United States District Court, D. Delaware
Dominick T. Gattuso, HEYMAN ENERIO GATTUSO & HIRZEL LLP,
Wilmington, DE; Michael J. Garvin (argued), Marcel C.
Duhamel, Aaron M. Williams, VORYS, SATER, SEYMOUR AND PEASE
LLP, Cleveland, OH; William H. Oldach III, VORYS, SATER,
SEYMOUR AND PEASE LLP, Washington, DC. Attorneys for
C. Norman, Anne Shea Gaza (argued), Samantha G. Wilson, YOUNG
CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE; Cynthia
D. Vreeland (argued), William F. Lee, Peter M. Dichiara,
WILMER CUTLER PICKERING HALE AND DORR LLP, Boston, MA.
Attorneys for Defendant
ANDREWS, U.S. DISTRICT JUDGE.
before the Court is the issue of claim construction of
multiple terms in U.S. Patent No. 7, 814, 216 ("the
'216 patent"). The Court has considered the
parties' joint claim construction brief. (D.I. 63). The
Court heard oral argument on July 2, 2018. (D.I. 76
Route1 filed this patent infringement action against
Defendant AirWatch on March 27, 2017. (D.I. 1).
patent-in-suit "relates to use of a host computer via a
remote computer, and more particularly, is directed to
enabling peer-to-peer communication between the host computer
and remote computer over a communication network."
('216 patent, 1:7-10).
is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude." Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).
'"[T]here is no magic formula or catechism for
conducting claim construction.' Instead, the court is
free to attach the appropriate weight to appropriate sources
'in light of the statutes and policies that inform patent
law.'" SoftView LLC v. Apple Inc., 2013 WL
4758195, at *1 (D. Del. Sept. 4, 2013) (quoting
Phillips, 415 F.3d at 1324) (alteration in
original). When construing patent claims, a court considers
the literal language of the claim, the patent specification,
and the prosecution history. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995)
(en banc), aff'd, 517 U.S. 370 (1996). Of these
sources, "the specification is always highly relevant to
the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed
term." Phillips, 415 F.3d at 1315.
words of a claim are generally given their ordinary and
customary meaning... . [Which is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13. "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id. at 1321.
"In some cases, the ordinary meaning of claim language
as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words."
Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19. Extrinsic evidence may assist the court
in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works.
Id. Extrinsic evidence, however, is less reliable
and less useful in claim construction than the patent and its
prosecution history. Id.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct
interpretation." Osram GMBH v. Int'l Trade
Comm'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007).
parties dispute seven terms in claim 1 of the '216
patent. That claim reads as follows:
method of enabling communication between a host and
a remote device using a controller,
connecting the controller to the
connecting the controller to the remote
device, the host and the remote device
being in separate locations;
validating, at the controller, digital identity
certificates received from each of the host and the remote
device, each identity certificate containing (i) the
public half of an asymmetric key algorithm key pair, (ii)
identity information, and (iii) a digital signature of the
issuing certificate authority, thereby converting
the host to a validated host, and
converting the remote device to a validated
receiving, at the controller, a selection of the
host from the validated remote device;
sending parameters for the validated remote device
from the controller to the selected host;
sending an instruction, from the controller to the
selected host, to establish a connection to
the remote device;
receiving, at the controller, notifications from the
selected host and the validated remote device that a
connection exists there between; and
after receiving notice of a connection between the selected
host and the validated remote device
refraining from involvement, at the controller, in
transporting data between the selected host and the
validated remote device, so that the selected
host and the validated remote device
subsequently communicate with each other without using any
resource of the controller.
('216 patent, claim 1) (disputed terms italicized).
CONSTRUCTION OF DISPUTED TERMS
a. Route1 's proposed construction:
"computer (including hardware and software) configured
to assist a host and remote device in setting up a
b. AirWatch 's proposed construction:
"computer (including hardware and software), separate
from the host, that assists the process of establishing a
direct communication channel ...