UNITED STATES PATENT AND TRADEMARK OFFICE
______
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______
SMARTMATIC USA CORPORATION Petitioner
v.
ELECTION SYSTEMS AND SOFTWARE, LLC Patent Owner
______
Case IPR2019-00531 Patent No. 8,096,471
PATENT OWNER’S RESPONSE TABLE OF CONTENTS
I. INTRODUCTION ...... 1 II. FACTUAL BACKGROUND ...... 4 A. Overview of the ‘471 Patent ...... 4 B. Johnson and Cummings are Directed to Vastly Different Voting Machines ...... 6 1. Johnson ...... 6 2. Cummings ...... 10 III. PROPER CONSTRUCTION OF THE CHALLENGED CLAIMS ...... 16 A. Person of Ordinary Skill in the Art ...... 16 B. “ballot handling choices” ...... 17 C. “returning the ballot to the voter” or “returning the marked ballot to the voter” ...... 18 IV. CLAIMS 4-6, 11-13, 16 AND 17 ARE NOT OBVIOUS BASED ON JOHNSON IN VIEW OF CUMMINGS ...... 19 A. Petitioner’s Proposed Modification of Johnson in Light of Cummings Would Change the Basic Principles Under Which Johnson Was Designed to Operate and Would Render Johnson Inoperable For its Intended Purpose ...... 19 B. A POSITA Would Not Have Been Motivated to Make the Proposed Combination of Johnson and Cummings ...... 23 1. Simply Because Johnson and Cummings are Both Voting Machines Does Not Provide a Motivation to Combine These References ...... 24 2. Johnson Teaches Away From the Proposed Combination with Cummings ...... 27 3. Any Alleged Advantages of Cummings Are Not Needed By Johnson and Are Not Relevant to Johnson ...... 28 C. A POSITA Would Not Have Had a Reasonable Expectation of Success in Combining Johnson and Cummings ...... 34 D. The Combination of Johnson and Cummings Fails to Teach Numerous Limitations of Claims 4-6, 11-13, and 16-19 ...... 36 1. “wherein the ballot handling choices comprise returning the ballot to the voter and depositing the ballot into the attached ballot box” ...... 36
i “wherein the ballot handling choices comprise returning a ballot to the voter and depositing the ballot into a ballot box” ...... 36 2. “a presentation device operable to present to the voter a plurality of election choices and a plurality of ballot handling choices” ...... 37 “presenting to the voter a plurality of ballot handling choices; receiving from the voter at least one instruction corresponding to the ballot handling choices; and transporting the marked ballot through the ballot marking device in accordance with the received voter instruction” ...... 37 3. “an input device operable to receive from the voter at least one selection corresponding to the election choices and an instruction corresponding to the ballot handling choices” ...... 388 “an input device operable to receive from the voter at least one selection corresponding to the election choices and at least one instruction corresponding to the ballot handling choices” ...... 388 4. “a diverter operable to direct the ballot from the transport mechanism into the attached ballot box” ...... 39 “wherein the transporting step comprises diverting the ballot into the attached ballot box in response to the received voter instruction to deposit the ballot into the attached ballot box” ...... 39 “wherein the transport mechanism is operable to transport the ballot to a diverter if the received voter instruction is to deposit the ballot into the ballot box” ...... 39 5. “wherein the presentation device, the input device, the marking mechanism, the transport mechanism, and the diverter are integrated in a single unit” ...... 40 6. “a transport mechanism operable to transport the ballot through a ballot channel in accordance with the received voter instruction, wherein the transport mechanism causes ejection of the ballot if the received voter instruction is to return the ballot to the voter, and wherein the transport mechanism causes deposit of the ballot into the ballot box if the received voter instruction is to deposit the ballot into the ballot box” ...... 40 7. “wherein the presentation device, the input device, the print mechanism, and the transport mechanism are integrated in a single unit” ...... 42
ii V. Claims 18 and 19 are Not Obvious In Light of Johnson in View of Cummings and Nakada ...... 42 A. Independent Claim 16 Would Not Have Been Obvious to a POSITA In Light of Johnson and Cummings ...... 44 B. A POSITA Would Not Have Been Motivated to Combine Johnson, Cummings, and Nakada ...... 44 VI. CONCLUSION ...... 49
iii TABLE OF AUTHORITIES
Page(s)
Cases
Arctic Cat Inc. v. Bombardier Rec. Prods., 876 F.3d 1350 (Fed. Cir. 2017)...... 24
Black & Decker, Inc. v. Positec USA, Inc., 646 F. App’x 1019 (Fed. Cir. 2016) ...... 34
Ex parte Blow, Appeal No. 2007-003811 ...... 28
Ex parte Burak, Appeal No. 2004-0823 ...... 29
Ex parte Conway, Appeal No. 2015-002704 ...... 29
Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575 (Fed. Cir. 2016) ...... 25
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009)...... 20, 27
In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)...... 19
Grain Processing Corp. v. Am. MaizeProd. Co., 840 F.2d 902 (Fed. Cir. 1988)...... 27
Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. De C.V., 865 F.3d 1348 (Fed. Cir. 2017)...... 34
InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014)...... 34, 49
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012)...... 24, 26, 48
Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358 (Fed. Cir. 2017)...... 48
In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016)...... 25
iv In re Omeprazole Patent Litig. v. Apotex Corp., 536 F.3d 1361 (Fed. Cir. 2008)...... 28
Orexo AB v. Actavis Elizabeth LLC, 903 F.3d 1265 (Fed. Cir. 2018)...... 40, 48
Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017)...... 25
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)...... 16
Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 F. App’x 755 (Fed. Cir. 2015) ...... 19
Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056 (Fed. Cir. 2018)...... 24, 34
In re Ratti, 270 F.2d 810 (CCPA 1959) ...... 19
St. Jude Medical, Inc. v. Access Closure, Inc., 729 F. 3d 1369 (Fed. Cir. 2013)...... 24
Tec-Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353 (Fed. Cir. 1999)...... 20
Ultratec Inc. v. Sorenson Communs., Inc., 733 Fed. Appx. 535 (Fed. Circ. 2018) ...... 35
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000)...... 24, 26, 48
v EXHIBIT LIST
Exhibit No. Description 2001 File History for U.S. Patent No. 8,096,471 2002 Declaration of Dr. Shamos 2003 Second Declaration of Dr. Shamos 2004 Provisional Application 61/008,089
vi IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
I. INTRODUCTION The Patent Trial and Appeal Board (“Board”) instituted this proceeding as to claims 1-20 of U.S. Patent No. 8,096,471 (“the ‘471 patent”) based on the following three grounds asserted by Petitioner Smartmatic USA Corp. (“Smartmatic”):
Ground Challenge References Claims I § 103 Johnson1 in view of Cummings2 1-6, 10-17
II § 103 Johnson in view of Cummings and Nakada3 7, 8, 18, 19
III § 103 Johnson in view of Cummings and Peter4 9, 20
In an effort to reduce the issues for consideration by the Board, only claims
4-6, 11-13, and 16-19 are present in the claims as amended (claims 4 and 11 being rewritten in independent form as claims 24 and 27, claims 17-19, 5-6 and 12-13 being renumbered as respective claims 21-23, 25-26, and 28-29). Claims 1-3, 7-10,
14-15 and 20 have been replaced with substitute claims and are therefore not
1 U.S. Patent No. 7,077,314 to Johnson (“Johnson”).
2 U.S. Patent Application Publication No. 2004/0016802 to Cummings
(“Cummings”).
3 U.S. Patent Application Publication 2008/0079210 to Nakada (“Nakada”).
4 U.S. Patent No. 4,333,641 to Peter (“Peter”).
1 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response addressed in this response. Ground III is now moot since claims 9 and 20 are no longer in the claims as amended.
Each of the grounds asserted by Smartmatic suffer from the same flaw— reliance on an improper hindsight-biased combination of Johnson and Cummings.
