Digital-Vending Services International, LLC v. THE UNIVERSITY OF PHOENIX, INC., and APOLLO GROUP, INC.

United States Court of Appeals
for the Federal Circuit
__________________________
DIGITAL-VENDING SERVICES INTERNATIONAL,
LLC,
Plaintiff-Appellant,
v.
THE UNIVERSITY OF PHOENIX, INC., and
APOLLO GROUP, INC.,
Defendants-Appellees.
__________________________
2011-1216
__________________________
Appeal from the United States District Court for the
Eastern District of Virginia in Case No. 09-CV-0555,
Judge Jerome B. Friedman.
___________________________
Decided: March 7, 2012
___________________________
ANDREW G. D INOVO , DiNovo, Price, Ellwanger &
Hardy, LLP, of Austin, Texas, argued for plaintiff-
appellant. With him on the brief were STEPHEN L. N EAL,
JR. DiMuro Ginsberg, PC, of Alexandria, Virginia,
M ICHAEL P. ADAMS , Winstead Sechrest & Minick, P.C., of
Austin, Texas, and GREGORY R. LYONS , Wiley Rein, LLP,
of Washington, DC. Of counsel were BERNARD J. D IM URO ,
DiMuro, Ginsberg, PC, of Alexandria, Virginia, and

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DIGITAL - VENDING v. UNIV OF PHOENIX 2
WILLIAM M. PARRISH , DiNovo, Price, Ellwanger & Hardy,
LLP, of Austin, Texas.
WINSTOL D. CARTER , JR. Morgan, Lewis & Bockius,
LLP, of Houston, Texas, argued for defendants-appellees.
With him on the brief were DAVID J. LEVY, C. ERIK
H AWES , JAMES A. G LENN and D AVID M. M ORRIS .
__________________________
Before RADER , Chief Judge, LINN and M OORE, Circuit
Judges. Opinion dissenting-in-part filed by Circuit Judge
M OORE.
RADER, Chief Judge.
The United States District Court for the Eastern Dis-
trict of Virginia granted The University of Phoenix, Inc.
and Apollo Group, Inc.’s (collectively, “Phoenix”) motion
for summary judgment of non-infringement of all asserted
claims. Because the district court’s determination was
based in part on an erroneous claim construction, this
court vacates the summary judgment of non-infringement
with respect to some claims, affirms with respect to
others, and remands for further proceedings.
I
This appeal features three patents: U.S. Patent Nos.
6,170,014 (“the ’014 patent”), 6,282,573 (“the ’573 pat-
ent”), and 6,606,664 (“the ’664 patent”). These patents
are directed to regulating access to content that is deliv-
ered through a computer network. All three patents
belong to the same family and share the same specifica-
tion.
The inventors initially filed Application No.
09/272,221 (“the ’221 application”), including claims
covering two distinct inventions. The Patent and Trade-

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DIGITAL - VENDING v. UNIV OF PHOENIX 3
mark Office (“PTO”) found that claims 1-15 of the ’221
application were drawn to “managing content in a shared
environment through a security manager and a funds flow
manager,” while claims 16-37 were drawn to a distinct
invention involving a “preregistered user accessing con-
tent that contains previously treated critical portion.”
J.A. 3595. Accordingly, the PTO imposed an elec-
tion/restriction requirement. Hence, the inventors con-
tinued to pursue the first set of claims in the ’221
application, which eventually issued as the ’014 patent,
while separately pursuing the second set of claims in a
divisional application, which eventually issued as the ’573
patent.
The claimed invention in the ’014 patent is a multi-
level computer architecture with a registration server
level, a content server level, and a client level. ’014
patent col.23 ll.14-37. The architecture prevents unau-
thorized use of content, in part, by keeping the content on
a content server, separate from the registration server
(which is free of such content). Id.
The ’573 patent claims a method and a computer ar-
chitecture for regulating access to content in a shared use
environment. ’573 patent col.23 l.47-col.26 l.43. The
claimed invention prevents unauthorized use of content,
in part, by “treating” (i.e., separating, encrypting, com-
pressing, or otherwise enhancing protection) a critical
portion of the content and only delivering this critical
portion to registered users. Id.
The ’664 patent is a continuation of the application
that issued as the ’573 patent. The ’664 patent claims a
multi-level computer architecture including a registration
server level, a content server level, and a client level and
having a particular type of client-server network commu-
nication link. ’664 patent col.23 l.49-col.25 l.12.

