Route1 Inc. v. Airwatch LLC, Vmware, Inc.

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
______________________

ROUTE1 INC.,
Plaintiff-Appellant

v.

AIRWATCH LLC, VMWARE, INC.,
Defendants-Appellees
______________________

2020-1031
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Appeal from the United States District Court for the
District of Delaware in No. 1:17-cv-00331-KAJ, Circuit
Judge Kent A. Jordan.
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Decided: October 7, 2020
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M
ARCEL CHARLES DUHAMEL, Vorys Sayer Seymour &
Pease LLP, Cleveland, OH, for plaintiff-appellant. Also
represented by MICHAEL J. GARVIN, AARON WILLIAMS;
WILLIAM H. OLDACH, III, Washington, DC; REX W. MILLER,
II, Columbus, OH.

BRIAN ROBERT MATSUI, Morrison & Foerster LLP,
Washington, DC, for defendants-appellees. Also repre-
sented by S
AMUEL BENJAMIN GOLDSTEIN; RICHARD HUNG,
MICHAEL ALLEN JACOBS, San Francisco, CA.
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ROUTE1 INC. v. AIRWATCH LLC
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______________________

Before PROST, Chief Judge, MOORE and STOLL, Circuit
Judges.
PROST, Chief Judge.
Route1 Inc. (“Route1”) appeals the U.S. District Court
for the District of Delaware’s order granting summary
judgment of noninfringement to AirWatch LLC and
VMware, Inc. (collectively, “AirWatch”). We affirm the dis-
trict court’s thorough opinion.
BACKGROUND
I
Route1 owns U.S. Patent No. 7,814,216 (“the ’216 pa-
tent”), which involves enabling communication between a
host computer (“host”) and a remote device (“remote”). The
patent’s sole independent claim recites a method by which
the host and remote become connected by interfacing with
an intermediary called the “controller.” First, the control-
ler separately connects to the host and the remote. Next,
it validates certificates received from each. After that, it
receives the remote’s selection of a host and sends param-
eters for the remote to the selected host. So far, the host
and remote have interacted only with the controller. The
next step changes that. This step, the “instruction limita-
tion,” is the subject of this appeal: “sending an instruction,
from the controller to the selected host, to establish a con-
nection to the remote device.” Last, the controller receives
notice that the host and remote are connected to one an-
other and refrains from further involvement. The claim re-
cites in full:
1. A method of enabling communication between a
host and a remote device using a controller, com-
prising:
connecting the controller to the host;
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connecting the controller to the remote device, the
host and the remote device being in separate loca-
tions;
validating, at the controller, digital identity certif-
icates 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 sig-
nature of the issuing certificate authority, thereby
converting the host to a validated host, and con-
verting the remote device to a validated remote de-
vice;
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 se-
lected 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 therebetween; and
after receiving notice of a connection between the
selected host and the validated remote device re-
fraining 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 re-
source of the controller.
’216 patent claim 1 (emphasis added).
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II
The instruction limitation was not proposed for con-
struction during the Markman proceedings in this case.
Rather, AirWatch requested construction after Route1’s
expert opined that the limitation may cover “a host-initi-
ated connection, or a remote-initiated and host-accepted
connection.” J.A. 12. AirWatch moved for summary judge-
ment of noninfringement while that request was pending.
The court construed the instruction limitation in an or-
der and memorandum opinion on summary judgment. See
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521
F.3d 1351, 1362 (Fed. Cir. 2008) (“When the parties present
a fundamental dispute regarding the scope of a claim term,
it is the court’s duty to resolve it.”). The court’s construc-
tion—“sending an instruction, from the controller to the se-
lected host, for the host to establish a connection to the
remote device”—adds only the words “for the host.” J.A. 18
(emphasis added). Under this construction, the limitation
“encompasses only host-initiated, not remote-initiated,
connections.” J.A. 11. Based on this construction, the
court granted summary judgment of noninfringement.
J.A. 20. Route1 appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
D
ISCUSSION
The parties agree that AirWatch does not infringe
claim 1 of the ’216 patent under the district court’s con-
struction. Appellant’s Br. 23–24; see also J.A. 20. We
therefore need only decide whether that construction is cor-
rect. We review a claim construction de novo where, as
here, it depends only on the intrinsic evidence. Teva
Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331
(2015).
The words of a claim “are generally given their ordi-
nary and customary meaning,” which is “the meaning that
the term would have to a person of ordinary skill in the art
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in question at the time of the invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
Claim terms “must be read in view of the specification.” Id.
at 1315. Additionally, “the prosecution history can often