A person of ordinary skill in the art at the time of the invention (“POSITA”) would not have been motivated to combine Johnson and Cummings as these references expressly teach away from each other and such a combination would violate
Johnson’s principle of operation. Johnson is a direct-recording electronic (“DRE”) voting machine with voter-verified paper trail audit (“VVPAT) that submits an electronic vote and never returns the voting receipt to the voter. Cummings, however, is a ballot-marking device (“BMD”) that marks a paper ballot before always returning the ballot to the voter to be manually deposited in a separate ballot- scanning device ("BSD") with an attached ballot box so the paper ballot can be cast in the election. While both Johnson and Cummings are directed to voting machines, these voting machines function drastically differently and a POSITA would not have been motivated to combine these references.
Further, Petitioner’s proposed combination of Johnson and Cummings lacks any analysis concerning whether the proposed combination would actually function as claimed or achieve the required objectives of the Challenged Claims. As
2 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response explained by Dr. Shamos—an expert with 39 years of experience in certifying at least 60 different voting machines in 120 examinations in various states—such a proposed combination of Johnson and Cummings would violate Johnson’s principle of operation and a POSITA would have had no motivation to make such a combination.
Petitioner’s Ground II is similarly flawed as this Ground also relies on a combination of Johnson and Cummings. Recognizing that even this hindsight- influenced combination fails to disclose each limitation of claims 18-19, Petitioner adds a third reference (Nakada) to the combination. In the Board’s Institution
Decision (Paper 10), the Board did not substantively address Petitioner’s Ground II.
In light of the evidence of record and the improper combination of Johnson and
Cummings, Petitioner’s proposed combination in Ground II fails to render claims
18-19 obvious.
Claims 4-6, 11-13 and 16-19 of the ‘471 patent would not have been obvious to a POSITA in light of any of the alleged prior art cited in the Petition. Petitioner has therefore failed to carry its burden of proving that claims 4-6, 11-13 and 16-19 are obvious. Patent Owner Election Systems & Software, LLC (“Patent Owner”) respectfully requests that the Board confirm the patentability of claims 4-6, 11-13 and 16-19.
3 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
II. FACTUAL BACKGROUND
A. Overview of the ‘471 Patent The Challenged Claims are described in Figures 26-33, and the corresponding written description, of the ‘471 patent. Each independent claim of the ‘471 patent requires providing a voter with “ballot handling choices” directed to how a marked ballot will be transported and handled by the device (e.g., whether a ballot will be returned to the voter or deposited into a ballot box attached to the ballot marking device).
Paper ballots are discharged from the BMD by diverting a ballot from the ballot channel (614) into the discharge chute by using a diverter (622 in Figure 26)).
Id. The use of the passive diverter (622) to divert a ballot into the rear chute (620) is depicted in Figures 27 and 28. Alternatively, the ‘471 patent describes and claims an embodiment in which the diverter is a “movable element operable to pass a ballot transported upwardly in the ballot channel and to block the ballot channel to divert a downwardly travelling ballot.” Id. at 19:16-21; see also Figs. 29 and 30. The method of providing a voter with ballot handling choices (return the ballot to the voter or deposit ballot in ballot box) is depicted below in the flow chart of Figure
32:
4 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Id. at Fig. 32.
As shown in the above flowchart, the voter first makes his contest selections
(810) using the input device. Id. at 20:15-16. The voter is then presented with a summary of his voting selections that indicates how the ballot will be marked
(block 812). Id. at 20:15-17. Once the voter is confident that the choices have been captured accurately, the ballot is then marked with the voter’s selections (816). Id. at 20:15-21. After the ballot is marked, the voter is presented with the option of
5 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response having the ballot returned to him for visual inspection (818), and the voter can then manually deposit the ballot into the ballot box. Id. at 20:22-25. This gives the voter the opportunity to review the marked ballot to ensure that the marking is correct. Ex. 2002 at ¶ 49. The voter is also presented with the option of having the ballot verified by the marking device (822), and is then given several voter options
(824), such as: (1) depositing the verified ballot directly into the attached ballot box (826); (2) returning the verified ballot to the voter (828) to either manually deposit it in the ballot box (820) or reinsert it into the marking device for verification (822); or (3) returning a void ballot to the voter (832). Ex. 1001 at
20:25-49.
B. Johnson and Cummings are Directed to Vastly Different Voting Machines
1. Johnson Because a pure DRE does not produce a physical ballot that the voter can examine, concerns resulting from the Presidential election of 2000 gave rise to DREs with VVPAT. Ex. 2003 at ¶ 29. The idea of a VVPAT is that the DRE operates in the normal way, through a user interface. However, prior to casting, the voter is shown a paper printout of their choices. The printout is shown underneath a transparent protective cover. The voter cannot touch or alter the printout. If the voter, after inspecting this printout, approves of the choices, the ballot can be cast.
6 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
That is, the electronic choices are recorded in the normal DRE manner. In addition, the printout is advanced so that the next voter cannot see how the previous voter voted, and the printout is retained on a paper roll inside the machine. Id.
Johnson describes a DRE with VVPAT voting system that casts votes electronically and precludes physically returning a ballot to a voter. Id. at ¶ 34. As described in Johnson, “the present invention is an electronic voting machine” that casts an electronic vote based on the input of the voter. Ex. 1002 at 2:37-47
(emphasis added).
The DRE voting machine described in Johnson is depicted in Figure 3
(below). After the voter inputs his voting selections, the voting selections are stored in memory. Id. at 5:27-30. After being stored, the selections are printed on paper and visually presented to the voter to confirm that the paper is accurate. Id. at 5:32-
45. Figure 3 shows how the paper printed with the voter’s voting selections is not accessible to the voter as the paper is only presented to the voter behind a transparent window (identified by a red box below) for accuracy confirmation by the voter:
7 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Id. at Fig. 3 (red emphasis added) and 3:42-45.
The system and method of voting described in Johnson includes presenting a voter with voting choices and storing the voter’s choices electronically. Id. at 3:8-
20. The voter’s choices are then printed on a paper and optically scanned to generate an electronic version of the voter’s choices as printed on the paper ballot. Id. The paper that has been scanned (or physically voided, as explained below) is preserved within the locked box for recount or audit purposes following the casting of the electronic voting selections. Id. at 6:1-11, 8:11-26. Importantly, the paper is never provided to the voter and can only be seen by the voter behind the transparent window. Id. See Ex. 2003 at ¶ 65.
8 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Johnson clearly and repeatedly instructs that the paper receipt of the voter’s voting selections remains at all times inaccessible to the voter:
“The paper ballot is then presented for the voter’s visual inspection as called for by step S17, but is not given to the voter. The voter may then look at and examine the printed ballot (but has no physical access thereto) to ensure that the printed ballot accurately memorializes the choices the voter has just made through the touch screen or other input means.” Id. at 3:38-42; 5:39-44 (emphasis added);
“To insure that the printed ballot is visible but otherwise inaccessible to the voter, the paper ballot may be presented to the voter behind a transparent window of the voting machine.” Id. at 5:48-51 (emphasis added); and
“Note that the voter can only see the just-printed ballot 212, but cannot in any way touch or alter it.” Id. at 6:47-52 (emphasis added).
After the voter visually inspects the paper through the transparent window, the paper is “conveyed automatically and without human intervention” by the printer to a locked box coupled to the voting machine with the other paper ballots. Id. at
5:66-6:7; 6:52-60; 9:54-64. The voter has no choice regarding how the paper is handled by the DRE machine as it is automatically conveyed to the lockbox. If the voter indicates that the vote is accurate, the “electronic vote is validated” and cast in the election. Id. at 5:60-6:1. If the voter instead indicates that the paper does not accurately reflect his choices, the paper can be “physically voided in some irrevocable manner.” Id. at 5:56-60. “Provisions may be made within the present electronic voting machine to segregate paper ballots 212 that have not been approved
9 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response by the voter” and the paper ballots 212 are removed from the voting machine by the
U.S. Post Office or another authorized agency and preserved for recount and/or audit purposes. Id. at 6:56-60; 10:17-21, 41-45; Ex. 2002 at ¶¶ 76-78; Ex. 2003 at ¶ 79.
