They Should Be Embarrassed

Submitted by patentadmin on Wed, 01/12/2011 - 12:55

“… infringement requires a party to perform … each and every step … of a claimed method … where the actions of multiple parties combine to perform the steps of a claimed method, the claim is directly infringed if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party, i.e. the ‘mastermind’ … instructing users on the use of … [a computer-implemented] method constitute[s] insufficient evidence of control to establish … infringement.” This is WELL ESTABLISHED law.

“[I]n a means-plus-function claim, where the disclosed structure is a general purpose computer programmed to carry out a particular function, the claim is invalid as indefinite if the specification fails to disclose an algorithm for performing the claimed function … in order to avoid a finding of invalidity for indefiniteness, the specification must … disclose an algorithm for performing the claimed function, ‘regardless of [the algorithm’s] simplicity’.” This also is WELL ESTABLISHED law.

Despite MULTIPLE decisions from SEVERAL courts over the past year, REPEATEDLY setting forth this precedential law, some people apparently still have not gotten the message. (Voter Verified, Inc. v. Election Systems & Software, Inc.)

Voter Verified sued Election Systems, alleging willful infringement of two patents. Note the use of italics. The second of these patents was a reissue of the first. Election Systems promptly filed a motion for summary judgment, pointing out inter alia that the first patent had been surrendered as a precondition to the issuance of the reissue patent. “Once a reissue patent has been granted, ‘the original patent cannot be infringed … for the original patent is surrendered’,” ruled the judge, granting Election Systems’ motion.

Voter Verified, aggressive but ill-advised, had moved for a summary judgment that Election Services infringed its patents. Election Systems responded with a cross motion, seeking a summary judgment of noninfringement. It argued that “because no single party performs or controls each step of the claimed methods, the claims cannot be infringed by Election Systems.”

Apparently sensing defeat looming on the horizon, Voter Verified “concede[d] that the method steps at issue are not performed by a single actor, but maintain[ed] that Election Systems exert[ed] sufficient control over the voters’ actions to establish a claim of direct infringement.” Instruction is not control, ruled the judge, granting Election Services’ motion.

As an added fillip, Election Systems sought a ruling that one of the article claims-in-suit was fatally indefinite for failure to disclose an algorithm for performing the vote tabulation function recited in a means-plus-function limitation. The judge granted this motion as well.

Despite the foregoing, other claims remain in suit and the case will go on. We can’t wait to see how it comes out.

THE LESSON TO BE LEARNED: Check the law before proceeding; it may save you a lot of time, money and embarrassment.

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