Case 2:09-cv-00555-JBF -TEM Document 467 Filed 01/07/11 Page 1 of 19

FILED
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA JAN -7 2011
Norfolk Division

CLtKK. U.S DISTRICT COURT

DIGITAL-VENDING SERVICES NC-Si'OLK. VA

INTERNATIONAL, LLC,

Plaintiff,
Civil Action No. 2:09cv555

THE UNIVERSITY OF PHOENIX INC.,

and

APOLLO GROUP, INC.,

Defendants.

OPINION AND ORDER

This matter is before the court on a motion for summary judgment filed by defendants

The University of Phoenix, Inc. and Apollo Group, Inc. ("collectively UOPX") and a motion to

clarify claim construction filed by plaintiff Digital-Vending Services International, LLC

("DVSI"). In this patent infringement action, the court previously conducted a Markman hearing

and issued a lengthy Markman opinion addressing several disputed claim terms. Plaintiffs

motion for clarification requests that the court reconsider and modify its Markman ruling with

respect to a single claim term. Defendants' summary judgment motion contends, inter alia, that

DVSI cannot point to admissible evidence suggesting that UOPX infringed on any of DVSI's

three patents. After reviewing the parties' filings, the court conducted a hearing on the two

pending motions. Based on a review of the record and the arguments presented in the parties'

briefs and at oral argument, the court GRANTS UOPX's motion for summary judgment and

DENIES DVSI's motion for clarification.

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I. Factual and Procedural Background

As discussed in this court's Markman opinion, DVSI's complaint alleges that UOPX

infringed on DVSI's three related patents, all entitled "Computer architecture for managing

courseware in a shared use operating environment. " See Patent Nos. 6,170,014 ('"014"),

6,282,573 ('"573"), and 6,606,664 ('"664"). Following the issuance of this court's Markman

opinion, UOPX filed the instant summary judgment motion, alleging: (1) that DVSI failed to

present admissible evidence of infringement as the undisputed facts establish that UOPX's

computer architecture does not utilize a "registration server" as defined by the court; (2) even if

UOPX's computer architecture utilizes a registration server, DVSI failed to present admissible

evidence indicating that such server is "free of content managed by the architecture"; and (3)

Claims 1-12 of the '573 patent are invalid as they purport to patent abstract ideas. In addition to

filing a brief in opposition to summary judgment, DVSI filed a motion for clarification regarding

this court's Markman ruling. The court notes that the title of DVSI's motion is a misnomer as

the relief sought therein is reconsideration, not clarification. Furthermore, the term DVSI seeks

to revisit is the lone term for which the parties entered a stipulation as to the appropriate

definition. As the court previously adopted such agreed construction, DVSI is essentially asking

the court to allow DVSI to withdraw its stipulation and argue for a different construction of such

claim term.

II. Standard of Review

A. Summary Judgment

Summary judgment is appropriate if the movant shows that there are no genuine disputes

as to the material facts and that the movant is entitled to judgment as a matter of law. Fed. R.

Civ. P. 56. In considering a summary judgment motion, the court both assesses the evidence and

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draws all permissible inferences in the non-movant's favor. Matsushita Elec. Indus. Co. v.

Zenith Radio Corp.. 475 U.S. 574, 587 (1986). While the moving party "always bears the initial

responsibility of... demonstrating] the absence of a genuine issue of material fact," if such a

showing is made, the burden shifts to the non-moving party to demonstrate a triable issue.

Celotex Corp. v. Catrett. 477 U.S. 317,323 (1986). Summary judgment does not require the

complete absence of factual disputes, and remains appropriate unless there are "genuine"

disputes at to "material" facts. Anderson v. Liberty Lobby. Inc.. 477 U.S. 242,247-48 (1986).

Only "facts that might affect the outcome of the suit under the governing law" are material. Id at

248. Factual disputes are genuine "if the evidence is such that a reasonable jury could return a

verdict for the non-moving party." Id.

Rule 56 mandates the entry of summary judgment in favor of the moving party when the

non-moving party, after adequate time for discovery, "fails to make a showing sufficient to

establish the existence of an element essential to th[e] [non-moving] party's case, and on which

th[e] [non-moving] party will bear the burden of proof at trial." Celotex. 477 U.S. at 322-23; see

In re French. 499 F.3d 345, 352 (4th Cir. 2007) (quoting In re Apex Express Corp.. 190 F.3d 624,

633 (4th Cir. 1999)) ("In evaluating a summary judgment motion, a court 'must consider whether

a reasonable jury could find in favor of the non-moving party "'). The non-moving party can

survive a motion for summary judgment by submitting or otherwise highlighting "affirmative

evidence," including evidence in the form of affidavits, deposition transcripts, or other materials

in the record that could reasonably form the basis of a verdict in the non-movant's favor.

