PTAB

IPR2019-00531

Smartmatic USA Corp v. Election Systems & Software LLC

Title: Ballot Marking Device
Brief Description: The ’471 patent relates to a ballot marking device that uses a touchscreen display to present election and ballot handling choices, receives voter selections, marks a paper ballot accordingly, and then either deposits the marked ballot into an attached box or returns it to the voter.

Prior Art Relied Upon: Johnson (Patent 7,077,314) and Cummings (Application # 2004/0016802).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Johnson disclosed a standalone electronic voting machine that meets most limitations of the independent claims, including a touchscreen, a print mechanism, a transport mechanism, and a mechanism to segregate approved ballots (the alleged "diverter"). Johnson’s machine prints a ballot, presents it for voter confirmation, and then conveys it to a ballot box. However, Johnson does not explicitly teach an option to return the ballot to the voter. Petitioner asserted that Cummings taught this missing element by disclosing a ballot scanning device that, upon detecting an under-vote, provides the voter with options to either discharge the ballot into a ballot box or return it to the voter.
- Motivation to Combine: A POSITA would combine the teachings to provide voters with greater confidence that an incorrectly marked ballot would not be counted. Giving voters the option to have an incorrect ballot returned for inspection or disposal was argued to be a logical and desirable feature.
- Expectation of Success: The proposed modification to Johnson—adding an exit chute and related transport elements as taught by Cummings—involved conventional techniques and would have been a straightforward implementation for a POSITA.

Prior Art Relied Upon: Johnson (Patent 7,077,314), Cummings (Application # 2004/0016802), and Nakada (Application # 2008/0079210).
Core Argument for this Ground:
- Prior Art Mapping: This ground built upon the Johnson and Cummings combination to address claims reciting a passive diverter structure. Petitioner argued that the base combination taught a ballot marking device with selectable deposit or return paths. Nakada was introduced to teach the specific implementation of a passive diverter. Nakada disclosed a stationary "diverting baffle" in a marking machine that permits paper to travel along a normal path in a forward direction but diverts jammed sheets to a purge area when the transport mechanism operates in reverse. Petitioner contended this rendered obvious the claimed passive diverter that a ballot pushes past in one direction and that directs the ballot to an ejection chute in the opposite direction.
- Motivation to Combine: A POSITA would incorporate Nakada’s teachings to implement the ballot routing function using a simple, reliable, and conventional paper handling element. Using a passive baffle was a known technique for creating bi-directional paper paths.
- Expectation of Success: The combination was a simple application of known technologies. Nakada itself stated that bi-directional paper paths with reversible motors and baffles were within the state of the art, ensuring a high expectation of success.

Prior Art Relied Upon: Johnson (Patent 7,077,314), Cummings (Application # 2004/0016802), and Peter, III (Patent 4,333,641).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims reciting a movable, spring-biased diverter. Building on the Johnson and Cummings combination, Petitioner introduced Peter, III to teach this specific mechanical structure. Peter, III, which relates to a duplex printer, disclosed a spring-loaded gate member that allows a sheet to push past it in an upward direction. The gate then springs shut, blocking the sheet from returning along the same path and enabling it to be transported in reverse along a different path. Petitioner argued this directly taught the claimed movable, spring-biased element that projects into the ballot channel.
- Motivation to Combine: A POSITA would look to well-known paper handling technologies to implement the required ballot diversion. The spring-biased gate in Peter, III represented a conventional and proven mechanism for achieving one-way paper passage and routing, making it an obvious choice for implementing the ballot diverter.
- Expectation of Success: Modifying the base voting machine to include a known mechanical component like the spring-biased gate from Peter, III would have been a substitution of known parts to provide a known function, ensuring a high likelihood of success.

"diverter": Petitioner proposed this term be construed as "an element structured to direct the passage of an object between at least two different paths." This construction was based on the term’s plain and ordinary meaning, its use in the context of the ’471 patent’s specification, and its established meaning in prior art related to paper and ballot handling technologies.
"integrated in a single unit": Petitioner proposed this phrase be construed to mean "positioned within a common housing." This construction was argued to be compelled by the prosecution history, where the applicant added this limitation to distinguish over a prior art system that comprised a voting terminal connected to a separate marking device via a flexible cable.

Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 8,096,471 as unpatentable.