Digital-Vending Services International, LLC v. The University of Phoenix, Inc.

“The context in which a term is used in the asserted claim can be highly instructive” to its claim construction. A limitation should not be read into a claim “based on statements made during prosecution absent a clear disavowal or contrary definition.”

Opinion (Rader): Digital-Vending Services International, LLC (“Digital”) appealed from the District Court’s grant of summary judgment of non-infringement of U.S. Patent Nos. 6,170,014, 6,282,573 (“the ‘573 patent”), and 6,606,664 by The University of Phoenix, Inc. and Apollo Group, Inc. (collectively, “Phoenix”). The Court of Appeals for the Federal Circuit vacated-in-part due to incorrect claim construction of a term, affirmed-in-part, and remanded to the district to perform term construction for an alternative non-infringement argument. The Court of Appeals found that the District Court had incorrectly interpreted the term “registration server” to require the server to be free of managed content. The court noted that “the context in which a term is used in the asserted claim can be highly instructive,” and the context of “registration server” strongly suggested against the server having the requirement of being free of managed content. The court noted that claims 1-22 of the ‘573 patent, unlike other claims, did not state that the registration server needed to be free of managed content, and that this limitation should not be made “based on statements made during prosecution absent a clear disavowal or contrary definition.” The court AFFIRMED on the claims that included the being free of managed content limitation. Phoenix presented another defense against infringement during trial, but the Court of Appeals REMANDED to the District Court to determine the construction of “server” as the general rule is that “a federal appellate court does not consider an issue not passed upon below.”