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DIGITAL - VENDING v. UNIV OF PHOENIX 4
Digital-Vending Services International, LLC (“Digital-
Vending”) filed suit in the United States District Court for
the Eastern District of Texas against Phoenix, Capella
Education Company (“Capella”), and Walden University,
Inc. (“Walden”), alleging infringement of the ’014 patent,
the ’573 patent, and the ’664 patent. The Texas court
transferred the case to the United States District Court
for the Eastern District of Virginia. After a Markman
hearing, the Virginia district court issued a claim con-
struction order. Capella and Walden entered into a
settlement agreement with Digital-Vending. Phoenix
filed a motion for summary judgment of non-infringement
of all asserted claims. Digital-Vending then filed a motion
for “clarification,” which sought reconsideration of the
court’s construction of the term “registered user.” The
district court granted the motion for summary judgment
of non-infringement, denied the motion for “clarification,”
and entered judgment in favor of Phoenix. Digital-
Vending appealed the district court’s construction of
various claim terms and the resulting grant of summary
judgment of non-infringement. This court has jurisdiction
under 28 U.S.C. § 1295(a)(1).
II
This court reviews claim constructions without defer-
ence. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1451
(Fed. Cir. 1998) (en banc). However, “a party may not
introduce new claim construction arguments on appeal or
alter the scope of the claim construction positions it took
below.” Conoco, Inc. v. Energy & Envtl. Int’l , L.C., 460
F.3d 1349, 1358-59 (Fed. Cir. 2006). Contrary to Digital-
Vending’s suggestion, Blackboard, Inc. v. Desire2Learn,
Inc., 574 F.3d 1371 (Fed. Cir. 2009), does not stand for the
proposition that a party is free to seek a claim construc-
tion on appeal substantially different from the construc-
tion it proposed below simply because the district court

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DIGITAL - VENDING v. UNIV OF PHOENIX 5
“construed the claim language in a manner different from
the construction proposed by either party.” Id. at 1378.
In Blackboard, the appellee’s claim construction position
on appeal was consistent with its earlier proposed con-
struction but inconsistent with a statement made during
a colloquy at the Markman hearing. Id. This court
explained that, in light of the specific factual circum-
stances in that case, the question of waiver was a “diffi-
cult one” and ultimately held that the appellee had not
waived its validity challenge, which relied upon an issue
of claim construction. Id. This court did not hold that a
party was free to argue a claim construction different
from both its earlier proposed construction and the dis-
trict court’s construction simply because the district court
had not adopted either party’s proposed constructions. To
the contrary, this court has often stated that a party may
not, as a general rule, change the scope of its claim con-
struction on appeal. See, e.g., CCS Fitness, Inc. v. Bruns-
wick Corp., 288 F.3d 1359, 1371 (Fed. Cir. 2002) (“Our
precedent makes clear that in the context of claim con-
struction, a waiver may occur if a party raises a new issue
on appeal, as by, e.g., presenting a new question of claim
scope.”); Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1347 (Fed. Cir. 2001) (concerns about the
proper role of appellate review “preclude a party from
changing its claim construction, that is, the scope of its
claim construction, on appeal”).
All of the claims in the ’014 patent, claims 23-37 of the
’573 patent, and all of the claims of the ’664 patent refer
to “computer architecture for managing content,” with a
registration server “free of content managed by the archi-
tecture” and a content server “containing content man-
aged by the architecture.” See, e.g., ’014 patent col.23
ll.14-38. During claim construction briefing and argu-
ment before the district court, Digital-Vending took the

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DIGITAL - VENDING v. UNIV OF PHOENIX 6
position that “content managed by the architecture”
either required no construction or should be construed as
“courseware and other content such as audio, video, text
and interactive software.” J.A. 54. Phoenix proposed
construing the term to mean “digital data controlled by
any part of the architecture.” Id. The district court
rejected both parties’ proposed constructions and instead
construed “content managed by the architecture” to mean
“digital material capable of being transmitted over a
computer network that is being sold or licensed through
the architecture.” J.A. 55.
Digital-Vending argued before the district court that
summary judgment of non-infringement was improper
even under the district court’s construction of “content
managed by the architecture.” On appeal, however,
Digital-Vending has not challenged the district court’s
grant of summary judgment of non-infringement under
the district court’s construction. Instead, Digital-Vending
now seeks to overturn the district court’s grant of sum-
mary judgment of non-infringement based on a construc-
tion of “content managed by the architecture” that is
different from both the construction it proposed below and
the district court’s construction. Digital-Vending argues
that this court should construe “content managed by the
architecture” to mean “the digital product being commer-
cialized, that is delivered over a computer network, and
that the network architecture protects.”
This new construction is substantially different, hav-
ing a far more limited scope, compared to the construction
Digital-Vending proposed below. Digital-Vending’s ear-
lier proposed construction, “courseware and other content
such as audio, video, text and interactive software,” J.A.
54, was very broad and merely listed examples of types of
content included, without excluding any types of content
or otherwise delineating the outer reaches of the claim

