It has been a week now since the election and, as expected, Florida played less of a role in apportioning its twenty-nine votes in the Electoral College than expected.  However, the process for selecting these electors during voting last Tuesday relied heavily on a key device—the voting machine.  Without voting machines, there is no election.

With just hours left before polls opened, and after many days of early voting in Florida, the Federal Circuit released its decision in Voter Verified v. Premier Election Solutions.  And just as expected, the court refused to grant injunctive relief that would have thrown the Florida election system in to a frenzy not seen since the “hanging chad” fiasco of 2000.

The court of appeals affirmed two interrelated district court decisions that held invalid 93 of the 94 patent claims in Voter Verified’s patent.  The Defendants’ competing products were found not to infringe the one remaining claim.  Voter Verified’s patent, U.S. Reissue Patent RE40,449, discloses and claims an automated system and method for voting in an election, the significant feature of which is the self-verification procedure by which “machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.”  In affirming the lower court’s decisions, the court of appeals avoided having to decide whether to issue injunctive relief for Voter Verified.  Such a decision would have placed the court within the harrowing territory of eBay v. MercExchange in determining whether injunctive relief was proper.

In assessing the necessity of an injunction, courts consider the principles of equity and apply the four factors set out in eBay.  It would be incredibly unlikely that the court would determine, even if Defendants had infringed the patent, “that the public interest would not be disserved by a permanent injunction.”  Issuing an injunction on the eve of an election that would remove thousands of voting machines would further hamper the carrying out of an election in a state that is already particularly election conscious.  Such an injunction would simply not be in the public interest.

While it is doubtful that the court would have found it necessary to issue an injunction, the case is nonetheless pertinent both for its timeliness in relation to the election as well as its holding that prior art in the form of an internet article can be used to invalidate several of Voter Verified’s claims.

The invalidation of a number of Voter Verified’s patent claims is based on an article published in a forum available online on the website for Risks Digest.  The article was originally published in March 1986, fourteen years before Voter Verified applied for their patent, and therefore well before the statutory bar period set forth in § 102(b).  The only question for the court to consider was whether this was “a printed publication” within the meaning of § 102(b) and renders the claims to be obvious under § 103.  In pleading that this prior art was not a “printed publication,” Voter Verified focused on the lack of indexing in allowing retrieval of the article by an interested public.  They also contended “that a web-based reference like the . . . article must be ‘searchable by pertinent terms over the internet’ to qualify as prior art ‘printed publication.’”

The court, citing In re Cronyn, reasoned instead that the key inquiry is whether the reference article was made “sufficiently accessible to the public interested in the art” before the critical date.  In conducting the case-by-case inquiry the court reasserted that “indexing is not ‘a necessary condition for a reference to be publicly accessible;’ it is but one among many factors that may bear on public accessibility.”  Ultimately, the court held that the determinative question is whether 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.”  They noted the multitude of ways that this article was accessible electronically.  Also, this website was well known within the community of computer risk automation, had published more than 100 articles on the subject of electronic voting, was widely available  to the public, all articles were free and easy to download, and the article in question could be accessed through the website’s search feature using the search terms “vote,” “ballot,” and/or “election.”

While the language of the article is not identical to the relevant claims of the ’449 patent, it would clearly make any such claim obvious to one of ordinary skill in the art of computerized voting technology.  This holding, while not unusual or precedent setting, is just one additional reminder of the vital importance of a comprehensive prior art search prior to filing a patent.

Both Defendants and Floridians can now rest assured that the voting machines they depend on will be available for many elections to come.

Andrew Solinger

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3 Responses to How Alleged Patent Infringement Did(n’t) Stop Florida from Voting

  1. Parker Hancock says:

    It’s somewhat disappointing that there wasn’t a decision under the Ebay v. MercExchange framework. This would have been a case with a very specific, and not-patent related public interest that may have decided the case: Whether Florida would be able to properly conduct an election.

    Of the four equitable factors for granting injunctions, I’ve been curious to see how broadly, and how determinate the public interest consideration will be, specifically whether it would only include patent policy “public” considerations, or whether it could reach “real world” effects, like, for instance, the public’s desire to have access to the claimed invention (maybe a Samsung tablet?).

  2. Joel says:

    It’s interesting that the Federal Circuit declined to adopt the bright-line indexing rule and instead simply made it one of many factors relevant to deciding if a web article is publicly accessible. Normally, the Federal Circuit sets up bright line rules only to have the Supreme Court devise a more flexible test.

    In this case, I’m having a difficult time coming up with a scenario in which a webpage could be publicly available and not indexed. It seems like the odds of stumbling across the article without the aid of any search engine or database is too slim to ever be considered public.

  3. Kate Haywood says:

    Voter Verified v. Premier Election Solutions serves as a friendly reminder to all of us that the handling of public elections, even those for the presidency, remains dominated by private interests. It is intimidating to think that had Voter Verified succeeded, they would have been given incredible leverage to dictate the economics of future public elections within their patent period- an incredible monopoly power. As you touched on, I can only imagine the chaos that would have ensued if the court had granted such injunctive relief. Luckily, the public interest has prevailed! All thanks to a 1980s article found in the depths of the Internet.