United States District Court, D. Delaware
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
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
JORDAN, CIRCUIT JUDGE.
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).
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.
parties are well aware of the background of this case, so I
recite only those facts relevant to the motions at hand.
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." ('216 Pat. 1:46-56.)
technology generally operates according to the steps listed
in claim l. 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" ('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.
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. ('216 Pat. 10:17-18.)
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
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),  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],
combination with the [AirWatch Cloud Connector]"
("ACC"), 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.
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.
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.)
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,
26, 2019, 1 held oral argument on the dispositive motions and
the Daubert motions, as well as the claim
LEGAL STANDARDS 
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.
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.
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.
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.
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 ...