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United States District Court Eastern District of Missouri Eastern Division Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 1 of 33 PageID #: <pageID> UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MISSOURI EASTERN DIVISION AVANTE INTERNATIONAL ) TECHNOLOGY CORP., ) ) Plaintiff, ) ) vs. ) Case number 4:06cv0978 TCM ) PREMIER ELECTION SOLUTIONS, ) INC., SEQUOIA VOTING SYSTEMS, ) and ELECTION SYSTEMS & ) SOFTWARE, INC., ) ) Defendants. ) MEMORANDUM AND ORDER Pending in this patent action are seven motions for summary judgment, including four that are generally applicable and three that are applicable to specific equipment. The four general motions are (1) plaintiff Avante International Technology Corporation's ("Avante") motion for summary judgment that United States Patent Numbers 6,892,944 ("the '944 patent") and 7,077,313 ("the '313 patent") are not invalid under 35 U.S.C. § 112 [Doc. 323]; (2) Diebold Election Systems' (now known as Premier Election Solutions, Inc.) and Election Systems & Software, Inc.'s ("ES&S") motion for summary judgment of non-infringement on Claims 26-28, 30, and 49-51 of the '944 patent [Doc. 332]; (3) Premier Election Solutions, Inc.'s ("Premier"), Sequoia Voting Systems' ("Sequoia"), and ES&S's motion for summary judgment of invalidity of Claims 26-28, 30, and 49-51 of the '944 patent under § 112 [Doc. 335]; and (3) all three Defendants's motion for summary judgment of invalidity of the asserted claims from the '944 patent and the '313 patent under 35 U.S.C. §§ 102 and 103 Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 2 of 33 PageID #: <pageID> [Doc. 338]. The three specific motions are Avante's motion for summary judgment that Premier's equipment infringes its '944 and '313 patents [Doc. 321]; Avante's motion for summary judgment that ES&S's equipment infringes the two patents [Doc. 322]; and Avante's motion for summary judgment that Sequoia's equipment infringes its two patents [Doc. 365]. Also pending is a motion by Avante to strike the declarations of Peter Martin and Russell Childers and to strike Defendants' references to Premier's CTS-1/HSCC equipment. [Doc. 437] Procedural Background This case began with Avante filing suit against the three Defendants for allegedly violating two of its patents, the '944 patent and patent number 7,036,730 ("the '730 patent"), with a total of fourteen pieces of equipment. A third patent, the '313 patent, and another piece of equipment were named in a second amended complaint. After a Markman1 hearing, a claim construction order, an alternative dispute resolution conference, and rulings on motions to dismiss and motions for partial summary judgment, issues relating to the '730 patent were resolved. In the ruling on that patent, the Court noted that each of the claims at issue in the '730 patent include a "voting session identifier" and a receipt. (Mem. of 9/24/07 at 2, 7.) The Court further noted that its claim construction order construed the terms "tangible receipt," "printed receipt," and "printed paper" to mean "a reviewable printout of the voters' voting selections or choices or a corresponding voting session identifier that is retained by the voter." (Id. at 3.) This ability of a voter to take away the voting session 1See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). - 2 - Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 3 of 33 PageID #: <pageID> identifier printed on paper retained by that voter was lacking in the equipment allegedly violating this patent, Premier's AccuVote TS and AccuVote TSX. (Id. at 7.) Consequently, this equipment did not infringe Avante's '730 patent. (Id. at 9.) Subsequently, the parties agreed that what remain are issues relating to claims 1, 26- 28 (which depend on claim 18), 31, 32, 42, and 49-51 of the '944 patent and claims 13, 14, 47, and 48 of the '313 patent. Factual Background The '944 Patent. The '944 patent is titled "Electronic Voting Apparatus and Method for Optically Scanned Ballot." It is a "method and apparatus" invention. (See '944 patent at col. 1, ll. 20-22.) The application was filed on September 30, 2002; amended on April 29, 2004; amended again on June 1, 2004; and granted on May 17, 2005. There were also seven provisional applications2 filed, the earliest on October 1, 2001, and the most recent on August 12, 2002. The inventors are Kevin Kwong-Tai Chung and Victor Jun Dong. Amerasia International Technology, Inc. – owned by Chung – is listed as the assignee.3 The Abstract4 for the '944 patent reads as follows: 2A provisional application must include "a specification as prescribed by the first paragraph of section 112 of [Title 35]," see page 17 below, and "a drawing as prescribed by section 113 of [Title 35]." 