IP Law Daily, PATENT—D. Del.: Invention to make casting ballots easier for disabled people is not patent-eligible, (Apr 26, 2023)

By Kevin M. Finson, J.D.

Claims for voting machines that are easier for physically impaired people to use were directed to the abstract idea of allowing voters to have a ballot returned or deposited.

Patent claims for voting machines that did not require the voter to handle a physical ballot were invalid, the federal district court in Wilmington, Delaware, has held. The claims were directed to the abstract idea of reviewing ballots before depositing for counting and lacked an inventive concept. The court granted a motion of invalidity filed by voting machine manufacturer Smartmatic, which had been accused of infringing the patent at issue (Election Systems & Software, LLC v. Smartmatic USA Corp., April 25, 2023, Andrews, R.).

Elections Systems & Software, LLC (ES&S), a seller of voting machines, was the owner of U.S. Patent No. 8,096,471 (the ’471 patent), which was directed to a voting machine that could mark a ballot without the necessity of the voter handling the ballot themselves and present the ballot for review by the voter, who could choose to have it deposited for tabulation or returned to be corrected. ES&S brought suit against Smartmatic USA Corp. a competing seller of voting machines, asserting infringement of the '471 patent as well as other claims subsequently removed from the case. Smartmatic moved for judgment on the pleadings, arguing that the ’471 patent was invalid for being directed at an abstract idea. The court applied the two-step Alice test.

Abstract idea. Smartmatic argued that the patent claims were directed to abstract ideas that humans have performed in elections for hundreds of years: voting, checking accuracy of a ballot, and submitting a ballot. ES&S argued that the claims instead recited a technological solution to an important technical problem: the inability of existing voting machines to fully and privately accommodate voters with disabilities that made it difficult or impossible for them to handle paper ballots themselves. The court held that the claim language was directed to the abstract idea of allowing a voter to have a ballot either deposited or returned, and was drafted broadly in terms of functions, rather than claiming specific technological systems.

Inventive concept. Because the claims were directed to an abstract idea, the court considered whether the claims possessed an inventive concept. ES&S argued for two potential inventive concepts: the ballot handling features which allowed a user to eject or deposit the ballot, and the idea of integrating all of the claim elements into a single machine. The court held that this was merely repetition of the abstract idea, and that the asserted claims simply used well known and conventional devices such as feed rollers and solenoids to carry out the abstract idea.

The case is No. 1:18-cv-01259-RGA.

Attorneys: Patricia S. Rogowski (Rogowski Law, LLC) for Election Systems & Software, LLC. Brian A. Biggs (DLA Piper, LLP) for Smartmatic USA Corp.

Companies: Election Systems & Software, LLC; Smartmatic USA Corp.

Cases: Patent DelawareNews