Although Johnson suggests that provisions could be made within the voting machine to segregate the paper that has not been approved by the voter, there is no disclosure of how to do so or that such “provisions” would be providing the paper to the voter.
Ex. 1002 at 6:56-60; Ex. 2002 at ¶ 78. As explained above, Johnson expressly teaches not to return the ballot to the voter.
2. Cummings Cummings discloses a BMD (as shown below in FIG. 1) that allows for machine-marking or hand-marking a ballot. Ex. 1003 at Abstract. An unmarked ballot is given to the voter. Id. at ¶ 0038. The unmarked ballot is then either hand- marked or placed into a ballot marking device 22 or a voter assistance terminal 300 to machine-mark the ballot, and the machine-marked ballot is returned to the voter.
Id. at ¶ 0038, 0040, 0088, 0092. The hand- or machine-marked ballot is then inserted by the voter into a BSD that tallies the ballot and deposits the ballot into a ballot box.
Id.; see also id. at ¶ 0040.
10 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Fig. 1.
After being given a paper ballot at the ballot issuing station 31, the voter can either “manually mark[] the ballot at a conventional voting booth 32, or . . . insert[] the ballot into a ballot receiving slot 33 at the front of marking device 22 . . . for electronic marking.” Id. at ¶ 0038. If the voter chooses to insert the ballot into the
BMD, the election choices are presented to the voter on a display panel 34. Id. The messages displayed on the BMD before inserting the ballot into the BMD, during use, and after marking the ballot are shown in FIGs. 12A, 12B, and 12C, respectively.
11 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
After the voter enters his or her voting selections, and the voter indicates satisfaction with those choices, the BMD 22 marks the ballot and discharges the ballot to be physically removed by the voter. Id. at ¶¶ 0039-0040. No ballot handling choices are presented to the voter by the BMD 22 since the ballot is always returned to the voter as shown in FIG. 12B.
After removing the ballot from the BMD 22, the voter inserts the ballot into the BSD 24, which checks the ballot for under-votes or over-votes and then deposits the ballot in the ballot box 25 if the ballot is accurate. Id. at ¶ 0040. If the ballot is inaccurate, the ballot is returned to the voter. Id. at ¶ 0056, 0057. The only function
12 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response of the print heads in the BSD 24 is to optionally void an inaccurate ballot by printing over all marking spaces or over the ballot ID. Id.
Cummings also discloses a voter assistance terminal ("VAT") 300 as shown in FIGs. 19-25L that can be used to electronically vote and mark a ballot. Id. at
¶¶ 0093- 0111. The VAT 300 is optimized for marking and replaces the BMD 22 and the display panel 34 of the voting system as shown in FIG. 1. As with the BMD
22, the marked ballot from the VAT 300 is returned to the voter through ballot receiving slot 308 for confirmation and insertion into a BSD 24, where it is validated and tallied. Id. at ¶ 0092. The messages displayed on the VAT before inserting the ballot into the VAT, and after marking the ballot are shown in FIGs. 22A, and 25L, respectively.
Cummings further discloses that the BMD 22 can alternatively function as a
BSD 24. Id. at ¶ 0055, 0086. When functioning as a BSD, no voting terminal (23
13 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response or VAT 300) is connected and alternative operating software is used. Id. at ¶ 0055.
As shown in FIG. 13, the operating mode (off, mark, scan or report) is controlled by a key-operated mode switch 122 of the device and would be controlled by an election official, not the voter. Id. at ¶ 0061. The key-operated locking mechanism 124 would also be used by the election official to lock a BMD 22 to a supporting surface, or to lock a BSD 24 to a ballot box. Id. at ¶ 0062.
In use, a voter inserts a previously marked ballot from a BMD 22 or a VAT
300 into the BSD 24 so that the BSD can read the marked ballot. Id. at ¶ 0055, 0092.
See FIG. 11A, reproduced below, for the BMD display “Insert Marked Ballot.”
After scanning the ballot, the BSD can return the ballot to the voter by simply reversing the feed motors if the voter presses the return button 44 (as when there is an undervote or overvote as shown in FIGs. 11B and 11C). Id. at ¶ 0056, 0057. The voter is prompted by the display of FIG. 11E to remove the ballot and get a new ballot. If the voter presses the vote button 45 when an undervote or overvote is
14 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response identified by the scanner, the undervote or overvote is erased from RAM, the valid votes are entered into a cumulative vote tally, and the BSD deposits the previously marked ballot into a ballot box while showing the display of FIG. 11D. Id. at ¶ 0057,
0073, 0074.
The BSD 24, but not the BMD 22, can function to selectively discharge a ballot into one compartment of the ballot box for write-in votes and another compartment for non-write-in votes using a ballot routing gate 117. Id. at ¶ 0060.
15 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
The BMD 22 or VAT 300 always receives a ballot and returns the ballot through ballot receiving slot 33 or 308. Id. at ¶¶0038; 0092.
III. PROPER CONSTRUCTION OF THE CHALLENGED CLAIMS Under Philips, claim terms are given “their ordinary and customary meaning.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at
1313.
In its Institution Decision, the Board did not expressly construe any claim limitations. Paper 10 at 5 (“After considering the record developed thus far, we determine that no claim limitations need an express construction at this point in the proceeding.”). The Board also did not define the person of ordinary skill in the art at the time of the invention claimed in the ‘471 patent. In order for the Board to address the obviousness challenges asserted in the Petition, Patent Owner respectfully submits that the following claim limitations should be construed.
A. Person of Ordinary Skill in the Art Before construing the claims of the ‘471 patent or addressing the obviousness challenges asserted in the Petition, the person of ordinary skill in the art at the time of the invention (“POSITA”) must be defined. In its Petition, Smartmatic asserts that the POSITA with respect to the ‘471 patent “would have at least a Bachelor’s
16 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response degree in electrical engineering or computer science, at least two years’ experience with user interface design and voting systems, and familiarity with the internal mechanical mechanisms of electronic voting machines.” Paper 2 at 9-10 and Ex.
1006 at ¶ 48.
Patent Owner disagrees with Smartmatic’s proposed POSITA level of skill.
More particularly, the requirement in Smartmatic’s proposal that a POSITA have “at least two years’ experience with user interface design” is not in line with the requirements of the inventions embodied in the Challenged Claims. Ex. 2002 at
¶¶ 33-35; Ex. 2003 at ¶ 20-21. Instead, the POSITA would have at least a Bachelor’s degree in electrical engineering or computer science and at least two years’ experience with user interfaces, electronic voting systems, and ballot transport mechanisms of voting machines. Id.
B. “ballot handling choices” Claims 4-6, 11-13 and 16-19 specify that ballot handling choices comprise returning a ballot to a voter and depositing the ballot into a ballot box. The Board's broad construction of “ballot handling choices” to mean any time a ballot is “handled differently” by the ballot marking device is now moot in view of the precise language of the claims. The Board's assertion that “ballot handling choices” is broad enough to include “physically voiding” a ballot as done in Johnson is also moot now that the
17 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response claims explicitly require a ballot handling choice comprising returning the ballot to the voter. Also, physically voiding a ballot is not a “ballot handling choice” in the context of the ‘471 patent since it does not involve deposit or return of a ballot. Id. at ¶ 67.
C. “returning the ballot to the voter” or “returning the marked ballot to the voter” “Returning the ballot to the voter” or “returning the marked ballot to the voter” as used in all of the pending claims should be construed to mean “returning the ballot to give the voter physical possession of the ballot.” Ex. 2002 at ¶¶ 68-72. This construction is supported by the specification of the ‘471 patent.