Anderson. 477 U.S. at 257. The evidence that the non-moving party presents to this end must be

more than "[a] mere scintilla," Retail Services. Inc. v. Freebies Publishing. 364 F.3d 535, 542

(4th Cir. 2004), and if such evidence "is merely colorable, or is not significantly probative,

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summary judgment may be granted." Anderson. 477 U.S. at 249-50 (internal citations omitted).

When evaluating a summary judgment motion, "a court is not required to scour the record

in search of evidence to defeat a motion for summary judgment." Muhammad v. Giant Food

Inc., 108 Fed. Appx. 757, 764 (4th Cir. 2004) (unpublished) (quoting Ritchie v. Glidden Co.. 242

F.3d 713, 723 (7th Cir. 2001)); see Fed. R. Civ. P. 56. Rather, the burden is on the non-movant

to highlight admissible evidence, and if "no reasonable jury could credit the nonmovant's

evidence, the nonmovant has ... failed to meet [its] burden." Chao v. Self Pride. Inc.. 232 Fed.

Appx. 280, 284 (4th Cir. 2007) (citing Matsushita. 475 U.S. at 587). A non-moving party does

not satisfy its burden through "self-serving opinions or speculation," Harik v. Nat'l Aeronautics

and Space Admin.. No. 4:06cv56,2006 WL 2381964, at *13 (E.D. Va. Aug. 16, 2006)

(unpublished), or through "[m]ere arguments of counsel and the pleadings " Otto Wolff

Handelseesellschaft. mbH v. Sheridan Transo. Co.. 800 F. Supp. 1359, 1366 (E.D. Va. 1992).

Summary judgment is not to be treated as a "disfavored procedural shortcut," but is

instead an '"integral part' of the Federal Rules of Civil Procedure, which are designed to obtain a

just, expeditious, and inexpensive resolution of every civil matter." White v. Potocska. 589 F.

Supp. 2d 631, 640 (E.D. Va. 2008) (quoting Celotex, 477 U.S. at 327). It is therefore the

'"affirmative obligation of the trial judge to prevent factually unsupported claims and defenses

from proceeding to trial.'" Bouchat v. Baltimore Ravens Football Club. Inc.. 346 F.3d 514, 526

(4th Cir. 2003) (quoting Drewitt v. Pratt. 999 F.2d 774, 778-79 (4th Cir. 1993)).

B. Summary Judgment of Non-Infringement in a Patent case

"An infringement analysis requires two steps: (1) claim construction to determine the

scope and meaning of the asserted claims, and (2) a comparison of the properly construed claims

with the allegedly infringing device or method to determine whether the device or method
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embodies every limitation of the claims." IMS Technology. Inc. v. Haas Automation, Inc. 206

F.3d 1422,1429 (Fed. Cir. 2000). The first step is a question of law, the second a question of

fact. Id "Summary judgment of noninfringement is ... appropriate where the patent owner's

proof is deficient in meeting an essential part of the legal standard for infringement, because such

failure will render all other facts immaterial." TechSearch. L.L.C. v. Intel Corp.. 286 F.3d 1360,

1369 (Fed. Cir. 2002).

Relying on the Supreme Court's opinion in Celotex. the Federal Circuit recently

recognized that, "on issues in which the nonmovant bears the burden of proof... the movant

need not 'produce evidence'" in support of summary judgment, but may instead carry its burden

'"by showing-that is, pointing out to the district court-that there is an absence of evidence to

support the nonmoving party's case.'" Exigent Technology. Inc. v. Atrana Solutions. Inc.. 442

F.3d 1301, 1307-08 (Fed. Cir. 2006) (quoting Celotex. 477 U.S. at 325). Accordingly, when an

accused infringer in a patent case disputes the plaintiffs allegation of infringement, "nothing

more is required than the filing of a summary judgment motion stating that the patentee ha[s] no

evidence of infringement and pointing to the specific ways in which accused systems [does] not

meet the claim limitations." Id at 1309. Once such an assertion is made, the burden shifts to the

plaintiff to point to admissible evidence sufficient to support a jury finding of infringement.

MEMC Electronic Materials. Inc. v. Mitsubishi Materials Silicon Corp.. 420 F.3d 1369, 1373

(Fed. Cir. 2005).

C. Motion for Clarification

As noted above, DVSI's motion for clarification is mislabeled as the relief sought therein

is reconsideration of this court's Markman opinion. As the Markman ruling which plaintiff seeks

to reopen is interlocutory in nature, it is subject to revision "at any time prior to the entry of final

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judgment," at the discretion of the court. American Canoe Ass'n v. Murphy Farms. Inc.. 326

F.3d 505, 515 (4th Cir. 2003) (quoting Favetteville Investors v. Commercial Builders. Inc.. 936

F.2d 1462, 1469 (4th Cir. 1991)).

