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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.