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Route1 Inc. v. AirWatch LLC

United States District Court, D. Delaware

August 7, 2019

ROUTE1 INC., Plaintiff /Counterclaim Defendant,
v.
AIRWATCH LLC, Defendant/Counterclaim Plaintiff.

          DOMINICK T. GATTUSO, HEEEYMAN ENERIO GATTUSO & HIRZEL LLP, COUNSEL FOR PLAINTIFF AND COUNTERCLAIM DEFENDANT MICHAEL J. GARVIN, MARCEL C. DUHAMEL, AARON M. WILLIAMS, VORYS, SATER, SEYMOUR AND PEASE, LLP, WILLIAM H. OLDACH III, VORYS, SATER, SEYMOUR AND PEASE, LLP, REX M. MILLER, II, VORYS, SATER, SEYMOUR AND PEASE, LLP

          ELENA C. NORMAN, ANNE SHEA GAZA, SAMANTHA G. WILSON, YOUNG CONAWAY STARGATT & TAYLOR, LLP, COUNSEL FOR DEFENDANT AND COUNTERCLAIM PLAINTIFF MICHAEL A. JACOBS, RICHARD S.J. HUNG, CHRISTOPHER J. WIENER, MORRISON & FOERSTER LLP

          MEMORANDUM OPINION

          JORDAN, CIRCUIT JUDGE.

         This suit by Route 1 Inc. ("Route 1") against AirWatch LLC ("AirWatch") asserts infringement of U.S. Patent No. 7, 814, 216 (the '"216 patent"). Presently before me are the following: (1) a supplemental claim construction issue (D.I. 191, 193); (2) AirWatch's motion for summary judgment of non-infringement and invalidity (D.I. 199); (3) AirWatch's Daubert motion seeking exclusion of Routel's damages expert (D.I. 200); and (4) Routel's Daubert motion seeking exclusion of AirWatch's damages expert (D.I. 197).

         AirWatch's request for additional claim construction (D.I. 191) will be granted. As a consequence of my decision on the disputed claim language, AirWatch's motion for summary judgment (D.I. 199) will be granted in part, since, given the evidence, there is no plausible basis for saying that AirWatch's system infringes the '216 patent. As a further consequence, both parties' Daubert motions (D.I. 197, 200) will be denied as moot. I will, however, deny AirWatch's summary judgment motion as to the alleged invalidity of the '216 patent.

         I. INTRODUCTION

         The parties are well aware of the background of this case, so I recite only those facts relevant to the motions at hand.

         Generally, the technology described in the '216 patent is directed to a means for remote computing access, "enabling peer-to-peer communication" between a host computer and remote device over a communication network. ('216 Pat. 1:7-10.) The '216 patent claims a method by which users of "remote devices" can connect to "hosts" through an interfacing component, a "controller."[1] ('216 Pat. 1:46-56.)

         That technology generally operates according to the steps listed in claim l.[2] First, the controller, a "general purpose computer" that "performs authentications, authorization and communications protocol management functions[]" ('216 Pat. 2:64-3:3), connects with a host, a "general purpose computer programmed according to the present invention, typically a personal computer executing a Windows operating system[]"[3] ('216 Pat. 2:60-62; 10:1-4). Then, the controller connects to a remote device, "such as a laptop computer, tablet computer, PDA, or mobile phone." (D.I. 218-1 ¶ 60; see also '216 Pat. 10:5-6; D.I. 202-1 ¶ 74.) Those are the three major players here: a remote device, a controller, and a host.

         Next, the controller validates both the remote device's and the host's legitimacy by examining a set of digital identifiers. ('216 Pat. 10:7-14.) At that point, the remote device selects a host, notifying the controller. ('216 Pat. 10:15-16.) Then, the controller sends "parameters," or the necessary information to setup the peer-to-peer connection, to the selected host.[4] ('216 Pat. 10:17-18.)

         After the validation and parameters steps, the controller sends "an instruction, from the controller to the selected host, to establish a connection to the remote device[.]" ('216 Pat. 10:19-20.) I will be referring to that limitation as the "instruction" limitation, or Step lg. After the operation described in the "instruction" limitation, and after a connection has been made between the host and the remote device, the controller receives notifications from both the host and remote device verifying that connection. ('216 Pat. 10:21-23.) Lastly, once the connection is made, the controller must "refrain[] from involvement[] ... 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 Pat. 10:24-30.)