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DIGITAL - VENDING v. UNIV OF PHOENIX 7
term. The district court’s construction limits “content
managed by the architecture” to “digital material capable
of being transmitted over a computer network that is
being sold or licensed through the architecture.” J.A. 55.
Despite the fact that the district court adopted a claim
construction narrower in scope than the construction
Digital-Vending itself proposed, Digital-Vending now
argues that the district court’s construction is too broad
because it includes material that is licensed without
charge to registered users. Because Digital-Vending’s
newly proposed construction for “content managed by the
architecture” is substantially different in scope from the
construction it sought below, this court will not attempt to
review an argument not presented first to the trial court.
III
All of the asserted claims, other than claims 13-22 of
the ’573 patent, explicitly require a “registration server.”
The district court construed “registration server” as “[a]
server for performing new user registration that contains
at least a portion of a remote registration manager and a
registration database. Registration servers must be
separate from content servers and be free of content
managed by the architecture.” J.A. 38.
The district court erred in requiring a registration
server to be free of content managed by the architecture.
This court has noted that “the context in which a term is
used in the asserted claim can be highly instructive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005) (en banc). The context in which the term “registra-
tion server” is used in the claims strongly suggests that a
registration server does not have the inherent character-
istic of being free of managed content. Many of the as-
serted claims specifically require the registration server
to be free of content managed by the architecture, while

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DIGITAL - VENDING v. UNIV OF PHOENIX 8
other asserted claims merely require a registration server,
without stating this additional limitation. In particular,
all of the claims in the ’014 patent, all of the claims in the
’664 patent, and claims 23-37 of the ’573 patent explicitly
require “at least one registration server, each registration
server comprising a remote registration manager and a
registration database for new user registration, and each
registration server being further characterized in that it is
free of content managed by the architecture.” ’014 patent
col.23 ll.17-22 (emphasis added); ’664 patent col.23 ll.52-
57; ’573 patent col.25 ll.17-22. In contrast, claims 1-22 of
the ’573 patent do not contain this language. Claims 1-12
of the ’573 patent simply refer to a “registration server”
without further description, while claims 13-22 of the ’573
patent do not contain the phrase “registration server.”
“Registration server” is presumed to have the same
meaning throughout all of the claims in the absence of
any reason to believe otherwise. See Fin Control Sys. Pty,
Ltd. v. OAM, Inc., 265 F.3d 1311, 1318 (Fed Cir. 2001)
(“the presumption [is] that the same terms appearing in
different portions of the claims should be given the same
meaning unless it is clear from the specification and
prosecution history that the terms have different mean-
ings at different portions of the claims”). If “registration
server” were construed to inherently contain the “free of
content managed by the architecture” characteristic, the
additional “each registration server being further charac-
terized in that it is free of content managed by the archi-
tecture” language in many of the asserted claims would be
superfluous. This construction is thus contrary to the
well-established rule that “claims are interpreted with an
eye toward giving effect to all terms in the claim.” Bicon,
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
In Phillips, this court reinforced the importance of con-
struing claim terms in light of the surrounding claim

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DIGITAL - VENDING v. UNIV OF PHOENIX 9
language, such that words in a claim are not rendered
superfluous. 415 F.3d at 1314. For example, when a
claim refers to “steel baffles,” this “strongly implies that
the term ‘baffles’ does not inherently mean objects made
of steel.” Id. In this case, the reference in some claims to
a “registration server being further characterized in that
it is free of content managed by the architecture” strongly
implies that the term “registration server,” standing
alone, does not inherently mean a server that is free of
managed content.
Parts of the specification describe the registration
server as being free of managed content. However, it is
worth noting that claims 1-22 of the ’573 patent relate to
methods for protecting content,1 while claims 23-37 of the
’573 patent relate to a computer architecture for protect-
ing content. As noted above, the architecture claims
explicitly require the registration server to be free of
managed content, as this is one way in which the archi-
tecture prevents unauthorized use of the managed con-
tent. See ’573 patent col.25 l.13-col.26 l.43. The method
claims, on the other hand, do not recite any requirement
of keeping the registration servers free of managed con-
tent; rather they describe treating a critical portion of the
managed content, as a means for preventing unauthorized
use. See id. col.23 l.47-col.25 l.12. Notably, the inventors
only referred to the requirement of keeping registration
servers free of managed content when describing em-
1 Claims 13-22 of the ’573 patent are Beauregard
claims, claiming a “computer storage medium having a
configuration that represents data and instructions which
will cause at least a portion of a multi-level computer
system to perform method steps.” ’573 patent col.24 ll.32-
35. Such functionally-defined claims should be treated as
method claims to avoid “exalt[ing] form over substance.”
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1374 (Fed. Cir. 2011).

