Election Systems & Software, LLC

Patent Trials and Appeals Board

Aug 5, 2020

IPR2019-00527 (P.T.A.B. Aug. 5, 2020)

Trials@uspto.gov Paper 32
Tel: 571-272-7822 Date: August 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SMARTMATIC USA CORPORATION,
Petitioner,

v.

ELECTION SYSTEMS AND SOFTWARE, LLC,
Patent Owner.
____________

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____________

Before GEORGIANNA W. BRADEN, JEFFREY W. ABRAHAM, and
SHELDON M. McGEE, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
Granting Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. INTRODUCTION
Smartmatic USA Corporation (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting inter partes review of claims 1–19 of U.S. Patent
No. 7,753,273 B2 (Ex. 1001, “the ’273 patent”). Election Systems and
Software, LLC (“Patent Owner”) filed a Preliminary Response to the
Petition (Paper 10, “Prelim. Resp.”).
On August 8, 2019, we instituted an inter partes review of all of the
challenged claims based on all of the grounds identified in the Petition.
Paper 11 (“Inst. Dec.”). Subsequently, Patent Owner filed a Response
(Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 21) and Patent
Owner filed a Sur-reply (Paper 26).
Patent Owner also filed a Contingent Motion to Amend (Paper 18,
“Motion” or “Mot.”), requesting the Board provide preliminary guidance on
its Motion, and Petitioner filed an Opposition to Patent Owner’s Motion
(Paper 20, “Opp.”). On February 18, 2020, we issued our Preliminary
Guidance on Patent Owner’s Motion to Amend. Paper 23. Patent Owner
subsequently filed a Reply in support of its Motion (Paper 25, “PO Mot.
Reply”) and Petitioner filed a Sur-reply (Paper 30, “Pet. Mot. Sur-reply”) to
Patent Owner’s Reply.
An oral hearing was held on May 6, 2020, and a transcript of the
hearing has been entered into the record. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine Petitioner has shown by a preponderance of the
evidence that claims 1–3, 5–7, 9–11, 13–15, and 17–19, of the ’273 patent
are unpatentable but that Petitioner has not shown that claims 4, 8, 12, and
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16 are unpatentable. We also grant Patent Owner’s Contingent Motion to
Amend.
A. Related Proceedings
The parties indicate that the ’273 patent is at issue in Election Systems
& Software, LLC v. Smartmatic USA Corp., Civil Action No. 1:18-cv-1259-
RGA (D. Del.). Pet. 2; Paper 9, 2.
B. The ’273 Patent
The ’273 patent, titled “Ballot Marking System and Apparatus
Utilizing Multiple Key Switch Voter Interface,” issued on July 13, 2010.
Ex. 1001, codes (45), (54). The ’273 patent is directed to “an improved
voting system which utilizes a voter-readable and machine-readable physical
ballot which can be either hand marked in a voting booth, or electronically
marked at an electronic voting station by means of a touch screen voting
terminal and associated marking device.” Ex. 1001, 2:12–17. One
embodiment of the improved voting system is shown in Figure 19 of
the ’273 patent, reproduced below.

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Figure 19 shows voter assistance terminal 300 comprising ballot
marking device 302, touch-screen voting terminal 304, headphones 310, and
navigation panel 312. Ex. 1001, 13:63–65, 14:25–32. The ’273 patent
explains that a voter has the option of marking a ballot manually or inserting
it into ballot receiving slot 308 for electronic marking. Ex. 1001, 14:8–12.
Terminal 300 draws in the ballot and scans it, and presents a series of voting
choices on touchscreen 304 corresponding to the scanned ballot. Ex. 1001,
14:12–16. The ’273 patent further explains that
in the event that the voter cannot use the touchscreen 304 due to
the severe physical impairment, blindness or any other reason, he
or she can navigate through these menus via a headphone 310
and sub-panel 312 combination. More particularly, a blind voter
(for example) would wear the headphones 310 which are
connected to the marking device 302 via headphone wire 314 and
jack 316 into plug 318.
Ex. 1001, 14:26–32. Sub-panel 312 preferably comprises four arrow keys
(up, down, left, and right) and an enter key. Ex. 1001, 14:37–39. According
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to the ’273 patent, a blind voter can navigate through the voting choices
using these keys in conjunction with pre-recorded, digitized audio prompts
heard through headphones 310. Ex. 1001, 14:41–44. Once the voter has
finished with his or her choices, the printing mechanism marks the ballot
according to the voter’s choices, and feeds the ballot back to the voter
through slot 308. Ex. 1001, 14:55–61.
C. Illustrative Claim
Petitioner challenges claims 1–19 of the ’273 patent. Independent
claim 1 is illustrative of the challenged claims and is reproduced below:
1. A method of voting that allows a voter to navigate a
plurality of contests and a plurality of options associated with
each of said contests, said method comprising:
providing a navigation device comprising a center push
button switch, a first pair of push-button switches positioned
above and below said center push-button switch, and a second
pair of push-button switches positioned left and right of said
center push-button switch;
presenting said contests and said associated options to the
voter, wherein one of said first and second pairs of push button
switches enables the voter to scroll among said contests, and
wherein the other of said first and second pairs of push-button
switches enables the voter to scroll among said options; and
receiving a plurality of voting selections from the voter,
wherein said center push-button switch enables the voter to
make at least one voting selection for each of said contests by
selecting at least one of said options without providing any input
on other of said options.
Ex. 1001, 18:14–33.

