Last Month at the Federal Circuit
Last Month at the Federal Circuit

December 2012

Online Article Need Not Be Indexed in a Database to Qualify as Publicly Available Prior Art

Judges:  Lourie (author), Reyna, Wallach
[Appealed from M.D. Fla., Senior Judge Fawsett]

In Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 11-1553, -1559, 12-1016, -1017 (Fed. Cir. Nov. 5, 2012), the Federal Circuit affirmed that Premier Election Solutions, Inc. (“Premier”), Diebold, Inc. (“Diebold”), and Election Systems & Software, Inc. (“Election Systems”) (collectively “Defendants”) did not infringe claims 1-93 of U.S. Reissue Patent No. RE40,449 (“the ’449 patent”), that claim 49 of the ’449 patent was invalid as obvious, and that claims 1-48, 50-84, and 86-92 of the ’449 patent were not invalid as to Premier and Election Systems.

The ’449 patent was assigned to Voter Verified, Inc. (“Voter Verified”) and is directed to automated systems and methods for voting in an election, featuring a self-verification procedure for detecting and correcting machine and human error before the voter submits the ballot for tabulation.  Defendants produce and market automated voting systems.

Voter Verified filed infringement complaints based on the ’449 patent against Defendants, who denied infringement and sought DJ of invalidity on various grounds, including anticipation, obviousness, and indefiniteness.  On SJ, the district court held that Defendants had not infringed claims 1-93, that claims 49 and 94 were invalid as obvious and indefinite, respectively, and that claims 1-48, 50-84, and 86-92 were not invalid.  The district court also dismissed without prejudice Diebold’s invalidity counterclaims as to claims 1-48 and 50-93, and Premier and Election Systems’ invalidity counterclaims as to claims 85 and 93.

[W]hile often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references . . . as printed publications within the prior art.  Slip op. at 9.

On appeal, the Federal Circuit held that claim 49 was obvious in view of an article (the “Benson article”) obtained from an online periodical concerned with computer safety and security, known as Risks Digest.  The Court noted that for a reference to qualify as a prior art printed publication, it must have been sufficiently accessible to the public interested in the art before the critical date.  Rejecting Voter Verified’s argument that a web-based reference must be searchable by pertinent terms over the Internet and “indexed” on a database to qualify as a prior art printed publication, the Court held that indexing is not a necessary condition for public accessibility.  The Court concluded that the Benson article was publicly available prior art because a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest periodical and would have found the article using that website’s search functions and reasonable diligence.  The Court also held that the disclosures in the Benson article made claim 49’s voting methods obvious to one of ordinary skill in the art of computerized voting technology.

Regarding claims 1-48, 50-84, and 86-92, the Federal Circuit affirmed their validity because Premier and Election Systems failed to mount a response to Voter Verified’s SJ motion.  The Court rejected Premier and Election Systems’ argument that the district court lacked jurisdiction on this issue, explaining that Voter Verified had pared down the number of claims in its infringement contentions with the caveat that discovery might dictate reintroducing them, and that Premier and Election Systems had kept the claims before the district court by maintaining their counterclaims of invalidity. 

Turning to infringement, the Federal Circuit deemed that Voter Verified had waived its challenge regarding claims 56-84 of the ’449 patent because it did not substantively dispute the judgment of noninfringement regarding those claims.

The Federal Circuit noted that independent claims 1 and 25 each require, among other elements, a “ballot scanning means,” which the district court construed under 35 U.S.C. § 112, ¶ 6.  Rejecting Voter Verified’s argument that the voter is an alternative and equivalent structure for carrying out the claimed ballot scanning function, the Court held that a human being cannot constitute a means within the scope of § 112, ¶ 6.  Noting further that claims 1 and 25 require that the printed ballot and electronically stored vote be “compared by the computer program” and that the scanning means be “connect[ed]” to the computer, the Court concluded that there was no explanation of how a human could be connected to a computer, much less in a way that would effect a computerized analysis upon his or her examination of a printed ballot.  The Court held that because the accused products do not include a ballot scanning device or its equivalent, they do not infringe claims 1 and 25 and their associated dependent claims 2-24 and

Next, the Federal Circuit held that the accused products did not infringe independent claims 49, 85, and 93 of the ’449 patent and their associated dependent claims 50-55 and 86-92.  The Court noted that claims 49, 85, and 93 recite methods that require several steps to be performed “by the voter.”  Explaining that liability for direct infringement of a method claim requires that one party either performs every step of the claimed method or exerts direction or control over any such steps performed by others, the Court determined that there was no genuine issue of material fact whether Defendants controlled or directed the voter’s performance of the claimed steps.  The Court stated that the record showed, at most, that Defendants provided instruction on how to use their systems, which was not sufficient to incur liability for direct infringement.

Lastly, the Federal Circuit rejected Voter Verified’s challenge to seventeen discretionary rulings on various motions, concluding there was no abuse of discretion.