When the ballot is returned to the voter, the ballot was previously in the voter’s physical possession and is later returned to the voter’s possession. Ex. 1001 at 18:20-28, 20:22-25, 20:45-49; Ex. 2002 at ¶¶ 68-72. This gives the voter the option of manually placing the ballot into a ballot box or reinserting it into the marking device. Id.
18 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
IV. CLAIMS 4-6, 11-13, 16 AND 17 ARE NOT OBVIOUS BASED ON JOHNSON IN VIEW OF CUMMINGS
A. Petitioner’s Proposed Modification of Johnson in Light of Cummings Would Change the Basic Principles Under Which Johnson Was Designed to Operate and Would Render Johnson Inoperable For its Intended Purpose The voting machine disclosed in Johnson is not adapted to provide a voter with a plurality of ballot handling options, one of which is to return a ballot to a voter, as required by independent claims 4, 11, and 16. Johnson does not have a transport mechanism that “causes ejection of the ballot if the received voter instruction is to return the ballot to the voter.” For this reasocn, the Petitioner relies on Cummings to argue that a POSITA would have been motivated to modify the principle of operation of Johnson to allow for the option to return a ballot to the voter and modify Johnson to allow Johnson to eject a ballot to the voter. Petitioner’s obviousness combination fails.
It is black letter law that a combination of prior art under KSR cannot “change the basic principles under which the prior art was designed to operate, or . . . render the prior art inoperable for its intended purpose.” Plas-Pak Indus., Inc. v. Sulzer
Mixpac AG, 600 F. App’x 755, 758 (Fed. Cir. 2015) (citations omitted); see also In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); In re Ratti, 270 F.2d 810, 813 (CCPA
1959) (combination of prior art is not obvious if it would “change . . . the basic
19 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response principles under which the [prior art] was designed to operate.”).5 By attempting a hindsight-based combination of Johnson and Cummings, Petitioner ignores the fact that a POSITA would have to fundamentally change the basic principles under which
Johnson’s DRE voting machine with VVPAT operates to modify Johnson as proposed. Ex. 2003 at ¶ 69.
In its Institution Decision, the Board preliminarily found that a POSITA would have been motivated to modify Johnson in light of Cummings based exclusively on the admittedly vague disclosure of “provisions may be made within the present electronic voting machine 200 to segregate paper ballots 212 that have
5 See also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326
(Fed. Cir. 2009) (claims are not obvious when the prior art indicates that the invention “would not have worked for its intended purpose”); Tec-Air, Inc. v. Denso
Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (stating that “[i]f when combined, the references would produce a seemingly inoperative device, then they teach away from their combination,” and observing that there is “no suggestion to modify a prior art device where the modification would render the device inoperable for its intended purpose”) (citations and quotation marks omitted).
20 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response not been approved by the voter and to allow the voter to start the voting process over again.” Paper 10 at 19.
Specifically, this language would not have motivated a POSITA to modify
Johnson to return the voided ballot to the voter. Johnson states that any
“segregation” would be “within the present electronic voting machine 200.” This by its own terms states that the segregated ballots would be retained within the machine. Ex. 2003 at ¶ 67-68. Whether they would be in the same locked box as the approved ballots is a matter of speculation. However, they would necessarily remain locked; otherwise, the integrity of the full election audit would be compromised. Id. at ¶¶ 58-60. The undisclosed “provisions” in Johnson could be, e.g., having the printer offset the position of an unapproved ballot relative to the position of an approved ballot in the ballot stack in the locked box. In any case, there is no possibility suggested in Johnson that they would be made available
(returned) to the voter. Id. Johnson contains no further disclosure concerning such segregation and discloses no embodiment that enables such segregation.
Nevertheless, even if it were apparent to a POSITA how to make such an embodiment that would not constitute a ballot handling choice that would allow return of the ballot to the voter. The voter would still never receive possession of the ballot if the ballots were segregated. Johnson’s express teachings to prevent
21 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response physical access to the ballot teach away from modifying Johnson to return the voided ballot to the voter. See Section II(B)(1) above.
The Petition also asserts that it would have been “within the abilities of a
POSITA” to modify Johnson to provide “an exit chute for returning paper ballots to the voter and elements for transporting the paper ballot to the exit chute when the voter indicates that the paper ballot is inaccurate.” Paper 2 at 26-27. Neither
Petitioner nor Dr. Bederson explain how Johnson could be modified to include such functions and structure or why a POSITA would have been motivated to make such a modification in view of Johnson’s express teaching against such a modification.
A POSITA would have to substantially reconstruct and redesign the voting machine of Johnson in order to return the ballot to the voter as well as change the basic principle under which Johnson's construction was designed to operate. Ex. 2003 at
¶ 69. For instance, a slot to return a ballot to a voter would have to be added to
Johnson and a completely new ballot transport system (i.e., the transport system claimed in the ’471 patent) would have to be implemented to add the functionality of returning a ballot to the voter. Id. A POSITA would have had no motivation to completely modify Johnson in this way because it goes against the teachings of
Johnson that an electronic vote occur without human intervention. Johnson’s DRE voting machine with VVPAT already works perfectly well for its intended purpose
22 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response of providing electronic voting while maintaining a paper voting record for recount or audit purposes only. Id.
In the absence of improper hindsight and without the benefit of the ‘471 patent, a POSITA would not have modified Johnson in the manner proposed by
Petitioner. Ex. 2003 at ¶ 70. A POSITA would understand that modification of
Johnson—a DRE machine with VVPAT—to return a marked ballot to the voter would make Johnson unsuitable for its intended purpose and would change the principle of operation of Johnson. Accordingly, the modification proposed by
Petitioner does not render claims 4-6, 11-13, 16 and 17 obvious.
B. A POSITA Would Not Have Been Motivated to Make the Proposed Combination of Johnson and Cummings As explained above, the Board should confirm the patentability of claims 4-
6, 11-13, 16 and 17 because the proposed combination of Johnson and Cummings would render Johnson inoperable for its intended purpose and would change
Johnson’s basic principle of operation. See Section IV(A). Additionally, the Board should also confirm the patentability of claims 4-6, 11-13, 16 and 17 because
Petitioner fails to articulate a basis or rational underpinning for why a POSITA would have been motivated to combine Johnson and Cummings. Ex. 2003 at ¶¶ 61-
81.
23 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
When determining whether an invention would have been obvious to a
POSITA, the Board must determine “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Arctic
Cat Inc. v. Bombardier Rec. Prods., 876 F.3d 1350 (Fed. Cir. 2017) (quoting
Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344
(Fed. Cir. 2017)). When a primary reference “teaches away” from the suggested modification, there is no motivation to combine. See Winner Int’l Royalty Corp. v.
Wang, 202 F.3d 1340 (Fed. Cir. 2000) (finding that a primary reference that teaches away from the suggested modification alone would defeat a claim of obviousness); see also Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018)
(a reference’s “statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference”).
1. Simply Because Johnson and Cummings are Both Voting Machines Does Not Provide a Motivation to Combine These References The Federal Circuit prohibits the use of hindsight to form the basis of a motivation to combine. See St. Jude Medical, Inc. v. Access Closure, Inc., 729 F. 3d
1369, 1381 (Fed. Cir. 2013). Instead, a patent challenger must identify a reason why a POSITA would have been motivated to make such a combination. Kinetic
24 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012)
(“[e]ven if the references disclose[] all of the limitations of the asserted claims, [the patent challenger] still need[s] to proffer evidence indicating why a person having ordinary skill in the art would combine the references to arrive at the claimed invention.”); see also Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578
(Fed. Cir. 2016) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice . . .”)
(emphasis added). Neither Petitioner nor the Board provide a satisfactory reason why a POSITA would have combined Johnson and Cummings. In re NuVasive, Inc.,
842 F.3d 1376, 1382, 1384 (Fed. Cir. 2016) (the Board’s articulation was insufficient because it relied on the vague “additional information” as a basis); Personal Web
Technologies, LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).
