In Voting Machine Case, the Federal Circuit Expanded on Standards for Categorizing Online Publications as Prior Art References

With one day to go before the election, the United States Court of Appeals for the Federal Circuit ruled on November 5, 2012 that a patent obtained on an automated voting machine with a self-verification procedure is not infringed by other automated voting machine manufacturers. The patent, US Reissue Patent RE40,449 (the “‘449 patent”), is assigned to Voter Verified, Inc. and claims automated systems and methods for voting in an election. It provides for a verification system whereby the voter has the opportunity to inspect the computer-printed ballot with his or her votes and then correct the votes in the computer system if the votes on the printed ballot are not the ones intended by the voter. The suit arose when Voter Verified sued various competing voting machine manufacturers and marketers for infringing on the ‘449 patent with verification systems of their own.

In Voter Verified, Inc. v. Premier Election Solutions, Inc., Federal Circuit Judge Alan Laurie upheld the Middle District of Florida decision holding Claim 49 of the ‘449 patent to be invalid on obviousness grounds. The lower court holding of obviousness rested in part on a posting entitled “Computerized Voting” by Tom Benson on the web-based periodical Risks Digest. In the posting, Benson described, “a solution to the problem of checking [voter] accuracy” involving a printed ballot similar to the one disclosed in the ‘449 patent.

Voter Verified challenged the lower court’s reliance on the Benson posting as a prior art printed publication to be used in an obviousness inquiry. It argued that the posting should be excluded from the court’s inquiry because (1) “[a] web-based article must be searchable  on the internet by  pertinent terms to qualify as a prior art ‘printed publication’ as defined by Section 102(b) of the Patent Act” and (2) “[t]he defendants failed to show any indexing on any database that would have allowed the interested public to locate the website containing the Benson article.”

Judge Laurie rejected these arguments, expanding the definition of printed  publication prior art. The Federal Circuit opinion states, “while often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references like the Benson article as  printed publications within the prior art.” The Court added, “a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies.” Therefore, whether the publication was indexed does not carry much weight in the prior publication inquiry.

The court then held Claim 49 of the patent to be invalid due to its obviousness. It ruled that the Benson posting’s content would have made Claim 49 obvious to a person of ordinary skill in the art of computerized voting technologies. In addition to holding Claim 49 invalid due to obviousness, the Federal Circuit affirmed the District Court holding of no invalidity for the majority of the remaining claims. It also affirmed the lower court’s holding of non-infringement.


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