DCT
1:18-cv-01259
Election Systems & Software LLC v. Smartmatic USA Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Election Systems & Software, LLC (Delaware)
- Defendant: Smartmatic USA Corporation (Delaware)
- Plaintiff’s Counsel: Senniger Powers LLP
- Case Identification: 1:18-cv-01259, D. Del., 08/17/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Smartmatic is a Delaware corporation.
- Core Dispute: Plaintiff alleges that Defendant’s ballot marking device, offered for sale to Los Angeles County, infringes two patents related to integrated ballot handling and specific voter interface controls.
- Technical Context: The technology concerns electronic voting systems designed to create a voter-verifiable paper audit trail, a feature of significant public and commercial importance in the election technology market.
- Key Procedural History: The complaint details extensive pre-suit interactions, including multiple notice letters sent by Plaintiff to Defendant regarding the patents-in-suit, which form the basis for allegations of willful infringement. In post-filing proceedings not detailed in the complaint, the asserted claims of both patents-in-suit were challenged in Inter Partes Reviews (IPRs) before the U.S. Patent and Trademark Office. The IPRs (IPR2019-00531 and IPR2019-00527) resulted in the cancellation of all claims asserted in this complaint, a development that is dispositive of the case as originally pleaded.
Case Timeline
| Date | Event |
|---|---|
| 2002-07-26 | ’273 Patent Priority Date |
| 2007-12-18 | ’471 Patent Priority Date |
| 2010-07-13 | ’273 Patent Issue Date |
| 2012-01-17 | ’471 Patent Issue Date |
| 2017-09-18 | Los Angeles County issues RFP Phase 1 |
| 2018-01-02 | Los Angeles County issues RFP Phase 2 |
| 2018-02-23 | Plaintiff notifies Defendant of patents-in-suit |
| 2018-03-01 | Defendant submits allegedly infringing bid (approx.) |
| 2018-06-07 | Defendant selected as winning bidder (approx.) |
| 2018-07-19 | Plaintiff sends detailed infringement letter to Defendant |
| 2018-08-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,096,471 - "Ballot Marking Device Having Attached Ballot Box," issued January 17, 2012
The Invention Explained
- Problem Addressed: The patent seeks to remedy drawbacks of prior voting systems, noting that purely electronic terminals often lack a satisfactory, auditable paper trail, while traditional paper ballots can be inaccessible to voters with physical impairments ('471 Patent, col. 1:21-40).
- The Patented Solution: The invention is an all-in-one ballot marking device. It allows a voter to make selections electronically, which the device then physically marks on a paper ballot. The device gives the voter a choice: either have the marked ballot returned for manual inspection and deposit, or have the device automatically deposit the ballot into an attached, secure ballot box ('471 Patent, Abstract; col. 2:4-17). This process creates a physical, voter-verifiable record while providing the accessibility of an electronic interface (Compl. ¶22).
- Technical Importance: This integrated approach aimed to combine the accessibility benefits of electronic voting with the security and auditability of a physical paper ballot (Compl. ¶¶22-23).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claim 16 (Compl. ¶61).
- Independent Claim 1 requires:
- A ballot marking device adapted to mark a ballot and either directly deposit it into an attached ballot box or return it to the voter.
- A presentation device for election and ballot handling choices.
- An input device to receive voter selections and instructions.
- A marking mechanism to record the selections on the ballot.
- A transport mechanism to move the ballot.
- A diverter to direct the ballot into the attached ballot box.
- Wherein the presentation device, input device, marking mechanism, transport mechanism, and diverter are integrated in a single unit.
U.S. Patent No. 7,753,273 - "Ballot Marking System and Apparatus Utilizing Multiple Key Switch Voter Interface," issued July 13, 2010
The Invention Explained
- Problem Addressed: The patent addresses the inefficiency of prior electronic voting terminals and their lack of accessibility for voters with disabilities, such as visual impairments, which could prevent them from voting independently and confidentially (Compl. ¶¶17, 21, 28).
- The Patented Solution: The invention describes a specific physical interface for navigating a ballot. The system uses a "multiple key-switch navigation sub-panel" comprising a central push-button for making selections, a pair of buttons above and below the center button for scrolling through options within a contest, and a pair of buttons to the left and right for scrolling between different contests ('273 Patent, Abstract; col. 2:26-38). This interface can be used in conjunction with a display screen or with headphones for an audio-only experience (Compl. ¶¶13, 26).