Johnson is a voting machine that works effectively for its intended purpose
(to cast electronic ballots and keep a paper receipt for recount and audit purposes).
Ex. 2003 at ¶ 69; Ex. 1002 at 4:57-60. Cummings, on the other hand, is a BMD voting machine that also works effectively for its intended purpose of marking a paper ballot with a voter’s voting selection. Ex. 2003 at ¶ 52; Ex. 1003 at ¶¶ 0058,
0092. A POSITA would have had no reason to combine the devices to achieve a
25 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response function that directly violates Johnson’s teachings. Kinetic Concepts, 688 F.3d at
1369 (“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 (Fed. Cir. 2000) (affirming finding of no motivation to combine where there was no apparent problem with the existing prior art mechanism).
The only purported reason to combine Johnson with Cummings proposed by
Petitioner is to allow Johnson to return an inaccurate ballot to a voter so the voter would have “greater confidence that a ballot that does not reflect the voter’s intentions will not be counted.” Paper 10 at 18. Dr. Bederson opines that Johnson’s disclosure of “provisions may be made” to “segregate paper ballots . . . that have not been approved by the voter” would have provided a POSITA a motivation to return a ballot to the voter. There is no correlation between segregating ballots and returning them to voters for a DRE voting machine with VVPAT. Ex. 2003 at ¶ 67.
Indeed, such a combination is actually detrimental to Johnson’s operation as it would render Johnson’s recount and/or audit based on the paper receipts unreliable. Ex.
2003 at ¶¶ 28-30 & 58-60.
26 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
2. Johnson Teaches Away From the Proposed Combination with Cummings Importantly, Johnson expressly teaches away from returning a ballot to a voter, which contradicts the only articulated basis for why a POSITA would have allegedly been motivated to combine Johnson and Cummings. Depuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. . . . A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”).
As the Federal Circuit has cautioned, “[c]are must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.” Grain Processing Corp. v. Am. MaizeProd. Co., 840 F.2d
902, 907 (Fed. Cir. 1988).
Petitioner engages in precisely the type of hindsight analysis that violates controlling law. Johnson clearly and repeatedly instructs that the paper receipt of the voter’s voting selections remains at all times inaccessible to the voter. See
27 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Section II(B)(1) above. Having failed to establish any reason to perform the proposed combination of Johnson and Cummings, and disregarding reasons why a
POSITA would not have made such a combination, Petitioner performs an improper hindsight reconstruction by using the ‘471 patent claims as a guide. Ex. 2003 at ¶
61. But the evidence of record, including the testimony of Dr. Shamos, shows that a POSITA would have had no reason to modify Johnson in light of Cummings.
3. Any Alleged Advantages of Cummings Are Not Needed By Johnson and Are Not Relevant to Johnson A POSITA would have had no motivation to modify Johnson to include the alleged advantage of Cummings (i.e., returning a marked ballot to the voter based on a ballot handling choice and ejecting a ballot back to the voter) because Johnson’s
DRE voting machine with VVPAT has no need to return a ballot to the voter, nor is such an “advantage” relevant to Johnson’s DRE voting machine with VVPAT. The
Board’s finding to the contrary in its Institution Decision lacks rational underpinnings and fails to support a finding of obviousness. See In re Omeprazole
Patent Litig. v. Apotex Corp., 536 F.3d 1361, 1381 (Fed. Cir. 2008) (affirming finding of nonobviousness where a POSITA “would not have seen a reason to insert a subcoating in the prior art formulation shown in” the prior art); see also Ex parte
Blow, Appeal No. 2007-003811, Ser. No. 10/250,890 (Mar. 28, 2008) (reversing finding of obviousness because “the addition of a NALM optical interferometer to
28 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response the optical fiber transmission line in Corning would serve no purpose . . . .”); Ex parte Conway, Appeal No. 2015-002704, Ser. No. 13/047,175 (Feb. 28, 2017)
(Board agreeing with patent owner that “there is no reason for a person of skill in the art to go to the extra expense and trouble of incorporating an additional frusto- conical end” and that the “Examiner’s rejection appears to be the result of hindsight analysis”) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); Ex parte Burak,
Appeal No. 2004-0823, Ser. No. 09/555,391 (Jan. 21, 2005) (“[N]ot only is the proposed combination of Ohhashi and Novik an apparent attempt to reconstruct the claimed invention in hindsight, but we can see no useful purpose which would be served by combining these teachings.”).
In the BMD of Cummings, the ballot is always returned to a voter so that the ballot can be entered into a separate BSD that tallies the votes and collects the ballot.
If the Cummings ballot is accurate, the BSD tallies the votes and deposits the ballot in the ballot box. If the Cummings ballot is inaccurate, the voter can take the spoiled ballot to voting officials and obtain a new unmarked paper ballot to start the voting process again. Ex. 2003 at ¶ 72.
In Johnson’s DRE voting machine with VVPAT, a voter does not obtain a paper ballot from a voting official to vote, so there is no need for returning a spoiled ballot so that a voter can obtain a new unmarked paper ballot from a voting official
29 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response as in Cummings. Id. at ¶ 73. There would be no reason to return the ballot to a voting official when the Johnson machine already erases the electronic vote used in the election and automatically creates a new paper ballot from the unmarked ballots existing within the machine. Therefore, a POSITA would not modify Johnson’s
DRE voting machine with VVPAT to return a ballot to a voter based on the voting system of Cummings. Id.
A POSITA would not have reason to return a voided ballot to give a voter greater confidence that such a ballot will not be counted. Id. at ¶ 78. Returning a voided ballot to permit a voter to leave a polling place with a ballot or to discard it is contrary to all state voting laws in the U.S. Id. To do so would undermine the voting process because the voting officials would not be able to account for all of the ballots provided to a polling location. Id. at ¶ 28. Thus auditability requires a complete accounting for all ballots delivered to a polling place, including unvoted
(blank) ballots, voted ballots and spoiled ballots. Id. If the total of voted ballots, unvoted ballots and spoiled ballots does not equal the number of ballots provided to the polling place, then the election is suspect because some errant ballots have not been accounted for. Id. This is the reason that voters are not permitted to leave the polling place with any ballots. However, if the ballot is returned to the voter, the voter might leave with it surreptitiously. Sometimes a voter who spoils a ballot is
30 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response too embarrassed to ask for another ballot, and simply walks out of the polling place with the ballot, not having voted at all. These are among the reasons Johnson does not allow the voter to touch the ballot. Id. Thus, a POSITA would not have returned a ballot to a voter for this reason either.
Auditability is a crucial feature of voting systems, and is a requirement of the federal 2007 Voluntary Voting System Guidelines6, which most state have elected to follow, hence voting system manufacturers must conform to the guidelines. Id. at 27. Per Guideline 2.1, an overall system capability must be
“system auditability.” Further to system auditability, the Guidelines state in Sec.
2.1.5 (“System Audit”):
Election audit trails provide the supporting documentation for verifying the accuracy of reported election results. They present a concrete, indestructible archival record of all system activity related to the vote tally, and are essential for public confidence in the accuracy of the tally, for recounts, and for evidence in the event of criminal or civil litigation. . . . Documentation of items such as paper ballots delivered, paper ballots collected, administrative procedures for system security, and maintenance performed on voting equipment are also part of the election audit trail, but are not covered in these technical standards. Useful guidance is provided by the FEC publication Innovations in Election Administration #10: Ballot Security and Accountability, available on the EAC’s website.
