Voter Verified Inc. v. Premier Election Solutions Inc.

739 F.Supp.2d 1340

2010 Markman 3701338

VOTER VERIFIED, INC., Plaintiff,

v.PREMIER ELECTION SOLUTIONS, INC., Diebold Incorporated, Defendants.

Case No. 6:09-cv-1968-Orl-19KRS.

United States District Court,

M.D. Florida,

Orlando Division.

Sept. 15, 2010.

Anthony I. Provitola, Anthony I. Provitola, PA, Deland, FL, for Plaintiff.

Robert M. Evans, Jr., Jennifer E. Hoekel, Sara Weilert Gillette, Senniger Powers, LLP, St. Louis, MO, James Robert Lussier, Mateer & Harbert, P.A., Orlando, FL, for Defendants.

Order

PATRICIA C. FAWSETT, District Judge.

This case comes before the Court on the following:

1. Second Motion for Summary Judgment by Voter Verified, Inc. (Doc. No. 106, filed Apr. 28, 2010);

2. Memorandum in Opposition to Plaintiff's Second Motion for Summary Judgment and Cross Motion and Memorandum in Support for Summary Judgment of Non-Infringement and Patent Invalidity by Premier Election Solutions, Inc. and Diebold, Inc. (Doc. No. 124, filed May 28, 2010);

3. Response to Premier Election Solutions, Inc. and Diebold, Inc.'s Cross Motion for Summary Judgment and Memorandum by Voter Verified, Inc. (Doc. No. 141, filed June 28, 2010); and

4. Reply in Support of their Cross Motion for Summary Judgment by Premier Election Solutions, Inc. and Diebold, Inc. (Doc. No. 148, filed July 12, 2010).

Background

I. Procedural History

On November 19, 2009, Voter Verified, Inc. ("VVI") filed the present action against Premier Election Solutions, Inc. ("Premier") and Diebold, Inc. ("Diebold"). (Doc. No. 1.) The Complaint, seeking both damages and injunctive relief, alleges that Premier and Diebold (collectively "Defendants")willfully infringed United States Patents Nos. 6,769,613 ("the '613 patent") and RE40,449 ("the '449 patent"). ( Id. at 11-12.) Defendants deny VVI's allegations of infringement and seek a declaratory judgment that: (1) the '613 and the '449 patents are invalid pursuant to 35 U.S.C. §§ 101, 102, 103, and 112; (2) the '613 patent is invalid pursuant to 35 U.S.C. § 251; and (3) Defendants are not infringing and have never infringed the '613 and '449 patents. (Doc. No. 34, filed Jan. 13, 2010; Doc. No. 103, filed Apr. 28, 2010.)

On April 28, 2010, VVI filed the present Motion for Summary Judgment. (Doc. No. 106.) VVI argues that there are no genuine issues of material fact relating to the direct infringement of claim 49 of the '613 and '449 patents by Premier's AccuView Printer Module used in combination with Premier's AccuVote-TSX terminal (collectively, the "Accused System"). ( Id. at 2.) VVI also moves for summary judgment concerning the validity of the asserted patents and the issue of intervening rights. ( Id.) On May 28, 2010, Defendants responded in opposition to VVI's summary judgment motion and filed a Cross Motion for Summary Judgment, contending that: (1) the '613 patent cannot be infringed because it was surrendered; (2) the Accused System does not infringe claims 49, 56, 85, 93, and 94 of the '449 patent; and (3) claims 49, 56, 85, 93, and 94 of the '449 patent are invalid as anticipated under 35 U.S.C. § 102. (Doc. No. 124.)

II. The Accused System

The Accused System is a voting terminal that prompts voters to review a printed version of their ballot for accuracy before casting their final vote. (Doc. No. 142-2.) The Accused System consists of the AccuVote-TSX terminal and the AccuView Printer Module ("AVPM"). (Doc. No. 106.) The AccuVote-TSX terminal allows a voter to vote by touching graphics displayed on a touch screen interface. (Doc. No. 142-2 at 2.) When the AVPM is used in conjunction with the AccuVote-TSX terminal, voters are prompted to print their ballots by touching the Print Ballot graphic. ( Id.) The AVPM then prints a paper ballot containing the names of each candidate selected by the voter, and the touch screen interface displays a summary of the voter's selections. ( Id.) The voter is then directed to review the printed ballot for accuracy and is given the option to cast or reject the ballot. ( Id.) Once the ballot has been cast, an image of the ballot is stored on an internal memory card located in the AccuVote-TSX terminal. ( Id.) The paper reel on the ballot printer of the AVPM advances each time a voter votes, and the printed ballots are taken into a locked "tape-up real." ( Id. at 2-3.) At the end of the day, the electronic votes stored in the AccuVote-TSX terminal are transferred to the election headquarters. ( Id. at 3.) Only the electronic votes are tallied. ( Id.) The canisters holding the "take-up reals" are collected and saved for audit purposes. ( Id.)