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D. Reviewed Challenges to Patentability

Reference(s) 35 U.S.C. § Claims Challenged
Nguyen1 102 1, 4, 9, 12, 13, 16
Nguyen, Marshall2 103 2, 3, 10, 11, 14, 15
Nguyen, McDermott3 103 17–19
Neff4, Nguyen 103 5, 8
Neff, Nguyen, Marshall 103 6, 7
Neff, Marshall 103 1–8
Neff, Marshall, McDermott 103 9–19

E. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art “would
have a Bachelor’s degree in electrical engineering or computer science and
at least two years’ experience with user interface design and voting
systems.” Pet. 10 (citing Ex. 10225 ¶ 63).
Patent Owner argues that the requirement of experience with interface
design in Petitioner’s proposal is “not in line with the requirements of the

1 Nguyen et al., US 7,128,263 B1, issued Oct. 31, 2006 (Ex. 1005).
2 Diarmid Marshall et al., User performance and attitude towards schemes
for alphanumeric data entry using restricted input devices, 3 J. Behaviour &
Information Tech., 20 (2001), 167–188 (Ex. 1006).
3 McDermott et al., US 2002/0072961 A1, published June 13, 2002
(Ex. 1008).
4 Neff et al., US 2002/0078358 A1, published June 20, 2002 (Ex. 1007).
5 Declaration of Benjamin B. Bederson, Ph.D (“the Bederson Declaration”).
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inventions embodied in the Challenged Claims.” PO Resp. 21. Instead,
Patent Owner contends that a person of ordinary skill in the art “would have
at least a Bachelor’s degree in electrical engineering or computer science
and at least two years’ experience with user interfaces and the internal
software and electrical and mechanical mechanisms of electronic voting
machines.” PO Resp. 21.
In its Reply, Petitioner asserts that Patent Owner’s definition is
“inappropriate” because (1) the ’273 patent claims do not involve internal
software or mechanical mechanisms of electronic voting machines, (2)
the ’273 patent is not limited to “electronic voting machines” but instead
claims voting systems, and (3) the ’273 patent claims are related to interface
design, which Patent Owner’s definition omits. Reply 1–2 (citing Ex. 1027,
13:8–15, 20:16–21:1, 25:21–26:13, 26:24–27:9; Ex. 1022 ¶ 63; Ex. 10426
¶¶ 21–23).
In light of the record before us, we adopt Petitioner’s proposed
definition regarding the level of ordinary skill in the art. Petitioner’s
proposal, which includes two years of experience with interface design and
voting systems is sufficiently broad such that it encompasses Patent Owner’s
definition. For example, experience with voting systems in general, as
Petitioner proposes, would include knowledge of the electrical and
mechanical mechanisms of electronic voting machines, as recited in Patent
Owner’s definition. Furthermore, knowledge of user interface designs,
included in Petitioner’s definition, would include knowledge of the internal
software associated with those designs, which Patent Owner includes in its

6 Second Declaration of Benjamin B. Bederson, Ph.D (“the Second Bederson
Declaration”).
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definition. Ex. 1042 ¶ 22. As such, we find that a person meeting
Petitioner’s definition of a person of ordinary skill in the art would also meet
Patent Owner’s definition.
In view of the foregoing, we agree with Petitioner that a person of
ordinary skill in the art would have had a Bachelor’s degree in electrical
engineering or computer science and at least two years of experience with
user interface design and voting systems. This level of skill is consistent
with the field of endeavor of the ’273 patent, and is reflected by the prior art
of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); See, e.g., Ex. 1001;
Ex. 1027, 13:8–15, 20:16–21:1, 25:21–26:13, 26:24–27:9; Ex. 1022 ¶ 63;
Ex. 1042 ¶¶ 21–23. Furthermore, we note that neither party argues that the
outcome of this case would differ based on our adoption of a particular
definition of one of ordinary skill in the art.
II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms according to the
standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed.
Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). Under Phillips, claim
terms are afforded “their ordinary and customary meaning.” Phillips, 415
F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the
meaning that the term would have to a person of ordinary skill in the art in
question at the time of the invention.” Id. at 1313. “Importantly, the person
of ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim in which the disputed term appears, but in the
context of the entire patent, including the specification.” Id.
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Petitioner proposes constructions for four terms: “push-button
switch(es),” “scroll,” “auxiliary push-button switches,” and “remote.”
Pet. 11–12; Reply 8–10.
Patent Owner asserts that we should construe the phrases: “presenting
said contests and said associated options to the voter,” “push-button switches
enables the voter to . . .,” “presenting said contests and said associated
options to the voter, wherein . . ., and wherein . . . ,” and “remote.” PO
Resp. 24–30.
After reviewing the parties’ arguments and evidence, we determine
that we only need to expressly construe the phrase “presenting said contests
and said associated options to the voter, wherein . . ., and wherein . . . .” See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed
that are in controversy, and only to the extent necessary to resolve the
controversy.”)).7
“presenting said contests and said associated
options to the voter, wherein . . ., and wherein . . . ,”
Independent claim 1 recites the following limitation:
presenting said contests and said associated options to the voter,
wherein one of said first and second pairs of push-button
switches enables the voter to scroll among said contests, and
wherein the other of said first and second pairs of push-button
switches enables the voter to scroll among said options.

