Voter Verified, Inc. v. Election Sys. & Software LLC
887 F.3d 1376
Fed. Cir.2018Background
- Voter Verified owns reissued U.S. Patent RE40,449, which claims voting methods/systems that print a voter’s selections for the voter to verify before tabulation (auto‑verification/self‑verifying voting systems).
- Voter Verified previously sued Election Systems in Middle District of Florida (2009). That litigation produced mixed rulings: most claims were held not infringed; claims 49 and 94 were ultimately held invalid on other grounds; the district court entered summary judgment rejecting some validity defenses after defendant failed to defend them; this Court affirmed those aspects in 2012.
- In 2016 Voter Verified refiled against Election Systems in the Northern District of Florida alleging infringement of the remaining claims of the ’449 patent.
- Election Systems moved to dismiss under Rule 12(b)(6) arguing all remaining claims are invalid under 35 U.S.C. § 101; Voter Verified argued issue preclusion barred relitigation of § 101.
- The district court held Alice’s two‑step § 101 framework was an intervening change in law (so no preclusion), applied Alice/Mayo, found the claims directed to the abstract idea of vote collection/verification implemented with generic computer components, and dismissed for § 101 ineligibility.
- On appeal the Federal Circuit (panel) affirmed the dismissal, concluding issue preclusion did not apply because the § 101 issue was not actually litigated nor necessary to the prior judgment, and on the merits the claims are directed to an abstract idea and lack an inventive concept.
Issues
| Issue | Plaintiff's Argument (Voter Verified) | Defendant's Argument (Election Systems) | Held |
|---|---|---|---|
| Whether Alice (and related Supreme Court decisions) created an intervening change in law that prevents issue preclusion | Alice merely applied Bilski/Mayo and did not alter governing § 101 law, so preclusion should apply | Alice/Mayo established/refined the two‑step framework; district court properly found a substantial change | Alice did not alter governing law for this purpose, but preclusion still fails on other grounds |
| Whether issue preclusion bars relitigation of § 101 validity | § 101 was decided previously and thus cannot be relitigated | Prior court never actually decided § 101 on the merits and § 101 was not necessary to the noninfringement judgment | Issue preclusion does not apply: § 101 was not actually litigated and was not critical/necessary to prior judgment |
| Whether the remaining claims of RE40,449 are directed to an abstract idea under Alice step 1 | Claims recite physical and human cognitive actions (not abstract) and include voter performance of steps | Claims are directed to voting, verification, and submission — fundamental human activity/abstract idea | Claims are directed to the abstract idea of voting and ballot verification |
| Whether the claims include an inventive concept under Alice step 2 | Claims require voter actions as well as system components; specification contemplates specific implementation | Claims use only generic computer components (PC, display, printer, scanner) to automate a human activity — no inventive concept | No inventive concept: use of generic computer components to perform the abstract idea is insufficient; claims invalid under § 101 |
Key Cases Cited
- Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (U.S. 2014) (establishes the two‑step framework for § 101: directed to abstract idea and search for inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (U.S. 2012) (articulates the two‑step § 101 analysis and concept of ‘‘inventive concept’’)
- Bilski v. Kappos, 561 U.S. 593 (U.S. 2010) (addresses limits of patenting abstract business methods)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (clarifies that patent eligibility is a question of law but some factual disputes can preclude resolution at Rule 12(b)(6))
- Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (§ 101 can be resolved at pleading stage when no factual disputes prevent it)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (methods performable in the human mind are paradigmatic abstract ideas)
- Cardinal Chemical Co. v. Morton Int'l, Inc., 508 U.S. 83 (U.S. 1993) (invalidity and infringement are independent issues for preclusion analysis)