When Are Online Articles Sufficiently Accessible: The Federal Circuit Addresses Non-Indexed Publications

Voter Verified, Inc. v. Premier Election Solutions, Inc. By Craig Fratrik – Edited by Laura Fishwick Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2012 WL 5382734 (Fed. Cir. Nov. 5, 2012) Slip opinion The Court of Appeals for the Federal Circuit affirmed the Middle District of Florida’s ruling that the defendants, Premier Software Solutions, Inc., Diebold, Inc., and Election Systems & Software, Inc., had not infringed U.S. Reissue Patent No. RE40,449 (the ’449 Patent) held by Voter Verified, Inc., and that one of its claims was invalid for obviousness. The district court had held that claim 49 was invalid for obviousness under 35 U.S.C. § 103 and claim 94 was invalid for indefiniteness under 35 U.S.C. §112. Voter Verified appealed both the rulings of non-infringement and invalidity as to claim 49.JOLTMORE Voter Verified’s patent was issued on August 5, 2008 and claims a system and method for verified voting in an election comprising both generating a temporary digital record of the vote and then a corresponding printed ballot. A computer scans the printed vote for accuracy against the digital vote, and only records accurate votes. Defendants produce and market verified voting systems that use the voter herself to check the printed ballot for accuracy. Critical for the disposition in this case, an online periodical concerned with computer safety and security called the Risks Digest originally published a similar idea in the Benson article in 1986 via a subscription mailing list and made it available online in 1995, well before the ’449 Patent’s priority date in 2000. Patently-O provides an overview of the prior art and joint infringement holdings in the case, and notes that the opinion, issued the day before the presidential election (and on appeal from the Middle District of Florida), did not force the court to intervene in voting in Florida. Patents4Life discusses how the “sufficiently accessible” standard leads to tricky questions and potential implications for what sort of online resources will constitute prior art. The pivotal question for appellate review was whether the Benson article was a prior art “printed publication” under 35 U.S.C. § 102(b). Voter Verified argued that an online article must be “searchable by pertinent terms” in order to qualify as prior art, and additionally that neither the article nor the Risks Digest website was discoverable through database indexing. The defendants responded that the Risks Digest was well known to those interested in voting technologies and was retrievable by searching the website by subject. Reviewing the district court’s holding de novo, the Federal Circuit held that whether a reference is publically available is a factual inquiry under In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009), and that the pertinent standard was “whether the reference was made ‘sufficiently accessible to the public interested in the art’ before the critical date.” Voter Verified at *8 (citing In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989)). The court found that indexing was a relevant factor but not a necessary condition to qualify as prior art under 102(b). In this case, the fact that the Risk Digest was distributed online, made available for download, well-known by the interested community, treated as public, and easily copied weighed in favor of finding that the Benson article was prior art. In sum, the court held that prior art can be an article available online at a website known to people in the industry, even if there is no evidence the article was indexed by a general search engine. The Federal Circuit concluded that the Benson article rendered claim 49 obvious, and went on to agree with the district court that the remaining claims were not infringed. This ruling clarifies what it takes for prior art to be sufficiently accessible online. The court stated, “indexing is no more or less important” in online media compared to traditional print media. In this case, the court was able to reason that Risks Digest was findable, and then through its search, the article was findable. One can imagine more difficult cases  where the publisher was less well known by the interested public, or when the art showed up on page 1, 10, or 100 of a relevant Google search. Keeping track of when a particular piece of prior art was made available online is challenging, though organizations such as Archive.org attempt it. Also, the more hidden online publications can be, the more difficult it will become for patent applicants to find and disclose all relevant prior art. A growing issue is the discoverability based on search results, whose nature is dramatically more temporal than mere presence online.