III. Analysis - "Content free" Registration Server

"Summary judgment must be granted against a party who has failed to introduce evidence

sufficient to establish the existence of an essential element of that party's case, on which the

party will bear the burden of proof at trial." Novartis Corp. v. Ben Venue Laboratories. Inc.. 271

F.3d 1043, 1046 (Fed. Cir. 2001) (citing Celotex. 477 U.S. at 322) (emphasis added). Here,

DVSI clearly bears the burden of proving infringement at trial. Accordingly, the primary

questions before this court are whether UOPX sufficiently alleged DVSI's inability to establish

infringement, and if so, whether DVSI introduced evidence, or pointed to admissible evidence in

the record, on which a reasonable jury could base a finding of infringement. As discussed below,

the court finds that UOPX carried its preliminary burden and DVSI failed to rebut such showing

by pointing to admissible evidence sufficient to establish that UOPX's computer architecture

utilizes a "content free" registration server(s). Accordingly, summary judgment must be granted

in favor of UOPX.

A. UOPX sufficiently alleges DVSPs inability to establish infringement

As set forth above, nothing more is required of an accused infringer than "the filing of a

summary judgment motion stating that the patentee ha[s] no evidence of infringement and

pointing to the specific ways in which accused systems [does] not meet the claim limitations."

Exigent Tech.. 442 F.3d at 1309. Here, UOPX's brief in support of its motion for summary

judgment concisely alleges the following:

Registration servers that contain "content managed by the architecture" cannot

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infringe the asserted patents. Markman Order (Dkt. No. 277) at 18-25. As
discussed above, all claims of the asserted patents require a registration server that
is free of content managed by the architecture. DVSI has the burden to prove
infringement, and it has failed to come forward with any evidence that the alleged
"registration server" in the UOPX system satisfies this crucial element. Indeed,
DVSI's infringement expert (Dr. Stubblebine) admitted that he does not know
whether the digital material contained on the alleged "registration server"
constitutes "content managed by the architecture." Stubblebine Dep. (Ex.8) at 5-
7. As such, because DVSI has "no evidence of infringement," summary judgment
in favor of UOPX is appropriate. Exigent Tech.. 442 F.3d at 1308-09.

(UOPX S.J. Brief 10, Dkt. No. 337).

The above-quoted statement is sufficient to meet the standard set forth in Exigent Tech as

UOPX has expressly highlighted the "specific ways" that DVSI's evidence purportedly fails.

However, UOPX goes a step further by asserting that evidence in the record affirmatively

establishes that UOPX is not infringing because: (1) the UOPX website includes a "Terms of

Use" digital document indicating that website users are granted a limited license to access the

materials on UOPX's website; and (2) the "Apply Web" computers, which are part of UOPX's

"registration server," contain and serve certain licensed materials. The licensed materials

expressly identified by UOPX include: the several hundred page UOPX course catalog, the

UOPX Financial Options Guide, other documents related to UOPX student privacy, tuition, and

financial aid, the UOPX logo, as well as the text that appears on the UOPX Apply Web internet

pages. (UOPX S.J. Brief 10-11). Based on the above, it is readily apparent that UOPX carried

its burden to allege that DVSI lacks evidence of infringement.

B. DVSI fails to highlight admissible evidence on which a fury could reasonably

base a finding of infringement

An infringement analysis has two parts: (1) claim construction; and (2) a comparison of

the construed claims to the allegedly infringing device to determine whether it embodies every

claim limitation. IMS Tech., 206 F.3d at 1429. This court has already performed step one, and

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construed the disputed claim term "content managed by the architecture" as: "Digital material

capable of being transmitted over a computer network that is being sold or licensed through the

architecture." (Markman Opinion 35, Dkt. No. 277). Additionally, the court construed the

disputed term "registration server" to include the requirement that such server necessarily be

"free of content managed by the architecture." (Id. at 18). Accordingly, to establish

infringement, DVSI will bear the burden of proving at trial that UOPX's computer architecture

includes an identifiable "registration server(s)," that does not contain any "digital material

capable of being transmitted over a computer network that is being sold or licensed through the

architecture."

