Voter Verified, Inc. v. Premier Election Solutions, Inc. et al
Filing
249
ORDER denying 242 Motion for reconsideration. Signed by Senior Judge Patricia C. Fawsett on 8/30/2011. (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.
Defendants’ Renewed Motion for Reconsideration of Amended Order on Summary
Judgment and Incorporated Memorandum in Support by Premier Election Solutions,
Inc. and Diebold Incorporated, (Doc. No. 242, filed Aug. 5, 2011); and
2.
Plaintiff’s Response in Opposition to Defendants’ Renewed Motion for
Reconsideration by Voter Verified, Inc., (Doc. 247, filed Aug. 17, 2011).
Background
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, alleged 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 denied VVI’s allegations of infringement
and sought 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)
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, 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 Cross-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 AccuVoteTSX 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
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art. (Id. at 34-35.) Defendants were also granted 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 not invalid. (Id. at
22.) Defendants’ subsequently filed a Motion for Reconsideration asking the Court to review its
findings regarding the validity of claims 1-48, 50-84, and 86-92 of the ‘449 patent. (Doc. No. 179.)
Following a scheduled evidentiary hearing on April 12, 2011, the Court denied Defendants’ Motion
for Reconsideration. (Doc. No. 201.)
On June 9, 2011, Defendants filed a Motion for Summary Judgment of Non-Infringement 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 argued 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.) On
July 28, 2011, the Court granted the Defendants’ Motion, finding that VVI failed to create a genuine
issue of material fact relating to whether the Defendants infringe claim 1, claim 25, or any dependent
claim of the ‘449 patent. (Doc. No. 235.)
On June 13, 2011, VVI filed a Third Motion for Summary Judgment. (Doc. No. 220.) The
Third Motion for Summary Judgment was denied on July 29, 2011. (Doc. No. 236.) That same day,
the Court entered an Order dismissing Diebold’s invalidity counterclaim, (Doc. No. 103 ¶ 8), without
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prejudice with respect to claims 1-48 and 50-93 of the ‘449 patent and dismissing Premier’s invalidity
counterclaim, (Doc. No. 17 ¶ 8), without prejudice with respect to claims 85 and 93 of the ‘449 patent.
(Doc. No. 237, filed July 29, 2011.) In light of these dismissals, the Court denied Defendants’ Motion
for Summary Judgment on the Invalidity of Claims 50-54, 56-59, 62-67, 69-78, 85-91, and 93 of U.S.
Patent No. RE40,449, (Doc. No. 207, filed Apr. 25, 2011), as moot. (Doc. No. 237.)
On August 5, 2011, Defendants filed the present Renewed Motion for Reconsideration of
Amended Order on Summary Judgment requesting that the Court exercise its discretion under Federal
Rule of Civil Procedure 60(b) and reverse the orders finding claims 1-48, 50-84, and 86-93 of the ‘449
patent to be valid. (Doc. No. 242 at 6.) VVI responded in opposition on August 17, 2011. (Doc.
247.)
Standard of Review
In the present case, Defendants move for reconsideration of the Court’s previous findings on
summary judgment under Federal Rule of Civil Procedure 60(b). (Doc. No. 242 at 2.) Rule 60(b)
permits a court, “[o]n motion and just terms,” to relieve a party “from a final judgment, order, or
proceeding.” Fed. R. Civ. P. 60(b). However, on the date of this Order, final judgment not been
entered in the present case.1 Thus, Rule 60(b) is inapplicable. Nonetheless, pursuant to Federal Rule
1
On August 20, 2011, VVI filed a Notice of Appeal stating that VVI “hereby appeals to the
United States Court of Appeals for the Federal Circuit from the final judgment consisting of the order
entered in this action on July 28, 2011, and July 29, 2011.” (Doc. No. 248) (citations omitted). Final
judgment has yet to be entered in this case. Furthermore, 28 U.S.C. § 1292(c) provides that “[t]he
United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction-- (1) of an
appeal from an interlocutory order or decree described in subsection (a) or (b) of this section in any
case over which the court would have jurisdiction of an appeal under section 1295 of this title; and
(2) of an appeal from a judgment in a civil action for patent infringement which would otherwise be
appealable to the United States Court of Appeals for the Federal Circuit and is final except for an
accounting.” Here, VVI has not appealed from an interlocutory ordered described in subsection (a)
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of Civil Procedure 54(b), “[a] district court may reconsider and amend interlocutory orders at any time
before final judgment.” Harper v. Lawrence County, 592 F.3d 1227, 1231 (11th Cir. 2010); Toole
v. Baxter Healthcare Corp., 235 F.3d 1307, 1315 (11th Cir. 2000). Accordingly, the Court will
proceed to consider the present motion under Rule 54(b).