6 Available at https://www.eac.gov/assets/1/28/VVSG.1.0_Volume_1.PDF
31 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
On p. 20 of the ID, the Board writes that “Patent Owner has not shown persuasively that a given voter would have even known that the electronic voting record is used to tally votes in an election and not the tangible paper ballot.” The
POSITA would have known from Johnson that the electronic record is used unless there is a recount, in which case the paper record is used. Ex. 2003 at ¶ 74. It is important to preserve the integrity of the full ballot audit. If a precinct issues 240 ballots but only receives back 225 of them, the question of where the other 15 went casts doubt on the security of the election. Did voters walk away with those 15, or did some poll worker destroy them? This question does not arise in Johnson because ballots are never returned to the voter. Id.
On p. 21 of the ID, the Board alleges that “Johnson only appears to address approved ballots being used in the context of ‘a later recount or audit’” in reference to S22 of FIG. 1. Inaccurate paper ballots are printed (S15) and may be physically voided (S18). Although FIG. 1 does not account for what happens to paper ballots 212 when they are inaccurate and have not been approved by the voter, Johnson does not provide any indication that these ballots would not be available during a recount. Id. at ¶ 79. These paper ballots 212 could be segregated within the voting machine to separate them from accurate ballots in the locked ballot box, or all of the paper ballots could be dropped into the locked ballot
32 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response box if there is no segregation. Johnson indicates that the U.S. Post Office or other authorized agency can collect the ballots 212 and that the “ballots 212 may be removed from the voting machine 200 or the lockbox portion 208 of the voting machine 200 and physically transferred to the Post Office 702 for further handling.” Ex. 1002 at 10:15-21. Since the unapproved ballots are also stored within the voting machine, this disclosure indicates that both the approved and unapproved paper ballots would be present as part of the secure fully auditable record of the vote. Ex. 2003 at ¶ 79. As an example, if a voter did not approve his vote but then failed to start the voting process over again, the voided ballot would be relevant to the recount to show that the voter did present herself at the polling place to vote but did not successfully cast a vote. Id.
It is important to preserve voided ballots so they can be inspected during an election audit or a recount. Id. at ¶ 80. A well-known method of tampering with an election is for the tamperer to void ballots that have been voted for a disfavored candidate. The voter leaves the polling place believing that an accurate ballot has been deposited. However, later on, possibly during the recount, the tamperer voids the ballot so it will not be counted. It is critical to be able to inspect the voided ballots to determine that they were properly voided by the voting machine, and not by a tamperer. Id.
33 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
Returning a ballot to a voter would not only contradict Johnson’s avowed object, but would run contrary to its principle of operation and all disclosed embodiments and claims.
C. A POSITA Would Not Have Had a Reasonable Expectation of Success in Combining Johnson and Cummings In addition to the lack of motivation to combine Johnson and Cummings,
Petitioner fails to make a showing that a POSITA would have had a reasonable expectation of success in combining Johnson and Cummings in the way proposed.
Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. De C.V., 865 F.3d 1348,
1355 (Fed. Cir. 2017); Polaris Industries, Inc. v. Artic Cat, Inc., 882 F.3d 1056, n.4
(Fed. Cir. 2018). Merely because a combination could physically be accomplished is not sufficient to show obviousness. See InTouch Techs., Inc. v. VGO Commc’ns,
Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014); see also Black & Decker, Inc. v.
Positec USA, Inc., 646 F. App’x 1019, 1027 (Fed. Cir. 2016) (reversing the
Board’s finding of obviousness because the Board identified what one of ordinary skill “would have known” or “could have” done, without explaining why a person of ordinary skill would have been motivated to make the modification).
The voter in Johnson can never be given possession of the paper ballot because allowing such a thing would compromise the integrity of any election audit. Ex. 2003 at ¶¶ 58-60. As to Cummings, the voter always receives the ballot
34 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response because the BMD of Cummings cannot scan, deposit, or count ballots – they have to be inserted into a separate BSD. Id. at ¶ 83. In neither case is the voter given any ballot handling choices. The ballot is either returned (Cummings) or it is not
(Johnson).
Further, Dr. Bederson never explains how the simplistic mechanism of
Johnson could be modified to return a ballot to the voter. There is no diverter and no return slot in Johnson. Id. at ¶ 84.
Returning a ballot to the voter is not contemplated by Johnson (and is taught against) as there is no structural way to do so without a fundamental structural redesign of Johnson. Id. at ¶¶ 85-86. Ultratec Inc. v. Sorenson Communs., Inc.,
733 Fed. Appx. 535 (Fed. Circ. 2018); see also Ex parte Rose, Appeal No. 2005-
1009, Ser. No. 10/193,027 (June 2, 2005). Ex. 2003 at ¶ 85. Johnson expressly teaches not to give the ballot back to the voter, and for very good reason, as explained above. Neither Petitioner nor Dr. Bederson explains how such a modification could or would be accomplished without importing an entirely new ballot transport mechanism. Without the use of hindsight, a POSITA would not have been motivated to make such a modification to arrive at the ’471 patent’s claims.
35 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
D. The Combination of Johnson and Cummings Fails to Teach Numerous Limitations of Claims 4-6, 11-13, and 16-19
In addition to the lack of motivation to combine Johnson and Cummings, such a combination also fails to disclose or teach each limitation of claims 4-6, 11-
13, and 16-19.
1. “wherein the ballot handling choices comprise returning the ballot to the voter and depositing the ballot into the attached ballot box”
“wherein the ballot handling choices comprise returning a ballot to the voter and depositing the ballot into a ballot box” Cummings’s BMD always returns a ballot to the voter and Johnson never returns a ballot to a voter. Ex. 2003 at ¶ 57. Johnson is only capable of automatically conveying a ballot to a locked box. Further, neither the Petition nor Dr. Bederson explain how Johnson could technically be modified to permit ballot handling choices without completely modifying Johnson’s operation. Id. at ¶ 69. Thus, the combination of Johnson with the BMD of Cummings does not describe or suggest
36 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response ballot handling choices of returning the ballot to a voter and depositing the ballot into a ballot box as required in claims 4-6, 117-13, and 16-19.
2. “a presentation device operable to present to the voter a plurality of election choices and a plurality of ballot handling choices”
“presenting to the voter a plurality of ballot handling choices; receiving from the voter at least one instruction corresponding to the ballot handling choices; and transporting the marked ballot through the ballot marking device in accordance with the received voter instruction”
As noted above, the combination of Johnson with the BMD of Cummings does not disclose or suggest the plurality of ballot handling choices as required in claims 4-6, 11-13, and 16-198. Further, neither the Petition nor Dr. Bederson explain how Johnson could technically be modified to permit ballot handling choices without completely modifying Johnson’s operation. Ex. 2003 at ¶ 70.
7 The Petition correctly identifies the typographical errors in claim 11. Claim 11 depends from claim 10, not claim 1, and the preamble of claim 11 should read
“The method” instead of “The ballot marking device.”
8 There are typographical errors in the preamble of claims 17-19. The preamble of claims 17-19 should read “The voter assistance terminal” instead of “The ballot marking device.”
37 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
3. “an input device operable to receive from the voter at least one selection corresponding to the election choices and an instruction corresponding to the ballot handling choices”
“an input device operable to receive from the voter at least one selection corresponding to the election choices and at least one instruction corresponding to the ballot handling choices” As noted above, the combination of Johnson with the BMD of Cummings does not disclose or suggest the plurality of ballot handling choices as required in claims 4-6, and 16-19. Further, neither the Petition nor Dr. Bederson explain how
Johnson could technically be modified to permit ballot handling choices without completely modifying Johnson’s operation. Id. at ¶ 69.
The Petition relies on Johnson to argue that this limitation of claims 4-6 and
16-19 is obvious. Paper 2 at 55-56. Johnson does not disclose receiving from the voter “at least one instruction corresponding to the ballot handling choices” as required by these claims. See Ex. 2002 at ¶¶ 104-108. Indeed, Johnson does not disclose providing “ballot handling choices” to a voter, let alone receiving instructions corresponding to a “ballot handling choice.” Id. at ¶¶ 34, 48, 57, 61.
For these reasons, Johnson does not disclose this limitation and does not render claim 16 obvious.