7 We do not find it necessary to provide an express claim construction of
“remote” beyond what we discuss as part of our patentability analysis set
forth below in Section II.E. The discussion there provides a better context to
explain the dispute relating to this claim term and our resolution of that
dispute.
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Ex. 1001, 18:23–28. Claims 5 and 9 contain similar language, with claim 5
requiring visually presenting the contests and options on a display screen,
and claim 9 requiring audibly presenting the contests and options via
headphones. Ex. 1001, 18:56–62 (claim 5), 19:22–28 (claim 9).
Patent Owner first argues that “presenting said contests and said
associated options” requires “communicating to the voter the name of each
of the contests and an identifier for each of the respective options for which
a vote may be cast in such contests.” PO Resp. 24–25. According to Patent
Owner, the ’273 patent requires contests and options to be communicated to
the voter graphically and/or audibly by naming the contest and options
separately. PO Resp. 24. Patent Owner argues that “presenting” the contest
means more than just displaying the options – it requires explaining what the
contest is. Tr. 26:8–10. Otherwise, the claim language “presenting the
contest” would be superfluous, because it would be met simply by
presenting the options. Tr. 26:17–20.
Patent Owner next argues that the two “wherein” clauses “signify that
the step of presenting contests is performed via scrolling.” PO Resp. 28.
According to Patent Owner, “[t]he direct link between scrolling and
presenting is clear from the syntax,” noting the clauses appear in the same
sub-paragraph and the use of commas to connect the wherein clauses and the
presenting clause instead of semi-colons and paragraph breaks. PO
Resp. 28–29. Patent Owner further argues that “[t]he specification discloses
that the contests and options are visually or audibly presented to the voter as
the voter scrolls among options using the vertical arrow buttons 322, 324
and scrolls among the contests using the horizontal arrow buttons 326, 328.”
PO Resp. 29 (citing Ex. 2001 ¶¶ 99–100). Under Patent Owner’s
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construction, “[w]hen the ballot is presented audibly, a recording of the
name of each contest is played as the voter scrolls through the contests and a
recording of the name of each candidate/option . . . is played as the voter
scrolls among the options for a contest.” Sur-reply 1–2.
Petitioner contends that this clause does not require further
construction, “as its meaning is readily apparent.” Reply 7. Petitioner does
not further expressly dispute Patent Owner’s proposed construction, other
than to argue that it improperly broadens the scope of the claim term because
it eliminates the requirement that one pair of push-button switches enables
the voter to scroll among contests and the other pair of push-button switches
enables the voter to scroll among options. Reply 8. In other words,
Petitioner contends that Patent Owner’s proposed construction allows for the
same pair of push-button switches to enable scrolling among contests and
options. Reply 7–8; Tr. 50:17–51:16.
After considering the parties’ arguments and evidence, we decline to
adopt Patent Owner’s proposed construction for the reasons set forth below.
Instead, we interpret this phrase according to its plain and ordinary meaning
as having three separate requirements, (1) presenting contests and associated
options, (2) one of the first and second pairs of push-button switches enables
the voter to scroll among said contests, and (3) the other of the first and
second pairs of push-button switches enables the voter to scroll among said
options.
We begin with the language of the claim itself. Phillips, 415 F.3d
at 1314 (“[T]he claims themselves provide substantial guidance as to the
meaning of particular claim terms.”). Nothing in the claim expressly
connects the presenting step with scrolling, such that the claim requires the
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contest to be presented as the voter scrolls among the contests, as Patent
Owner contends. Instead, the claim sets forth the step of presenting contests,
and separately recites that one pair of push-button switches enables a voter
to scroll among the contests. The fact that the clauses are part of the same
sub-paragraph and the placement of commas does not justify Patent Owner’s
attempt to introduce a limitation into the claim requiring a “direct link”
between presenting and scrolling. PO Resp. 28.
Patent Owner relies on testimony from Dr. Shamos to support its
argument that its construction corresponds to the disclosure in the ’273
patent. PO Resp. 29 (citing Ex. 2001 ¶¶ 99–100). According to Dr.
Shamos, “[w]hen the headphones 310 are used instead, scrolling with the
horizontal arrow buttons 326, 328 causes the voter assistance terminal 300 to
play pre-recorded audio with the name of the contest. [Ex. 1001,] 14:41–
44.” Ex. 2001 ¶ 99. The cited portion of the ’273 patent specification states
that a visually impaired voter can “navigate[] through the menus using these
keys in conjunction with pre-recorded, digitized audio prompts heard
through headphones 310.” Ex. 1001, 14:41–44. This portion of the ’273
patent specification does not establish the “direct link” between presenting
and scrolling such that scrolling through the contests necessarily causes the
system to audibly present the name of a contest. Rather, this language
generally discloses that a visually impaired voter can vote use push-buttons
and audio prompts.
Patent Owner also directs us to the portion of the ’273 patent
specification stating “the left 326 and right key buttons 328 allow the voter
to scroll between contests or races such that the previous or next screen is
displayed and/or heard on a real-time basis.” Ex. 1001, 17:2–4; PO
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Resp. 24. Although the disclosure of hearing the content “on a real-time
basis” is consistent with Patent Owner’s proposed construction, it is clear
from the ’273 patent specification that this is a characteristic of a “sample
election selection process,” as opposed to a requirement of the present
invention itself. Ex. 1001, 16:60–17:4. Patent Owner has not directed us to
evidence sufficient to indicate that this disclosure is anything other than one
exemplary way to allow a voter to navigate the voting process “using the key
buttons in combination with the digitized audio voting sequence heard
through the headphones.” See Ex. 1001, 16:32–36; Texas Digital Sys., Inc.,
v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002) (noting that Federal
Circuit precedent “counsels against importing limitations into the claims”).
Based on the language of the claim itself, and in the absence of any
contradictory intrinsic evidence, we interpret the phrase “presenting said
contests and said associated options to the voter, wherein one of said first
and second pairs of push-button switches enables the voter to scroll among
said contests, and wherein the other of said first and second pairs of push-
button switches enables the voter to scroll among said options” as having
three separate requirements: (1) presenting contests and associated options,
(2) one of the first and second pairs of push-button switches enables the
voter to scroll among said contests, and (3) the other of the first and second
pairs of push-button switches enables the voter to scroll among said options.
B. Principles of Law
1. Burden of Proving Unpatentability
In an inter partes review, the petitioner bears the burden of proving
unpatentability of the challenged claims, and the burden of persuasion never
shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
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800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
Petitioner must support its challenges by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
and conclusions are based on a preponderance of the evidence.
2. Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior
invention, the prior art reference—in order to anticipate under 35 U.S.C.
§ 102—must not only disclose all elements of the claim within the four
corners of the document, but must also disclose those elements ‘arranged as
in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008). Whether a reference anticipates is assessed from the
perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total
Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive
question regarding anticipation [i]s whether one skilled in the art would
reasonably understand or infer from the [prior art reference’s] teaching that
every claim element was disclosed in that single reference.”). In that regard,
in an anticipation analysis, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d
825, 826–27 (CCPA 1968). Furthermore, “[i]t is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997).
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3. Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are such that
the subject matter, as a whole, would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of skill in the art; and (4) objective evidence of
nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
“[A] a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important
to identify a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does.” Id. Furthermore, a party seeking to demonstrate that a
patent would have been obvious must show that “a skilled artisan would
have been motivated to combine the teachings of the prior art references to
achieve the claimed invention, and that the skilled artisan would have had a
reasonable expectation of success in doing so.” Kinetic Concepts, Inc. v.
Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (quoting
Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 994 (Fed.

