Voter Verified, Inc. v. Premier Election Solutions, Inc. et al

Filing 235

ORDER granting 218 Motion for summary judgment. Signed by Senior Judge Patricia C. Fawsett on 7/28/2011. (KMF)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
VOTER VERIFIED, INC.,
Plaintiff,
-vs-

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

PREMIER ELECTION SOLUTIONS, INC.,
DIEBOLD INCORPORATED,
Defendants.
______________________________________

ORDER
This case comes before the Court on the following:
1.

Motion for Summary Judgment of Non-Infringement of Claims 1-48, 50-55, 57-84, and 86-92
by Premier Election Solutions, Inc. and Diebold, Incorporated (Doc. No. 218, filed June 9,
2011);

2.

Response to the Fourth Motion for Summary Judgment of Diebold, Incorporated and the Third
Motion of Summary Judgment of Premier Election Solutions, Inc. (Doc. No. 223, filed July
9, 2011); and

3.

Defendants’ Reply in Support of Their Respective Motion for Summary Judgment of NonInfringement by Premier Election Solutions, Inc. and Diebold, Incorporated (Doc. No. 230,
filed July 24, 2011).

Background
I. Procedural History
On November 19, 2009, Voter Verified, Inc. (“VVI”) filed the present action against Premier
Election Solutions, Inc. (“Premier”) and Diebold Incorporated (“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. 16, filed
Jan. 16, 2009; Doc. No. 103, filed Apr. 28, 2010.)
On April 28, 2010, VVI filed a Motion for Summary Judgment against Premier arguing that
there were no genuine issues of material fact relating to the direct infringement of claim 49 of the ‘613
and ‘449 patents. (Doc. No. 106 at 1.) VVI also moved for summary judgment against Premier on
the validity of the asserted patents and the issue of intervening rights. (Id.) On May 28, 2010,
Defendants filed a Cross Motion for Summary Judgment, contending that: (1) the ‘613 patent cannot
be infringed because it was surrendered; (2) claims 49, 56, 85, 93, and 94 of the ‘449 patent are not
infringed; 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.) VVI’s Motion for Summary Judgment was granted in part and denied
in part. (Doc. No. 155 at 34-36.) The Motion was granted to the extent VVI sought a finding against
Premier that: (1) the claims of the ‘449 patent are not invalid under 35 U.S.C. § 101; (2) the claims
of the ‘449 patent, other than claim 94, are not invalid under 35 U.S.C. § 112; and (3) claims 1-48,
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50-84, and 86-92 are not invalid under 35 U.S.C. § 102. (Id. at 34.) Defendants’ Cross Motion for
Summary Judgment was also granted in part and denied in part. (Id.) The Motion was granted to the
extent the Defendants sought a finding that: (1) the ‘613 patent was surrendered to the United States
Patent and Trademark Office (“PTO”); (2) the AccuVote-TSX System does not infringe claims 49,
56, 85, and 93 of the ‘449 patent; (3) claim 94 of the ‘449 patent is invalid under 35 U.S.C. § 112; and
(4) the enumerated Risks Digest articles qualify as prior art. (Id. at 34-35.) Defendants were also
granted the requested leave to file a supplemental summary judgment motion addressing the issue of
obviousness.
On November 9, 2010, Defendants filed a Motion and Memorandum in Support of Invalidity
of Claim 49 of U.S. Patent No. RE40,449. (Doc. No. 161.) The Motion was granted to the extent
Defendants sought a finding that claim 49 of the ‘449 patent is invalid as obvious under 35 U.S.C. §
103. (Doc. No. 177 at 20.) However, because Defendants’ Motion did not address the obviousness
of the remaining claims, the Court also granted VVI’s Second Motion for Summary Judgment to the
extent it sought a finding against Premier that claims 1-48, 50-84, and 86-92 are valid. (Id. at 22.)
On June 9, 2011, Defendants filed the present Motion for Summary Judgment of NonInfringement of Claims 1-48, 50-55, 57-84, and 86-92 of U.S. Patent No. RE40,449 and Memorandum
in Support. (Doc. No. 218.) In the Motion, Defendants contend that no product or combination of
products sold by the Defendants infringe claim 1, claim 25, or any dependent claim of the ‘449 patent.
(Id.) VVI responded in opposition to Defendants’ Motion on July 9, 2011, (Doc. No. 223), and
Defendants filed a reply on July 24, 2011. (Doc. No. 230.)
II. The Asserted Patents