- Technical Importance: This specific, tactile button layout was intended to provide an intuitive and standardized method for all voters, including those with disabilities, to navigate a complex ballot quickly and accurately (Compl. ¶¶27-28).
Key Claims at a Glance
- The complaint asserts independent claim 13 (Compl. ¶72).
- Independent Claim 13 requires:
- A voting system comprising a ballot marking device.
- A display screen and/or headphones to present contests and options.
- A navigation device with a specific layout: a center push-button switch, a first pair of push-buttons positioned above and below the center, and a second pair of push-buttons positioned left and right of the center.
- Wherein one pair of directional buttons enables scrolling among contests and the other pair enables scrolling among options.
- Wherein the center push-button enables the entry of a voting selection.
III. The Accused Instrumentality
- Product Identification: Defendant Smartmatic’s Ballot Marking Device (BMD) and associated voting systems and equipment offered for sale to Los Angeles County as part of its "Voting Solutions For All People (VSAP)" project (Compl. ¶¶31, 36, 40).
- Functionality and Market Context: The complaint alleges the accused instrumentality is a voting machine that allows voters to mark a ballot (Compl. ¶31). Plaintiff alleges that the functionality of this BMD incorporates its patented technology (Compl. ¶58). The dispute arises in the context of a direct, competitive bidding process between Plaintiff and Defendant for a large contract to modernize LA County's voting system, a contract that Defendant ultimately won (Compl. ¶¶34, 37, 40, 57).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
The complaint alleges infringement in general terms without providing a detailed element-by-element analysis or claim chart. The following tables synthesize the allegations from narrative paragraphs.
- ’471 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A ballot marking device adapted to mark a ballot...and to either directly deposit the marked ballot into an attached ballot box or return the marked ballot to the voter | Defendant's BMD is described as a "ballot marking device" that can either return a marked ballot to a voter or automatically feed it into a ballot box (Compl. ¶22). | ¶22, ¶58 | col. 2:4-9 |
| a presentation device operable to present...election choices and...ballot handling choices | The accused BMD is alleged to include, among other hardware components, a presentation device to present the ballot to the voter. | ¶24 | col. 4:35-42 |
| an input device operable to receive from the voter...selection...and...instruction | The accused BMD is alleged to include an input device so the voter can input his or her vote. | ¶24 | col. 4:43-52 |
| a marking mechanism operable to record the received voter selection on the ballot | The accused BMD is alleged to include a marking mechanism so that the entered vote can be recorded on the ballot. | ¶24 | col. 7:20-31 |
| a transport mechanism operable to transport the ballot through a ballot channel | The accused BMD is alleged to include a transport mechanism that transports a ballot. | ¶24 | col. 5:5-13 |
| a diverter operable to direct the ballot from the transport mechanism into the attached ballot box | The accused BMD is alleged to include a diverter which diverts the ballot into the ballot box. | ¶24 | col. 9:11-20 |
| wherein the presentation device, the input device, the marking mechanism, the transport mechanism, and the diverter are integrated in a single unit | The complaint alleges that the accused BMD implements the elements of the patent, implying it meets the integration requirement, but provides no specific facts on this point. | ¶24, ¶58 | col. 3:1-3 |
- ’273 Patent Infringement Allegations
| Claim Element (from Independent Claim 13) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A voting system comprising: a ballot marking device | Defendant's accused product is a voting system that includes a "ballot marking device" (BMD). | ¶31, ¶36 | col. 4:10-14 |
| one or both of a display screen and a set of headphones...configured to present a plurality of contests and...options | The accused system is alleged to include a display screen viewable by the voter. | ¶26 | col. 4:33-38 |
| a navigation device...having a center push-button switch, a first pair of push-button switches positioned above and below said center push-button switch, and a second pair of push-button switches positioned left and right of said center push-button switch | The accused system is alleged to include a central push-button switch for making a selection, a pair of push-button switches above and below, and a second pair of switches horizontally on either side. | ¶26 | col. 2:31-38 |
| wherein said navigation device is configured such that one of said first and second pairs of push-button switches enables scrolling among said contests, wherein the other...enables scrolling among said options | The accused system is alleged to allow a voter to scroll up and down to select candidates and scroll horizontally to scroll between races. | ¶26 | col. 2:31-38 |
| and wherein said center push-button switch enables the entry of at least one voting selection...by selecting at least one of said...options without providing any input on other of said options. | The accused system is alleged to include a central push-button for making a selection. | ¶26 | col. 2:26-38 |
- Identified Points of Contention:
- Scope Questions: For the ’471 Patent, a central question is the scope of "integrated in a single unit." It is unclear if this requires a single monolithic housing or if it can read on a system of physically distinct but functionally connected components. For the ’273 Patent, the claim language recites a highly specific five-button physical layout for the "navigation device." A primary issue will be whether this language reads on the accused device, or if the accused device uses a different physical interface (e.g., a four-way directional pad with a center button) that may not meet the claim's precise structural limitations.
