Voter Verified, Inc. v. Election Systems & Software, Inc.
Filing
185
ORDER denying as moot 168 Motion for summary judgment; denying 170 Motion for summary judgment. Signed by Senior Judge Patricia C. Fawsett on 7/29/2011. (KMF)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
VOTER VERIFIED, INC.,
Plaintiff,
-vs-
Case No. 6:09-cv-1969-Orl-19KRS
ELECTION SYSTEM & SOFTWARE,
INC.,
Defendant.
______________________________________
ORDER
This case comes before the Court on the following:
1.
Third Motion for Summary Judgment by Voter Verified, Inc. (Doc. No. 168, filed June
13, 2011);
2.
Corrected Third Motion for Summary Judgment by Voter Verified, Inc. (Doc. No.
170, filed June 21, 2011);
3.
Memorandum in Opposition to Plaintiff’s Third Motion for Summary Judgment by
Election System & Software, Inc. (Doc. No. 175, filed July 13, 2011); and
4.
Reply to Defendants’ Memorandum in Opposition to Plaintiff’s Third Motion for
Summary Judgment (Doc. No. 181, filed July 27, 2011).
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 11-12.) ES&S denies VVI’s allegations of
infringement and seeks 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) ES&S is not infringing and has never infringed the ‘613 and ‘449 patents. (Doc. No.
17, filed Jan. 13, 2010.)
On April 28, 2010, VVI filed a Motion for Summary Judgment, 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. 71 at 1.) VVI also moved for summary judgment on the validity of the asserted
patents and the issue of intervening rights. (Id.) 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) 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. 84.) Plaintiff’s Motion for Summary
Judgment was granted in part and denied in part. (Doc. No. 114 at 37-39.) The Motion was granted
to the extent VVI sought a finding 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 37-38.)
ES&S’s Cross Motion for Summary Judgment was also denied in part and granted in part. (Id.) The
Motion was granted to the extent ES&S sought a finding that: (1) the ‘613 patent was surrendered to
the United States Patent and Trademark Office (“PTO”); (2) the Accused Systems do 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.
-2-
§ 112; and (4) the enumerated Risks Digest articles qualify as prior art. (Id. at 38.) ES&S was also
granted leave to file a supplemental summary judgment motion addressing the issue of obviousness.
(Id.)
On November 9, 2010, ES&S filed a Motion and Memorandum in Support of Invalidity of
Claim 49 of U.S. Patent No. RE40,449. (Doc. No. 119.) The Motion was granted to the extent ES&S
sought a finding that claim 49 of the ‘449 patent is invalid as obvious under 35 U.S.C. § 103. (Doc.
No. 135.) However, because ES&S did not address the obviousness of the remaining claims, the
Court granted VVI’s Second Motion for Summary Judgment to the extent it sought a finding that
claims 1-48, 50-84, and 86-92 are valid. (Id. at 22.)
On June 9, 2011, ES&S 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.
166.) In the Motion, ES&S argued that no product or combination of products sold by ES&S
infringes claim 1, claim 25, or any dependent claim of the ‘449 patent. (Id.) On July 28, 2011, the
Court granted ES&S’s Motion, finding that VVI failed to create a genuine issue of material fact
relating to whether ES&S infringed claim 1, claim 25, or any dependent claim of the ‘449 patent.
(Doc. No. 184.)
On June 13, 2011, VVI filed a Third Motion for Summary Judgment. (Doc. No. 168.) VVI
filed a Corrected Third Motion for Summary Judgment on June 21, 2011. (Doc. No. 170.) ES&S
filed a memorandum in opposition on July 13, 2011, (Doc. No. 175), and VVI filed a reply on July
27, 2011, (Doc. No. 181).
II. The Asserted Patents
-3-
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. 1-1 at 1.) On February
14, 2005, a reissue application for the ‘613 patent was filed. (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.)
In general, the Asserted Patents involve 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
-4-
a means for tabulating the printed ballots generated by said one or more voting
stations.
