N OTE : This disposition is nonprecedential.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

______________________ Appeal from the United States District Court for the District of Delaware in No. 1:17

- cv

- 00331

- KAJ, Circuit Judge Kent A. Jordan.

______________________
Decided: October 7 , 2020

______________________
M ARCEL C HARLES D UHAMEL , Vorys Sayer Seymour & Pease LLP, Cleveland, OH, for plaintiff

- appellant. Also represented by M ICHAEL J. G ARVIN , A ARON W ILLIAMS ; W ILLIAM H. O LDACH , III , Washington, DC; R EX W. M ILLER , II , Columbus, OH.

B RIAN R OBERT M ATSUI , Morrison & Foerster LLP, Washington, DC, for defendants

- appellees. Also represented by S AMUEL B ENJAMIN G OLDSTEIN ; R ICHARD H UNG , M ICHAEL A LLEN J ACOBS , San Francisco, CA. Case: 20-1031 Document: 58 Page: 1 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 2

______________________

Before P ROST , Chief Judge

, M OORE and S TOLL , Circuit Judges

. P ROST , Chi ef J udge

. 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 district court’s thorough opinion

. B ACKGROUND

I

Route1 owns U.S. Patent No. 7,814,216 ( “ the ’216 patent ” ) , 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

a n intermediary called the “ controller

. ” First, t he controller separately connects to the host and the remote

. Next

, it validates certifica tes received from each

. After that

, it receives the remote ’s selection of a host and sends parameters for the remote to the selected host

. S o far

, the host and remote have interacted only with the controller. The next step changes that. This step

, the “instruction limitation,” is the subject of this appeal: “ sending an instruction,from the controller to the selected host, to establish a connection to the remote device .” Last, the controller receiv es notice that the host and remote are connected t o one another and refrains from further involvement. T he claim recites in full : 1. A method of enabling communication between ahost and a remote device using a controller, comprising:
connecting the controller to the host; Case: 20-1031 Document: 58 Page: 2 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 3

connecting the controller to th e remote device, thehost 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 a symmetric key algorithm keypair, (ii) identity information, and (iii) a digital signature of the issuing certificate authority, therebyconverting the host to a validated host, and converting the remote device to a validated remote device;
receiving, at t he 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 connectio n 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 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 witho ut using any resource of the controller.
’216 patent claim 1 (emphasis added ). Case: 20-1031 Document: 58 Page: 3 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 4

II

T he instruction limitation was not proposed for construction during the Markman proceedings in this case

. Rather, AirWatch requested construction after Route1’s expert opined that the limitation may cover “ a host

- initiated connection, or a remote

- initiated and host

- accepted connection

. ” J.A. 12

. AirWatch moved for summary judgement of noninfringement w hil e that request was pending

. The court construed the instruction limitation in an order 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 construction

— “sending an instruction, from the controller to the selected host, for the host to establish a connection to the remote de vice”

— add s 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 construction

. Appellant’s Br. 23

– 24; see also J.A. 20

. W e therefore need only decide whether that construction is correct

. We review a claim construction de novo w here, as here, it depends only on the intrinsic evidence. Teva Pharm s . USA, Inc. v. Sandoz, Inc. , 574 U. S. 318, 331 (2015).

The 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 Case: 20-1031 Document: 58 Page: 4 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 5

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

, “ t he prosecution history can ofteninform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution .” Id. at 1317. Based on th is intrinsic evidence,

we affirm

. I

The district court’s construction emphasizes what is already plain from the claim languag e : t he instruction sent to the host is meant to be carried out by the host

. As the court explained : “ I t would be illogical, absent contrary intrinsic 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.

Ro ute1 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 b y parsing the word “esta blish,” Route1 contends that the instruction limitation nonetheless encompass es remote

- initiated as well as host

- initiated connections

. According to Route1, “‘establish’ connotes the culmination or conclusion of a process, regardless of where or how it wa s ‘ 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 n ot specify whether the host or remote initiates the connection

— 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 Case: 20-1031 Document: 58 Page: 5 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 6

the context of the patent .” Phillips , 415 F.3d at 1321

. The claim requires that, o nce the controller has separately validated both the host and the remote, it sends parameters for the remote to the host

. Route1 acknowledges that, u pon receiving the parameters, “ th e host is enabled to make a connection with the remote device .” Reply Br. 4. Therefore

, before instructing the host to establish a connection to the remote
, t he con troller has already sen t the host information enabl ing it to do so

. Rather than support ing Route1’s construction, this setup reinforces that “establish”in this context is a simple directive for one entity to establish communication to another

— and not, as Route1 contends, a more roundabout directive to “actively determin[e]whether or not to accept a connection request” from the remote based on the previously received parameters. Id. At the very least, Route1’s distinction between establishing and initia ting finds no support in the claim language. We therefore turn to the rest of the specification.

