Docket No. 2011-1216
RADER, LINN, MOORE(D)
March 7, 2012
Brief Summary: The panel concluded that the DC improperly added “a ‘free of content managed by the architecture’ limitation to the term ‘registration server’” and reversed that portion of the decision.
Summary: The USDC ED VA granted Phoenix SJ of non-infringement of Digital-Vending’s (“DV”) patents (three in the same family with the same specification) related to regulating access to content delivered through a computer network, and DV appealed. The panel first addressed DV’s request for a more limiting claim construction than was adopted by the DC, but because that request was “substantially different in scope” from that sought at the DC, the request was refused (Conoco, FC 2006; Blackboard, FC 2009). Regarding the DC claim construction, the panel found error in the requirement that “a registration server…be free of content managed by the architecture” (the computer system has a “registration server” on which users register separated from a content server (“architecture”) which holds the content (e.g., coursework)). This is because the claims indicated that the “registration server” cannot be “construed to inherently contain the ‘free of content managed by the architecture’” because several claims make that separation (e.g., the “language in many of the asserted claims would be superfluous” (Bicon, FC 2006 (“claims are interpreted with an eye toward giving effect to all terms in the claim”); Phillips, FC 2005). In addition, “the specification used the term…in a manner consistent with the differences in claim language”, “the careful distinctions in specification descriptions avoid any hint that the inventors clearly disavowed claim scope” (Epistar, FC 2009), and “the prosecution history does not provide any basis for reading a ‘free of content managed by the architecture’ limitation into the stand-alone phrase ‘registration server’” (Phillips, FC 2005; August Tech., FC 2011; Ecolab, FC 2009). Thus, the panel concluded that the DC improperly added “a ‘free of content managed by the architecture’ limitation to the term ‘registration server’” and reversed that portion of the decision (Judge Moore disagreed, concluding DV had surrendered subject matter in the specification, as explained in the dissent). The panel also found that DV had waived its arguments regarding construction of “registered user” and that the DC had not construed the term “server” and could not therefore be considered in this appeal.