Standard of Review
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
-5-
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
“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. Infringement
VVI first moves for a finding of summary judgment against ES&S on the issue of the
infringement of claims 1, 25, 53, and 54 of the ‘613 and ‘449 patents by ES&S’s iVotronic Real Time
Audit Log System and claims 51 and 53 of the ‘613 and ‘449 patent by ES&S’s AutoMark System.
(Doc. No. 170 at 1, 10.) VVI’s arguments are not well taken. First, in the Order entered on
September 29, 2010, (“September 29 Order”), the Court concluded that the ‘613 patent could not be
infringed by ES&S because it had been surrendered to the PTO and reissued as the ‘449 patent. (Doc.
No. 114 at 11-12.) Then, in the Order entered on July 28, 2011, (“July 28 Order”), the Court
concluded that ES&S did not infringe claims 1, 25, 53, and 54 of the ‘449 patent.1 (Doc. No. 184.)
Thus, the Court has already determined that ES&S does not infringe claims 1, 25, 51, 53, and 54 of
the ‘613 and ‘449 patents.
II. 35 U.S.C. § 251
1
The Court considered and rejected VVI’s present arguments regarding the infringement of
claims 1, 25, 51, 53, and 54 of the ‘449 patent in the July 28 Order. (Doc. No. 184.)
-6-
VVI next moves for summary judgment on ES&S’s allegations that “the claims of the ‘613
patent were surrendered upon issuance of the ‘449 patent” and “[e]ach claim of the ‘613 patent is
invalid pursuant to 35 U.S.C. § 251.” (Doc. No. 170 at 10 (citing Doc. No. 17 ¶¶ 15-16)). However,
in the September 29 Order, the Court concluded that the ‘613 patent could not be infringed by the
Defendants because it had been surrendered to the PTO and reissued as the ‘449 patent pursuant to
35 U.S.C. § 251. (Doc. No. 114 at 10-11.) In the present Motion, VVI simply repeats arguments that
were considered and rejected by the Court in the September 29 Order, failing to present a basis for
the Court to reconsider its prior ruling regarding the application of § 251. Accordingly, the Third
Motion for Summary Judgment will be denied to the extent is seeks a finding on summary judgment
relating to § 251.
III. 35 U.S.C. § 252
In its Answer, ES&S contends that “VVI’s claims are barred by the doctrine of intervening
rights.” (Doc. No. 17 ¶ 49.) VVI now moves for summary judgment on the issue of intervening
rights. (Doc. No. 170 at 11-12.)
Intervening rights is an affirmative defense to patent infringement that protects parties who
are accused of infringing patent claims set forth in a broadened reissue patent when the alleged
infringement occurred before the reissue patent was granted. BIC Leisure Prods., Inc. v. Windsurfing
Int’l, Inc., 1 F.3d 1214, 1220 (Fed. Cir. 1993). Here, the Court has already determined that ES&S
does not infringe any valid claims of the ‘613 or ‘449 patents. (Doc. No. 114 at 10-11; Doc. No. 184.)
In light of this finding, the issue of intervening rights is moot. See PODS, Inc. v. Porta Stor, Inc., 484
F.3d 1359, 1368 (Fed. Cir. 2007) (determining that the affirmative defense of invalidity was moot in
light of the finding of non-infringement).
-7-
IV. 35 U.S.C. § 287(a)
ES&S asserts that “VVI is barred from seeking recovery of any damages for any activities
prior to commencement of the present suit due to failure to comply with the requirements of 35 U.S.C.
§ 287(a).”2 (Doc. No. 17 ¶ 45.) VVI now moves for summary judgment on “the 35 U.S.C. § 287(a)
issue.” (Doc. No. 170 at 15.) However, as previously discussed, ES&S does not infringe any valid
claims of the ‘613 or ‘449 patents. (Doc. No. 114 at 9-11; Doc. No. 184.) In the absence of a finding
of infringement, the issue of VVI’s damages resulting from ES&S’s alleged infringement, including
the limitation on damages set forth in § 287(a), is moot.