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DIGITAL - VENDING v. UNIV OF PHOENIX 10
bodiments of the claimed architecture and never referred
to such a requirement in the parts of the specification
describing the claimed methods. Thus, the specification
used the term “registration server” in a manner consistent
with the differences in claim language. Moreover the
careful distinctions in specification descriptions avoid any
hint that the inventors clearly disavowed claim scope with
respect to the method claims. See Epistar Corp. v. Int’l
Trade Comm’n, 566 F.3d 1321, 1334 (Fed. Cir. 2009)
(requiring “expressions of manifest exclusion or restric-
tion, representing a clear disavowal of claim scope” in
order to limit claims based on language in the specifica-
tion).
For example, the “Overview of the Architecture” sec-
tion, which is devoted to describing the claimed architec-
ture in Figure 1, states that “each registration server 108
is free of courseware or other deliverable content that is
managed by the architecture 100.” ’573 patent col.8 ll.28-
30. This section explains further that “a content server
110 and a registration server 108 may not reside on the
same computer because that would violate the require-
ment that registration servers 108 not contain course-
ware.” Id. col.9 ll.12-15. Likewise, the “Content Server”
section, which describes the role of the content server in
the claimed architecture, provides that “[u]nlike the
registration server 108, the content server 110 contains
courseware and/or other managed content 400.” Id. col.13
ll.36-37. In the section discussing security “in the archi-
tecture 100,” the specification states, “[b]ecause content is
not stored on the registration server 108, security precau-
tions can be taken that might not otherwise be available.”
Id. col.22 ll.61-63.
In contrast, the portions of the specification describing
embodiments of the claimed methods do not suggest that
the registration server cannot contain any managed

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DIGITAL - VENDING v. UNIV OF PHOENIX 11
content. See ’573 patent col.16 l.37-col.22 l.45. Figures 6
and 7, which “illustrate methods of the claimed inven-
tion,” also do not provide any reason to believe that the
registration server used in the claimed methods must be
free of managed content. Id. col.16 ll.39-40.
In the “Brief Summary of the Invention,” the specifi-
cation lists various ways in which the present invention
provides additional security: “For instance, additional
security is provided by separating registration informa-
tion from content, by identifying and treating critical
portions, and by monitoring the connection over which
content is supplied to a client.” ’573 patent col.7 ll.10-14.
This statement merely enumerates three different ways
in which the claimed invention protects content—(1)
keeping the registration server free of managed content,
(2) treating critical portions, and (3) monitoring the
content server-client connection. This statement — again
far from a disavowal of claim scope -- does not even sug-
gest that every embodiment of the invention must contain
all three features.
Similarly, 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.” “[B]ecause the prosecution history
represents an ongoing negotiation between the PTO and
the applicant, rather than the final product of that nego-
tiation, it often lacks the clarity of the specification and
thus is less useful for claim construction purposes.”
Phillips, 415 F.3d at 1317. For this reason, it is particu-
larly important not to limit claim scope based on state-
ments made during prosecution “[a]bsent a clear
disavowal or contrary definition.” August Tech. Corp. v.
Camtek, Ltd., 655 F.3d 1278, 1286 (Fed. Cir. 2011) (quot-
ing Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d
1352, 1358 (Fed. Cir. 2004)).