Although, in the abstract, the court recognizes the difficulty in proving a negative, here,

UOPX has expressly identified why it contends that DVSI's evidence fails: because UOPX's

Apply Web computers, identified by DVSI as part of UOPX's "registration server(s)," contain

content, i.e. digital material that is being licensed through the architecture. UOPX backs up such

claim with citations to an expert report,1 screen shots from its website, the "Terms of Use"

document from its website, and the .pdf files and other materials that UOPX claims are

"content." As discussed in greater detail below, DVSI fails to submit, or otherwise point to, any

admissible evidence that could reasonably support a finding that the disputed digital materials are

not "content." Accordingly, summary judgment is appropriate to prevent DVSI's factually

unsupported claim from proceeding to trial. Bouchat. 346 F.3d at 526.

Turning first to the statement of facts in DVSI's brief in opposition to summary

1 There is currently a pending motion filed by DVSI seeking to exclude the expert report
of UOPX's expert Russell T. Wong. Even were the court to grant such motion, DVSI's proof
would remain deficient. Accordingly, the summary judgment analysis is unaffected by such
unresolved motion.

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judgment, DVSI states that the UOPX's Apply Web computers are free of "content managed by

the architecture" and attempts to support such claim by citing to this court's Markman ruling, the

UOPX "Terms of Use" digital document and the interpretation of such document by UOPX's

expert Dr. Wong, as well as by citation to J 156 of the lengthy report of DVSI's expert, Dr.

Stubblebine. (DVSI Opp. to SJ. 5-6, Dkt. No. 349). A review of this court's Markman ruling,

the UOPX "Terms of Use" digital document, and Dr. Wong's comments on such document, fails

to demonstrate that the disputed materials are not "content." On the contrary, such documents

support UOPX's assertion that the disputed digital material is in fact "digital material...

transmitted over a computer network that is being... licensed through the architecture."

Similarly, paragraph 156 of Dr. Stubblebine's expert report fails to offer factual support for

DVSI's conclusory claim that UOPX's registrations servers are "content free." Tellingly, the

cited portion of Dr. Stubblebine's expert report merely identifies multiple examples of digital

materials that Dr. Stubblebine considers to be "content." What is conspicuously missing from

such paragraph is any statement addressing the UOPX course catalog or the other materials

housed on UOPX's Apply Web computers that are expressly identified by UOPX as "content."

See Chao. 232 Fed. Appx. at 285 (quoting Luian v. Nat'l Wildlife Fed'n. 497 U.S. 871, 888

(1990)) (explaining that "a generalized, blanket denial" or other conclusory statements that fail to

respond to the evidence presented by the movant is insufficient to save a non-movant from

summary judgment as "'[t]he object of [summary judgment] is not to replace conclusory

allegations of the complaint or answer with conclusory allegations of an affidavit."). Dr.

Stubblebine also provides no statement that could be interpreted as explaining why the digital

materials highlighted by UOPX are not content under this court's Markman ruling. Accordingly,

the court finds that DVSI's citation to Dr. Stubblebine's list of "examples" at best provides a

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scintilla of support for DVSI's claim that the disputed documents on the Apply Web computers

are not "content."2

Considering next the section of DVSI's brief titled "Digital Material Cited by Defendants

is not 'Content Managed by the Architecture,'" DVSI claims that the disputed digital documents

are not "content" because they are freely accessible to all "web-walkers," i.e., unregistered users.

Such claim necessarily relies on the legal premise that "digital material capable of being

transmitted over a computer network that is being... licensed through the architecture," loses its

character as "content" once such material is licensed indiscriminately to the public at large.

Additionally, such claim relies on DVSI's counsel's unsubstantiated factual assertion that UOPX

is in fact engaging in widespread dissemination of the disputed digital materials.

The court has reservations regarding the accuracy of DVSI's interpretation of this court's

Markman ruling as mandating that "content," once widely disseminated, ceases being "content."3

2 Dr. Stubblebine's report states: "There are multiple examples of digital material that is
transmitted over a computer network and is being sold or licensed through the architecture of the
Accused System. See for example, the digital materials listed below " (DVSI Opp. to S.J.
Ex.2 H 156) (emphasis added). Such statement fails to establish whether other digital material is,
or is not, "content" since Dr. Stubblebine's own words indicate that he is not defining the entire'
universe of "content" but is instead merely providing a non-exhaustive list. This court repeatedly
noted in its Markman opinion that "merely providing a non-exhaustive list of examples" rarely
helps clarify the scope of a term as it necessarily fails to delineate the outer reaches of such term.
(See, e^, Markman Opinion 14). DVSI's near wholesale reliance on this lone statement in Dr.
Stubblebine's lengthy report is insufficient to support a jury verdict in its favor.