Rule 54(b) does not specify the standard to be used by courts in exercising authority to
reconsider. Insured Deposits Conduit LLC v. Index Powered Fin. Servs., LLC, No. 07-22735-CIV,
2008 WL 5691349, at *1 (S.D. Fla. Mar. 14, 2008). However, in this Circuit, courts have taken the
position that a motion for reconsideration should only be granted if there is (1) an intervening change
in controlling law, (2) newly discovered evidence; or (3) the need to correct clear error or prevent
manifest injustice. E.g.,Burger King Corp. v. Ashland Equities, Inc., 181 F. Supp. 2d 1366, 1369
(S.D. Fla. 2002). Additionally, a motion for reconsideration should not “be used as a vehicle to
present authorities available at the time of the first decision or to reiterate arguments previously
made.” Z.K. Marine, Inc., v. M/V Archigetis, 808 F. Supp. 1561, 1563 (S.D. Fla. 1992). Instead, the
moving party “must set forth facts or law of a strongly convincing nature to induce the court to
reverse its prior decision,” Sussman v. Salem, Saxon & Nielsen, P.A., 153 F.R.D. 689, 694 (M.D.
or (b) of § 1292. In addition, VVI has not appealed from a judgment that is final except for an
accounting because no accounting has been sought or remains pending in the present action.
Accordingly, the filing of the Notice of Appeal on August 20, 2011, was premature and does not
divest this Court of jurisdiction to consider the present Motion for Reconsideration. See Kramer v.
Unitas, 831 F.2d 994, 997 (11th Cir. 1987) (finding that a notice of appeal to be premature where it
was filed after the district court granted defendant’s summary judgment motion but before the court
formally entered final judgment); Ericsson Inc. v. InterDigital Commc’ns Corp., 418 F.3d 1217, 122123 (Fed. Cir. 2005) (applying the law of the regional circuit to determine procedural issues not unique
to patent law). Furthermore, even if the Court had entered a final judgment in the present matter, it
would retain jurisdiction to consider a motion for relief from final judgment even after the filing of
a timely notice of appeal. Bapte v. W. Caribbean Airways, 370 F. App’x 71, 73 (11th Cir. 2010)
(collecting cases).
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Fla.1994), for “[r]econsideration of a previous order is an extraordinary remedy to be employed
sparingly.” Burger King Corp., 181 F. Supp. 2d at 1370.
Analysis
In the present Motion for Reconsideration, Defendants request that the Court reverse its
previous findings regarding the validity of claims 1-48, 50-84, and 86-93 of the ‘449 patent and
declare the dispute over the validity of the ‘449 patent to be moot. (Doc. No. 242 at 6.) Defendants
maintain that such action is necessary to avoid “the existing inconsistent outcome.” (Id.) Defendants’
position is without merit.
In support of its Motion, Defendants first argue that because claim 85 of the ‘449 patent
contains only a subset of the elements contained in claim 49 and the Court previously determined that
claim 49 is invalid as obvious, “claim 85 should also be found obvious.” (Id. at 6-8.) Similarly,
Defendants maintain that claim 86 is invalid as obvious because claim 86 “adds a step substantively
similar to steps (e) and (f) of claim 49.” (Id. at 8.) However, Defendants do not cite, and the Court
is unable to find, any law to support the proposition that a finding on summary judgment that one
claim is invalid requires a finding on summary judgment that other related claims are invalid where
the parties challenging the validity of the patent have not moved for a finding of summary judgment
on the related claims. To the contrary, it is well established that patents are presumed to be valid upon
issuance, 35 U.S.C. § 282, and a party seeking to overcome this presumption bears the burden of
establishing invalidity by clear and convincing evidence, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1359-60 (Fed. Cir. 2007). More specifically, § 282 expressly states that “[e]ach claim of a patent
(whether independent, dependent, or multiple dependent form) shall be presumed valid independently
of the validity of other claims. . . . The burden of establishing invalidity of a patent or any claim
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thereof shall rest on the party asserting such invalidity.” Here, Premier not only failed to meet its
burden for establishing invalidity set forth in § 282 on summary judgment but also failed to raise the
present arguments in a timely fashion. Furthermore, while the Defendants contend that they “did not
understand that their motion for summary judgment asserting obviousness of claim 49 would be the
last motion Defendants would be allowed to file on obviousness,” (Doc. No. 242 at 4), Defendants’
purported “misunderstanding” was previously considered and rejected by the Court as grounds for
reconsidering the contested findings at the scheduled evidentiary hearing on April 12, 2011. (Doc.