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DIGITAL - VENDING v. UNIV OF PHOENIX 12
The PTO initially rejected claims 1-3, 7-15, and 16-37
of the ’221 application as obvious in light of U.S. Patent
No. 5,974,409 (the “Sanu” reference). The PTO later
imposed an election/restriction requirement on the ’221
application, finding that it covered two distinct inven-
tions. Accordingly, claims 1-3 and 7-15 of the ’221 appli-
cation eventually issued as claims of the ’014 patent,
while claims 16-37 later issued as claims of the ’573
patent (based on a divisional application). In response to
the PTO’s rejection of claims 1-3 and 7-15, the inventors
argued that Sanu did not render these claims obvious
because: (1) it did not teach a registration server; (2) it did
not teach a registration server for remote registration of a
new user; (3) it did not teach a content-free registration
server; and (4) it did not teach content servers that serve
content only to registered users. This account shows that
the inventors unequivocally disavowed claim scope cover-
ing registration servers that were not content free for
claims 1-3 and 7-15, which eventually issued as claims of
the ’014 patent. Consistent with this disavowal, these
issued claims also explicitly contain the “free of content
managed by the architecture” claim limitation.
Phoenix argues that the inventors also disavowed this
same claim scope with respect to claims 16-37, which later
issued as claims of the ’573 patent, even for claims with-
out the “free of content managed by the architecture”
language. Phoenix’s argument rests solely on the follow-
ing statement by the inventors: “The rejections of claims
16-37 under 35 U.S.C. § 103(a) rely on the same reasons
set forth in the rejection of claims 1-3, 7-15. For the
reasons explained above, the rejection of claims 16-37
should therefore be withdrawn as well.” J.A. 3958. To
the contrary, the inventors went on to explain that
“claims 16-37 have limitations that are significantly
different from the limitations in claims 1-3, 7-15” and

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DIGITAL - VENDING v. UNIV OF PHOENIX 13
performed additional analysis regarding the rejection of
claims 16-37. In the overall context of the prosecution
history, the inventor’s statements do not clearly disavow
claim scope. As noted above, the “reasons explained
above” include four alleged differences between Sanu and
the claimed invention. Some of these alleged differences
were clearly relevant to claims 16-37, such as the re-
quirement of a registration server. Hence, this general
reference to arguments from the “Remarks on Claims 1-3,
7-15” section applies to arguments about claim language
that was repeated in claims 16-37, such as Sanu’s failure
to teach a registration server or a registration server for
remote registration of a new user, as opposed to its failure
to teach a content-free registration server. This reading
of the inventor’s statements is particularly reasonable in
light of the language of the later issued claims. Moreover
the inventors never argued that the registration servers
had to be free of content when pursuing the divisional
application that gave rise to the ’573 patent. When the
inventors’ statements “are considered in the context of the
prosecution history as a whole, they simply are not clear
and unmistakable enough to invoke the doctrine of prose-
cution history disclaimer.” Ecolab, Inc. v. FMC Corp., 569
F.3d 1335, 1343 (Fed. Cir. 2009). This court therefore
declines to read the “free of content managed by the
architecture” limitation that is explicitly recited in vari-
ous claims into the stand-alone phrase “registration
server.”
IV
Claims 13-22 of the ’573 patent do not contain the
words “registration server” but require a “registered
user.” ’573 patent col.24 ll.40, 44-45. The parties stipu-
lated that the term “registered user” should be construed
as “a person who has previously been registered with a
registration server.” J.A. 62. Before the Markman hear-

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DIGITAL - VENDING v. UNIV OF PHOENIX 14
ing, Phoenix made clear to Digital-Vending on two occa-
sions that this construction would mean that the claims
having a “registered user” limitation would inherently
also require a registration server. Digital-Vending did not
object, and the district court accepted their stipulation,
construing the term “registered user” accordingly.
After Phoenix moved for summary judgment of non-
infringement, relying in part on this stipulated construc-
tion of “registered user,” Digital-Vending filed a motion
for “clarification,” which in substance was a motion for
reconsideration, asking the court to construe “registered
user” as “a person who has an existing account with the
architecture.” J.A. 1841. The district court denied this
motion, explaining that it was not “appropriate to provide
[Digital-Vending] a second bite at the apple regarding
Markman disputes at such a late stage in the litigation,
as [Phoenix] and its experts have relied on the court’s
Markman ruling in completing discovery and formulating
a position on summary judgment.” J.A. 18.
On appeal, Digital-Vending takes the position that
the district court erred in construing “registered user” as
requiring a registration server and argues that this claim
term should be construed more broadly to include users
registered by other means, such as by telephone or by
mail. By stipulating to the construction that the district
court adopted, Digital-Vending waived its right to chal-
lenge this construction on appeal. See SuperGuide Corp.
v. DirecTV Enters., Inc., 358 F.3d 870, 889 (Fed. Cir.
2004) (finding waiver of claim construction argument
where the party agreed to a construction before the dis-
trict court). Moreover, Digital-Vending has not chal-
lenged the district court’s denial of its motion for
reconsideration. Therefore, this court shall not entertain
Digital-Vending’s claim construction argument regarding
this claim term.

