Patent on Automated Voting Devices Not Infringed by Machine Manufacturers

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On the eve of the 2012 national election, the U.S. Court of Appeals for the Federal Circuit ruled Nov. 5 that automated voting machine manufacturers do not infringe a patent on such devices and methods (Voter Verified Inc. v. Premier Election Solutions Inc., Fed. Cir., No. 2011-1553, 11/5/12).

In affirming a lower court's summary judgments, the court also ruled on how internet-stored documents can be considered “publicly accessible” for qualification as prior art in anticipation and obviousness determinations.

The court downplayed the significance of an indexing feature for the public to be able to find such documents, with commercial search engines clearly serving a parallel function. However, it also held that, even if those search engines have not incorporated an online journal's articles in their search lists, an article can be deemed publicly accessible if those of skill in the art would know to read that journal and the journal has its own search tool.

Patent Application AfterBush v. Gore Debacle.

Michael R. McDermott and Anthony I. Provitola of DeLand, Fla., applied for a patent Dec. 7, 2000, on an automated voting system with a self-verification procedure. The application date was a month after the Nov. 7, 2000, presidential election, in which Florida's electoral votes were contested because of voter errors.

A patent (6,769,613) was issued in August 2004. The inventors filed for and were granted a reissue patent (RE40,449) in August 2008.

Voter Verified Inc., the assignee of the patents, alleged infringement of 94 claims of the '499 patent by automated voting system manufacturers Premier Election Solutions Inc., Diebold Inc., and Election Systems & Software Inc. in the U.S. District Court for the Middle District of Florida. The defendants counterclaimed invalidity of all the asserted claims.

Senior Judge Patricia C. Fawsett granted summary judgment of noninfringement of Claims 1-93, invalidity for indefiniteness of Claim 94, and invalidity for obviousness of Claim 49. The obviousness judgment relied on prior art references in articles obtained from an online periodical called Risks Digest, including a posting titled “Computerized Voting” by Tom Benson.

Voter Verified appealed the noninfringement and Claim 49 obviousness judgments. Premier and Election Systems appealed the rejection of their counterclaims of invalidity of the remaining claims.

Searchable Internet Journal 'Publicly Accessible.'

Judge Alan D. Lourie rejected Voter Verified's argument that the Benson article was not acceptable prior art because it was not a “printed publication” within the meaning of 35 U.S.C. §102(b).

The court agreed with the patentee that a qualifying reference must be “publicly accessible,” and that “the ultimate question is whether the reference was 'available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it,' ” quoting SRI International Inc. v. Internet Security Systems Inc., 511 F.3d 1186, 1194, 85 USPQ2d 1489 (Fed. Cir. 2008) (75 PTCJ 273, 1/18/08).

However, it faulted Voter Verified for an over-reliance on whether the article must also be indexed in some way. The court said, “while often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references like the Benson article as printed publications within the prior art.”

As of the date of the invention, articles on Risks Digest were definitely accessible through entry of appropriate search terms using the journal's own search tool, the court said, even if--and this was debatable--commercial internet search engines had not yet catalogued the journal's articles. The court continued:  

Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website's own search functions and applying reasonable diligence.  




Since Voter Verified did not challenge the invalidity assessment given the Benson article as qualifying prior art, the court readily affirmed the lower court's obviousness finding.

Defendants Still Must Contest Other Claims.

The court also affirmed the judgment of no invalidity as to the other claims. The issue was a procedural one.

Voter Verified asserted all claims of the '499 patent in its complaint and initially sought summary judgment of validity. As the case proceeded, the plaintiff “pared back its infringement contentions,” the court said, but it left open the possibility that discovery might dictate otherwise. Meanwhile, the court explained, the defendants' counterclaim kept the pared-back claims before the court.

Apparently believing they no longer had to argue their counterclaims after Voter Verified's actions, Premier and Election Systems offered no evidence in support.

“As the district court recognized, it was ultimately up to Premier and Election Systems to establish each of their invalidity counterclaims by clear and convincing evidence,” the court said, “yet they failed to mount a response to Voter Verified's summary judgment motion on the claims now at issue.”

The court thus affirmed summary judgment of no invalidity of those challenged claims.

But Defendants Do Not Infringe.

Nevertheless, the court also agreed with the lower court's noninfringement finding.

As to about half the claims, the limitation that defeated Voter Verified's infringement charge was “a ballot scanning means … so that votes shown on the printed ballot are compared by the computer program with the votes recorded in the computer for the voter.”

The accused machines have no such scanning means, the court said, as it rejected Voter Verified's argument that the voter himself or herself could carry out the ballot scanning function.

Default Proof Credit Card System Inc. v. Home Depot U.S.A. Inc., 412 F.3d 1291, 1300, 75 USPQ2d 1116 (Fed. Cir. 2005) (70 PTCJ 239, 6/24/05), established that “a human being cannot constitute a 'means' ” within the scope of the means-plus-function provision of 35 U.S.C. §112, para. 6, the court explained. Further, where “compared by the computer program” is described in the patent specification, the court noted, the “means” must be “connected” to the computer.

“Voter Verified has not credibly explained, and the specification does not address, how a human could be connected to a computer, much less in a manner that would effect a computerized analysis upon his or her examination of a printed ballot,” the court said.

The remaining claims described methods that would require actions both by the voting system and by the voter. For a claim of joint direct infringement, the court said, the defendants would have to control or direct the actions of the voter, per BMC Resources Inc. v. Paymentech LP, 498 F.3d 1373, 84 USPQ2d 1545 (Fed. Cir. 2007) (74 PTCJ 644, 9/28/07), and Muniauction Inc. v. Thomson Corp., 532 F.3d 1318, 87 USPQ2d 1350 (Fed. Cir. 2008) (76 PTCJ 410, 7/25/08).

The court found no such control or direction here.

“[T]he record shows, at most, that the Defendants provide instructions on how to use their systems,” the court said. “But the fact that an accused infringer 'controls access to its system and instructs [others] on its use is not sufficient to incur liability for direct infringement,” the court reasoned, quoting Muniauction.

The court thus affirmed summary judgment of noninfringement.

It also rejected Voter Verified's charge of bias by the lower court judge in favor of the defendants.

Judges Jimmie V. Reyna and Evan J. Wallach joined the opinion.

Co-inventor Provitola represented Voter Verified. Robert M. Evans Jr. of Senniger Powers, St. Louis, Mo., represented the defendants.

By Tony Dutra  

Opinion at

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