April 24, 2018

Counting Votes is an Abstract Idea, and Simply Automating the Process Doesn’t Make it Patentable

By Bryan K. Wheelock, Principal

In Voter-Verified, Inc., v. Election Systems & Software LLC, [2017-1930] (April 20, 2018), the Federal Circuit affirmed the district court’s determination that claims of U.S. Reissue Patent RE 40,449 were directed to patent-ineligible subject matter and are thus invalid under 35 U.S.C. § 101.

The Reissue Patent in suit was directed to voting methods and systems that provide for “auto-verification” of a voter’s ballot.  The parties have previously litigated the validity and infringement of the patent prior to Alice v. CLS Bank, and thus a threshold issue was whether Alice was a “substantial change” in the law such that issue preclusion does not apply.

The Federal Circuit held that Alice was not a substantial change in the law (noting that it was a mere application of Mayo), but nonetheless concluded that issue preclusion did not apply because §101 invalidity was never “actually litigated” and, in fact, was “barely considered.”  In any event, the issue of invalidity under §101 was not necessary to the judgment in the first district court action.

Having decided that consideration of §101 was not barred, the Federal Circuit turned to whether the claims of RE 40,449 did in fact claim patentable subject matter.  Election Systems argued that the claims are directed to the abstract idea of “voting and checking the accuracy of a paper election ballot,” which represents only a well-established human activity.  Because the patent only discloses use of general purpose computers, and the invention is essentially automating a fundamental human activity, Election Systems argued that this was insufficient to transform the the claimed abstract idea into patent-eligible subject matter.

The Federal Circuit agreed that the claims were directed to patent ineligible subject matter.  Even though the claims encompassed both methods and systems, the Federal Circuit found no distinction between them for § 101 purposes, as “they simply recite the same concept.”  The Federal Circuit said that the claims as a whole are drawn to the concept of voting, verifying the vote, and submitting the vote for tabulation, and noted that humans have performed this fundamental activity that forms the basis of our democracy for hundreds of years.  The Federal Circuit concluded that these steps were therefore nothing more than abstract ideas.

The Federal Circuit further found that there was no inventive concept in the claims sufficient to transform them into patent-eligible subject matter.  Neither party disputed that the claims recite the use of general purpose computers that carry out the abstract idea, and the case law has consistently held that use of standard components are not sufficient to transform abstract claims into patent-eligible subject matter.