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DIGITAL - VENDING v. UNIV OF PHOENIX 15
V
Digital-Vending argues the district court erred by
construing “server” as limited to a single computer, rather
than including a combination of computers. However, the
district court did not construe the term “server.” The
district court did not construe the term “server” in its
claim construction order and also did not reach this issue
in its summary judgment order. Phoenix made several
arguments in moving for summary judgment of non-
infringement, one of which was that its system did not
infringe because its registration manager and registration
database were stored on separate computers in different
buildings. For Phoenix to prevail on this non-
infringement argument, “server” must be construed as
excluding a combination of computers that are housed
separately. The district court did not reach this issue
because it granted summary judgment of non-
infringement on another basis. See J.A. 17 (“the court
does not squarely reach the issue of [Phoenix’s] registra-
tion manager and registration database being housed on
computers physically located in different buildings”); see
also J.A. 18 (“based on the complexity of the issues and
because the court’s above determination is dispositive, the
additional grounds presented in support of summary
judgment are not discussed herein”).
As a general rule, “a federal appellate court does not
consider an issue not passed upon below.” Interactive Gift
Express, 256 F.3d at 1344 (quoting Singleton v. Wulff, 428
U.S. 106, 120 (1976)). “This is because appellate courts
are courts of review and no matter how independent an
appellate court's review of an issue may be, it is still no
more than that—a review.” Id. at 1344 (internal quota-
tions omitted). Digital-Vending has not presented any
reason to deviate from this general rule, and therefore,
this court shall not construe “server” in the first instance.

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DIGITAL - VENDING v. UNIV OF PHOENIX 16
VI
The district court granted summary judgment of non-
infringement based on its construction of the terms “regis-
tration server” and “content managed by the architec-
ture.” As discussed above, the district court construed
“registration server” as requiring the server to be “free of
content managed by the architecture,” J.A. 38, and con-
strued “content managed by the architecture” as “digital
material capable of being transmitted over a computer
network that is being sold or licensed through the archi-
tecture,” J.A. 55. Because every asserted claim requires a
“registration server” (including claims 13-22 of the ’573
patent, based on the stipulated construction of “registered
user”), the district court found that infringement of each
claim required a registration server free of digital mate-
rial capable of being transmitted over a computer network
that is being sold or licensed through the architecture.
Digital-Vending identified Phoenix’s Apply Web com-
puters as part of the alleged “registration server.” Phoe-
nix presented undisputed evidence that these Apply Web
computers contain the following digital content: the
Phoenix logo, a course catalog, a financial options guide,
and various documents relating to student privacy, tui-
tion, and financial aid. The district court found that these
materials were “content managed by the architecture”
because the Phoenix website contained a “Terms of Use”
digital document indicating that website users were
granted a limited license to access these materials.
Accordingly, the district court held that the alleged “regis-
tration server” was not free of “content managed by the
architecture,” as required for every asserted claim under
its claim constructions, and granted summary judgment
of non-infringement of all asserted claims on this basis.

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DIGITAL - VENDING v. UNIV OF PHOENIX 17
For the reasons explained above, under the correct
claim construction, a “registration server” does not have
to be free of content managed by the architecture. Accord-
ingly, Digital-Vending need not show that the registration
server is free of managed content to prove infringement of
claims 1-22 of the ’573 patent, which refer to a “registra-
tion server” or a “registered user” but do not contain the
“free of content managed by the architecture” limitation.
Therefore, this court vacates the grant of summary judg-
ment of non-infringement of claims 1-22 of the ’573 pat-
ent.
In the alternative, Phoenix asks this court to affirm
the district court’s grant of summary judgment of non-
infringement based on the alleged failure of the accused
system to meet the requirement of having a registration
server that contains both a portion of a remote registra-
tion manager and a registration database. The record
shows that Phoenix’s computers hosting Apply Web (the
alleged portion of a remote registration manager) and
Phoenix’s computers hosting the V3 database (the alleged
registration database) are physically separate and located
in different buildings several miles apart. Phoenix’s non-
infringement argument relies upon a construction of
“server” that excludes a combination of computers that
are housed separately. Because the district court did not
construe the term “server” and did not reach this issue,
this court remands to allow the district court to consider
this alternative non-infringement argument in the first
instance. See Interactive Gift Express, 256 F.3d at 1344.
On appeal, Digital-Vending has only challenged the
district court’s grant of summary judgment of non-
infringement based on erroneous claim construction and
has not challenged the grant of summary judgment of
non-infringement under the district court’s claim con-
struction. The only claim construction error this court

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DIGITAL - VENDING v. UNIV OF PHOENIX 18
has found on appeal is the improper addition of a “free of
content managed by the architecture” limitation to the
term “registration server.” However, all of the asserted
claims, other than claims 1-22 of the ’573 patent, explic-
itly require not only a registration server but a “registra-
tion server being further characterized in that it is free of
content managed by the architecture.” See, e.g., ’573
patent col.25 ll.20-22. Accordingly, the district court’s
construction of “registration server” is harmless error
with respect to these claims. This court thus affirms the
grant of summary judgment of non-infringement for
claims 23-37 of the ’573 patent and all asserted claims in
the ’014 patent and the ’664 patent.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.