8 The parties do not present any evidence regarding objective indicia of
nonobviousness, and, therefore, we do not address this factual determination
in our obviousness analyses below.
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Cir. 2009)). Ultimately, “there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR,
550 U.S. at 418).
C. Overview of Asserted References
1. Nguyen (Ex. 1005)
Nguyen relates to “[a] system and method for providing users with
visual, English language comprehension, cognitive, or other limitations an
intuitive audio interface and navigation method for use in automated
systems.” Ex. 1005, Abstract. Nguyen indicates that a “particularly useful
application of the system is for voting systems whereby users listen to
instructions and ballot choices via a telephonic device and use a standard
12-key telephone touchpad to enter selections.” Ex. 1005, Abstract.
Nguyen attempts to address “the basic need for citizens with certain
conditions such as blindness, visual impairments, cognitive disabilities,
illiteracy, and other language-comprehension difficulties . . . to cast their
own ballots privately and independently.” Ex. 1005, 3:25–33. It also
provides voters “the opportunity to preview the actual ballot and practice
casting votes in the identical manner in which the actual voting will be
conducted.” Ex. 1005, 3:38–41.
Nguyen discloses the use of a standard 12-key telephone touchpad9 as
a preferred input device that allows a user to navigate a voting system.

9 Nguyen also refers to this as a “12-button telephone keypad.” Ex. 1005,
12:14–17. We use the terms “12-button telephone keypad” and “12-key
telephone touchpad” interchangeably in this Final Written Decision.
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Ex. 1005, 12:9–10. The 12-key touchpad is shown in Nguyen’s Figure 7,
reproduced below.