         Relevant to its theories of infringement, Route 1 identifies two different configurations of Air Watch's accused products, which it contends embody two distinct forms of the claimed "host." (D.I. 218-1 ¶ 88; D.I. 228 at 14-15, 17-18.) Routel first argues that "the Secure Email Gateway (SEG), [5] which is connected to the Exchange Server[]" amounts to a host, as claimed in the '216 patent. (D.I. 228 at 15; D.I. 218-1 ¶ 88.) Alternatively, Routel contends that "an Air Watch customer's email system [or the Exchange Server], [6] in combination with the [AirWatch Cloud Connector]" ("ACC"), [7]amounts to the same. (D.I. 218-1 ¶ 88; see D.I. 228 at 18 ("[T]he host is not limited to [the ACC] but also includes the Exchange Server, ... i.e., email.").) In short, the first configuration identifies an email platform and an email inbox; the second configuration identifies an email inbox and an AirWatch component enabling cloud connectivity.

         This case was initially assigned to the Honorable Richard Andrews, but was subsequently re-assigned to me. Judge Andrews had previously conducted a Markman hearing and issued claim construction rulings, untangling much of the technical complexity of the patent's terms. "Once and done" should be the rule when it comes to claim construction, but there are exceptions. AirWatch submitted a letter memorandum, on March 14, 2019, "to bring additional claim construction disputes to the Court's attention and to seek the Court's guidance on how to proceed[]" (D.I. 191 at 1), and it has now asked me to construe the "instruction" limitation, Step lg, of claim 1. The operative language reads: "sending an instruction, from the controller to the selected host, to establish a connection to the remote device[.]" ('216 Pat. at 10:19-20.) Given the two allegedly infringing configurations advanced by Route 1, 1 must determine whether either infringes. As to the first configuration, I must determine whether the SEG and Exchange Server instruct the host to establish a connection with the remote device. And for the second configuration, I must determine whether the ACC and Exchange Server do the same.

         According to AirWatch, Route 1 has tried to expand the meaning of the "instruction" limitation through the testimony and reports of its infringement expert, Dr. Robert Akl. (D.I. 191 at 1-3.) That expanded construction, in AirWatch's view, is not supported by the '216 patent's claim language, specification, and prosecution history. Route 1 responded in a letter memorandum on March 21, 2019, disagreeing that its expert had done anything improper and opposing any further claim construction. (D.I. 193.)

         During the pendency of that request for additional claim construction, Air Watch moved for summary judgment of non-infringement and invalidity. Regarding noninfringement, it argued that, with an appropriate understanding of the "instruction" limitation, there was no infringement as a matter of law. As to invalidity, it argued that the "instruction" limitation fails to satisfy the written description requirement of 35 U.S.C. § 112. Additionally, both parties filed Daubert motions, Routel seeking to exclude AirWatch's damages expert and AirWatch to exclude Routel's damages expert. (D.I. 197, 200.)

         On June 26, 2019, 1 held oral argument on the dispositive motions and the Daubert motions, as well as the claim construction dispute.

         II. LEGAL STANDARDS [8]

         A. Claim Construction

         Patent claims are construed as a matter of law. "[T]he words of a claim are generally given their ordinary and customary meaning." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation and internal quotation marks omitted). That ordinary meaning "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[.]" Id. at 1313.

         "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. If the meaning of a claim term is not readily apparent, the court may look to "the words of the claims themselves, ... the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art." Id. (citation and internal quotation marks omitted). During claim construction, "[t]he sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law." Id. at 1324.

         B. Summary Judgment

         Federal Rule of Civil Procedure 56 states that summary judgment should be granted when "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). "[T]he plain language of Rule 56[] mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails 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 (1986). The party moving for summary judgment bears the burden of establishing that there are no genuine disputes of material fact and that there is entitlement to judgment as a matter of law.

         III. DISCUSSION

         By way of preview, I first construe the "instruction" limitation and conclude that it encompasses only host-initiated, not remote-initiated, connections. Next, based on that construction, I consider literal infringement - the only infringement theory at issue - and conclude that there is none because AirWatch's products practice only remote-initiated connections. The need for infringement damages testimony is thus obviated and the parties' Daubert motions are made moot. Finally, I consider the argument that the '216 patent is invalid for lack of written description, and I determine that genuine disputes of fact preclude summary judgment on that issue.

         1. Claim Construction

         Although the parties have raised other claim construction concerns, I limit my discussion to the "instruction" limitation, since it is dispositive of the pending summary judgment motion as to infringement. That limitation, again, Step lg of claim 1, requires "sending an instruction, from the controller to the selected host, to ...


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