inform the meaning of the claim language by demonstrat-
ing how the inventor understood the invention and
whether the inventor limited the invention in the course of
prosecution.” Id. at 1317. Based on this intrinsic evidence,
we affirm.
I
The district court’s construction emphasizes what is al-
ready plain from the claim language: the instruction sent
to the host is meant to be carried out by the host. As the
court explained: “It would be illogical, absent contrary in-
trinsic evidence, to conclude that an instruction sent from
the controller to the host somehow instructs the remote to
establish the connection, when the remote has received no
instruction.” J.A. 13. We agree.
Route1 appears to agree that the host, not the remote,
establishes the connection. Reply Br. 5 (“The structure of
the claim indicates that in the Instruction Limitation, it is
the host that acts to establish the connection.”). But by
parsing the word “establish,” Route1 contends that the in-
struction limitation nonetheless encompasses remote-initi-
ated as well as host-initiated connections. According to
Route1, “‘establish’ connotes the culmination or conclusion
of a process, regardless of where or how it was ‘initiated.’”
Appellant’s Br. 17; see id. at 15 (advancing the construction
“sending an instruction, from the controller to the host, to
bring into existence a connection to the remote device”). On
that basis, Route1 contends that the limitation does not
specify whether the host or remote initiates the connec-
tion—only that, after one of them does, the host takes the
final step of establishing it. We are unpersuaded.
Route1 improperly focuses on “the abstract meaning of
words rather than on the meaning of claim terms within
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the context of the patent.” Phillips, 415 F.3d at 1321. The
claim requires that, once the controller has separately val-
idated both the host and the remote, it sends parameters
for the remote to the host. Route1 acknowledges that, upon
receiving the parameters, “the host is enabled to make a
connection with the remote device.” Reply Br. 4. There-
fore, before instructing the host to establish a connection to
the remote, the controller has already sent the host infor-
mation enabling it to do so. Rather than supporting
Route1’s construction, this setup reinforces that “establish”
in this context is a simple directive for one entity to estab-
lish communication to another—and not, as Route1 con-
tends, a more roundabout directive to “actively determin[e]
whether or not to accept a connection request” from the re-
mote based on the previously received parameters. Id. At
the very least, Route1’s distinction between establishing
and initiating finds no support in the claim language. We
therefore turn to the rest of the specification.
II
The specification discloses host-initiated connections,
not remote-initiated connections, between the host and re-
mote. For example, it details steps for “[s]etting up a com-
munication channel between a remote computer and a host
computer” as follows: “At step 335, host 60 sends a hand-
shake to remote 10. . . . At step 435, remote 10 receives the
handshake from host 60.” ’216 patent col. 7 ll. 5–7, 14–15.
Figure 3A depicts this “handshake” with an arrow. As
shown, the host offers its hand first.
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Id. at Fig. 3A (annotated).
The district court was right: “That handshake estab-
lishes the connection, and is initiated by the host.” J.A. 13–
14. Although Route1 quotes passages in which the remote
requests a connection to the controller, it does not identify
a disclosure in which “the host establishes the connection
by responding to a request from the remote device.” Reply
Br. 2. Indeed, Route1 admits “there is no place in the spec-
ification where it is disclosed that the remote asks the host
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to connect, at least not directly.” Id. at 10. Rather, the
specification discloses only host-initiated connections, not
remote-initiated ones.
Of course, the specification’s disclosing only host-initi-
ated connections is not dispositive. Phillips, 415 F.3d at
1323. But it does “suggest that the patent’s claim[] do[es]
not encompass an embodiment contrary to these descrip-
tions.” Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374,
1382 (Fed. Cir. 2016). And, although “the specification
does not contain an explicit statement disclaiming” remote-
initiated connections, “this is not an instance where the
specification would necessarily have to disavow an embod-
iment that would otherwise be covered by the plain lan-
guage of the claim[].” In re Abbott Diabetes Care Inc., 696
F.3d 1142, 1149 (Fed. Cir. 2012). Rather, the plain terms
of the instruction limitation are “entirely consistent with
and even support the specification’s exclusive depiction” of
host-initiated connections. Id. at 1150.
III
Even if there were any lingering doubt, such doubt is
put to rest by the prosecution history. Route1 added the
instruction limitation to claim 1 (then claim 3) during pros-
ecution to overcome a rejection over U.S. Patent Applica-
tion Publication No. 2005/0120204 (“Kiwimagi”) and
repeatedly distinguished Kiwimagi on the ground that it
teaches a remote-initiated connection. For example, after
relying on Figure 3A to explain the instruction limitation
to the patent office, Route1 annotated a figure from Ki-
wimagi by adding two bold columns—one on either side—
in an arrangement mirroring Figure 3A (i.e., depicting Ki-