35 U.S.C. § 111(b)(1)(A) and (B). It need not include a claim. Id. § 111(b)(2). See also 37 C.F.R. § 1.51(c) (listing the necessary components of a provisional application). A later-filed nonprovisional application may claim an invention in a provisional application if certain requirements are met. See 37 C.F.R. § 1.78. 3Defendants do not challenge Avante's standing to bring suit on the '944 patent. 4A patent application must include "[a] brief abstract of the technical disclosure in the specification . ." 37 C.F.R. § 1.72(b). "The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure." Id. The Federal Circuit Court of Appeals has - 3 - Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 4 of 33 PageID #: <pageID> A machine readable ballot comprises a ballot sheet having a voting identifier including a representation of election jurisdiction information and a unique ballot identifier. A plurality of contest regions each have two or more mark spaces for making voting selections. The contest regions correspond to contests in the jurisdiction represented by the election jurisdiction information, and the representation of election jurisdiction information and the mark spaces are machine readable. The background for this patent explains that "[t]he prevalent paper ballot is an optically read or optically scanned paper ballot on which a voter marks his voting selections by darkening or otherwise marking one or more regions typically indicated by an outline . ." ('944 patent col. 1, ll. 54-57.) The problems with this system include the frequent necessity of requiring "a different paper ballot, i.e. a customized ballot . for each election and jurisdiction." (Id. at ll. 59-60.) Also, "a corresponding customized template must be provided for each different paper ballot, thereby necessitating the manual sorting of the paper ballots by voting district or precinct and the separate reading/scanning thereof for each voting district or precinct." (Id. at ll. 61-65.) "Accordingly, it would be desirable to have an apparatus and method for processing paper ballots, such as optically scanned or optically readable ballots, in a more efficient manner and preferably one suitable for use with a modern electronic (e.g. DRE) voting machine." (Id. at ll. 66-67; col. 2, ll. 1-3.) The relevant claims of the '944 patent at issue are as follows. Claim 1 is: "frequently looked to the abstract to determine the scope of the invention[]" and is "aware of no legal principle that would require [that court] to disregard that potentially helpful source of intrinsic evidence as to the meaning of the claims." Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.* (Fed. Cir. 2000). - 4 - Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 5 of 33 PageID #: <pageID> An optical reader for reading paper ballots having a jurisdiction identifier thereon and having voting selections marked thereon, wherein the jurisdiction identifier identifies the jurisdiction or jurisdictions to which each ballot pertains, comprising: means for imaging each paper ballot including imaging the jurisdiction identifier thereof and the voting selections marked thereon; and a processor for receiving the imaged jurisdiction identifier for each paper ballot for selecting a template and for recording the voting selections marked on each paper ballot in accordance with the selected template, whereby the voting selections marked on each paper ballot are imaged and recorded in accordance with a template corresponding to the jurisdiction identifier for that paper ballot. Claims 26-28, 31, 32, 42, and 49-51, the remaining claims at issue in the '944 patent, read: 26. The method of claim 185 further comprising, prior to said reading and for each of a plurality of voters, producing by a voting machine of a paper ballot including voting selections made by a voter. 27. The method of claim 26 wherein said producing a paper ballot comprises printing the voting selections on a ballot form or printing a ballot form including the voting selections. 5Claim 18 reads: A method for optically reading paper ballots having a jurisdiction identifier thereon and having voting selections marked thereon, wherein the jurisdiction identifier identifies the jurisdiction or jurisdictions to which each ballot pertains, comprising: reading the jurisdiction identifier of each paper ballot; selecting a template responsive to the read jurisdiction identifier for reading in accordance with the selected template the voting selections marked on each paper ballot; and reading the voting selections marked on each paper ballot in accordance with the selected template, whereby the voting selections marked on each paper ballot are read in accordance with a selected template corresponding to the jurisdiction identifier for that paper ballot. - 5 - Case: 4:06-cv-00978-TCM Doc. #: 486 Filed: 07/16/08 Page: 6 of 33 PageID #: <pageID> 28.
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