Voter Verified Inc. v. Election Sys. & Software Inc.

• Decision Date: 29 September 2010
• Docket Number: No. 6:09–cv–1969–Orl–19KRS.,6:09–cv–1969–Orl–19KRS.
• Citation: 745 F.Supp.2d 1237
• Parties: VOTER VERIFIED, INC., Plaintiff,v.ELECTION SYSTEMS & SOFTWARE, INC., Defendant.
• Court: U.S. District Court — Middle District of Florida

745 F.Supp.2d 1237

VOTER VERIFIED, INC., Plaintiff,

v.ELECTION SYSTEMS & SOFTWARE, INC., Defendant.

No. 6:09–cv–1969–Orl–19KRS.

United States District Court, M.D. Florida,Orlando Division.

Sept. 29, 2010.

Anthony I. Provitola, Anthony I. Provitola, PA, Deland, FL, for Plaintiff.Jennifer E. Hoekel, Robert M. Evans, Jr., Sara Weilert Gillette, Senniger Powers LLP, St. Louis, MO, James Robert Lussier, Mateer & Harbert, PA, Orlando, FL, for Defendant.

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. 71, 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 Election Systems & Software, Inc. (Doc. No. 84, filed May 28, 2010);

3. Reply to Election Systems & Software, Inc.'s Memorandum in Opposition to Plaintiff's Second Motion for Summary Judgment by Voter Verified, Inc. (Doc. No. 91, filed June 11, 2010);

4. Response to Election Systems & Software, Inc.'s Cross Motion for Summary Judgment and Memorandum by Voter Verified, Inc. (Doc. No. 100, filed June 28, 2010); and

5. Reply in Support of the Cross Motion for Summary Judgment by Election Systems & Software, Inc. (Doc. No. 107, filed July 12, 2010).

Background

I. Procedural History

On November 19, 2009, Voter Verified, Inc. (“VVI”) filed the present action against Election Systems & Software Inc. (“ES & S”). (Doc. No. 1.) The Complaint, seeking both damages and injunctive relief, alleges that ES & S willfully infringed United States Patents Nos. 6,769,613 (“the '613 patent”) and RE40,449 (“the '449 patent”). ( Id. at 8.) EE & S denies VVI's allegations of infringement and seeks a declaratory judgment that: (1) the ' 613 and '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) ES & S does not and has never infringed the '613 and '449 patents. (Doc. No. 17 at 7–8.)

On April 28, 2010, VVI filed the present Motion for Summary Judgment. (Doc. No. 71.) 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 the ES & S AutoMark Voter Assist Terminal (“AutoMark System”) and the ES & S iVotronic Real Time Audit Log System (“iVotronic RTAL System”) (collectively, the “Accused Systems”). ( Id. at 2, 11.) VVI also moves for summary judgment concerning the validity of the asserted patents and the issue of intervening rights. ( Id. at 16, 20–24.) On May 28, 2010, ES & S 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 Systems do 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. 84.)

II. The Accused SystemsA. The AutoMark System

The AutoMark System is an electronic ballot marking device designed to machine-mark the voting selections for voters who are visually impaired, have a disability, or who are more comfortable using an alternative language. (Doc. No. 84–2 ¶ 3.) The AutoMark System includes: (1) a computer; (2) a scanner; (3) a touch screen display; (4) an audio output; (5) braille-embossed keys; and (6) a printer. ( Id. ¶ 4.) A voter using the AutoMark System initiates the voting process by inserting a blank paper ballot into the ballot feed tray. ( Id. ¶ 6.) The AutoMark System then scans the paper ballot and either displays the various selections on the touch screen or reads an “audio ballot.” ( Id. ¶ 7.) The voter then makes his or her selections, and the AutoMark System prints the selections onto the paper ballot. ( Id. ¶ 10.)

The AutoMark System may also be used to verify the accuracy of paper ballots. ( Id. ¶ 13.) If the AutoMark System is used in this manner, the voter inserts a marked ballot into the ballot feed tray. ( Id.) The AutoMark System then reads the markings on the inserted ballot and displays a “verification summary” of the votes. ( Id.) If the voter wishes to make changes to the ballot, a new ballot must be requested, and the voting process must be repeated. ( Id.)

B. The iVotronic RTAL System

The iVotronic RTAL System is a direct recording electronic system that uses a touch screen terminal to display ballots and to record votes. (Doc. No. 84–2 ¶ 16.) The iVotronic System includes: (1) a card reader; (2) a touchscreen; (3) an audio output; (4) memory for storing election ballots; and (5) a printer. ( Id. ¶ 17.) A voter using the iVotronic RTAL System begins the voting process by inserting a personalized electronic ballot card into a terminal. ( Id. ¶ 18.) A ballot then appears on the touch screen, and the voter selects candidates by pressing the touch screen itself. ( Id.) As the voter makes selections, the printer prints a continual hard copy log of each action taken by the voter. ( Id. ¶ 21.) A voter can verify the candidates or issues he or she selected by reviewing the hard copy log. ( Id.) When the voter has finished making his or her selections, the voter presses the red “Vote” button at the top of the screen, and the votes are saved to the permanent memory of the iVotronic RTAL System. ( Id. ¶ 19.) At the end of the day, the electronic votes stored in the memory of each iVotronic RTAL System are transferred to the master electronic ballot card which is used to transmit the entire precinct's election results via modem to election headquarters. ( Id. ¶ 20.) Each iVotronic RTAL System also prints summary reports displaying the total number of votes in both a bar code and a human readable format. ( Id. ¶ 22.) The hard copy logs are retained for audit purposes only. ( Id. ¶ 23.)

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. 1–1 at 1.) On February 14, 2005, co-inventor Anthony Provitola filed a reissue application for the '613 patent. ( Id. at 10.) 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.) VVI is the owner by assignment of both the '613 and '449 patents. ( Id. at 30.)

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 the printed 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. 84 at 21–23; Doc. No. 84–6.) 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. 84–6 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. 84 at 22–23; Doc. No. 84–7 at 1.) The Strini Patent discloses an electronic voting system with a touch screen monitor. (Doc. No. 84–7 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” under the applicable substantive law, if 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. The 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...