IP Rights Won’t Stop the Election: Federal Circuit Rules that Florida Voting Machines do not Infringe Patentee’s Exclusive Rights

By Dennis Crouch

Voter Verified v. Premier Election Solutions and Diebold (Fed. Cir. 2012)

On the eve of the 2012 US Presidential Election, the Federal Circuit has released its opinion affirming two Florida district court judgments that 93 of Voter Verified’s asserted patent claims are invalid and the one remaining claim is not infringed by either that the remaining are not infringed by the automated voting systems sold by Premier Election Solutions and Diebold. This result rescues the court from deciding whether injunctive relief to stop voting in Florida would be against the public interest. See eBay v. MercExchange, 547 U.S. 388 (2006)

The asserted patent was originally filed as a patent application in December of 2000 in the wake of the Bush-Gore election debacle in Florida. The patent lists two inventors, including patent attorney Anthony Provitola who prosecuted the patent and litigated the case. The basic idea of the invention is to print a paper copy of the electronically-entered vote and then using the paper copy to verify that the recorded information is correct. See RE40,449.

The decision includes two topics for discussion:

Internet postings as prior art: One prior art reference used to invalidate various claims came from an online posting available through the niche website “Risks Digest.” There was clear evidence of its posting date, however, the patentee argued that the posting did not qualify as a “printed publication” under Section 102(b) because it was not sufficiently accessible to the public interested in the art by the critical date. Rejecting that criticism, the Federal Circuit noted that proof of indexing is not a requirement. Rather, what is necessary is proof that 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 v. ISS and Bruckelmyer). Applying a totality-of-the-circumstances approach, the court found that availability was proven by the facts that: the reference was available online before the critical date; the site was well known to relevant individuals (those concerned with electronic voting technologies); by the critical date the site included more than 100 electronic voting articles; users of the site consider submissions to be public disclosures; and the site includes an internal search engine that would retrieve the prior art article based on searches for “voting” or “election.”

Joint Infringement: Some of asserted method claims required action by multiple parties (including “the voter”) that could potentially be actionable under Akamai Technologies, Inc. v. Limelight Net­works, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc). However, the appellate panel found that the patentee had waived that argument at the trial level and could not raise it on appeal even though the law has changed in the interim.

Of note, in Akamai the en banc Federal Circuit focused exclusively on indirect infringement and expressly refused to comment on whether prior panel decisions had unduly narrowed the scope of direct infringement. However, the court did vacate the panel decisions in Akamai and McKesson. Here, however, the court falls back on the still-standing precedent in the parallel decision of BMC and Muniauction to limit the scope of direct infringement liability only to cases where the accused direct infringer “either performs every step of the claimed method or exerts ‘direction or control’ over any such steps performed by others.” Since control of “the voter” would be akin to voter fraud, the court here held that no such direct control exists.

Don’t forget to Vote. Below is a photo of Obama that I posted back in 2004 when he was running for senate and voting near my home in Hyde Park (Chicago), IL.

Notes: Just to clear up any confusion from my reference to eBay above, there is no chance that the Federal Circuit would have ordered an injunction to stop the election even if the devices were infringing VV’s exclusive patent rights.

38 thoughts on “IP Rights Won’t Stop the Election: Federal Circuit Rules that Florida Voting Machines do not Infringe Patentee’s Exclusive Rights

  1. 37

    Republicans:

    I come from California were I have seen a long list of rich businessmen getting nominations for governor or for senate. These folks may be good guys, but the perception is that they did not get the nomination on their personal merits. No one really takes them seriously.

    So, what was Romney other than a rich businessman who got the nomination because he outspent everyone else. The Republican field of candidates was admittedly weak, but could that be because Romney was running and otherwise very good candidate recognized they had no chance?

    Politicions are like generals. The best move up the ranks on merit. If they take command only because they are rich, disaster can be expected.

    The best politicians have vision and proven skill. It is not about them. It is what is right for the country.

    The bottom line, Republicans, stop nominating rich businessmen. Rig the system in some way so these folks either cannot run or cannot use their own money.

  2. 36

    No – many years after he jumped the shark (the first time, that is). He was at a college graduation, for his daughter, I think. I don’t think very many people recognized him. But he was just as cool as ever.

    John Waite once offered me some weed. I turned him down.

  3. 33

    sad namedrop

    Pretty great picture, actually. Congrats, Dennis! I wouldn’t be surprised if you get some requests to republish that at some point. Maybe send a copy to the Obamas, if you haven’t already.

  4. 30

    The sky is blue.