3 In support of its claim that content, by definition, cannot be widely disseminated, DVSI
does not rely on this court's actual claim construction, but instead on the court's written
explanation as to why it rejected UOPX's proposed construction for "content." DVSI labels
UOPX's contrary position as based on a "contorted and strained reading of the patents-in-suit and
Claim Construction Order"; however, even if incorrect, UOPX's position is a far cry from a
"strained reading" of this court's Markman opinion as UOPX merely espouses a literal
interpretation of the court's actual claim construction. It is DVSI that seeks an expanded
interpretation of the court's claim construction that includes additional limitations that were not
expressly incorporated into the court's definition of the disputed claim term.

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However, even if the court assumes that digital material being licensed through UOPX's

architecture loses its character as "content" if it is offered to all individuals browsing the internet,

i.e. "unregistered users," DVSI fails to establish that UOPX is distributing its licensed digital

material in such manner. Specifically, DVSI has failed to advance any evidence whatsoever in

support of its assertion that UOPX makes the disputed digital materials freely available to any

and all "web-walkers." Accordingly, DVSI has not carried its burden to provide or highlight

admissible evidence that could reasonably support a finding that the disputed materials are not

"content managed by the architecture." See Otto Wolff Handelsgesellschaft. mbH v. Sheridan

Transp. Co.. 800 F. Supp. 1359, 1366 (E.D. Va. 1992) ("Mere arguments of counsel and the

pleadings" are insufficient to carry a non-moving parties' burden on summary judgment.).

Although DVSI's failure to introduce evidence of wide dissemination to unregistered

users appears sufficient to rule in UOPX's favor, UOPX has gone a step further by introducing

evidence that affirmatively demonstrates that the disputed digital materials, other than the UOPX

logo, are only available to "registered users." Such evidence, which appears to demonstrate that

a website visitor must first create a UOPX account before accessing the disputed digital

documents renders such documents: (1) digital material capable of being transmitted over a

computer network; (2) digital materials that are protectable by copyright, patent, trademark,

and/or other sources of legal authority; (3) digital materials being licensed through the

architecture; and (4) digital materials that are presented only to registered users. Although the

second and fourth elements do not expressly appear in this court's claim construction of "content

managed by the architecture," assuming such requirements can be gleaned from the court's

Markman opinion, the materials at issue plainly comply with such requirements. Accordingly,

summary judgment in favor of UOPX is appropriate as DVSI has failed to adduce any evidence

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of infringement. See Novartis. 271 F.3d at 1050 ("Under modern summary judgment law, a

patentee who fails to provide probative evidence of infringement runs the risk of being

peremptorily nonsuited.")-

In addition to the above, DVSI's brief in opposition to summary judgment includes a

separate section that purports to advance an alternative argument seeking to establish that the

digital materials at issue are not "sold or licensed" through UOPX's architecture. However, such

claim is merely a restatement of the argument addressed above. Other than citing the court's

construction of "content managed by the architecture," such section does not cite any part of the

record, nor any affidavit, exhibit, or other type of evidence. Instead, counsel merely argues for a

second time that digital materials provided to "any users, authorized or unauthorized" cannot be

considered to be licensed through the architecture. As above: (1) "Mere arguments of counsel"

are insufficient to carry a non-moving parties' burden on summary judgment, Otto Wolff

Handelseesellschaft. 800 F. Supp. at 1366; and (2) there are no facts before the court suggesting

that the materials at issue are in fact provided to "any users, authorized or unauthorized"-to the

contrary, such materials appear to only be provided to "registered users" that have created a

UOPX account. Accordingly, DVSI's second argument fails alongside its first.4

4 Although not raised in its brief, DVSI argued at oral argument that the UOPX course
catalog and similar documents are not "content" because they are merely promotional materials.
In support of such claim, DVSI cited to the portion of the patents' specifications that, in
discussing a preferred embodiment of the invention, acknowledge the potential for a registration
server to house promotional materials. First, the court does not find such argument compelling
as the term "promotional materials" may merely refer to advertisements for discounts or for a
free gift for new enrollees. Second, the materials at issue do not appear capable of promoting
new users to "register" as they can only be accessed by individuals that have already created a
UOPX account. Third, even if the course catalog and similar materials are "promotional" in
nature, DVSI fails to establish that affixing such label results in such documents losing their
character as "content."

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C. DVSPs expert expressly admits that he failed to consider the classification of thP
disputed documents as "content" or "non-content" and offers nothing more than an
unsupported conclusorv statement that UOPX's registration server is "content free"

The court is "not required to scour the record in search of evidence to defeat a motion for

summary judgment." Muhammad. 108 Fed. Appx. at 764 (quoting Ritchie. 242 F.3d at 723).

