DCT

5:12-cv-01766

ICM Controls Corp v. Honeywell Intl Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:12-cv-01766, N.D.N.Y., 12/19/2012
  • Venue Allegations: Venue is based on Defendant Honeywell regularly conducting business and engaging in the distribution, offer for sale, or sale of accused products within the Northern District of New York.
  • Core Dispute: Plaintiff alleges that Defendant’s universal ignition control module for HVAC systems infringes patents related to methods for efficiently controlling multiple components and detecting flame using flyback energy.
  • Technical Context: The technology concerns electronic control circuits for heating, ventilation, and air conditioning (HVAC) systems, specifically addressing the cost and complexity of controlling multiple actuators and performing safety checks like flame detection.
  • Key Procedural History: The '719 Patent was assigned to Plaintiff in 2005. After this complaint was filed, the asserted patents underwent post-grant proceedings at the USPTO. An ex parte reexamination of the '645 Patent confirmed the patentability of asserted independent claim 1. An inter partes review (IPR) of the '719 Patent resulted in the cancellation of claims 1-6, significantly narrowing the potential scope of infringement for that patent to the surviving flame-detection claims.

Case Timeline

Date Event
1997-04-14 ’645 Patent Priority Date
1999-03-30 ’645 Patent Issue Date
1999-07-15 ’719 Patent Priority Date
2001-04-24 ’719 Patent Issue Date
2005-04-12 ’719 Patent assigned to International Controls
2012-12-19 First Amended Complaint Filing Date
2018-02-06 ’719 Patent IPR Certificate Issued (Claims 1-6 Cancelled)
2018-06-01 ’645 Patent Reexamination Certificate Issued (Claims Confirmed)

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,889,645 - "Energy Preservation and Transfer Mechanism" (Issued Mar. 30, 1999)

The Invention Explained

  • Problem Addressed: Conventional furnace controllers required a dedicated output terminal on a microprocessor for each component to be activated (e.g., one for the inducer blower, another for the gas valve), which increased the controller's cost and complexity (U.S. Patent No. 5,889,645, col. 2:1-17). Furthermore, the electrical energy (known as "flyback" voltage) generated when an inductive component like a relay coil is switched off was typically treated as an undesirable effect to be suppressed (U.S. Patent No. 5,889,645, col. 3:17-22).
  • The Patented Solution: The invention provides a circuit that controls two or more actuator coils from a single microprocessor output. A pulsating signal from the microprocessor directly drives a first actuator coil. The circuit captures the flyback energy from this first coil, rectifies it, and uses it to charge a capacitor. When the voltage on the capacitor reaches a predetermined threshold, a "negative resistance device" allows the stored energy to discharge into and activate a second actuator coil (’645 Patent, Abstract; col. 4:51-60). By varying the pulse rate of the signal, the microprocessor can selectively energize the first coil alone or both coils, thus reducing the required number of output terminals and productively using the flyback energy (’645 Patent, col. 5:1-14).
  • Technical Importance: This approach provided a more economical and compact way to design control boards for equipment like furnaces by reducing microprocessor pin counts and harnessing what was previously considered wasted energy.

Key Claims at a Glance

  • The complaint asserts infringement of one or more claims, with independent claim 1 being representative of the core invention (’645 Patent, col. 9:4-34).
  • Essential elements of independent claim 1 include:
    • A microprocessor control element with a single output terminal providing a signal.
    • A switch device (e.g., a transistor) coupled to the microprocessor output.
    • A first relay actuator coil connected to the switch device.
    • A circuit comprising a capacitor, a one-way current conducting device (diode), and a second relay actuator coil.
    • A negative resistance device that controls the flow of stored energy from the capacitor to the second relay actuator coil.
  • The complaint does not specify dependent claims but reserves the right to assert them.