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United States Court of Appeals
for the Federal Circuit
__________________________
DIGITAL-VENDING SERVICES INTERNATIONAL,
LLC,
Plaintiff-Appellant,
v.
THE UNIVERSITY OF PHOENIX, INC., and
APOLLO GROUP, INC.,
Defendants-Appellees.
__________________________
2011-1216
__________________________
Appeal from the United States District Court for the
Eastern District of Virginia in case no. 09-CV-0555, Judge
Jerome B. Friedman.
__________________________
M OORE, Circuit Judge, dissenting-in-part.
I join the majority opinion in all respects but one. Be-
cause I conclude that the district court correctly construed
the term “registration server,” I would affirm the district
court’s grant of summary judgment of non-infringement of
claims 1-22 of the ‘573 patent. The district court correctly
held that the claimed “registration server” must be “free
of content managed by the architecture.” This case pre-
sents one of the rare instances where a patentee clearly
disavowed claim scope through limiting language in the
specification. The majority errs and allows the patent

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DIGITAL - VENDING v. UNIV OF PHOENIX 2
owner to reclaim surrendered claim scope, thus subvert-
ing the public notice function of patents.
Our case law is clear that a claim term should be ac-
corded the full breadth of its plain and ordinary meaning
as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecu-
tion history. See Phillips v. AWH Corp., 415 F.3d 1303,
1313 (Fed. Cir. 2005) (en banc). But there are two limited
exceptions to this rule: if the patentee acted as its own
lexicographer or clearly disavowed the plain and ordinary
meaning of a claim term. Thorner v. Sony Computer
Entm’t Am. LLC, No. 2011-1114, slip op. at 4 (Fed. Cir.
Feb. 1, 2012).
The standard for disavowal is exacting. “Where the
specification makes clear that the invention does not
include a particular feature, that feature is deemed to be
outside the reach of the claims of the patent, even though
the language of the claims, read without reference to the
specification, might be considered broad enough to en-
compass the feature in question.” Scimed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341
(Fed. Cir. 2001). Language giving rise to disavowal must
amount to “expressions of manifest exclusion or restric-
tion, representing a clear disavowal of claim scope.”
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325
(Fed. Cir. 2002).
The plain and ordinary meaning of the term “registra-
tion server” does not require that the server be free of
content managed by the architecture. But the patentee
disavowed the full scope of this claim term with its re-
peated statements in the specification to the contrary. In
its initial description of the registration server, the speci-
fication states that “each registration server 108 is free of
courseware or other deliverable content that is managed

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DIGITAL - VENDING v. UNIV OF PHOENIX 3
by the architecture 100. In particular, courseware is not
stored on the registration server 108.” ’573 patent col.8
ll.29-33. That data is stored on the content server. Id.
col.13 ll.36-37. The patentee clearly disavowed the full
scope of the term “registration server” when it stated:
A given computer may host several content serv-
ers 110, or it may host several registration servers
108, but a content server 110 and a registration
server 108 may not reside on the same computer
because that would violate the requirement that
registration servers 108 not contain courseware.
Id. col.9 ll.10-15 (emphasis added). In discussing the
content server, the specification again emphasizes that
“[u]nlike the registration server 108, the content server
110 contains courseware and other managed content.” Id.
col.13 ll.36-37. The specification describes the reason for
separating the registration functions from content, stating
“additional security is provided by separating registration
information from content.” Id. col.7 ll.10-11; col.22 ll.61-
63 (“Because content is stored on the registration server
108, security precautions can be taken that might not
otherwise be available.”).
It is difficult to imagine a clearer case of disavowal.
The patentee states that it is a “requirement” that a
registration server include no content managed by the
architecture. This is exactly the type of clear and unmis-
takable language that is sufficient to place the public on
notice that the patentee has surrendered the full scope of
a claim term. We have found disavowal in cases with less
restrictive language. For example, in The Toro Co. v.
White Consolidated Industries, Inc., 199 F.3d 1295, 1301-
02 (Fed. Cir. 1999), we held there was disavowal when the
specification disclosed a single embodiment and described
the relevant structure as “important to the invention.”