    You seem to assume that this color is a bad thing…

    Blue is a perfectly legitimate color. I can prove it, because IBM once won a patent infringement case.

  5. 29

    anon,

    You’re most welcome (and thanks also for “coaxing” me to comment). I spent probably 2-3 years researching, thinking through, and writing this article. Michael Risch was a great help in reviewing an earlier draft and getting me to think through what should be the “themes” in this article. As I pointed out to Ned, the current case law on what is (or is not) a “printed publication” is probably still applicable to how this term will be/should be interpreted under the AIA.

  6. 28

    The items I point out are completely separable from patent law

    That’s nice, anon. Nobody asserted otherwise.

    The sky is blue. I win!

    Nice game.

  7. 27

    Re the picture…another sad namedrop by Dennis. I’ll add the neighbor thing to the list of other things Dennis likes to say – “I went to Princeton with so and so.” “I went to law school with so and so”. “I am neighbors with so and so”. etc.

  8. 26

    Ned,

    This phrase should have no effect on “printed publication” as the current definition requires some degree of being “public.” “Public use” may be a different matter as what “otherwise available to the public” is intended to cover/refer to (beyond “patent,” “printed publication,” “public use,” or “on sale”) is, in my opinion, unclear. Certainly one possibility is overruling Metallizing Engineering, but I wouldn’t take that to the bank quite yet. The legislative history on this in the AIA could have been clearer, and there are certain judges/justices (one in particular) who give “legislative intent” no/minimal weight

  9. 21

    More of the same, I think

    Actually, no. The items I point out are completely separable from patent law. You must try so very hard to be so very off.

  10. 20

    such make a better case for sanctions

    More of the same, I think. The CAFC should have thrown the book at Voter Verified. But of course that might “tarnish” the otherwise impeccable reputations of the illustrious, creative and “zealous” attorneys responsible for the brief. Never forget: hurting a patent litigator’s fee-fees is Teh Worst Thing Ever!

  11. 19

    I would tend to “take more seriously” the seventeen items in Section C of the opinion and posit that such make a better case for sanctions.

  12. 18

    EG, regarding “public” use and printed “publication:” do you believe the new 102 “otherwise available to the public” will require any modification whatsoever in the current state of the law?

  13. 17

    Ned,

    The Coke formula is an entirely different animal. The “printed publication” bar requires some document that is either passively “publicly accessible” or active “dissemination” of that document. The Coke formula is neither; see the 1990 case of Northern Telecom v. Datapoint Corp. which is discussed in my article and directly addresses your question.

  14. 16

    Malcolm,

    Perhaps because the accused infringer chose not to ask for sanctions, nor did the district court see fit to impose them. I’ve seen far worse arguments made to try to avoid an “on sale” bar based on “experimental use” that weren’t sanctioned either.

  15. 15

    EG, in your view, is the Coke formula published even though it remains under lock and key if the Coke product is available for all to reverse engineer?

    If you assert the Coke formula as prior art, and cannot reverse engineer the formula from the product, how do you prove it in court?

    What is the policy behind prior art?

  16. 14

    the patentee’s lack of “public accessability” argument is not very persuasive to me based on certain key facts

    Yes, certain key facts, like the fact that the article was published (according to any reasonable definition of the term) by a well-known online magazine in the field 13 years before the critical date.

    What is the argument for not sanctioning the plaintiff here (other than the usual arguments, i.e., sanctions hurt the plaintiffs fee-fees and diminish their beloved “creative” instincts)?

  17. 13

    He would have been voting for another imprisoned IL governer, Rod “Can I get 200, HA, Now who’ll give me 300” Blagojovich, in this picture.

  18. 12

    Wonder if he was thinking how much he was going to wreck America in only four short years, back in that picture . . . .

  19. 11

    anon,

    Since you asked me, here are my thoughts on the “printed publication” bar issue in this case (For those who are interested, you can get some additional background from my 2011 article posted at: link to vjolt.net which discusses the SRI International and Lister cases in some detail):

    1. Characterizing the patentee’s lack of “public accessibility’ argument against the Benson article being a “printed publication” bar as “sanctionable” may be too much. But the patentee’s lack of “public accessability” argument is not very persuasive to me based on certain key facts noted by Lourie (who BTW authored the majority opinion in Bruckelmyer cited in this case in which Linn wrote a strong dissenting opinion that I agree with). Those key facts are: (a) the Benson article was posted to Risks Digest in March 1986, 13 years before the critical date; (2) Risks Digest was distributed online via a subscription mailing list, as well as being made downloadable through an FTP; and (3) Risks Digest was well known to the relevant segment of those of ordinary skill in the art by the 1999 critical date. In other words, the Benson article was not only “publicly accessible,” but more significantly was also likely “disseminated” (the more “active” form of “printed publication” bar) to the relevant segment of those of ordinary skill in the art by the 1999 critical date. That distinguishes both the SRI International and Lister cases (where there was no “printed publication” bar allegedly involving much more passive “public accessibility” of the document), and makes this case more analogous to the Klopfenstein, MIT v. AB Fortia, and especially the seminal 1928 case of Jockmus v. Leviton (all of which ruled that a “printed publication” bar had occurred primarily based on “dissemination” of the invalidating document to those of ordinary skill in the art).

