Voter Verified, Inc. v. Premier Election Solutions, Inc.
698 F.3d 1374
| Fed. Cir. | 2012Background
- Consolidated appeals arise from two related patent infringement actions in MD Fla by Voter Verified against Premier, Diebold, and Election Systems, asserting infringement of claims 1–94 of the ’449 patent (reissue of 6,769,613).
- District court granted summary judgment: claims 1–93 not infringed, claim 94 indefinite, and claim 49 invalid as obvious; district court also dismissed invalidity counterclaims as to other claims.
- Voter Verified appeals multiple rulings; Premier and Election Systems cross-appeal on the validity of surviving claims.
- The court discusses self-verifying voting technology: voter input, printing a ballot, and a verification/comparison step before tabulation.
- The appellate court affirms the district court’s judgments on infringement and validity after evaluating prior art, claim construction, and the reasonable duties of multiple parties under applicable patent law.
- The court notes issues about numerous discretionary and procedural rulings, ultimately finding them unpersuasive and affirming the district court.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of claim 49 in light of Benson article | Voter Verified argues Benson is not a printed publication under §102(b) because not searchable online. | Defendants contend Benson is a printed publication and renders claim 49 obvious. | Benson qualifies as a printed publication and renders claim 49 obvious. |
| Validity of claims 1–48, 50–84, 86–92 | Voter Verified maintained those claims should be valid; discovery could reassert invalidity. | Defendants lacked adequate invalidity evidence; undisputed record shows noninvalidity. | District court’s noninfringement/invalidity rulings on those claims affirmed. |
| Noninfringement of claims 1–48 (ballot scanning)** | Human voter action could fulfill the ballot scanning function under §112, ¶6, via equivalents. | A human cannot be a §112, ¶6 means; no computer-connected scanning by voter. | No literal or equivalent ballot scanning structure; claims 1 and 25 noninfringed. |
| Noninfringement of claims 49, 85, 93 (voter-directed steps) | Defendants control or direct all voter actions through their systems. | No single party performs all steps or directs the entire process. | Liability for direct infringement not shown; claims 50–55 and 86–92 noninfringed. |
Key Cases Cited
- In re Cro Lynd, 890 F.2d 1158 (Fed. Cir. 1989) (test for public accessibility of prior art)
- In re Lister, 583 F.3d 1307 (Fed. Cir. 2009) (public accessibility is case-specific; indexing not mandatory)
- Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317 (Fed. Cir. 2002) (public accessibility and factual findings underpinity for prior art)
- In re Hall, 781 F.2d 897 (Fed. Cir. 1986) (library catalog indexing as a factor in accessibility)
- In re Bayer, 568 F.2d 1357 (CCPA 1978) (thesis not cataloged not publicly accessible)
- SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008) (public accessibility standard for online references)
- Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (en banc; multiple actors in method claims can affect infringement liability)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (liability for method claims with control/direction over steps)
- BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (direct infringement requires act or control over entire method)