Rather, the burden is on DVSI to "introduce evidence sufficient to establish the existence of [the]

essential element[s] of [DVSI's] case ...." Novartis. 271 F.3d at 1051. Notwithstanding such

fact, the court has reviewed portions of Dr. Stubblebine's lengthy expert report that were not

attached to, or cited in, DVSI's opposition to summary judgment. Because DVSI must prove

infringement "literally or equivalently for each limitation^] general assertions of facts, general

denials, and conclusory statements are insufficient to shoulder [DVSI's ] burden." TechSearch.

L.L.C., 286 F.3d at 1372. "Thus, [as] the party opposing the motion for summary judgment of

noninfringement, [DVSI] must point to an evidentiary conflict created on the record, at least by a

counter-statement of a fact set forth in detail in an affidavit by a knowledgeable affiant." Id

In addressing a non-movant's production of conclusory expert opinions in response to a

summary judgment motion, the Federal Circuit has held:

When, as here, the construction of a critical claim limitation is in dispute, a party

may not avoid summary judgment simply by offering an opinion of an expert that
states, in effect, that the critical claim limitation is found in the accused device.
Although such testimony of an expert witness may be proper during trial when the
opposing party can challenge the factual basis of the expert's opinion during
cross-examination, the affidavit of an expert submitted in opposition to a motion
for summary judgment must do more by "set[ting] forth specific facts showing
that there is a genuine issue for trial." Thus, the expert must set forth the factual
foundation for his opinion ... in sufficient detail for the court to determine
whether that factual foundation would support a finding of infringement under the
claim construction adopted by the court, with all reasonable inferences drawn in
favor of the nonmovant.

Arthur A. Collins. Inc. v. N. Telecom Ltd. 216 F.3d 1042, 1047-48 (Fed. Cir. 2000) (citations

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omitted) (alteration in original). It is "self-evident" why experts must present explicit factual

foundations for their opinions in order to avoid summary judgment because "[i]f all expert

opinions on infringement or noninfringement were accepted without inquiry into their factual

basis, summary judgment would disappear from patent litigation." Novartis. 271 F.3d at 1051.5

Here, in support of summary judgment, UOPX points to the following excerpt from the

post-Markman deposition of DVSI's expert, Dr. Stubblebine:

Question: Do you know one way or another whether this document that's
marked as Exhibit 1 [UOPX course catalog] is content managed by
the architecture as the term is used in the patents?
[Objection to form]
Dr. Stubblebine: I don't know.

Question: Do you know whether that document marked as Exhibit 2 [the

UOPX Financial Options Guide]6 would qualify as content managed
by the architecture as the term is used in the patents?
[Objection to form]
Dr. Stubblebine: The court construes content managed by the architecture as digital
material capable of being transmitted over a computer network that
is being sold or licensed through the architecture. I haven't
evaluated this document to that extent.

(UOPX S.J. Brief 7-8 & Ex.8) (emphasis added). Notwithstanding the fact that such deposition

excerpt was expressly cited in UOPX's summary judgment brief, DVSI failed to "point to an

evidentiary conflict created on the record, at least by a counter-statement of a fact set forth in

5
As "the factual foundation necessary to support an expert's opinion is not a matter
peculiar to patent law," the Federal Circuit looks to "regional circuit law for the applicable
standard." Id. Consistent with the standard discussed above, the Fourth Circuit has held that
"[a]n expert's affidavit that is wholly conclusory and devoid of reasoning does not comply with
Fed. R. Civ. P. 56[]." M & M Medical Supplies and Service. Inc. v. Pleasant Vallev Hosp.. Inc
981 F.2d 160, 165 (4th Cir. 1992).

6 The UOPX course catalog and Financial Options Guide are part of the record; however,
the marked deposition copies of such documents are not. DVSI has not challenged UOPX's
factual assertion on summary judgment that the documents marked as Exhibits 1 and 2 at Dr.
Stubblebine's deposition are the same UOPX course catalog and financial options guide.

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detail in an affidavit by a knowledgeable affiant." TechSearch. L.L.C.. 286 F.3d at 1372.

Rather, the only portion of Dr. Stubblebine's expert report "pointed to" by DVSI is his

identification of "multiple examples" of content. As discussed herein, such non-exhaustive list is

"not significantly probative" to the determination of whether other digital material also qualifies

as "content." See Anderson. 477 U.S. at 249-50 (holding that summary judgment remains

appropriate if the non-moving party presents evidence that is "merely colorable, or is not

significantly probative ").

Although not "pointed to" by DVSI, the court notes that Dr. Stubblebine's expert report

does reach a conclusion regarding whether UOPX's system has a content free registration

server(s).7 Dr. Stubblebine states at If 129 of his report: "I found no evidence that the registration

servers processed or hosted content managed by the architecture." (UOPX S.J. Brief Ex.1 f 129).

