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.