II

T he specification discloses host

- initiated connections

, not remote

- initiated connections

, between the host and remote

. For example, it details steps for “[s]etting up a communication channel between a remote computer and a host computer” as follows: “A t step 335, host 60 sends a handshake to remote 10

. . . . A t 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. Case: 20-1031 Document: 58 Page: 6 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 7

Id. at Fig. 3A (annotated)

. The district court was right : “That handshake establishes the connection, and is initiated by the host.” J.A. 1 3

– 1 4

. Although Route1 quotes passages in which the remote request s 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 specification where it is disclosed that the remote asks the host Case: 20-1031 Document: 58 Page: 7 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 8

to connect, at least not directly.” Id. at 10. Rather, the specification discloses only host

- initiated connections, not remote

- initiat ed ones.
Of course, the specification’s disclosing only host

- initiated 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 descriptions .” Wi

- LAN USA, Inc. v. Apple Inc. , 830 F.3d 1374, 1382 (Fed. Cir. 2016)

. And, a lthough “the specification does not contain an explicit statement disclaiming” remote

initiated connection s , “ this i s not an instance where thespecification would necessarily have to disavow an embodiment that would otherwise be covered by the plain language of the claim [] .” In re Abbott Diabetes Care Inc. , 696 F.3d 1142, 1149 (Fed. Cir. 2012)

. Rather

, the plain term s 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 a ny lingering doubt, such doubt is put to rest by the prosecution history. Route1 added theinstruction limitation to claim 1 (then claim 3) during prosecution to overcome a rejection over U.S. Patent Application Publication No. 2005/0120204 (“Kiwimagi”) and repeatedly distinguished Kiwimagi on the ground that it teache s a remote

- initiated connection. For example, a fter relying on Figure 3A to explain the instruction limitation to the patent office, Route1 annotated a figure from Kiwimagi by adding two bold columns

— one on either side

— in an arrangement mirror ing F igure 3A ( i.e., depicting Kiwimagi’s remote client (remote ), security host (controller) and system host (host) from left to right ) : Case: 20-1031 Document: 58 Page: 8 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 9

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 handshake

. 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 “crucially important” :
A n advantag e of the invention of claim 3 is that it works flawlessly even if the host is behind a Case: 20-1031 Document: 58 Page: 9 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 10

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 p roperly with a host behind a firewall.

. . . Thus, the ability to work despite the host being behind a firewall, present in claim 3 but notin Kiwimagi, is crucially important in modern computing systems.

J.A. 5251. Further, i n a prosecution appeal brie f, Route1 doubled down on its “firewall” rationale and distinguish ed Kiwimagi on the basis that Kiwimagi’s remote “ takes the initiative ”:
The present invention is directed to a configurationwhere a host computer is likely to be behind a firewall

. . . . The firewall blocks unsolicited messages to the host computer

. . . ; an example of an unsolicited message to the host computer is: an access request from a remote computer. The present invention 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 t o 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 parameters for the remote to the host, and instructs the host to establish communication with the remo te. In contrast, Kiwimagi has its security host send parameters for the host to the remote , so that the remote 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 Case: 20-1031 Document: 58 Page: 10 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 11

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. A fter reprising its annotat ed Kiwimagi figure, Route1 conclude d : 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 initiative to establish a connection to the host

. . . . Kiwimagi’s remote request[s] acce ss from the host, sothere is no need for the host to establish a connection 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 limitation (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 Kiwim agi’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. 530 0

– 01

. Route1’s distinction between initiating and establishing, therefore, does not differentiate its s tatements 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

. ” S ee Reply Br. 16

. But w e see no relevant difference

. Route1 described Kiwimagi ’s Case: 20-1031 Document: 58 Page: 11 Filed: 10/07/2020ROUTE 1 INC

. v. AIRWATCH LLC 12

remote as “request[ing] ” access , J.A. 5302

, just how it descri bes 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,
t he 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 support s the district court’s construction of the instruction limitation as not covering remote

- initiated connections.

C ONCLUSION 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 construction. Because Route1 does not dispute noninfringement under that construction, we affirm t he district court’s grant of summary judgment of noninfringement.

AFFIRMED Case: 20-1031 Document: 58 Page: 12 Filed: 10/07/2020