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SMARTMATIC USA CORPORATION Petitioner 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
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