wimagi’s remote client (remote), security host (controller)
and system host (host) from left to right):
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J.A. 5250. To depict the remote’s first contact with the
host, Route1 added an arrow extending from the remote to
the host—the opposite direction of the Figure 3A hand-
shake. Then, Route1 argued that Kiwimagi “fails to show
or suggest” the instruction limitation and “teaches away
from claim 3 because claim 3 requires that the controller
instruct the host to establish a connection to the remote,
whereas Kiwimagi teaches that the remote client requests
a connection directly from the host system.” J.A. 5251.
Route1 also explained why this difference was “cru-
cially important”:
An advantage of the invention of claim 3 is that it
works flawlessly even if the host is behind a
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firewall. In contrast, a firewall is likely to block a
request from an unknown remote for access to a
host behind the firewall, and so Kiwimagi’s system
will not work properly with a host behind a fire-
wall. . . . Thus, the ability to work despite the host
being behind a firewall, present in claim 3 but not
in Kiwimagi, is crucially important in modern com-
puting systems.
J.A. 5251. Further, in a prosecution appeal brief, Route1
doubled down on its “firewall” rationale and distinguished
Kiwimagi on the basis that Kiwimagi’s remote “takes the
initiative”:
The present invention is directed to a configuration
where a host computer is likely to be behind a fire-
wall . . . . The firewall blocks unsolicited messages
to the host computer . . . ; an example of an unso-
licited message to the host computer is: an access
request from a remote computer. The present in-
vention is a workaround that enables a remote
computer to access a host computer where the host
computer is behind a firewall. In short, the remote
tells the controller that it wishes to access the host,
and the controller instructs the host to establish
communication with the remote. Thus, the remote
is able to access the host without sending an access
request to the host that would be blocked by the
firewall.
. . . .
Claim 3 requires that the controller sends parame-
ters for the remote to the host, and instructs the host
to establish communication with the remote. In
contrast, Kiwimagi has its security host send pa-
rameters for the host to the remote, so that the re-
mote can establish communication with the host.
Kiwimagi is simply the prior art, where the remote
can request access to a host without concern for a
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firewall that blocks such access requests. When
the host is behind a firewall, Kiwimagi’s teaching
does not enable communication to occur between the
remote and the host. In contrast, when the host is
behind a firewall, the invention of claim 3 enables
communication to occur between the remote and the
host.
J.A. 5292, 5300. After reprising its annotated Kiwimagi
figure, Route1 concluded:
Kiwimagi fails to show or suggest . . . sending an
instruction, from the controller to the selected host,
to establish a connection to the remote. Instead,
Kiwimagi teaches that the remote takes the initia-
tive to establish a connection to the host. . . . Ki-
wimagi’s remote request[s] access from the host, so
there is no need for the host to establish a connec-
tion to the remote.
J.A. 5301–02 (emphasis added).
Route1 attempts to explain away these statements by
characterizing Kiwimagi’s connection as both initiated and
established by the remote, whereas the instruction limita-
tion (in Route1’s view) covers connections that are always
established by the host but can be initiated by the remote.
The attempt fails. Route1’s annotated figure depicts Ki-
wimagi’s remote “request[ing]” a connection (with an arrow
to the host) and the host “grant[ing]” the request (with an
arrow back to the remote). J.A. 5300–01. Route1’s distinc-
tion between initiating and establishing, therefore, does
not differentiate its statements about Kiwimagi from the
remote-initiated scenario it now seeks to cover. E.g., Reply
Br. 10 (“[A] connection may be established when a device
accepts a connection request.”).
Splitting hairs, Route1 tries to differentiate “taking the
initiative” from “initiating.” See Reply Br. 16. But we see
no relevant difference. Route1 described Kiwimagi’s
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remote as “request[ing]” access, J.A. 5302, just how it de-
scribes remote-initiated connections here. E.g. Appellant’s
Br. 23 (“[T]he remote can initiate the process by requesting
that the connection be established.”). At the end of the day,
the construction to which Route1 objects—an instruction
“for the host to establish a connection to the remote”—may
as well have come from Route1’s prosecution appeal brief.
E.g., J.A. 5300 (“[T]he controller . . . instructs the host to
establish communication with the remote.” (emphasis
omitted)). We conclude that the entire intrinsic record sup-
ports the district court’s construction of the instruction lim-
itation as not covering remote-initiated connections.
CONCLUSION
We have considered Route1’s remaining arguments
and find them unpersuasive. For the above reasons, we
hold that the district court did not err in its claim construc-
tion. Because Route1 does not dispute noninfringement
under that construction, we affirm the district court’s grant
of summary judgment of noninfringement.
AFFIRMED
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