Figure 7 is “a graphical representation of the interface keypad of the
preferred embodiment of the input device, illustrating the position of two
special-purpose groups of keys on a standard telephone.” Ex. 1005, 4:64–
67. As shown in the figure, these two groups are the “five-key navigation
group 67” and the “special command group 69.” Ex. 1005, 12:16–20.
According to Nguyen, the five-key navigation group is designed such that
the ‘4’ and ‘6’ keys are used to navigate within a single level (for
example, within the contest for President, the ‘4’ and ‘6’ keys are
used to scroll through all the candidates for President). The ‘4’
key is used to go to the previous candidate; the ‘6’ key is used to
go to the next candidate; and the ‘5’ key is used to select and
deselect a candidate.
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In a similarly intuitive manner, the ‘2’ and ‘8’ keys are
used to navigate through different levels (for example, to
navigate from the contest for President to the contest for Senator
to the contest for Representative, and vice versa). The ‘2’ key is
used to go to the previous contest and the ‘8’ key is used to go to
the next contest.
Ex. 1005, 12:27–41.
2. Marshall (Ex. 1006)
Marshall investigated the usability of different data input schemes for
entering alphanumeric data on television screens. Ex. 1006, 167. According
to Marshall,
[w]hile the assumption must be that the keyboard is generally the
most useful device for alphanumeric data entry, there are many
situations in which either a full keyboard is not available or its
use is not convenient so that a more restricted device such as a
hand-held remote control unit must be considered.
Ex. 1006, 167.
In its two trials, Marshall used a keyboard with a standard QWERTY
layout, and a television remote control having the layout depicted in Figure
2, reproduced below. Ex. 1006, 168–169.
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Figure 2 of Marshall shows a television remote control having a standard
telephone keypad layout and a navigation keypad consisting of four
geometrically arranged arrow keys for directional navigation and a central
select key. Ex. 1006, 168–169.
Marshall’s first study compared different graphical user interface/data
input schemes for the entry of alphanumeric data using only the four
navigation keys and the select key on the remote control unit. Ex. 1006,
170–171 (depicting the different graphical user interface/data entry schemes
in Figures 4–9). In the second study, the user could utilize the alphanumeric
keypad on the remote control, and a QWERTY keyboard was used as a
control. Ex. 1006, 169.
Marshall concluded that “if a keyboard is available, it should be used”
for the entry of simple alphanumeric data. Ex. 1006, 185. Marshall also
concluded that if “a keyboard is not available, the choice of data entry
scheme is less clear cut. When only a very limited range of input keys is
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available, (such as the navigation keys on the television remote control unit),
grid displays are preferred to others, particularly those with a familiar
layout.” Ex. 1006, 185.
3. McDermott (Ex. 1008)
McDermott discloses a voting system comprising “a computer-
prepared and computer-printed election ballot generated by input from the
voter.” Ex. 1008, Abstract. McDermott’s system provides the voter the
opportunity to inspect the ballot to verify that the ballot correctly recorded
his or her votes, and allows for correction of votes if the ballot does not
contain the voter’s intended selections. Ex. 1008 ¶ 6. McDermott states that
the “printed ballot may be produced by the printer by printing the votes of
the voter on a pre-printed election ballot, or by printing the votes of the voter
concurrently with the printing of the election ballot on the same paper as the
election ballot is printed.” Ex. 1008 ¶ 12.
4. Neff (Ex. 1007)
Neff is directed to an electronic voting system that helps to ensure
voter intent is accurately represented in voted ballots. Ex. 1007 ¶ 24. The
system includes a digital user interface (e.g., vote clients 134) used by
authorized voters to generate voted ballots. Ex. 1007 ¶¶ 24, 28. Neff states
that “[i]n some embodiments, the facility presents these displays on a touch-
screen monitor so that the voter can select a point on the display by touching
a corresponding point on the monitor.” Ex. 1007 ¶ 41. Neff’s system may
also include safeguards against ballot tampering after ballots are voted. Ex.
1007 ¶ 26.
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D. Claims 1, 4, 9, 12, 13, and 16 – Alleged Anticipation by Nguyen
Petitioner contends claims 1, 4, 9, 12, 13, and 16 are unpatentable as
anticipated by Nguyen. Pet. 13–35; Reply 11–17. Petitioner directs us to
portions of Nguyen that purportedly disclose all the limitations in the
challenged claims. Petitioner also relies on the Declaration of Dr. Bederson
to support its arguments.
1. Claim 1
With regard to claim 1, Petitioner asserts that “Nguyen discloses a
user module 40 for voting that includes an input device 64 that preferably
may be a 12-button input device which includes ‘a five-key navigation
group’ and ‘a three-key special command group.’” Pet. 14 (citing Ex. 1005,
7:19–26, 12:16–19, Figures 1, 3, 7). According to Petitioner, Nguyen
discloses that voters listen to instructions from an audio file and use the
input device to choose candidates within a particular contest. Pet. 14.
Petitioner thus argues that Nguyen discloses “[a] method of voting that
allows a voter to navigate a plurality of contests and a plurality of options
associated with each of said contests,” as recited in claim 1. Pet. 14.
Claim 1 further requires “providing a navigation device comprising a
center push-button switch, a first pair of push-button switches positioned
above and below said center push-button switch, and a second pair of push-