U.S. Patent No. 6,222,719 - "Ignition Boost and Rectification Flame Detection Circuit" (Issued Apr. 24, 2001)

The Invention Explained

  • Problem Addressed: In DC-powered environments like recreational vehicles, creating a high-voltage ignition spark required expensive transformers with high turn ratios, and detecting flame through rectification (which requires an AC signal) necessitated a separate, costly inverter (U.S. Patent No. 6,222,719, col. 1:11-49).
  • The Patented Solution: The patent describes a combined circuit to address both issues. First, it uses flyback voltage from an inducer motor relay coil to generate a high-voltage ignition spark, allowing for a less expensive, lower-ratio transformer (’719 Patent, col. 2:2-22). Second, it uses the inherent AC-like signal characteristics created by the pulsating current that drives the gas valve relay coil as the source for the flame detection circuit. This avoids the need for a separate AC source (’719 Patent, col.2:36-58).
  • Technical Importance: The invention offered a low-cost, integrated solution for both ignition and flame proving in DC-powered HVAC systems by cleverly reusing electrical phenomena already present in the control system.

Key Claims at a Glance

  • The complaint asserts one or more claims. Following an IPR, claims 1-6 were cancelled, leaving independent claim 7 as a key surviving claim (’719 Patent, K1, p. 2).
  • Essential elements of independent claim 7 (a flame detection circuit) include:
    • A capacitor connected to a relay coil that receives a pulsating current.
    • A transistor with control, common, and power electrodes.
    • A resistor network connecting the capacitor to the transistor's control electrode.
    • A flame detection conductor (flame rod) connected into the resistor network.
    • The circuit is configured such that the transistor's output is in an "oscillating state" if flame is present and a non-oscillating state otherwise.
  • The complaint does not specify dependent claims but reserves the right to assert them from the surviving set of claims.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused instrumentality as "electronic control devices (including the Honeywell S8610U Universal Intermittent Pilot Ignition Module)" (Compl. ¶13).

Functionality and Market Context

  • The complaint describes the accused product as being for "use in connection with furnaces, residential boilers and other heating appliances" (Compl. ¶13). As a universal ignition module, its function is to manage the ignition sequence, including controlling the pilot and main gas valves, and to monitor for the presence of a flame for safety. The complaint does not provide further technical detail on the internal operation of the S8610U module (Compl. ¶¶13, 18, 23).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart or a narrative explanation mapping specific features of the accused product to the elements of the asserted claims. The analysis below is based on the general allegation that the Honeywell S8610U module infringes the patents-in-suit.

’645 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a microprocessor control element having an...output terminal...providing a signal which is high, low, or intermittent... The S8610U module's internal logic controller, which generates control signals for the ignition sequence. ¶18 col. 4:1-7
a switch device having a control input coupled to the output terminal of said microprocessor control element... A transistor or similar switching component within the S8610U that receives signals from the controller. ¶18 col. 4:8-15
a first relay actuator coil for actuating one of said devices... The circuitry within the S8610U for driving a first external component, such as a pilot valve relay. ¶18 col. 4:16-21
a one-way current conducting device... a first capacitor... Circuitry within the S8610U alleged to capture, rectify, and store flyback energy from the first relay coil. ¶18 col. 4:22-28
a second relay actuator coil for actuating a second one of said devices... Circuitry within the S8610U for driving a second external component, such as a main gas valve relay. ¶18 col. 4:28-35
a negative resistance device...connected to the...capacitor and...the second...actuator coil. A component within the S8610U that allegedly releases the stored flyback energy to the second actuator coil upon reaching a voltage threshold. ¶18 col. 4:32-39

’719 Patent Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
pulsating current is applied to a relay coil in order to actuate the furnace... The S8610U module applies pulsating current to an external relay, such as the gas valve relay. ¶23 col. 4:39-43
a capacitor having first and second electrodes, the first electrode being connected to one end of said relay coil... A capacitor in the S8610U's flame detection circuit connected to the relay coil to derive an AC-like signal. ¶23 col. 4:43-45
a transistor having a control electrode, a common electrode and a power electrode... A transistor within the S8610U that serves as the core of the flame detection sensing circuit. ¶23 col. 5:54-57
a first resistor...a second resistor... The resistor network within the S8610U that biases the detection transistor. ¶23 col. 4:46-53
a flame detection conductor disposed in said burner and being electrically connected to the one electrode of said first resistor... The S8610U's connection point for an external flame rod, which is electrically part of the sensing circuit. ¶23 col. 4:49-51
such that the output is in one of an oscillating state...if flame is present, and in the other state if flame is not present... The S8610U's logic output for flame status, which allegedly oscillates when flame is detected via rectification. ¶23 col. 5:56-60
  • Identified Points of Contention:
    • Technical Questions: The primary point of contention will be factual: does the internal circuitry of the Honeywell S8610U actually implement the specific energy-transfer and signal-derivation techniques described in the patents? For the ’645 patent, this raises the question of whether the S8610U uses flyback energy from one relay to power a second relay via a negative resistance device. For the ’719 Patent, the question is whether the flame detection circuit derives its operating signal from the gas valve relay's pulsating current, as claimed. The complaint provides no direct evidence on these points.
    • Scope Questions: A key legal question for the ’645 Patent will be whether the components used in the S8610U meet the definitions of claim terms like "negative resistance device." For the ’719 Patent, a central issue is whether the signal produced by the S8610U upon detecting flame qualifies as an "oscillating state" as required by claim 7.