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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, a reissue application for the ‘613 patent was filed. (Id.) On August 5, 2008, the ‘613 patent
was surrendered to the PTO and reissued as the ‘449 patent. (Id. at 3.) VVI is the owner by
assignment of the ‘613 and ‘449 patents. (Id. at 4.)
In general, the ‘449 patent describes a computer voting system that displays ballots for voting,
instructs voters to input their selections, prints the votes of the voters, instructs the voters to review
the printed ballots for accuracy, and then instructs the voters to submit acceptable printed ballots for
tabulation. By way of example, claim 1 of the ‘449 patent recites:
1. A self-verifying voting system comprising: one or more voting stations
comprising:
(a) one or more computer programs which operate in a computer to display
general voting instructions, at least one election ballot showing the candidates and
issues to be voted on, and directions to the voter for operation of the system;
present the election ballot for voting and input of votes by the voter;
accept input of the votes from the voter;
print out the election ballot according to which the voter voted with the votes of the
voter printed thereon, so that the votes of the voter are readable on said election
ballot by the voter and readable by a tabulation machine;
record the votes in the computer; and
compare the votes read by a ballot scanning machine with the votes recorded in the
computer;
(b) a computer with at least one display device, at least once device to
accept voting input from a voter, at least one data storage device, and sufficient
memory to provide for the operation of said computer program in which said
computer program runs;
(c) a printer connected to said computer for printing the election ballot
according to which the voter voted;
(d) a ballot scanning means for reading the votes on the printed ballot
printed according to the election ballot which the voter voted so that the votes
shown on the printed ballot are compared by the computer program with the votes
recorded in the computer for the voter;
(e) means for connecting said ballot scanning means to said computer; and

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a means for tabulating the printed ballots generated by said one or more voting
stations.
III. The AccuVote-TSX System
The AccuVote-TSX System is a direct recording electronic device comprised of an AccuVoteTSX terminal connected to an AccuView Printer Module (“AVPM”). (Doc. 218-2 ¶ 5.) The
AccuVote-TSX terminal prompts voters to insert a voter access card to begin voting and then allows
a voter to vote by touching graphics displayed on a touch screen interface. (Id. ¶ 6.) 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. ¶ 7.) The AVPM then prints a paper ballot
containing the names of each candidate selected by the voter, and the touch screen interface of the
AccuVote-TSX terminal 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. ¶ 9.) 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 “take-up real.” (Id.
¶ 10.) At the end of the day, the electronic votes stored in the AccuVote-TSX terminal are transferred
to the election headquarters. (Id. ¶ 12.) The canisters holding the “take-up reals” are collected and
saved for audit purposes. (Id. ¶ 13.)

Standard of Review

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A party is entitled to summary judgment “if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(a); accord Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Hickson Corp. v. N.
Crossarm Co., 357 F.3d 1256, 1259 (11th Cir. 2004). A dispute 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.
A dispute 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.
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 (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. 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 that inference 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. In addition, when a claimant fails to produce

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“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. Independent Claims 1 and 25
Defendants first contend that they do not infringe independent claims 1 and 25 of the ‘449
patent because no product or combination of products sold by the Defendants uses a ballot scanning
means interfaced with a computer program to compare the votes on a printed ballot to the votes
recorded in a computer. (Doc. No. 218 at 4, 7.) In response, VVI maintains that the AccuVote-TSX
System infringes claim 1 and claim 25 of the ‘449 patent because a voter using the system performs
the element of comparing the votes on a printed ballot to the votes recorded in a computer. (Doc. No.
223 at 6-7.)
An infringement analysis involves two steps. First, the court must construe the claims, a
question of law in which the scope and meaning of the asserted claims is defined. Lacks Indus., Inc.
v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1341 (Fed. Cir. 2003). The claims as
construed are then compared to the accused device. Id. This is a question of fact. Insituform Techs.,
Inc. v. Cat Contracting, Inc., 161 F.3d 688, 692 (Fed. Cir. 1998). In order to establish patent
infringement, a patentee must demonstrate by a preponderance of the evidence “that an accused
product embodies all limitations of the claim either literally or by the [doctrine of equivalents].”
Amgen Inc. v. F. Hoffman-LA Roche Ltd, 580 F.3d 1340, 1374 (Fed. Cir. 2009) (citing TIP Sys., LLC
v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1379 (Fed. Cir. 2008)).
To literally infringe a claim, “every limitation set forth in a claim must be found in an accused
product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995).
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“A finding of infringement under the doctrine of equivalents requires a showing that the difference
between the claimed invention and the accused product or method was insubstantial or that the
accused product or method performs the substantially same function in substantially the same way
with substantially the same result as each claim limitation of the patented product or method.”
AquaTex Indus., Inc. v. Techniche Solutions, 479 F.3d 1320, 1326 (Fed. Cir. 2007) (citations omitted).
Equivalents are assessed on a limitation-by-limitation basis. Id. at 1328 (citing Tex. Instruments, Inc.
v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996)).
Defendants maintain that they do not infringe independent claims 1 and 25 of the ‘449 patent
either literally or under the doctrine of equivalents because no product or combination of products
sold by the Defendants meets element (d) of claim 1 or element (e) of claim 25, which are identical
(“Contested Elements”). The Contested Elements recite:
a ballot scanning means for reading the votes on the printed ballot printed according
to the election ballot which the voter voted so that the votes shown on the printed
ballot are compared by the computer program with the votes recorded in the computer
for the voter
Both VVI and the Defendants maintain that the Contested Elements are set forth in the
“means-plus-function” format,1 (Doc. No. 218 at 5; Doc. No. 223 at 2), a claim format that recites “a
function to be performed rather than definite structure or materials for performing that function.”
Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). The use of
the term “means” in the Contested Elements creates a presumption that § 112, ¶ 6 has been invoked.

