Digital-Vending Services International, LLC v. University of Phoenix, Inc.
672 F.3d 1270
| Fed. Cir. | 2012Background
- This appeal involves U.S. Patent Nos. 6,170,014 ('014), 6,282,573 ('573), and 6,606,664 ('664) directed to regulating access to content over a computer network and share a common specification.
- The patents originate from the '221 application, which the PTO split into two inventions, yielding the '014 and '573 patents; '664 is a continuation of the '573 family.
- Digital-Vending sued Phoenix, Capella, and Walden for infringement; the Texas case was transferred to Virginia, where Markman construction occurred and Phoenix obtained summary judgment of non-infringement.
- The district court construed 'content managed by the architecture' narrowly as digital material sold/licensed through the architecture, and construed 'registration server' as free of content managed by the architecture.
- Digital-Vending challenged these constructions on appeal; Capella/Walden settled, leaving Phoenix as the defendant-appellee.
- The court vacates the district court’s non-infringement ruling for certain asserted claims and remands for further proceedings, while affirming in part as to other claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper scope of 'content managed by the architecture' | Digital-Vending argues for a broader construction; seeks reversal of the district court's narrowed scope. | Phoenix supported the district court's construction limiting content managed by the architecture to network-transmittable digital material sold/licensed via the architecture. | Not adopted anew on appeal; review limited to the record below; district court construction stands unless clearly improper. |
| Whether a 'registration server' must be free of content | Digital-Vending contends the term does not inherently require content-free servers across all claims. | Phoenix argues the registration server must be free of managed content as a feature of the architecture. | The court holds that 'registration server' is not inherently required to be free of content for claims 1-22; remands for potential alternative non-infringement theory and clarifies the need to review other claims. |
| Effect of stipulation construing 'registered user' to require a registration server | Digital-Vending challenges the stipulated construction as overly narrow or improper for broader claim scope. | Phoenix relied on the stipulation to compel a registration-server-based reading of 'registered user'. | Waived; the court declines to entertain challenge to the stipulated construction. |
| Whether 'server' is limited to a single computer or may be a distributed set | Digital-Vending contends the district court did not construe 'server' and that a distributed server may infringe. | Phoenix argued for a restrictive interpretation requiring a single machine. | Appellate court does not sua sponte construe 'server'; remand to district court to address this issue in the first instance. |
Key Cases Cited
- Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (claim constructions are reviewed de novo)
- Conoco, Inc. v. Energy & Envtl. Int'l., L.C., 460 F.3d 1349 (Fed. Cir. 2006) (waiver of construction arguments on appeal not allowed)
- Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (waiver and consistency of claim construction arguments on appeal)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim terms interpreted in light of surrounding claim language)
- Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001) (same-term presumption across claims)
- Epistar Corp. v. Int'l Trade Comm'n, 566 F.3d 1331 (Fed. Cir. 2009) (reliance on prosecution history for claim scope)
- August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278 (Fed. Cir. 2011) (prosecution history as to claim scope)
- Toro Co. v. White Consolidated Indus., Inc., 199 F.3d 1295 (Fed. Cir. 1999) (clear disavowal defeats broader claim scope)