Voter Verified, Inc., v. Election Systems Software LLC
Decided: April 20, 2018
Voter Verified owns US patent RE 40,449, which is directed to voting methods and systems that provide for “auto-verification” of a voter’s ballot.
In 2009, Voter Verified sued the predecessor to Election Systems Software in the Middle District of Florida alleging infringement of the ‘449 patent. Election Systems counterclaimed that the claims in that patent were invalid under §§101, 102, 103, and 112.
During summary judgment briefing in that 2009 litigation, Election Systems failed (in its summary judgment briefs) to respond to Voter Verified’s arguments that its claims were patent eligible under §101. Absent a response from Election Systems on the §101 issue, the District Court ruled Voter Verified’s claims to be patent eligible. The United States Court of Appeals for the Federal Circuit (Federal Circuit) then affirmed that judgment in late 2012.
Several years later, Voter Verified again sued Election Systems for allegedly infringing the ‘449 patent; the defendant then filed a motion to dismiss, alleging that all of the asserted claims are not patent eligible under §101. Voter Verified responded by arguing that because the §101 issues had been litigated in the 2009 case, the doctrine of issue preclusion prevented Election Systems from relitigating those issues in this case.
The District Court granted Election Systems’ motion, reasoning that issue preclusion cannot apply in this case because the law of patentable subject matter now (under the 2014 Alice Supreme Court case) is fundamentally different than it was during the 2009 litigation.
On appeal, Voter Verified argued that Alice did not fundamentally change the law of patentable subject matter; rather, it simply re-articulated the patentable subject matter standard first articulated in the Supreme Court's early 2012 Mayo decision—which was decided before the Federal Circuit’s affirmance of the first case in late 2012. In its decision in this case, the Federal Circuit agreed that the 2014 Alice decision did not fundamentally On appeal, Voter Verified argued that Alice did not fundamentally change the law of patentable subject matter; rather, it simply re-articulated the patentable subject matter standard first articulated in the Supreme Court's early 2012 Mayo decision—which was decided before the Federal Circuit’s affirmance of the first case in late 2012. In its decision in this case, the Federal Circuit agreed that the 2014 Alice decision did not fundamentally change the law of patentable subject matter as it existed during the first case; but the panel ultimately sided with Election Systems. Its decision began with a listing of the four elements that must all be met before issue preclusion may defeat a claim or defense:
(1) the issue at stake must be identical to the one involved in the prior litigation;
(2) the issue must have been actually litigated in the prior suit;
(3) the determination of the issue in the prior litigation must have been a critical and necessary part of the judgment in that action; and
(4) the party against whom the earlier decision is asserted must have had a full and fair opportunity to litigate the issue in the earlier proceeding.
In ruling against Voter Verified, the Court said the §101 issue was never actually litigated in the earlier case because Election Systems chose not to respond to Voter Verified’s patent eligibility arguments during summary judgment; it also stated that the patent eligibility issue was not “a critical and necessary part of the judgment” in that earlier case.
Finally, the Federal Circuit turned to the merits of the patent eligibility issue and ruled against the patent owner. The Court noted that (1) the claims—which are all drawn to the abstract idea of voting—recite a fundamental human activity that has been performed for hundreds of years; and (2) since the claimed abstract methods are performed using generic computer components, there was nothing in the claims to transform them into patent-eligible subject matter. Click here for the PDF