1

Section 112, paragraph 6 provides that “[a]n element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112,
¶ 6.
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See Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1361 (Fed. Cir. 2000) (finding that
the use of the term “means” in a claim limitation creates a presumption that § 112, ¶ 6 has been
invoked). This presumption is further supported by the fact that the elements recite a function but do
not recite any structure for performing that function. Id. (noting that the presumption may be
overcome if the properly construed claim limitation recites a sufficient structure to perform the
claimed function).

Furthermore, the parties do not dispute the construction of the Contested

Elements as means-plus-function limitations. Accordingly, the Court finds that the Contested
Elements are recited in the “means-plus-function” format under § 112, ¶ 6.
The proper construction of a means-plus-function limitation involves two steps. First, the
court must identify the claimed function. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d
1316, 1324 (Fed. Cir. 2001) (citing Kemco Sales, 208 F.3d at 1361). “In identifying the function of
a means-plus-function claim, a claimed function may not be improperly narrowed or limited beyond
the scope of the claim language.” Lockheed Martin, 324 F.3d at 1319 (citing Micro Chem. Inc. v.
Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999). Once the claimed function is
identified, the patent must be examined to identify the corresponding structure disclosed in the
specification that performs the claimed function. Telemac Cellular, 247 F.3d at 1324. “In order to
qualify as corresponding, the structure must not only perform the claimed function, but the
specification must clearly associate the structure with performance of the function.” Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (citation omitted).
Having determined that the Contested Elements fall under § 112, ¶ 6, the Court must begin the
construction of these elements by identifying the claimed function. The plain language of the
Contested Elements recites the function as “reading the votes on the printed ballot printed according
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to the election ballot which the voter voted so that the votes shown on the printed ballot are compared
by the computer program with the votes recorded in the computer for the voter.” While VVI contends
that the function is limited to “reading the votes on the printed ballot printed according to the election
ballot,” VVI provides no argument to support this truncated reading of the claimed function, and such
a reading is not supported by the plain language of the Contested Elements which explicitly describes
the claimed function to include reading the printed ballot in a manner that permits the computer
program to compare the printed votes with the votes recorded by the computer. See JVW Enters., Inc.
v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005) (finding that “a court may not
construe a means-plus-function limitation by adopting a function different from that explicitly recited
in the claim” or by “importing the functions of a working device into the specific claims, rather than
reading the claims for their meaning independent of any working embodiment” (quotation omitted)).
Moreover, the computer program comparison portion of the claimed function adds substance to the
claim by further describing the manner in which the ballot scanning means is to read the votes on the
printed ballot, specifically, in a manner that allows the votes to be compared to the votes recorded in
the computer by a computer program. Cf. Tex. Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d
1165, 1172 (Fed. Cir. 1993) (declining to construe the function to include the claim language that
merely described the inherent results of the claimed function). Therefore, in accordance with the
plain language of the claims, the Court construes the function recited in the Contested Elements as
reading the votes on the printed ballot printed according to the election ballot which the voter voted
so that the votes shown on the printed ballot are compared by the computer program with the votes
recorded in the computer for the voter.

