Smartmatic USA Corp v. Election Systems & Software LLC

1. Case Identification

• Case #: IPR2019-00527
• Patent #: 7,753,273
• Filed: January 4, 2019
• Petitioner(s): Smartmatic USA Corporation
• Patent Owner(s): Election Systems & Software, LLC
• Challenged Claims: 1-19

2. Patent Overview

• Title: Ballot Marking System and Apparatus Utilizing Multiple Key Switch Voter Interface
• Brief Description: The ’273 patent describes a ballot marking system that provides a voter interface with multiple input methods, including a touchscreen and a physical sub-panel of key switches. The sub-panel is designed to assist voters with physical impairments by allowing navigation and selection through arrow and enter keys, often in conjunction with audio feedback.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 9, 12, 13, and 16 are anticipated under 35 U.S.C. §102(e) by Nguyen.

• Prior Art Relied Upon: Nguyen (Patent 7,128,263).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Nguyen disclosed every element of the challenged independent claims. Nguyen described an audio-based voting system using a standard 12-button telephone keypad for input. This keypad included a "five-key navigation group" which Petitioner mapped directly to the claimed navigation device: a center push-button switch ("5" key), a first pair of switches above and below ("2" and "8" keys), and a second pair of switches left and right ("4" and "6" keys). Petitioner contended Nguyen taught using one pair of keys to scroll between contests and the other pair to scroll between options (candidates) within a contest. The center "5" key was taught for making a selection, thereby enabling a voter to select an option for a contest without providing input for other options. For dependent claims, Nguyen’s "three-key special command group" was argued to meet the limitation of "auxiliary push-button switches."

Ground 2: Claims 2, 3, 10, 11, 14, and 15 are obvious over Nguyen in view of Marshall.

• Prior Art Relied Upon: Nguyen (Patent 7,128,263) and Marshall (a 2001 journal article titled "User performance and attitude towards schemes for alphanumeric data entry using restricted input devices").
• Core Argument for this Ground:
  • Prior Art Mapping: Nguyen provided the base voting system with a keypad-based navigation device. Marshall, which studied user interfaces for restricted input devices, was cited to supply the limitations related to uniquely and geometrically shaped buttons (e.g., triangular arrow keys). Marshall disclosed a navigation keypad with "four geometrically arranged arrow keys for directional navigation (up, down, left and right) with a central select key," which Petitioner asserted was identical to the "preferred key button arrangement" depicted in the ’273 patent.
  • Motivation to Combine: A POSITA would combine Marshall's ergonomic button designs with Nguyen's voting system to improve usability and accessibility. Petitioner argued that using uniquely shaped buttons to allow for tactile differentiation is a well-known design principle, especially beneficial for visually impaired users, which is a target demographic for Nguyen's audio-based system.
  • Expectation of Success: A POSITA would have had a high expectation of success, as modifying button shapes is a simple design choice that predictably enhances user experience without altering the underlying functionality of the voting system.

Ground 3: Claims 17-19 are obvious over Nguyen in view of McDermott.

• Prior Art Relied Upon: Nguyen (Patent 7,128,263) and McDermott (Application # 2002/0072961).

• Core Argument for this Ground:

  • Prior Art Mapping: Nguyen again provided the foundational audio-based voting system. McDermott was introduced to teach the limitations in claims 17-19, which required a "pre-printed ballot" and a "ballot scanning device" for marking and tabulating votes. McDermott disclosed a system where a printer marks a voter's selections on a pre-printed election ballot, which could then be scanned for tabulation.
  • Motivation to Combine: A POSITA would be motivated to integrate McDermott's method of marking pre-printed ballots into Nguyen’s system to create a more robust and efficient voting process. This combination would provide a verifiable paper trail for manual recounts, a significant design incentive in the field of election systems. Furthermore, printing only the selections on a pre-printed form would be faster and consume less ink or toner than printing the entire ballot.
  • Expectation of Success: The combination was argued to be a predictable integration of known technologies. Combining an electronic selection interface with a printer that marks pre-printed forms was a straightforward way to achieve the desired goal of a verifiable and efficient voting system.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Neff (Application # 2002/0078358), such as Neff in view of Marshall (for claims 1-8) and Neff in view of Marshall and McDermott (for claims 9-19), but relied on similar design modification and feature-combination theories.

4. Key Claim Construction Positions

• “push-button switch”: Petitioner proposed this term be construed as "an electrical switch that is activated by pressing," based on its function and an IEEE dictionary definition, as the patent provided no structural details.
• “scroll”/“scrolling”: Petitioner proposed a construction of "move or moving between selection options," based directly on the patent's description of how the up/down and left/right keys allow a voter to move between candidates and contests.
• “auxiliary push-button switches”: Based on the dictionary definition of "auxiliary" as "supplementary," Petitioner argued this term should be construed as "supplementary electrical switches that are activated by pressing."

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: A central contention was that the ’273 patent was not entitled to the earlier filing dates of its parent ’828 patent or ’919 provisional application. Petitioner argued that key limitations of the independent claims—specifically the navigation device with a center push-button switch and surrounding pairs of keys—were not disclosed in the priority documents. Therefore, the patent's effective filing date should be its actual filing date of June 4, 2003, which rendered Nguyen prior art under §102(e).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-19 of Patent 7,753,273 as unpatentable.