button switches positioned left and right of said center push-button switch.”
Ex. 1001, 18:17–22. For this limitation, Petitioner contends Nguyen’s 12-
key touchpad is a navigation device, and provides an annotated version of
the touchpad depicted in Nguyen Figure 7, which is reproduced below from
the Petition. Pet. 16–17.
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Nguyen’s Figure 7 shows the standard 12-key touchpad configuration of a
telephone, which includes five-key navigation group 67 (keys 2, 4, 5, 6,
and 8) and three-key special command group 69 (keys *, 0, and #).
Ex. 1005, 12:16–19, Fig. 7. Petitioner annotates Figure 7 to demonstrate
specifically how, within the “five-key navigation group” of the 12-button
keypad, the “5” key corresponds to the recited center push-button switch,
the “2” and “8” keys correspond to the recited first pair of push-button
switches positioned above and below the center push-button switch, and
the “4” and “6” keys correspond to the recited second pair of push-button
switches positioned to the left and right of the center switch. Pet. 16–17.
Claim 1 further requires “presenting said contests and said associated
options to the voter, wherein one of said first and second pairs of push-
button switches enables the voter to scroll among said contests, and wherein
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the other of said first and second pairs of push-button switches enables the
voter to scroll among said options.” Ex. 1001, 18:23–28.
Petitioner argues that Nguyen provides a user with instructions on
how to use the buttons on the keypad to navigate through the various
contests and voting options. Pet. 18–20 (citing Ex. 1005, 12:27–59, Fig. 8;
Ex. 1022 ¶¶ 82, 83). In particular, Petitioner directs us Nguyen’s disclosure
that audio file 12b includes instructions regarding using the “5” key to vote
for a particular candidate, the “4” or “6” keys to hear the previous or next
candidate, or the “2” or “8” keys to go to the previous or next contest.
Pet. 18. Based on this, Petitioner argues that Nguyen teaches that one of
first and second pairs of push-button switches enables the voter to scroll
among said contests, and the other of said first and second pairs of push-
button switches enables the voter to scroll among said options, as claim 1
requires.
With regard to presenting the names of contests and the names of
options to the voter, Petitioner again directs us to Nguyen’s disclosure of
audio files 12b, which “comprise all of the text that will be needed for all
possible voting scenarios, based in part upon the customer-provided
information 30.” Reply 14 (citing Ex. 1005, 7:13–16) (emphasis omitted);
Pet. 18. Petitioner notes that the customer-provided information for audio
file 12b includes information about the voting contests and options.
Reply 11–12 (citing Ex. 1005, 6:54–67). Petitioner also directs us to
Nguyen’s disclosure that “audio file 12b might state: ‘ YOU ARE MAKING
YOUR SELECTIONS FOR CITY COUNCIL’” as an example of Nguyen
presenting a contest, and Nguyen’s disclosure that “audio file 12b might
state: JOHN DOE, REPULICAN PARTY, IF YOU WOULD LIKE TO
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SELECT THIS CANDIDATE, PRESS “5”.’” as an example of Nguyen
presenting an option. Reply 14; Pet. 18 (citing Ex. 1005, 12:47–49, 13:13–
15).
Petitioner further argues that Nguyen teaches pressing the center “5”
key to select or deselect the “current” candidate being announced in the
audio file. Pet. 20–22 (citing Ex. 1005, 12:47–53, Fig. 8; Ex. 1022 ¶¶ 84–
86). Relying on Figure 8 of Nguyen, Petitioner argues that the selection (or
deselection) applies to only the candidate being announced at that time, and
to no others in the contest. Pet. 20–22. Petitioner thus argues that Nguyen
discloses “receiving a plurality of voting selections from the voter, wherein
said center push-button switch enables the voter to make at least one voting
selection for each of said contests by selecting at least one of said options
without providing any input on other of said options,” as claim 1 requires.
Ex. 1001, 18:29–33.
Patent Owner argues that Nguyen does not anticipate claim 1 because
it does not disclose “presenting said contests . . . to the voter, wherein one of
said first and second pairs of push-button switches enables the voter to scroll
among said contests.” PO Resp. 31. Patent Owner contends that this
limitation requires “communicating the names of the contests while moving
consecutively among the contests via a pair of push-button switches” (PO
Resp. 31), and that Nguyen is “devoid of any disclosure of communicating
the names of the contest responsive to using ‘2’ or ‘8’ keys to move among
the contests” (PO Resp. 32). Patent Owner argues that Nguyen teaches
playing a candidate’s name, i.e., presenting a voting option, not a voting
contest, after the 2 and 8 keys are used to move to another contest. PO Resp.
31–32 (citing Ex. 1005, Fig. 8).
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Patent Owner also argues that Petitioner’s reliance on audio file 12b is
misplaced because the portion of Nguyen Petitioner relies upon involves
instances where a user inputs an invalid key, as opposed to instances when a
user uses push-button switches to scroll among the voting contests. Sur-
reply 9–10. According to Patent Owner, to the extent this portion of Nguyen
discloses presenting a contest, it still fails to disclose the “presenting”
limitation because there is no disclosure of communicating the name of a
contest as the voter scrolls among the contests using a pair of push-button
switches, as required according to Patent Owner’s interpretation of claim 1.
Sur-reply 9–10.
Patent Owner does not challenge Petitioner’s arguments and evidence
regarding Nguyen’s disclosure of the remaining limitations of claim 1.
Nonetheless, the burden remains on Petitioner to demonstrate