- Technical Questions: The complaint lacks specific evidence showing how the accused Smartmatic BMD operates. A key technical question for the ’471 Patent is whether the accused device actually contains a "diverter" that performs the claimed function of directing a ballot into an "attached ballot box." For the ’273 Patent, the question is whether the physical buttons on the accused device are, in fact, "positioned above and below" and "left and right" of a "center push-button switch" as strictly required by the claim.
V. Key Claim Terms for Construction
Term: "integrated in a single unit" (’471 Patent, Claim 1)
- Context and Importance: This term is critical for determining the scope of the claimed device. The infringement analysis may turn on whether the accused product, potentially comprising several modules, constitutes a "single unit."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses the various components (processor, drive rollers, power supply) and their functional interconnections, which a party might argue supports a "functionally integrated" interpretation, even if housings are separate (e.g., ’471 Patent, Fig. 3A).
- Evidence for a Narrower Interpretation: The abstract uses the phrase "integrated in a single unit." Furthermore, drawings such as Figure 1 depict the ballot marking device and voting terminal as distinct but connected devices, while the ballot marking device itself appears to be a self-contained unit, potentially supporting a narrower, structural interpretation limited to a single physical housing.
Term: "a navigation device...having a center push-button switch, a first pair of push-button switches positioned above and below...and a second pair of push-button switches positioned left and right..." (’273 Patent, Claim 13)
- Context and Importance: Practitioners may focus on this term because infringement hinges on a precise structural correspondence. This is not a functional limitation but a recitation of a specific physical hardware layout.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that other disclosed input methods in the specification (e.g., touchscreen) suggest the invention is not strictly confined to this single button layout, although this is unlikely to overcome the explicit claim language.
- Evidence for a Narrower Interpretation: The claim language itself is highly specific and structural. The Summary of the Invention explicitly recites this five-button configuration ('273 Patent, col. 2:31-38), and Figure 23 provides a clear depiction of this exact layout. This strongly suggests that this precise arrangement is a definitional feature of the invention, not merely an example.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement was and continues to be willful. This allegation is based on Plaintiff having provided Defendant with actual, pre-suit notice of the patents-in-suit on at least two occasions (Compl. ¶¶38, 48). The first notice allegedly occurred on February 23, 2018, before Defendant submitted its winning bid to LA County (Compl. ¶¶38-39). The complaint further alleges that Defendant's conduct was "egregious" and that it refused to provide a substantive response to Plaintiff's infringement allegations, which Plaintiff argues demonstrates knowledge and objective recklessness (Compl. ¶¶53-55, 67, 78).
VII. Analyst’s Conclusion: Key Questions for the Case
- Impact of Post-Filing IPRs: The single most critical issue governing this case is the post-filing cancellation of all asserted claims in Inter Partes Review proceedings. As the complaint is predicated entirely on claims that have since been found unpatentable by the USPTO, the central question is not one of infringement or willfulness, but of mootness, as the legal basis for the suit as pleaded has been eliminated.
- Structural vs. Functional Equivalence: For the underlying technology dispute concerning the ’273 patent, a key issue was whether the patent’s protection is strictly limited to the precise five-button physical interface recited in the claims. This raises the classic question of whether a device that achieves a similar navigational result with a different physical structure (e.g., a D-pad) could be found to infringe.
- Pre-Suit Conduct and Willfulness: The complaint’s detailed factual allegations regarding pre-suit notice and Defendant’s subsequent actions presented a significant question of whether that conduct met the high bar for willful infringement. While this issue is likely mooted by the invalidation of the claims, it highlights the strategic importance of how potential defendants respond to notice letters in high-stakes competitor litigation.