The very next paragraph states: "As described in this report, I've reviewed numerous documents

to form my opinion." (Id. at f 130). Although some of the documents there were reviewed are

then discussed, the report does not suggest that Dr. Stubblebine reviewed the Apply Web .pdf

documents, such as the UOPX course catalog, that are relied on by UOPX. An expert's

conclusion that a server does not process or host "content" is unreliable on its face when the

expert admits under oath that he never considered the very documents housed on such server that

the opposing party points to as "content." See Arthur A. Collins. Inc.. 216 F.3d at 1046 ("[I]t is

well settled that an expert's unsupported conclusion on the ultimate issue of infringement is

7 Due the length of Dr. Stubblebine's report, DVSI only provided a table of contents and a
few short excerpts from such report, noting that it would provide the entire report at the court's
request. A review of the entire report, submitted by UOPX, reveals a section titled: "Registration
Sever... Free of Content Managed by the Architecture." Curiously, DVSI's brief in opposition
to summary judgment does not cite to such section of its own expert's report.

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insufficient to raise a genuine issue of material fact.").

Accordingly, here, although Dr. Stubblebine's report sets forth the conclusion that there is

no "content" on UOPX's registration server(s), such conclusion lacks an adequate factual

foundation.8 Additional detail supporting such conclusion is necessary to permit "the court to

determine whether that factual foundation would support a finding of infringement...." Id. at

1047-48. Not only is Dr. Stubblebine's expert report devoid of a reference to the documents

squarely in dispute, but he admits under oath that he did not consider such documents to

determine whether they qualify as "content."9 Maybe as importantly, Dr. Stubblebine never

explains why such materials are not content. Furthermore, although Dr. Stubblebine submitted a

supplementary affidavit in response to UOPX's summary judgment motion, such affidavit again

fails to discuss the disputed digital documents. Accordingly, in light of his incomplete analysis,

8 Dr. Stubblebine's expert report further notes: "Indeed, through the registration process,
the user receives no course content." (Id. ^ 132). Such statement, however, appears to conflate
the difference between "courseware" and "content," a distinction made clear both in the patents'
specifications and in this court's Markman opinion. See '014 7:51-52 ("[C]ontent and work are
used interchangeably to describe material of which courseware is just one example.'") (emphasis
added). Although DVSI's counsel strenuously objects to UOPX's characterization of the UOPX
course catalog as "content," it is DVSI that chose to place virtually no limits on the breadth of the
claim term "content" when drafting the three patents at issue. Although this court previously
rejected UOPX's proposed construction of "content" as over-broad, the court still adopted a
broad construction of such term based on the intrinsic record and noted that the patents expressly
intend for "content" to be "interpreted broadly." (Markman Opinion 36). DVSI's expert has
failed entirely to explain why the disputed proprietary documents do not qualify as "content."

9 The court rejects the attempt by DVSI's counsel to characterize Dr. Stubblebine's
deposition responses as premised on the belief that it was impossible to determine if the disputed
documents were "content" without reviewing all of DVSI's course data. To clarify, counsel
argued that what Dr. Stubblebine actually meant by saying that he had not evaluated the disputed
documents to determine if they were "content" was that he was unable to rule out the possibility
that such documents were also used as instructional course material, such as the UOPX course
catalog being used as part of the hypothetical class: "How to Write a Course Catalog." Such
argument appears to strain credulity, and furthermore, it is supported only by the argument of
counsel and not by any clarification offered by Dr. Stubblebine.

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Dr. Stubblebine's conclusory statements are insufficient to support a finding of infringement.

Arthur A. Collins. Inc.. 216 F.3d at 1046; TechSearch. L.L.C.. 286 F.3d at 1372.

As DVSI has failed to advance admissible evidence that would support a finding of

infringement based on the existence of a content free registration server, summary judgment in

favor of UOPX is appropriate. See Chao. 232 Fed. Appx. at 284 (indicating that if "no

reasonable jury could credit the nonmovant's evidence, the nonmovant has ... failed to meet his

burden.").