38 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
4. “a diverter operable to direct the ballot from the transport mechanism into the attached ballot box”
“wherein the transporting step comprises diverting the ballot into the attached ballot box in response to the received voter instruction to deposit the ballot into the attached ballot box”
“wherein the transport mechanism is operable to transport the ballot to a diverter if the received voter instruction is to deposit the ballot into the ballot box” The Petition acknowledges that Johnson does not disclose a “diverter,” but argues that such a “diverter” would be obvious in view of Johnson because Johnson states that undisclosed “provisions” can be made to “segregate paper ballots.” Paper
2 at 35. But a POSITA would not have recognized that “provisions” to segregate ballots would require the use of a “diverter operable to direct the ballot from the transport mechanism into the attached ballot box.” Ex. 2003 at ¶ 67; Orexo AB v.
Actavis Elizabeth LLC, 903 F.3d 1265, 1273 (Fed. Cir. 2018). Although the ballot routing gate 117 of Cummings’ BMD might be alleged to be a diverter, it is inoperable in the BMD operating mode. Ex. 2003 at ¶ 54. Thus, the combination of Johnson with the BMD of Cummings does not disclose or suggest a diverter as required in claims 4-6, 12 and 17-19.
39 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
5. “wherein the presentation device, the input device, the marking mechanism, the transport mechanism, and the diverter are integrated in a single unit” As explained above, neither Johnson nor the BMD of Cummings has each of the presentation device, the input device, the marking mechanism, the transport mechanism, and the diverter of claims 4-6, and therefore do not disclose or suggest that these elements are integrated in a single unit.
6. “a transport mechanism operable to transport the ballot through a ballot channel in accordance with the received voter instruction, wherein the transport mechanism causes ejection of the ballot if the received voter instruction is to return the ballot to the voter, and wherein the transport mechanism causes deposit of the ballot into the ballot box if the received voter instruction is to deposit the ballot into the ballot box” Cummings’s BMD always returns a ballot to the voter and Johnson never returns a ballot to a voter. Ex. 2003 at ¶¶ 34, 48, 57, 61. Johnson is only capable of automatically conveying a ballot to a locked box. Further, neither the Petition nor
Dr. Bederson explain how Johnson could technically be modified to permit ejecting a ballot to a voter without completely modifying Johnson’s operation. Id. at ¶ 69.
The Petition acknowledges that Johnson does not disclose a transport mechanism that is operable to eject a ballot based on voter instruction to return the ballot to the voter. Paper 2 at 43. Instead, the Petition incorrectly asserts (by citing to Sections
VII.A.3.a and VII.A.6 of the Petition) that it would have been obvious to a POSITA
40 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response to modify Johnson in light of Cummings to return a ballot to the voter. Id. at 43. As previously explained, modifying Johnson in such a manner would not have been obvious to a POSITA and a POSITA would have had no motivation to make such a modification. Ex. 2003 at ¶¶ 61-81.
Johnson does not disclose a “ballot channel” through which a ballot is transported. Instead, Johnson discloses a printer that prints voter selections on a ballot and a scanner that “immediately” scans the ballot after it exits a printer. Ex.
1002 at 2:54-60. There is no need for a ballot channel in Johnson because the ballot, after being printed and scanned, is automatically “conveyed” along one “path” to the locked ballot box. Id. at 6:1-11; 6:52-55. The “conveying” of the ballot to the locked box could be nothing more than letting gravity direct the ballot to fall from the scanner to the locked ballot box. Ex. 2002 at ¶¶ 110-111.
A POSITA would not understand that “conveying” a ballot to a locked ballot box would mean that there is necessarily a “transport mechanism operable to transport the ballot through a ballot channel of the device.” Ex. 2002 at ¶¶ 112-114.
Additionally, a POSITA would not have been motivated to modify Johnson to include “the use of feed rollers for contacting and engaging a ballot” as disclosed in
Cummings. Paper 2 at 34. A POSITA would not have been motivated to combine
Johnson and Cummings because there is no reason to modify Johnson to add a ballot
41 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response channel when one could simply drop the ballot into the attached ballot box. Ex.
2002 at ¶¶ 114, 159.
Thus, the combination of Johnson with the BMD of Cummings does not describe or suggest a transport mechanism operable to transport the ballot through a ballot channel in accordance with the received voter instruction, and ejection of the ballot or deposit of the ballot based on the received voter instruction as required in claims 16-19.
7. “wherein the presentation device, the input device, the print mechanism, and the transport mechanism are integrated in a single unit” As explained above, neither Johnson nor the BMD of Cummings has each of the presentation device, the input device, the print mechanism, and the transport mechanism of claims 16-19, and therefore cannot disclose that these elements are integrated in a single unit.
V. Claims 18 and 19 are Not Obvious In Light of Johnson in View of Cummings and Nakada The only challenge as to claims 18 and 19 of the ‘471 patent is based on a three-reference combination of Johnson, Cummings, and Nakada. Paper 2 at 59-63.
Petitioner resorts to a combination of Johnson, Cummings, and Nakada because it is undisputed that neither Johnson nor Cummings disclose a diverter “configured such that the ballot pushes past the diverter during transport in one direction through the
42 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response ballot channel, and wherein the diverter directs the ballot to an ejection chute during transport in an opposite direction through the ballot channel” or a diverter that is “a passive structure projecting into the ballot channel.” Despite the absence of the claimed diverter in Johnson or the BMD of Cummings, Petitioner asserts that a
POSITA would have nevertheless found it obvious to take the hypothetical voting machine of Johnson modified by Cummings and combine it with Nakada. Id. at 61.
This is not correct. Ex. 2003 at ¶¶ 87-100.
As an initial matter, in its Institution Decision, the Board did not address the arguments raised by Patent Owner or the detailed declaration provided by Dr.
Shamos with respect to the non-obviousness of claims 18 and 19. Paper 11 at 21-
22. Instead, the Board’s one-sentence analysis with respect to claims 18 and 19 states as follows: “With respect to Petitioner’s Challenges 2 and 3, we have reviewed the respective arguments and evidence relied on by Petitioner and Patent
Owner, and are persuaded at this stage of the proceeding that Petitioner has established a reasonable likelihood of prevailing on each of these challenged dependent claims.” Id.
As established below and in Patent Owner’s Preliminary Response,
Petitioner’s proposed combination of Johnson, Cummings, and Nakada fails to render claims 18 and 19 obvious. Id. at ¶¶ 87-100
43 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
A. Independent Claim 16 Would Not Have Been Obvious to a POSITA In Light of Johnson and Cummings Petitioner cites Nakada in Ground II to allege claims 18 and 19 are obvious based on Nakada’s generic disclosure of a “baffle diverter.” Petitioner does not rely on Nakada—nor could it—for any elements of independent claim 16 from which claims 18 and 19 indirectly depend.
As discussed above in Section IV, claim 16 would not have been obvious to a
POSITA in light of Johnson and Cummings. Petitioner’s obviousness argument as to claims 18 and 19 fails for this reason alone. Ex. 2003 at ¶¶ 46-86.
B. A POSITA Would Not Have Been Motivated to Combine Johnson, Cummings, and Nakada A POSITA would not have been motivated to combine Nakada with Johnson and Cummings. Ex. 2002 at ¶¶ 172-177; Ex. 2003 at ¶¶ 86-100. The purpose of the diverter in the ballot marking device and voting machine claimed in the ‘471 patent is to return the ballot to the voter or into the ballot box based on the ballot handling choice selected by the voter. Ex. 1001 at 2:27-35.
For example, if a voter selects the ballot handling choice of returning the ballot to the voter, the marked paper ballot is ejected from the device and returned to the voter. Id. Conversely, if the voter selects to deposit the ballot, the ballot is directed to the diverter to divert the ballot out of a rear chute of the device and into the ballot
44 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response box. Id. No such structure or functionality exists in the voting machines disclosed in Johnson or Cummings, independently or combined.
