obviousness. ICM states that Honeywell fails to demonstrate a single or combination of prior art references teaching all limitations of the ’645 Patent claims and seeks summary judgement on Honeywell's invalidity claims. ICM Mem. at 13. In its Opposition, Honeywell argues that: (1) ICM's broad reading of the ’645 Patent ’s claims results in the patent being invalid; and (2) such a broad reading of claims is incorrect because it ensnares prior art. Opp'n at 2.

1. Anticipation and Obviousness Claims

One way in which a patent claim may be held invalid is through a finding of anticipation or obviousness. A claim is invalid as anticipated if:

[T]he invention was known or used by others in this country or patented or described in a printed publication ... before the invention thereof by the applicant for patent, or the invention was patented or described in a printed publication ... or in public use or on sale ... more than one year prior to the date of the application for patent.

35 U.S.C. § 102.

A party challenging the validity of a patent may prevail by demonstrating the existence of prior art that "was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation." In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). "A prior art reference anticipates a patent claim if the reference discloses, either expressly or inherently, all of the limitations of the claim." Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1365 (Fed. Cir. 1999).

A patent may also be invalidated "if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains." 35 U.S.C. § 103. "Obviousness is a question of law based on underlying facts." Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005). When a party seeking to invalidate a patent combines multiple prior art references in an attempt to show obviousness, it must show why a person of ordinary skill would have combined those references. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012). The invalidity arguments raised by Honeywell must be analyzed against the backdrop of the independent presumption of validity that 35 U.S.C. § 282 attaches to each claim contained within a regularly issued patent. See Cont'l Can Co., USA, Inc., v. Monsanto Co., 948 F.2d 1264, 1266–67 (Fed. Cir. 1991). In Microsoft Corp. v. I4I Ltd. P'ship, 564 U.S. 91, 100, 131 S.Ct. 2238, 180 L.Ed.2d 131 (2011) the Supreme Court affirmed the standard of proof for patent invalidity, holding that the presumption of patent validity must be overcome by clear and convincing evidence.

The Court finds that Honeywell failed to prove facts that show clearly and convincingly that any single reference or combination of references describes each and every element of any ’645 Patent claim. Honeywell argues that its SV9501 Smart Valves product invalidates claims of the ’645 Patent. Opp'n at 7. However, in order to support its argument, Honeywell relies on broad term construction in both its Opposition and expert's report. See id. Its interpretation clearly exceeds the proper scope of the ’645 claims. For independent claims 1, 7, and 12, for example, Honeywell's expert Dr. Dickens argues that prior art discloses "a first capacitor having first terminal connected to the first end of said first relay actuator coil," Opp'n at 7, despite there being no direct connection between C1 and D1 in Honeywell's SV9501 product, but instead an intercepting diode (D22) residing between the two electrical components. And this Court has previously determined that the term "connected" should be narrowly construed to only "directly connected with no intervening circuitry." June 2017 Mem.-Decision and Order at 44.

Specifically, for invalidity by anticipation, Honeywell admits through its expert that no prior art literally disclosed or taught every limitation of the ’645 Patent by their literal scope. ICM Mem. at 14. Instead, its expert downplays the diode as "an insubstantial difference between this pathway and a direct connection." Dkt. No. 393-3 ¶ 177. Nevertheless, "[i]t is a well-established rule of claim construction that claims should be interpreted, if possible, so as to preserve their validity." Evans Med. Ltd. v. Am. Cyanamid Co., 11 F. Supp. 2d 338, 352 (S.D.N.Y. 1998), aff'd, 215 F.3d 1347 (Fed. Cir. 1999). In fact, this Court took invalidity concerns into consideration when it construed the term "connected" narrowly. As the Court previously stated, allowing "connected" to include indirect connections "would dramatically expand the scope of the claims." June 2017 Mem.-Decision and Order at 44. Therefore, Honeywell's invalidity argument fails as to these claims, as well as to claims 3–4, 9–10, 13–14, each of which depends on either claims 1, 7, or 12.

Accordingly, because as a matter of law none of the prior art cited by Honeywell contains each of the limitations contained within the claims of the ’645 Patent, these claims are neither anticipated nor obvious. Therefore, ICM is entitled to summary judgment on Honeywell's §§ 102 and 103 invalidity claims.

2. Ensnarement

Honeywell also argues that a broad reading of the ’645 claims cannot be adopted since "such a reading would ensnare prior...

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