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The structure corresponding to the claimed function of the Contested Elements must next be
identified. Defendants contend that the proper structure is a ballot scanning machine interfaced with
a computer using a computer program. (Doc. No. 218 at 6.) In response, VVI argues that the while
Defendants “correctly identified the structure,” they failed to identify an alternative structure,
comparison by the voter. (Doc. No. 223 at 2-4.)
The specification of the ‘449 patent provides the following descriptions of structure
corresponding to the claimed function:
A printed ballot produced by the computer voting station which shows the votes of a
voter is then presented to the voter and either compared by the voter, or by operation
of the computer program for the voting system with a ballot scanning machine, the
machine capable of reading ballot selections, with the votes of the voter temporarily
stored in the computer. col. 2 ln. 25-33
Also connected to the computer in the voting station may be a machine which is
capable of reading ballot selection markings previously described, either directly,
through a master computer, or network to which the computer for the voting station is
connected. Such a machine will hereinafter be referred to as a “ballot scanning
machine” and is essentially an electro-optical sensing device from the well-known art.
Such a ballot scanning machine may be interfaced with the computer in the voting
station to scan the paper ballot printed by the printer as voted by the voter. col 3. ln.
54-64.
The printed ballot produced by the computer voting station which shows the votes of
a voter presented to the voter may either be compared by the voter, or by operation of
the computer program for the voting system with a ballot scanning machine, the
machine capable of reading ballot selection markings, or by both methods, with the
votes of the voter temporarily stored in the computer. col. 3 ln. 64 - col. 4 ln.4.
The result of the comparison is then judged acceptable or unacceptable by the voter,
in the case of comparison by the voter, or by the computer program for the voting
system, in the case of comparison with the ballot as read by the ballot scanning
machine in the voting station. . . . col. 4 ln. 7-11.
. . . voter observes that the printed ballot correctly represents the votes of the voter, the
ballot may be submitted by the voter for processing to a ballot scanning machine
interfaced with that voting station. Such processing may proceed in the computer
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program by comparison of the votes represented by the ballot selection marking on the
printed ballot with the votes stored in the computer for the voting station. col 5 ln. 2228.
In this manner, the specification repeatedly discloses the structure corresponding to performing the
claimed function as a ballot scanning machine interfaced with a computer program that compares the
votes read by the ballot scanning machine with the votes recorded in the computer. Such a ballot
scanning machine interfaced with the computer program described specifically in element (a) of
claims 1 and claim 25 is capable of performing the claimed function and identified in the specification
with the performance of the function. See Cardiac Pacemaker, 296 F.3d at 1113. (“[I]n order to
qualify as corresponding, the structure must not only perform the claimed function, but the
specification must clearly associate the structure with the performance of the function.”).
VVI contends that the specification also discloses comparison by the voter as an alternative
structure corresponding to the claimed function. (Doc. No. 223 at 2-3.) VVI’s argument fails for two
reasons. First, “a human being cannot constitute a ‘means.’” Default Proof Credit Card Sys., Inc. v.
Home Depot U.S.A., Inc., 412 F.3d 1291, 1300 (Fed. Cir. 2005) (citing In re Prater, 415 F.2d 1393,
1398 (C.C.P.A. 1969) (finding defendants’ arguments that the structure corresponding to a means can
entail human participation or a human being manually operating an apparatus to be “misplaced”).
Thus, means-plus-function claims are not construed to “cover structures in which a human being
substitutes for a part of the claimed structure.” Davies v. United States, 31 Fed. Cl. 769, 778-79 (Fed.
Cl. 1994) (citing Brown v. Davis, 116 U.S. 237, 249 (1886) (finding that even if a human being could
perform the claimed function manually, the accused device does not infringe the patent where the
accused device does not itself perform the function). Thus, the means-plus-function language in the
Contested Elements will not be construed to cover a human being performing the claimed function.
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Furthermore, even assuming a human being was a permissible structure under § 112, ¶ 6, the
specification fails to disclose a human being performing the claimed function in its entirety. The
claimed function includes not only reading the votes on the printed ballot and the votes recorded in
the computer, but reading the votes in a manner that allows a computer program to compare them.
The specification does not disclose a human being reading the printed votes and the votes recorded
by the computer in a manner that would allow for comparison “by the computer program.”2
Accordingly, the Court declines to construe the structure corresponding to the claimed function to
include a human being as an alternative equivalent. Instead, the Court finds the only structure
corresponding to the claimed function to be a ballot scanning machine interfaced with the computer
program described in element (a) of claims 1 and 25 that compares the votes read by the ballot
scanning machine with the votes recorded in the computer.
In order to infringe claim 1 or claim 25 of the ‘449 patent, the relevant structure in the
Accuvote-TSX System must perform either the identical function claimed in the Contested Elements
or a substantially similar function. See Kemco Sales, 208 F.3d at 1364. The undisputed evidence in
the record demonstrates that the Accuvote-TSX System itself is incapable of comparing the votes on
the printed ballots to the votes recorded in the computer. (Doc. No. 218-2.) The Accuvote-TSX
System is designed to provide a voter with the opportunity to review a printed ballot and cast or reject
that ballot based on its conformity with the votes recorded by the computer; there is no evidence in
the record to establish that the Accuvote-TSX System is similarly capable of making this comparison