    2. If the facts relating to the Benson article being distributed online by Risks Digest hadn’t existed, that all content published in Risk Digest (which included the Benson article) became available worldwide through the Internet by the 1999 critical date is relevant, but not dispositive of the Benson article being a “printed publication” bar. One of problems I noted in my article is the danger of viewing Internet search capability in today’s terms when the alleged “publication bar” is based on a posting many years earlier. In fact, Lourie acknowledges this problem when he says that “although commercial internet search engines were available by 1999, the record is devoid of evidence indicating whether or not the Risks Digest website had been indexed by any such services as of the critical date.” In other words, simply having the Benson article posted on the Risks Digest website might not have been enough, by itself, to trigger the passive “public accessiblity” version of the “printed publication” bar. (But a showing that a relevant segment of those skilled in the art actually saw and reviewed the Benson article could also be enough to tip the scales in favor of “public accessibility” and potentially even “dissemination”.)

    My 2 cents.

  20. 10

    More insults. How charming.

    Now that you posted that you have read the case (as of your 2:25 PM post), the question enquiring minds want to know is: Did you read the case prior to your 1:00 PM post?

    Given that you have already tipped your hat with how you already threw out insults today, let’s see your honest answer.

  21. 9

    Malcolm, have you read claim 49? Regardless of whether the particular reference was prior art, claims such as this should not be issued by the PTO. Anyone with any history of voting knows that the claimed method is as old as the hills.

  22. 8

    Yes I did read the case. Sanctions would be perfectly appropriate here, in light of the facts and the existing law.

    everybody knows that even challenging status of prior art should be sanctionable

    I certainly don’t believe that is true, as a per se matter, nor does anyone else (as far as I know). Once again, you flail away at a target that exists only in your imagination. Perhaps another “implicit” message you received through your fillings. Maybe it’s time to visit your dentist.

  23. 7

    I wonder if “available to the public” in the new 102 will put a gloss on prior case law concerning printed publication or prior use? We know that a lot of the legislative history was highly critical of cases where confidential documents, offers for sale or privately used inventions were not otherwise available to the public yet still considered to be prior art. E.g., Egbert v. Lippmann, 104 US 333 (1881)

  24. 6

    Since control of “the voter” would be akin to voter fraud, the court here held that no such direct control exists.

    These are two different kinds of control. It must be not only possible but permissible for the voting machine (or the polling station generally) to control the process by which the voter votes without dictating the voter’s selections.

    Unless the patent claim specifies voting for a Democrat (for example), I don’t see why the requisite control for multi-partyinfringement could not exist as a matter of law, much less as a matter of aversion to implying a violation of some other law.

  25. 4

    the facts of the case

    The relevant facts are in the post. Maybe the Federal Circuit is making stuff up. They do that sometimes. It seems unlikely that they would create the recited facts out of thin air, however. A patentee making a ludicrous argument because it’s the only argument it has? That seems extremely likely.

    Maybe things are different in your country.

  26. 3

    A great example of a sanctionable argument.

    What are the chances that MM has decided this without any investigation into the facts of the case? (Because everybody knows that even challenging status of prior art should be sanctionable.)

    Perhaps we can coax Eric Guttag to comment…? Eric has done more than sniffed this issue.

  27. 2

    the patentee argued that the posting did not qualify as a “printed publication” under Section 102(b) because it was not sufficiently accessible to the public interested in the art by the critical date.

    A great example of a sanctionable argument. There really isn’t any argument that is too lame for your typical patent litigator.

  28. 1

    This result rescues the court from deciding whether injunctive relief to stop voting in Florida would be against the public interest.

    Surely there is no irreparable harm in the use of machines that already exist and have been set aside for this purpose, even without having to decide whether it’s in the public interest to allow Floridians to vote.

    Also, the injunction wouldn’t be “to stop the election”, but to prohibit use of these particular infringing machines. I suppose it probably amounts to the same this close to election day, but it’s still an important distinction.

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