Int'l Controls & Measurements Corp. v. Honeywell Int'l, Inc.

• Decision Date: 09 September 2013
• Docket Number: 5:12-CV-1766 (LEK/ATB)
• Parties: INTERNATIONAL CONTROLS AND MEASUREMENTS CORP.; and ICM CONTROLS CORP., Plaintiffs, v. HONEYWELL INTERNATIONAL, INC., Defendants.
• Court: U.S. District Court — Northern District of New York

INTERNATIONAL CONTROLS AND MEASUREMENTS CORP.;and ICM CONTROLS CORP., Plaintiffs, v. HONEYWELL INTERNATIONAL, INC., Defendants.

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

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF NEW YORK

Dated: September 9, 2013

MEMORANDUM-DECISION and ORDER

I. INTRODUCTION

In this patent-infringement action, Defendant Honeywell International, Inc. ("Defendant"), moves pursuant to Federal Rules of Civil Procedure 12(b)(1) and/or 12(b)(6) to dismiss the Amended Complaint filed by Plaintiffs International Controls and Measurements Corp. ("International Controls") and ICM Controls Corp. ("ICM") (collectively, "Plaintiffs") for failure to assert a compulsory counterclaim pursuant to Federal Rule of Civil Procedure 13(a)(1). Dkt. Nos. 7 ("Amended Complaint"); 10 ("Motion") at 2; 10-1 ("Memorandum"). Alternatively, Defendant seeks a transfer of venue pursuant to either the first-filed rule or 28 U.S.C. § 1404(a). Mot. at 2. For the following reasons, the Motion is denied in its entirety.

II. BACKGROUND

Defendant's Motion requires the Court to consider not only the factual and procedural backgrounds of the instant action ("the New York Action"), but also those of the action filed by Defendant in the U.S. District Court for the District of Minnesota on March 4, 2011 ("the Minnesota Action") (collectively with the New York Action, "the Actions"). See Honeywell Int'l Inc. v. ICMControls Corp., No. 11-CV-0569, Dkt. No. 1 (D. Minn. Mar. 4, 2011) ("Minnesota Complaint"). The Court recites first the relevant facts and procedure of the Minnesota Action, the first-filed action, drawing the facts from the amended complaint in that action. See id. Dkt. No. 32; see also Dkt. No. 10-4 ("Minnesota Amended Complaint"). The Court then recites the relevant facts and procedure of the New York Action, drawing the facts from Plaintiffs' Amended Complaint.¹

A. The Minnesota Action

1. Factual Background

Defendant, the plaintiff in the Minnesota Action, is a Delaware corporation with its principal place of business in Morristown, New Jersey. Minn. Am. Compl. ¶ 6; Am. Compl. ¶ 3. Defendant designs, manufactures, and sells throughout the United States a variety of electronic control devices for use in heating, ventilation, air conditioning, and refrigeration ("HVACR") products and systems. See Minn. Am. Compl. ¶¶ 23-92.

Defendant asserts in the Minnesota Action four patents relating to electronic controls in HVACR products. Id. ¶¶ 17-28, 110-28. Three of those patents are relevant to the instant dispute. The first is U.S. Patent No. 7,721,972, entitled "Appliance Control with Automatic Damper Protection," which issued to Defendant on May 25, 2010, and claims "technology related to methods and systems foroperating a fuel-fired appliance that may include an operational hardware component such as a damper." Id. ¶ 23; Honeywell, No. 11-CV-0569, Dkt. No. 32-4 ("'972 Patent") at [45], [57]. The second is U.S. Patent No. 6,478,574, entitled "Pump Purge for Oil Primary," which issued to Defendant on November 12, 2002, and claims "technology related to burner or combustion control systems and apparatuses in which safety lockout is delayed in certain situations." Minn. Am. Compl. ¶ 17; Honeywell, No. 11-CV-0569, Dkt. No. 32-2 ("'574 Patent") at [45], [57]. The third is U.S. Patent No. 5,812,061, entitled "Sensor Condition Indicating System," which issued to Defendant on September 22, 1998, and claims "technology for measuring the value of an inherent variable quantity and displaying the variable quantity as a series of beeps or flashes of light." Minn. Am. Compl. ¶ 20; Honeywell, No. 11-CV-0569, Dkt. No. 32-3 ("'061 Patent") at [45], [57].

ICM, the defendant in the Minnesota Action, is a Delaware corporation with its principal place of business in North Syracuse, New York. Minn. Am. Compl. ¶ 7; Am. Compl. ¶ 2. ICM sells products in the United States that Defendant contends are "direct knockoffs" of four of Defendant's HVACR products. Minn. Am. Compl. ¶¶ 11-12. Three ICM products or series of products are relevant to the instant dispute. The first is the ICM 290, which allegedly copies the look and feel of Defendant's S8610U Universal Intermittent Pilot Gas Burner Control ("the S8610U"), an electronic control device that "provides ignition sequence, flame monitoring, and safety shutoff for furnaces, residential boilers, water heaters, and other heating appliances." Id. ¶¶ 12, 62; see also id. ¶ 64 ("[The ICM 290] utilizes the same appearance, configuration, casing, color, and even label configuration [as the S8610U]."). The second is the ICM 1500 series of products, which allegedly copy the look and feel of Defendant's R8184 Protectorelay Oil Burner Control ("the R8184"), an electronic control device that "provides automatic, nonrecycling control of combination oil burner heating and cooling systems when used witha C554A Cadmium Sulfide (cad cell) Flame Detector and low voltage thermostat." Id. ¶¶ 12, 49, 53. The third is the ICM 1510 series of products, which allegedly copy the look and feel of Defendant's R7184 Interrupted Electronic Oil Primary ("the R7184"), an electronic control device that "operates to control interrupted oil-fired appliances." Id. ¶¶ 12, 30, 34; see also id. ¶ 32 ("[The ICM 1510 series] utilizes the same appearance, configuration, casing, color, and even label configuration [as the R7184]."). The S8610U practices the '972 Patent, and the R7184 practices the '574 and '061 Patents. Id. ¶¶ 42, 71. The R8184 apparently does not practice any of Defendant's asserted patents. See id. ¶¶ 48-60.