IV. Analysis - Remaining Summary Judgment Issues

In addition to the above, the parties have briefed two additional issues with respect to

summary judgment: (1) UOPX contends that its system does not contain a "registration server"

because the UOPX computers hosting the "Apply Web" application that allows new users to

register (the registration manager) and the UOPX computers hosting the database where new user

registration information is recorded and stored (the registration database(s)) are located on

separate computers in different buildings that are two miles apart;10 and (2) that one independent

method claim in the '573 patent, and several claims dependent thereon, are invalid as they seek

to patent an abstract idea. Although it is generally this court's practice to fully address each

10 Although the court does not squarely reach the issue of UOPX's registration manager
and registration database being housed on computers physically located in different buildings, the
court notes that it does not credit the new affidavit submitted by Dr. Stubblebine. First, such
affidavit advances an entirely new theory regarding UOPX's computer architecture and appears
to be an eleventh hour marked deviation from Dr. Stubblebine's prior expert conclusions. See
Stokes v. L. Geismar. S.A.. 815 F. Supp. 904, 910 (E.D. Va. 1993) (citing Rohrboueh v. Wveth
Laboratories. Inc.. 916 F.2d 970, 976 (4th Cir. 1990)) ("The Fourth Circuit has held that when a
district court is faced with conflicts between an expert witness' testimony given at deposition and
that submitted in a conclusory, eleventh-hour affidavit, it is justified in disregarding the
affidavit."). Second, even if it were appropriate to permit DVSI's expert to change his position at
such a late stage, Dr. Stubblebine's new affidavit is replete with speculation, and the statements
therein appear to be based entirely on assumptions rather than actual observation or testing.

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argument raised in the parties' briefs, here, 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. See Nomos Corp. v. Brainlab USA. Inc.. 357 F.3d

1364, 1367 n.l (Fed. Cir. 2004) (quoting Laitram Corp. v. Rexnord. Inc.. 939 F.2d 1533, 1535

(Fed. Cir. 1991)) ("Since the failure to meet a single limitation is sufficient to negate

infringement of the claim, we will limit our analysis accordingly.").11

V. Analysis - Motion for Clarification

DVSI's motion for clarification seeks reconsideration of this court's Markman ruling as

to the claim term "registered user." Although the court recognizes that it possesses the discretion

to modify its prior ruling, after considering the parties' arguments, the court declines to exercise

such discretion in this case. First, the court does not find it appropriate to provide DVSI a second

bite at the apple regarding Markman disputes at such a late stage in the litigation, as UOPX and

its experts have relied on the court's Markman ruling in completing discovery and formulating a

position on summary judgment. DVSI's suggestion that it only recently fully appreciated the

ramifications of the court's Markman order is uncompelling and appears to be undermined by the

record. Second, even if the court were inclined to reconsider certain portions of its Markman

ruling, it would not find it appropriate to, subsequent to UOPX's filing of a summary judgment

11 When a patent dispute presents both the issues of validity and infringement, it is
"usually... the better practice" to first inquire fully into the validity of the patent as "of the two
questions, validity has the greater public importance." Sinclair & Carroll Co. v. Interchemical
Corp.. 325 U.S. 327, 330 (1945). However, here, the instant dispute involves three patents with
a combined total of seventy-nine claims, all which are implicated by the court's ruling on the
infringement issue. In contrast, the invalidity challenge only implicates twelve claims of a single
patent. Furthermore, the parties' summary judgment briefs focus primarily on infringement.
Accordingly, the court found it appropriate, in this case, to address the infringement issue first,
and the court's ruling on such issue rendered it unnecessary to reach the issue of validity.

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motion, permit DVSI to withdraw its stipulation as to the proper construction of a previously

disputed claim term. Third, to the extent the court may be willing to permit the withdrawal of a

stipulation, the merits of DVSI's newly advanced argument do not appear to demonstrate that the

newly proposed construction is more accurate than the construction adopted by the court. To the

contrary, both the patents' specifications and the prosecution history suggest that all claims in the

three patents at issue require a "registration server," thereby supporting the stipulated

construction. Based on the above, the motion for "clarification," more aptly labeled a motion for

reconsideration, is hereby denied.

VI. Conclusion

As set forth above, the court GRANTS defendants' motion for summary judgment as

plaintiff has failed to point to admissible evidence that could support a finding of infringement.

The court DENIES plaintiffs motion for clarification/reconsideration. Based on the court's

ruling herein, all other pending motions in this case are rendered MOOT.12

The Clerk is REQUESTED to enter judgment in favor of defendants, pursuant to Fed. R.

Civ. P. 58, and to mail copies of this Opinion and Order to all counsel of record.

IT IS SO ORDERED.

/s/
Jerome B. Friedman
SENIOR UNITED STATES DISTRICT JUDGE
Norfolk, Virginia
January "7 ,2011

12 One of several pending matters is DVSI's Rule 72 Objections to the Magistrate Judge's
discovery ruling compelling DVSI to produce a licencing agreement. Based on the ruling herein,
the settlement agreement no longer has any relevance, and the Magistrate Judge's Order (see Dkt.
No. 315) is therefore reversed. Such ruling does not suggest that the Magistrate Judge ruled in
error, but is based instead on the impact of the entry of judgment in favor of UOPX.

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