The diverter disclosed in Nakada serves a different purpose wholly unrelated to diverting paper to return the paper to the user or to deposit paper into a ballot box. Ex. 2003 at ¶¶ 95-100. Nakada is exclusively directed to clearing paper jams in a high-speed printer such as a Xerox machine that “can produce at a rate in excess of three thousand copies per hour.” Id. See Ex. 1004 at ¶ 0005. More particularly, the invention disclosed in Nakada attempts to address the problem of frequent paper jams that “disrupt[] or stop[] the entire marking system” in high- speed marking devices. Id. at ¶ 0002. According to Nakada, “[w]ith the high speed marking machines used today, rapidly traveling paper along a paper path that is, for some reason, interrupted by a paper jam can cause significantly longer and more damage and downtime than in heretofore slower systems.” Id. at ¶ 0005. To clear a paper jam in the high-speed marking machines, Nakada describes a system that reverses the path of a piece of paper that is jammed and uses a baffle to direct the paper to a “purge.” Id. at ¶ 0022. By reversing the paper, the jam is cleared and the printer can continue to mark paper. Ex. 2003 at ¶¶ 95-100.
Nakada deals with avoiding paper jams in what Nakada refers to as “marking systems.” Nakada discloses that the purpose of the diverter is to allow “paper 5 in a
45 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response normal operation to travel along a normal path 3 and baffle 10 diverts paper 5 to a purge when clearing a jam and when the transport component 2 is in the reverse mode.” Even supposing that a POSITA would have found it obvious to incorporate the teachings of Nakada into Johnson or Cummings separately for the purpose of clearing paper jams, there is no suggestion at all in Nakada that a voter should be given a plurality of ballot handling choices. Ex. 2003 at ¶¶ 92-93. In fact, Nakada appears to have been selected by Petitioner because it happens to use the term
“diverter,” which itself happens to be used in the ’471 claims. Id. at ¶ 92.
Voting machines, such as that claimed in the ’471 patent, are not high-speed marking machines like those at issue in Nakada. Instead, voting machines commonly produce marked ballots at approximately the rate of 1 every 3 minutes, or about 20 per hour.9 This is less than 1% of the rate of the Xerox machine and other high-speed devices referred to in Nakada. Ex. 2003 at ¶¶ 95-97.
In addition to producing marked ballots at slower speeds, voting machines also have relatively simplistic transport mechanisms. This means that paper jams in voting machines are extremely rare. Adding an automated mechanism to clear a paper jam in a voting machine would not be justified. Ex. 2003 at ¶ 98. But even if a paper jam occurs in a voting machine, clearing the paper jam is a simple and
9 In many states, voters are only allotted three minutes to complete a ballot.
46 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response straightforward process, unlike the process described in the high-speed marking devices of Nakada. A paper jam is unlikely to occur in the slow paper path of a voting machine, especially one in which there is no choice as to the final destination of the ballot, as opposed to a high-speed marking device producing over three thousand copies per hour. Id.
The Petition asserts that because Johnson, Cummings, and Nakada all relate to “machines that transport paper,” this would motivate a POSITA to combine these three references to achieve the claimed functionality in the Challenged Claims.
Paper 2 at 62-63 and Ex. 1006 at ¶ 172. But a POSITA would not be motivated to take the paper-jam clearing diverter functionality of Nakada (which operates for its intended purpose) and combine it with a hypothetical voting machine comprising
Johnson and Cummings. Ex. 2003 at ¶¶ 92-100. See also Kinetic Concepts, 688
F.3d at 1369; Winner Int’l Royalty Corp., 202 F.3d at 1349. Such a combination is only achieved through the use of hindsight. Id.; Orexo AB v. Actavis Elizabeth LLC,
903 F.3d 1265, 1273 (Fed. Cir. 2018) (“The question is not whether the various references separately taught components of the ‘330 Patent formulation, but whether the prior art suggested the selection and combination achieved by the ‘330 inventors.”); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed.
Cir. 2017) (“Without any explanation as to how or why the references would be
47 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response combined to arrive at the claimed invention, we are left with only hindsight bias that
KSR warns against.”); InTouch Techs., Inc., 751 F.3d at 1352.
Without the use of hindsight, a POSITA would not be motivated to look to the high-speed jam-clearing device described in Nakada to modify a voting machine described in Johnson or Cummings. Ex. 2002 at ¶ 177; Ex. 2003 at ¶ 100.
Further, nothing in Nakada teaches the “plurality of ballot handling choices” required by independent claim 16. Ex. 2003 at ¶ 93. And claims 18 and 19 the ‘471 patent are not directed to just any “diverter,” but a diverter that diverts a ballot “if the received voter instruction is to deposit the ballot into the ballot box” (Claim 17).
The only functionality of the “diverting baffle” in Nakada is to permit paper “to travel along a normal path 3 and baffle 10 diverts paper 5 to a purge when clearing a jam and when the transport component 2 is in the reverse mode.” Ex. 1004 at
¶ 0020 (emphasis added). In other words, the diverting baffle of Nakada is only used to clear a jam by diverting paper to a “purge” when the paper path is reversed. There is no teaching in Nakada that a paper ballot is diverted to a ballot box as required by claims 18 and 19.
Claims 18 and 19 are not obvious in view of Johnson, Cummings, and Nakada.
48 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
VI. CONCLUSION For the foregoing reasons, Petitioner has failed to meet its burden to show that claims 4-6, 11-13, and 16-19 of the ‘471 patent are obvious in light of the asserted combinations of prior art. Patent Owner respectfully requests that the Board deny
Petitioner’s Petition and confirm the patentability of claims 4-6, 11-13 and 16-19.
Dated: October 15, 2019 Respectfully submitted,
/Robert M. Evans, Jr./ Robert M. Evans, Jr., Reg. No. 36,794 Michael J. Hartley, Reg. No. 67,230 Kathleen Markowski Petrillo, Reg. No. 35,076 Kyle G. Gottuso (pro hac vice) Jonathan Pollmann, Reg. No. 71,702 STINSON LLP 7700 Forsyth Boulevard, Suite 1100 St. Louis, MO 63105 T: 314- 345-7004; F: 314- 345-7600 Email: [email protected] [email protected] [email protected] [email protected] [email protected]
Counsel for Patent Owner Election Systems & Software, LLC
49 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
CERTIFICATE OF SERVICE
Under 37 C.F.R. § 42.6(e), the undersigned certifies that on October 15,
2019, the foregoing PATENT OWNER’S RESPONSE, along with the supporting exhibits, were served via e-mail on the following counsel of record for Petitioner:
Larissa Bifano Michael Van Handel Tim Lohse DLA Piper LLP (US) 2000 University Ave. East Palo Alto, CA 94303 [email protected]
/Robert M. Evans, Jr./ Lead Counsel for Patent Owner Robert M. Evans, Jr. Reg. No. 36,794
50 IPR2019-00531 Patent No. 8,096,471 Patent Owner’s Response
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME REQUIREMENTS UNDER 37 C.F.R. § 42.24 Under 37 C.F.R. § 42.24(d), the undersigned certifies that this Patent Owner
Preliminary Response complies with the type-volume limitation of § 42.24(a) and
(b)(2) because it contains 10,700 words, excluding the parts of the Preliminary
Response exempted by § 42.24(a).
This paper also complies with the typeface requirements of 37 C.F.R.
§ 42.6(a)(2)(ii) and the type style requirements of 37 C.F.R. § 42.6(a)(2)(iii) and
(iv).
Dated: October 15, 2019 /Robert M. Evans, Jr. / Robert M. Evans, Jr., Reg. No. 36,794 STINSON LLP 7700 Forsyth Boulevard, Suite 1100 St. Louis, MO 63105 T: 314- 345-7004; F: 314- 345-7600 Email: [email protected]
Counsel for Patent Owner Election Systems & Software, LLC
51