unpatentability. See Dynamic Drinkware, 800 F.3d at 1378.
After considering the totality of the record after trial, we agree with
Petitioner’s arguments and find the evidence demonstrates Nguyen discloses
the limitations of claim 1. As Petitioner points out, and Patent Owner does
not dispute, Nguyen discloses a method for voting that includes user module
40 having input device 64 that allows users to navigate voting contests and
voting options associated with those contests. Ex. 1005, 1:13–21, 7:19–26,
12:9–59, Figs. 3, 8. Nguyen also discloses that its navigation device
preferably has a standard 12-button telephone touchpad, divided into a five-
key navigation group and three-key special command group. Ex. 1005,
12:9–19, Fig. 7. Nguyen further explains that in one embodiment, the five-
key navigation group is configured such that the 4 and 6 keys are used to
scroll through candidates (i.e., options) for a contest, the 2 and 8 keys are
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used to scroll through different contests, and the 5 key is used to select and
deselect candidates. Ex. 1005, 12:27–41. These buttons of Nguyen’s
navigation device correspond to the center push-button switch and the first
and second pairs of push-button switches recited in claim 1. Nguyen also
discloses that audio file 12b contains instructions regarding how to use the
five-key navigation system to scroll through the available contests and
associated options, and select candidates. Ex. 1005, 12:42–59.
Patent Owner’s argument that Nguyen does not disclose “presenting
said contests and said associated options to the voter, wherein one of said
first and second pairs of push-button switches enables the voter to scroll
among said contests, and wherein the other of said first and second pairs of
push-button switches enables the voter to scroll among said options”
(Ex. 1001, 18:23–28), is based on its proposed construction of the phrase,
which we decline to adopt. Instead, we interpret this phrase as having three
separate requirements: (1) presenting contests and associated options, (2)
one of the first and second pairs of push-button switches enables the voter to
scroll among said contests, and (3) the other of the first and second pairs of
push-button switches enables the voter to scroll among said options.
Nguyen discloses at least one example of audibly presenting the name
of a contest, “YOU ARE MAKING YOUR SELECTIONS FOR CITY
COUNCIL” (Ex. 1005, 13:14–15) and audibly presenting the name of voting
options, “JOHN DOE, REPUBLICAN PARTY” (Ex. 1005, 12:47–48).
Nguyen further discloses that audio file 12b contains “all of the text that will
be needed for all possible voting scenarios,” including all of the information
about voting contests and options and instructions to assist the user in
navigating the voting choices. Ex. 1005, 6:54–67, 7:13–16, 12:42–59.
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Thus, the evidence of record supports a finding that Nguyen discloses
“presenting said contests and said associated options to the voter,” as claim 1
requires. Additionally, we find Nguyen discloses that one pair of push-
button switches on its five-key navigation pad (push-buttons 2 and 8) allows
a user to scroll among contests and the other pair of push-button switches on
its five-key navigation pad (push-buttons 4 and 6) allows a user to scroll
among options, as claim 1 requires. Ex. 1005, 12:19–41.
Based on the foregoing, we determine Petitioner has demonstrated by
a preponderance of evidence that Nguyen discloses all of the limitations of
claim 1.
2. Claim 9
Claim 9 contains limitations similar to those in claim 1, but also
requires providing a pair of headphones and audibly presenting the contests
and options to the voter. Ex. 1001, 19:13–33. Petitioner points out that
Nguyen discloses receiver 62 of module 40 can be a set of headphones, and
states that “[t]he first contest is automatically provided and the script from
the audio file 12b according to that candidate is played for the voter through
the receiver 62 (or headphones connected to a personal digital audio
player).” Ex. 1005, 7:19–27, 12:43–47, Fig. 3; Pet. 25. For the common
limitations between claims 1 and 9, Petitioner refers back to its arguments
presented with respect to claim 1. Pet. 24–27.
Patent Owner relies on the same arguments for claim 9 as it did for
claim 1, namely that Nguyen fails to disclose “presenting said contests and
said associated options to the voter, wherein one of said first and second
pairs of push-button switches enables the voter to scroll among said contests,
and wherein the other of said first and second pairs of push-button switches
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enables the voter to scroll among said options.” PO Resp. 28, 31–33. Patent
Owner’s arguments are no more persuasive here than they were when
considered in connection with claim 1.
After reviewing the evidence developed during the trial, we agree
with Petitioner’s arguments and find the evidence demonstrates that Nguyen
discloses all of the limitations of claim 9. To the extent claim 9 contains
limitations similar to those in claim 1, we find Nguyen discloses those
limitations for the same reasons discussed above in connection with claim 1.
Additionally, we agree with Petitioner that Nguyen discloses providing
headphones and audibly providing contests and options to the user via the
headphones. Ex. 1005, 7:19–27, 12:43–47.
Based on the foregoing, we determine Petitioner has demonstrated by
a preponderance of evidence that Nguyen discloses all of the limitations of
claim 9.
3. Claim 13
Claim 13 recites a voting system comprising a ballot marking device.
Ex. 1001, 20:1–2. For this limitation, Petitioner directs us to Nguyen’s
disclosure of a voting system that includes a printer used to “print a paper
ballot that contains the user’s selections.” Pet. 31–32 (citing Ex. 1005,
1:13–21, 7:39–45).