2. Procedural Background

Defendant commenced the Minnesota Action on March 4, 2011, by filing a complaint against ICM in the U.S. District Court for the District of Minnesota. Minn. Compl.; FED. R. CIV. P. 3. Defendant filed the Minnesota Amended Complaint approximately one year later. Honeywell, No. 11-CV-0569, Dkt. Nos. 31; 32; see also Minn. Am. Compl.

The Minnesota Amended Complaint asserts federal causes of action against ICM for patent, copyright, and trade-dress infringement and for false advertising under the Lanham Act, as well a state-law cause of action for deceptive trade practices. See Minn. Am. Compl. ¶¶ 1-5, 110-201. The Minnesota Amended Complaint claims, inter alia, that: (1) because the ICM 290 "copies" the S8610U, the ICM 290 infringes the '972 Patent; and (2) because the ICM 1510 series of products "copy" the R7184, the ICM 1510 series of products infringes the '574 and '061 Patents. Id. ¶¶ 43, 71, 110-24.

As of the filing date of this Memorandum-Decision and Order, the Minnesota Action remains pending, with a dispositive motion deadline of January 2, 2014, and a trial-ready date of May 1, 2014. See Honeywell, No. 11-CV-0569, Dkt. No. 182 ("Sixth Amended Scheduling Order"). See generallyid. Dkt. To date, the parties have completed significant discovery including: (1) the production of more than 100,000 pages of documents; (2) numerous interrogatories and depositions; and (3) substantial third-party discovery concerning the ICM 1500 and 1510 series of products.² See Mem. at 4-5; Woods Decl. ¶¶ 10-12, 14; Honeywell, No. 11-CV-0569, Dkt. Nos. 164, 178. Much of this discovery material is, however, subject to a protective order issued by the Minnesota district court. See Honeywell, No. 11-CV-0569, Dkt. No. 43. See generally id. Dkt. (containing multiple entries of documents filed under seal).

A. The New York Action

1. Factual Background

International Controls is a New York corporation with its principal place of business in North Syracuse, New York. Am. Compl. ¶ 1. ICM is a wholly-owned subsidiary of International Controls. Id. ¶ 2. For over 25 years, Plaintiffs, like Defendant, "have been in the business of making and selling electronic controls for use in heating, ventilation, air conditioning and refrigeration ('HVACR') products and systems." Id. ¶ 8.

International Controls claims to hold several patents relating to electronic controls in HVACR products, but it asserts only two such patents in the New York Action. Id. ¶¶ 9-11. The first is U.S. Patent No. 5,889,645, entitled "Energy Preservation and Transfer Mechanism," which issued toInternational Controls on March 30, 1999,³ and states that it "relates to energy preservation and transfer mechanisms . . . incorporated into control circuits, e.g., furnace controls."⁴ Id. ¶ 10; Dkt. No. 7-1 ("'645 Patent") col. 1, ll. 5-7. The second is U.S. Patent No. 6,222,719, entitled "Ignition Boost and Rectification Flame Detection Circuit," which issued to inventor Andrew S. Kadah ("Kadah") on April 24, 2001, and states that it "relates to gas burners of the type found in gas furnaces and is more particularly concerned with means for electronically igniting the burner and for detecting or providing the existences [sic] of flame after ignition." Am. Compl. ¶ 11; Dkt. No. 7-2 ("'719 Patent") col. 1, ll. 5-9. On April 12, 2005, Kadah assigned ownership of the '719 Patent to International Controls.⁵ Am. Compl. ¶ 11. ICM holds the exclusive right to practice the inventions claimed in both the '645 Patentand '719 Patent.⁶ Id. ¶ 12.

According to the Amended Complaint, Defendant manufactures and sells in the United States electronic control devices used in connection with furnaces, residential boilers, and other heating appliances that embody the inventions claimed in the '645 and '719 Patents. Id. ¶ 13. Specifically, Plaintiffs claim that the S8610U embodies these inventions. Id. ICM has not granted Defendant a license to use the '645 or '719 Patents in any of its products. Id.

2. Procedural Background

ICM commenced the New York Action on November 30, 2012, by filing a Complaint against Defendant. Dkt. No. 1 ("Complaint"); FED. R. CIV. P. 3. The Complaint alleged that Defendant's manufacture and sale of the S8610U infringes the '645 and '719 Patents. See Compl. ¶¶ 16, 21. On December 19, 2012, Plaintiffs filed the Amended Complaint,⁷ which left the original Complaint's substantive...