V. Key Claim Terms for Construction

  • Term from ’645 Patent, Claim 1: "negative resistance device"

    • Context and Importance: This is a specific and unconventional component in this type of circuit. The infringement case for the ’645 Patent may depend entirely on whether the accused S8610U contains a component that can be properly characterized as a "negative resistance device" that performs the claimed function.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim term is functional. The specification describes the device by its characteristic of having "a high positive impedance until...charged to a threshold voltage, and then drops to a low impedance" (’645 Patent, col. 4:42-46). This suggests any component exhibiting this electrical behavior could be covered.
      • Evidence for a Narrower Interpretation: The specification provides specific examples, including "a diac, tunnel diode, or other appropriate device" (’645 Patent, col. 4:33-34) and a "silicon bilateral switch...neon lamp" (’645 Patent, col. 7:7-9). A defendant may argue the term should be limited to these disclosed examples or devices with nearly identical properties.

  • Term from ’719 Patent, Claim 7: "oscillating state"

    • Context and Importance: This term defines the nature of the output signal that indicates flame is present. The infringement analysis for claim 7 hinges on whether the accused device's "flame-on" signal meets this definition, as contrasted with a simple high/low or "non-oscillating" state.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The patent does not define a specific frequency or waveform for the oscillation. Plaintiff may argue that any signal that cyclically changes state, as opposed to remaining at a steady DC level, meets the definition of "oscillating."
      • Evidence for a Narrower Interpretation: The specification describes the output as a "pulsating signal" produced by the "frequency of the forcing function" from the relay coil (’719 Patent, col. 5:1-5). A defendant may argue this implies a regular, periodic signal, and that an irregular or noisy signal would not qualify as being in an "oscillating state."

VI. Other Allegations

  • Indirect Infringement: The complaint alleges direct infringement by Honeywell through its "manufacture, use, sale, offer for sale, distribution and or importation" of the accused devices (Compl. ¶¶18, 23). It does not contain separate counts for indirect infringement, nor does it allege specific facts to support inducement, such as the contents of user manuals or installation guides.
  • Willful Infringement: The complaint alleges that "Honeywell has had actual knowledge" of both patents and that its infringement "was and is willful and deliberate" (Compl. ¶¶16, 19, 24). The complaint does not plead specific facts to support this allegation, such as evidence of pre-suit notification or copying.

VII. Analyst’s Conclusion: Key Questions for the Case

  1. Evidentiary Congruence: A central question will be one of technical proof: can discovery establish that the Honeywell S8610U module's internal architecture actually practices the novel circuit designs of the patents-in-suit? The case may turn on whether the accused device uses flyback energy to power a secondary actuator (’645 Patent) and derives its flame-proving signal from a relay coil's pulsations (’719 Patent), as the complaint's allegations lack specific technical evidence.

  2. Impact of Post-Grant Review: A key issue will be the narrowed scope of the '719 Patent assertion. With the core ignition-boost claims (1-6) cancelled by an IPR, the dispute over this patent is now confined to the surviving flame-detection claims. The viability of this part of the case depends entirely on proving infringement within this much smaller footprint.

  3. Claim Construction and Scope: The case will likely involve a critical definitional dispute over the term "negative resistance device" in the '645 Patent. Whether the infringement theory is viable will depend on if the court adopts a broad functional definition or a narrower one limited to the patent's specific examples, and whether any component in the accused device meets that definition.