III. The Asserted Patents

The patents at issue in the present case include the '613 and '449 patents (collectively, the "Asserted Patents"). The '613 patent issued on August 3, 2004. (Doc. No. 60 at 2.) On February 14, 2005, co-inventor Anthony Provitola filed a reissue application for the '613 patent. ( Id.) On August 5, 2008, the '613 patent was surrendered to the United States Patent and Trademark Office ("PTO") and reissued as the '449 patent. ( Id. at 3.) VVI is the owner by assignment of both the '613 and '449 patents. ( Id. at 4.)

The Asserted Patents involve a computer voting system that displays a ballot for voting and instructs voters to input their selections. A paper ballot is then printed, and the voter is prompted to review theprinted ballot for accuracy. If the printed ballot does not reflect the voter's intended selections, the voter is permitted to correct the error by repeating the voting process. When the voter is satisfied with the accuracy of the printed ballot, the printed ballot is submitted for final tabulation by a tabulation machine. Alternatively, a ballot scanning machine may be used to determine the accuracy of the printed ballot.

IV. The Prior Art

The prior art relevant to the present summary judgment motions includes three articles published in The Risk Digest in 1986. (Doc. No. 124; Doc. No. 124-6 at 8-14; Doc. No. 146 ¶¶ 5, 18-19, 21-22.) The first article, posted by Tom Benson, describes an electronic voting system that allows a voter to review a printed ballot for accuracy before the vote is electronically confirmed (the "Benson Article"). (Doc. No. 124-6 at 12.) The second article, posted by Michael McLaughlin, describes a voting system wherein a voter receives a printed receipt displaying the names of the candidates the voter selected (the "McLaughlin Article"). ( Id. at 11.) The voter can then review the printed receipt for accuracy and request a corrective procedure in the event of an error. ( Id.) The third article, posted by Kurt Hyde, proposes a security standard for voting involving a voting booth that prints a paper ballot for voters to review (the "Hyde Article"). ( Id. at 9.) The paper ballot is then retained by the voting system for use in auditing the accuracy of the voting system's computer. ( Id.)

The relevant prior art also includes Italian Patent No. 1234224, which was issued to Giorgio Strini on June 5, 1992 (the "Strini Patent"). (Doc. No. 124-7 at 1.) The Strini Patent discloses an electronic voting system with a touch screen monitor. ( Id. at 2.) The voting system is capable of electronically storing votes and printing paper ballots that can be read by an optical scanner. ( Id.)

Standard of Review

A party is entitled to summary judgment "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled judgment as a matter of law." Fed. R. Civ. P. 56(c); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Hickson Corp. v. N. Crossarm Co., 357 F.3d 1256, 1259 (11th Cir.2004). An issue of fact is "material" if, under the applicable substantive law, it might affect the outcome of the case. Hickson Corp., 357 F.3d at 1259. An issue of fact is "genuine" if the record taken as a whole could lead a rational trier of fact to find for the nonmoving party. Id. at 1260. A court must decide "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id.; Anderson, 477 U.S. at 251-52, 106 S.Ct. 2505.

The party moving for summary judgment has the burden of proving that: (1) there is no genuine issue as to any material fact, and (2) it is entitled to judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). In determining whether the moving party has satisfied its burden, the court considers all inferences drawn from the underlying facts in the light most favorable to the party opposing the motion and resolves all reasonable doubts against the moving party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505. The court may not weigh conflicting evidence or weigh the credibility of the parties. Hairston v. Gainesville Sun Pub. Co., 9 F.3d 913, 919 (11th Cir.1993). If a reasonable fact finder could draw more than one inference from the facts and thatinference creates an issue of material fact, a court must not grant summary judgment. Id. On the other hand, summary judgment must be granted "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which the party will bear the burden of proof at trial." Celotex Corp., 477 U.S. at 322, 106 S.Ct. 2548. In addition, when a claimant fails to produce "anything more than a repetition of his conclusory allegations," summary judgment for the movant is "not only proper but required." Morris v. Ross, 663 F.2d 1032, 1034 (11th Cir.1981).

Analysis

I. Prior Art

The parties presently dispute whether the Benson, McLaughlin, and Hyde Articles (collectively the "Risk Digest Articles") qualify as prior art for the purpose of analyzing the validity of the Asserted Patents. Defendants argue that the contested references are printed publications within the meaning of 35 U.S.C. § 102 b...