V. Sovereign Immunity/Recapture Doctrine
VVI next moves for a finding of summary judgment against ES&S on the issues of sovereign
immunity and recapture.3 (Doc. No. 170 at 17, 19.) Sovereign immunity is a defense to a claim of
patent infringement. Fla. Prepaid Postsecondary Educ. Expense Bd. v. College Savings Bank, 527
U.S. 627, 636 (1999). Recapture is also a defense to a claim of patent infringement. Lucent Techs.
Inc. v. Gateway, Inc., 470 F. Supp. 2d 1163, 1173-74 (S.D. Cal. 2007). Here, the Court has
determined that ES&S does not infringe any valid claim of the ‘613 or ‘449 patents. Accordingly,
the issues of sovereign immunity and recapture are moot.
VI. Willful Infringement
2
Section 287(a) provides that “no damages shall be recovered by the patentee in any action
for infringement, except on proof that the infringer was notified of the infringement and continued
to infringe thereafter . . . .” 35 U.S.C. § 287(a).
3
In its Answer, ES&S contends that “VVI’s allegation of indirect infringement is precluded
to the extent equipment made, used, sold, or offered for sale by ES&S is used by or for a sovereign
entity.” (Doc. No. 17 ¶ 46.) ES&S also alleges that “VVI’s claims are barred by the recapture
doctrine.” (Doc. No. 17 ¶ 48.)
-8-
Finally, VVI moves for summary judgment against ES&S on the issue of willful infringement.
(Doc. No. 170 at 20.) A finding of willful infringement requires an underlying finding of
infringement. In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (“[T]o establish willful
infringement, a patentee must show by clear and convincing evidence that the infringer acted despite
an objectively high likelihood that its actions constituted infringement of a valid patent.” (emphasis
added)). Thus, in light of the Court’s finding that ES&S does not infringe any valid claim of the ‘613
or ‘449 patents, VVI’s contention that ES&S willfully infringed the same patents is moot. See
Innovated Patents, L.L.C. v. Brain-Pad, Inc., 719 F. Supp. 2d 379, 387 (D. Del. 2010) (“Inasmuch
as there is no infringement . . . , the issue of willful infringement of that patent ‘necessarily drops out
of the case.’” (quoting Joy Techs. Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir. 1993)).
VII. ES&S’s Invalidity Counterclaim
In its Counterclaim, ES&S asserts that each claim of the ‘449 and ‘613 patents are invalid
under one or more provisions of the Patent Laws, 35 U.S.C. § 1, et seq.4 (Doc. No. 17 ¶¶ 8, 14, 16.)
Since the filing of ES&S’s Counterclaim, the Court has determined that claim 49 of the ‘449 patent
is invalid pursuant to 35 U.S.C. § 103, (Doc. No. 135 at 21-22), claim 94 is invalid pursuant to 35
U.S.C. § 112, (Doc. No. 114 at 38), and the ‘613 patent has been surrendered to the PTO pursuant to
35 U.S.C. § 251, (Id. at 12). The Court has also determined that claims 1-48, 50-84, and 86-92 are
not invalid. (Doc. No. 135 at 22.) Therefore, the only issues that remain undecided with respect to
ES&S’s invalidity counterclaim relate to claims 85 and 93 of the ‘449 patent, specifically, whether
claims 85 and 93 of the ‘449 patent are invalid pursuant to 35 U.S.C. § 102. (Doc. No. 114 at 16.)
4
The ‘449 and ‘613 patents include ninety-four individual claims.
-9-
The Supreme Court has found that “the Declaratory Judgment Act affords the district court
some discretion whether or not to exercise that jurisdiction, even when it has been established.”
Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 95 n.17 (1993) (citation omitted). In light
of this discretion, “[a] district court judge faced with an invalidity counterclaim challenging a patent
that it concludes was not infringed may either hear the claim or dismiss it without prejudice, subject
to review only for abuse of discretion.” Liquid Dynamics Corp. v. Vaughan Co., Inc., 355 F.3d 1361,
1370-71 (Fed. Cir. 2003) (citing Nystrom v. TREX Co., 339 F.3d 1347, 1351 (Fed. Cir.2003)); Frazier
v. Wireline Solutions, LLC, No. C-10-3, 2010 WL 5067671, at *8 (S.D. Tex. Dec. 6, 2010) (declining
to address defendant’s motion for summary judgment of invalidity after granting summary judgment
of non-infringement); Absolute Software, Inc. v. Stealth Signal, Inc., 731 F. Supp. 2d 661, 669 n.22
(S.D. Tex. 2010) (declining to reach the issue of a claim’s validity where the defendant was found
not to infringe the claim); Von Holdt v. A-1 Tool Corp., 714 F. Supp. 2d 863, 873 (N.D. Ill. 2010) (“In
light of the fact that the court has granted summary judgment to the defendants with respect to the
patent infringement claim . . . , the court need not reach the issue raised in the defendants’
counterclaims.”).
Here, ES&S indicated in a prior pleading that it would be appropriate for the Court to decline
to reach the invalidity counterclaims if the Court concluded that the patents at issue were not
infringed. (Doc. No. 137 at 7-8.) Specifically, ES&S stated the following:
The question of validity or invalidity of the remaining eighty-nine Reserved Claims
is virtually academic, since [VVI] has not yet asserted any of the those Reserved
Claims as a basis for amended infringement allegations. Until such time, the Court’s
determination is the equivalent of an advisory opinion on matters that do not need to
be resolved. To be clear, [ES&S] continues to dispute the validity of the Reserved
Claims, but again, it is unnecessary to resolve that portion of the dispute since [VVI]’s
infringement case must first be reinstated by an appellate court. The Federal Circuit
-10-
has found that it is appropriate for a district court to avoid a decision on whether a
claim is valid when the claim is otherwise not infringed. “A district court judge faced
with an invalidity counterclaim challenging a patent that in concludes was not
infringed may either hear the claim or dismiss without prejudice, subject to review
only for abuse of discretion.”
(Id.) (quoting Liquid Dynamics, 355 F.3d 1370-71). While the Court does not necessarily agree with
the full legal import of ES&S’s statement, the Court finds that the core assertion holds true with
respect to the present case; in the wake of a finding of noninfringement, it is unnecessary to address
the validity of the remaining claims. Since the filing of this pleading, the Court has determined that
ES&S does not infringe any valid claim of the ‘449 or ‘613 patents. (Doc. Nos. 114, 184.)
In view of the case law on this subject and the unique facts and circumstances of the present
action, including ES&S’s prior pleading, (Doc. No. 137), the findings regarding non-infringement
relating to each and every claim of the asserted patents, the apparent complexity of the invalidity
issue, and the Court’s heavy caseload, the Court will not address ES&S’s counterclaim of invalidity.
Instead, the Court concludes that the most prudent way to resolve the matter is to dismiss ES&S’s
counterclaim of invalidity without prejudice with respect to claims 85 and 93 of the ‘449 patent. See
Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir.1998) (holding that it
is not always necessary for a district court to resolve both the validity and infringement issues and
noting that when “noninfringement is clear and invalidity is not plainly evident it is appropriate to
treat only the infringement issue”) (citation omitted). However, in the event that trial court errors are
found on appeal, ES&S should be given the opportunity to reassert its counterclaim with respect to
the validity of claims 85 and 93 of the ‘449 patent under 35 U.S.C. § 102.
Conclusion
-11-
Based on the foregoing, the Corrected Third Motion for Summary Judgment by Voter
Verified, Inc. (Doc. No. 170, filed June 21, 2011) is DENIED. The Third Motion for Summary
Judgment by Voter Verified, Inc. (Doc. No. 168, filed June 13, 2011) is DENIED as moot. ES&S’s
invalidity counterclaim, (Doc. No. 17 ¶ 8), is dismissed with respect to claims 85 and 93 of the ‘449
patent without prejudice to reassertion at a later date, if appropriate.
DONE and ORDERED in Orlando, Florida on July 29 , 2011.
Copies furnished to:
Counsel of Record
Unrepresented Parties
-12-
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?