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DIGITAL - VENDING v. UNIV OF PHOENIX 4
The instant case is much more compelling as the specifi-
cation expressly states that it is a “requirement” that the
registration server be free of content managed by the
architecture.
The majority does not deny the disavowal in the speci-
fication, but rather concludes that it is limited to claims
23-27 – the architecture claims. The majority holds that
the disavowal does not clearly and unmistakably apply to
the corresponding method claims 1-22. The majority also
concludes that there is no disavowal because a holding of
disavowal would render superfluous the language in claim
23, which states “each registration server being further
characterized in that it is free of content managed by the
architecture.” Majority Op. 7-11.
The majority’s claim that the portions of the specifica-
tion discussing the claimed methods do “not suggest that
the registration server cannot contain any managed
content,” Majority Op. at 10-11, is with all due respect
incorrect. The distinction the majority draws between the
“architecture” disclosure and “method” disclosure is
contradicted by the same portion of the specification the
majority cites. For example, the specification plainly
states that “FIG. 7 illustrates methods for operating
architecture 100,” including locating “the service provider
Web site, which is hosted by the registration server 108.”
’537 patent col.20 ll.39-44 (emphasis added); see also id.
col.22 ll.29-30 (“content server 110 communicates that
acceptance to the funds flow manager 308 in the registra-
tion server 108”). This is the same “registration server
108” that was expressly limited by the patentee earlier in
the specification. When the specification refers to this
registration server, by reference number, it is the one that
has already been limited to a server that is free of content
managed by the architecture.

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DIGITAL - VENDING v. UNIV OF PHOENIX 5
Our precedent does not require that a patentee re-
state disavowal language repeatedly throughout the
specification every time it references the same element;
such a rule would be nonsensical. The method in this
case is unequivocally the method of operating the defined
architecture. The portion of the specification disclosing
the method expressly refers by reference number to the
architecture and its components. In short, there are not
two different registration servers: one in the architecture
claims and a different one in the method claims. At all
times, the methods use a specific registration server –
registration server 108 – the very one the majority ac-
knowledges must be free of managed content. And if any
doubt remained, the specification expressly states that
the “methods of the present invention” use the architec-
ture described in the specification. Id. col.16 ll.48-53
(“Unless otherwise expressly indicated, the description
herein of methods of the present invention therefore
extends to corresponding systems and configured storage
media, and the description of systems and configured
storage media of the present invention extends likewise to
corresponding methods.”). To me, this is a clear and
unmistakable disclaimer.
The majority’s second justification relies on claim dif-
ferentiation with regard to claim 23, which explicitly
states that the registration server must be “free of content
managed by the architecture.” The majority reasons that
if the term “registration server” alone means a server
with no content managed by the architecture, then the
explicit limitation in this claim is superfluous. Majority
Op. 8. I agree. It does appear that the proper construc-
tion of “registration server” renders this language super-
fluous. I further agree that the doctrine of claim
differentiation counsels against doing this. However,
when faced with a clear case of disavowal and a claim

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DIGITAL - VENDING v. UNIV OF PHOENIX 6
differentiation argument, the court must always hold that
the clear and unmistakable disavowal trumps. Our case
law is quite clear on this choice.
[T]he doctrine of claim differentiation does not
serve to broaden claims beyond their meaning
their meaning in light of the specification, and
does not override clear statements of scope in the
specification and the prosecution history.
Toro Co., 199 F.3d at 1302 (citations omitted). And, this
is the only reasonable result. To hold otherwise would
allow a patentee to game the system by filing a continua-
tion including limitations that would be superfluous thus
eliminating the clear disavowal in the earlier filed specifi-
cation. The majority’s logic allows this patentee to recap-
ture claim scope that was surrendered in the application,
and violates the public notice function of patents. Indeed,
in the present case, claim 23 (the only claim with this
language that would be rendered superfluous) of the ’573
patent was submitted to the PTO after the filing of its
parent application. Once the patentee has clearly dis-
avowed the plain and ordinary meaning of a term, the
patentee should not be able to change the rules by recap-
turing that scope through creative claim drafting.
This is to me a clear and unmistakable case of dis-
avowal. The district court’s claim construction is correct.
Thus, we should affirm its summary judgment of non-
infringement of claims 1-22 of the ’573 patent.

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