No. 201); see Burger King Corp., 181 F. Supp. 2d at 1369 (“A motion for reconsideration should not
be used . . . to reiterate arguments previously made.”).
Defendants next argue that this Court should reconsider its previous findings in light of the
excessive effort that would have been required to completely respond to VVI’s summary judgment
motion for validity. However, as discussed in a number of prior orders, Premier asserted, in its own
Counterclaims, that “[e]ach claim of the ‘449 patent is invalid under one or more provisions of the
Patent Laws, 35 U.S.C. § 1, et. seq., including, but not necessarily limited to 35 U.S.C. §§ 101, 102,
103, and 112.” (Doc. No. 34 ¶ 8) (emphasis added). VVI then moved for summary judgment on this
particular counterclaim, specifically citing paragraph 8 of Premier’s Counterclaims. (Doc. No. 106
at 12-13.) Nonetheless, Premier failed to present any evidence or argument relating to the invalidity
of claim 85 and failed to present clear and convincing evidence relating to the invalidity of claim 86,
despite having been granted leave to file an additional summary judgment motion on the issue of
obviousness. While Defendants now assert that “[i]t is not unreasonable to presume it would have
taken 75 pages of briefing and a 150-page expert declaration to address every claim in the ‘449 patent
in response to Plaintiff’s two-page assertion of validity,” and that “Premier should have been allowed
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to file additional motions for summary judgment of obviousness for other claims,” (Doc. 242 at 9-10),
Defendants did not submit timely requests for leave to file such additional briefing, nor did
Defendants timely request an extension of time to complete the requisite expert reports.2
Finally, Defendants contend that while they “agree with the Court’s exercise of its discretion
to dismiss the pending unresolved claims as moot,” the dismissal worked an inequity in light of
Diebold’s belief that if the Court had ruled on the validity of the dismissed claims, it would have
found the claims to be invalid. (Doc. No. 242 at 11.) Once again, such an argument does not amount
to grounds for reconsideration. The Court’s exercise of its discretion to dismiss Diebold’s invalidity
counterclaim with respect to claims 1-48 and 50-93 of the ‘449 patent as well as Premier’s invalidity
counterclaim with respect to claims 85 and 93 of the ‘449 patent, (Doc. No. 237 at 4), does not render
the Court’s prior findings relating to the validity of claims 1-48, 50-84, and 86-92 with respect to
Premier, (Doc. No. 177 at 22), manifestly unjust. The issue of validity was not moot at the time the
Court entered the Order finding that Premier failed to create a genuine issue of material fact relating
to the invalidity of claims 1-48, 50-84, and 86-92 of the ‘449 patent. (Id.) Moreover, neither Diebold
nor Premier will be collaterally estopped from presenting invalidity arguments relating to their
dismissed invalidity counterclaims, claims 85 and 93 for Premier and claims 1-48 and 50-93 for
Diebold, in a subsequent case. See RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1261
(Fed. Cir. 2003) (applying the law of the regional circuit, the Eleventh Circuit, in finding that
2
Defendants’ repeated contention that it would have been “burdensome” to respond to a
motion seeking summary judgment on Premier’s own counterclaim does not justify the extraordinary
relief contemplated in a motion for reconsideration.
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collateral estoppel applies only where the issue has “been actually litigated in the prior suit”) (quoting
In re McWorter, 887 F.2d 1564, 1566 (11th Cir. 1989)).
Conclusion
Based on the forgoing, Defendants’ Renewed Motion for Reconsideration of Amended Order
on Summary Judgment and Incorporated Memorandum in Support by Diebold Incorporated and
Premier Election Solutions, Inc. (Doc. No. 242, filed Aug. 5, 2011), is DENIED.
DONE and ORDERED in Orlando, Florida on August 30 , 2011.
Copies furnished to:
Counsel of Record
Unrepresented Parties
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