Article posted to online periodical qualified as “printed publication” under §102(b) where person skilled in the art could have located it

| November 15, 2012

Voter Verified, Inc. v. Election Systems & Software

Decided  November 5, 2012

Panel: Lourie, Reyna, and Wallach.  Opinion By: Lourie


The patent holder alleged that automated voting systems of its competitors infringed U.S. Reissue Patent RE40,449 (“the ‘449 patent”).  The district court found that claim 49 of the ‘449 patent was invalid as obvious under 35 U.S.C.S. § 103 in view of an article in an online periodical before the patent’s critical date.  The district court found that an article in an online periodical qualified as a printed publication under 35 U.S.C.S. § 102(b).  CAFC affirmed holding that the article could have been located by someone skilled in the art before the critical date.



Factual Background

The ‘449 patent, assigned to Voter Verified, issued on August 5, 2008, and claims priority from an application filed on December 7, 2000. The patent discloses and claims automated systems and methods for voting in an election, featuring a self-verification procedure by which “machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.”  Briefly, the voter enters a vote into an electronic voting station, which temporarily records the voter’s input in digital storage and generates a corresponding printed ballot. That printed ballot is then checked for accuracy, either by presentation to the voter for visual inspection or by a computerized scanning mechanism capable of comparing the face of the printed ballot with the vote data in the station’s temporary storage. Only ballots deemed consistent with the voter’s intended input are accepted for final tabulation.

The Benson article was posted to an online periodical “The Risks Digest” by Tom Benson on March 4, 1986.  At that time, the Risks Digest was distributed online via a subscription mailing list and also made available for download through an FTP site maintained by SRI International. Starting in January 1995, however, all content published in the Risks Digest (including the Benson article) became available worldwide on the internet through the website.

Testimony in the record indicated that (1) the Risks Digest was well known to the community interested in the risks of computer automation, including those concerned with electronic voting technologies, and by 1999 the Risks Digest contained more than 100 articles relating to electronic voting; (2) all submissions for publication in the Risks Digest are treated by the community as public disclosures; and (3) users can freely and easily copy Risks Digest content.  In addition, since September 1995 the Risks Digest website has included a search tool that would have retrieved the Benson article in response to search terms such as “vote,” “voting,” “ballot,” and/or “election.”

On the other hand, the record is devoid of evidence indicating whether or not the Risks Digest website had been indexed by any such services as of the critical date.

Voter Verified argued that the Defendants “provided no evidence of any indexing on any database” that would have allowed the interested public to locate the Risks Digest website, much less the Benson article contained therein.  According to Voter Verified, the Benson article therefore should have been excluded from the district court’s obviousness analysis.

The district court concluded that the Benson article was publicly accessible before the December 7, 1999, critical date–one year before the earliest priority date for the ‘449 patent–and therefore qualified as prior art under § 102(b).

CAFC review

CAFC explained: when considering whether a reference qualifies as a prior art “printed publication,” the key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date, In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); and whether a reference is publicly accessible is determined on a case-by-case basis based on the “facts and circumstances surrounding the reference’s disclosure to members of the public,” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009).

CAFC found no error in the district court’s factual findings or its conclusion that the Benson article constituted publicly available prior art relative to the ‘449 patent. The court noted that the Risks Digest website was undisputedly open to any internet user by the critical date. Regarding whether or not the website itself had been indexed by 1999, it also noted that the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. Such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence.

Also, CAFC affirmed that the district court’s finding that there is no difference between the claimed invention and the Benson article.


When considering a prior art “printed publication,” the key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date.  The public accessibility is determined on a case-by-case basis based on the facts and circumstances surrounding the reference’s disclosure to members of the public.

Full Opinion

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