2

In other claims of the ‘449 patent, the comparison of the votes on the printed ballot card to
the votes stored in the computer is specifically claimed. For example, element (c) of claim 49 recites
the method step of: “comparison by the voter of the printed votes with the votes temporarily stored
in the computer for the voting station.” (emphasis added).
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as required by claims 1 and 25. (Doc. No. 218-2 ¶ 7.) In fact, the uncontested evidence in the record
demonstrates that the Accuvote-TSX System does not include any type of ballot scanning machine
or other device capable of reading the printed votes.3 While VVI contends that the actions of the voter
are equivalent to the function of a ballot scanning device, infringement does not result where the
actions of a human being are substituted for the actions of the accused device. The accused device
must itself perform the function. Davies, 31 Fed. Cl. at 778-79 (finding that even if a human being
could perform the claimed function manually, the accused device does not infringe the patent where
the accused device does not itself perform the function). Because the Accuvote-TSX System is not
capable of comparing the votes of a printed ballot to the votes recorded in the computer, the
AccuVote-TSX System is unable to perform either the identical function or a function substantially
similar to the function claimed in the Contested Elements. Accordingly, Defendants’ Motion for
Summary Judgment will be granted to the extent it seeks a finding that the Defendants do not infringe
claim 1 or claim 25 of the ‘449 patent, either literally or under the doctrine of equivalents.4
II. Dependent Claims
Defendants next argue that in light of the Court’s findings on summary judgment regrading
claims 1, 25, 49, 56, 85, and 93, Defendants do not infringe any independent claims of the ‘449 patent
and therefore do not infringe any dependant claims as a matter of law. (Doc. No. 218 at 2.) VVI

3

VVI provides no argument or evidence to the contrary, conceding that the AccuVote-TSX
System does not include “any form of ballot scanning machine.” (Doc. No. 223 at 6.)
4

VVI does not contend that any other product or combination of products attributable to the
Defendants infringes the claims of the ‘449 patent.
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provides no response in opposition, conceding that the “Defendants correctly state the law of the
Federal Circuit.” (Doc. No. 223 at 8.)
“A conclusion of noninfringement as to [an] independent claim [] requires a conclusion of
noninfringement as to the dependent claims.”5 Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318,
1329 n.5 (Fed. Cir. 2008) (citing Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1359 (Fed.
Cir. 2007)); Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1302 (Fed. Cir. 2002) (“It is
axiomatic that dependent claims cannot be found infringed unless the claims from which they depend
have been found to be infringed.” (quotation omitted)). Therefore, where an accused device has been
found not to infringe an independent claim, the device also does not infringe the claims depending
from the noninfringing independent claim as a matter of law. Exergen Corp. v. Wal-Mart Stores, Inc.,
575 F.3d 1312, 1325 (Fed. Cir. 2009) (finding that because independent claim 27 was not infringed
by the accused device, dependent claims 28-30 also were not infringed).
In the present case, the Court has determined that the Defendants do not infringe independent
claims 1, 25, 49, 56, 85, and 93 of the ‘449 patent. In light of this finding and the fact that VVI does
not contend that any system other than the Accuvote-TSX System infringes the claims of the ‘449
patent, the Court concludes that the Defendants also do not infringe any of the claims depending from

5

In Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546 (Fed. Cir. 1989), the Federal
Circuit explained that: “One may infringe an independent claim and not infringe a claim dependent
on that claim. The reverse is not true. One who does not infringe an independent claim cannot
infringe a claim dependent on (and thus containing all the limitations of) that claim.” Id. at 1552.
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these independent claims, specifically claims 2-24, 26-48, 50-55, 57-84, and 86-92. Accordingly,
the Defendants do not infringe any valid claims of the ‘449 patent.6
Conclusion
Based on the foregoing, the Motion for Summary Judgment of Non-Infringement of Claims
1-48, 50-55, 57-84, and 86-92 by Premier Election Solutions, Inc. and Diebold, Incorporated (Doc.
No. 218, filed June 9, 2011) is GRANTED.
DONE and ORDERED in Orlando, Florida on July 28, 2011.

Copies furnished to:
Counsel of Record
Unrepresented Parties

6

There are 94 claims in the ‘449 patent. The Court previously determined, on summary
judgment, that claim 94 of the ‘449 patent is invalid pursuant to 35 U.S.C. § 112. (Doc. No. 155.)
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