Claim 13 further requires “one or both of a display screen and a set of
headphones in communication with said ballot marking device and
configured to present a plurality of contests and a plurality of options
associated with each of said contests.” Ex. 1001, 20:3–7. With regard to the
headphones limitation, similar to the arguments it presented for claim 9,
Petitioner points out that Nguyen states the “[t]he first contest is
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automatically provided and the script from the audio file 12b according to
that candidate is played for the voter through the receiver 62 (or headphones
connected to a personal digital audio player).” Ex. 1005, 7:19–27, 12:43–
47, Fig. 3; Pet. 32–33. With regard to presenting contests and options,
Petitioner again relies on Nguyen’s disclosures regarding audio file 12b,
including the specific examples of stating contest and candidate names, as
discussed above in connection with claim 1. Pet. 32–33; Reply 12–15.
Claim 13 additionally requires:
a navigation device in communication with said ballot marking
device and having a center push-button switch, a first pair of
push-button switches positioned above and below said center
push-button switch, and a second pair of push-button switches
positioned left and right of said center push-button switch,
wherein said navigation device is configured such that one of
said first and second pairs of push-button switches enables
scrolling among said contests, wherein the other of said first and
second pairs of push-button switches enables scrolling among
said options; and wherein said center push-button switch enables
the entry of at least one voting selection for each of said contests
by selecting at least one of said without providing any input on
other of said options.
Ex. 1001, 20:8–22.
These limitations of claim 13 are similar to the navigation device
configuration limitations present in claim 1, and Petitioner relies on the same
arguments and evidence here as it did for the corresponding limitations in
claim 1. Pet. 33. Petitioner further asserts that Figure 3 of Nguyen shows
the 12-button keypad, part of the navigation device, in communication with
the printer, the ballot marking device, as claim 13 requires. Pet. 33–34.
Patent Owner relies on the same arguments for claim 13 as it did for
claims 1 and 9, namely that Nguyen fails to disclose “presenting said
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contests and said associated options to the voter, wherein one of said first
and second pairs of push-button switches enables the voter to scroll among
said contests, and wherein the other of said first and second pairs of push-
button switches enables the voter to scroll among said options.” PO
Resp. 28, 31–33. Patent Owner’s arguments are no more persuasive here
than they were when considered in connection with claim 1 and claim 9.
After reviewing the evidence developed during the trial, we agree
with Petitioner’s arguments and find the evidence demonstrates that Nguyen
discloses all of the limitations of claim 13. To the extent claim 13 contains
limitations similar to those in claims 1 and 9, we find Nguyen discloses
those limitations for the same reasons discussed above in connection with
claims 1 and 9. Additionally, we agree with Petitioner that Nguyen
discloses a voting system having a ballot marking device (printer 66), and a
navigation device (the 12-key telephone touchpad) in communication with
the ballot marking device. Ex. 1005, 7:19–27, 12:43–47, Fig. 3.
Based on the foregoing, we determine Petitioner has demonstrated by
a preponderance of evidence that Nguyen discloses all of the limitations of
claim 13.
E. Dependent Claims 4, 12, and 16 – Alleged Anticipation by Nguyen
Claims 4, 12, and 16, which depend from claims 1, 9, and 13,
respectively, each require the navigation device to include “one or more
auxiliary push-button switches located remote from said first and second
pairs of push-button switches and said center push-button switch.”
Ex. 1001, 18:42–45 (claim 4), 19:43–46 (claim 12), 20:31–34 (claim 16).
Petitioner did not provide an express construction of “remote” in the
Petition, and Patent Owner did not address the construction of this term in its
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Preliminary Response. In our Institution Decision, we invited and
encouraged the parties to construe this claim term. Inst. Dec. 15.
In its Response, Patent Owner argues that the proper construction of
“remote” is “separated by a space greater than usual.” PO Resp. 30. Patent
Owner derives its proposed construction from one definition of “remote” in
the Merriam-Webster dictionary. PO Resp. 30; Ex. 2002, 989. According to
Patent Owner,
As used in the claims, “remote” [or “located remote”]
describes the amount of space between the auxiliary push-button
switches and the five-key grouping of other push-button switches
(i.e., center and first/second pairs). [Ex. 2001] ¶ 104. Here, the
“usual” spacing is determined in reference to the spacing
between the push-button switches of the entire five-key
grouping. Id. at ¶¶ 104–105.
PO Resp. 30.
In its Reply, Petitioner argues that Patent Owner’s construction is not
appropriate because it is unclear what “usual” means since the spacing
between the push-button switches of the five-key grouping varies, and
because substituting Patent Owner’s proposed construction into the claims
results in a grammatically incorrect and confusing limitation. Reply 8–10.
Petitioner contends that the dictionary Patent Owner relies upon provides a
better definition of “remote,” which is “out of the way.” Reply 10;
Ex. 2002, 989. Petitioner argues that this is the proper construction because
when you replace “remote” with “out of the way,” the “readability and scope
of the claim limitation is maintained.” Reply 10.
Patent Owner contends that Petitioner’s construction “does not
capture the plain and ordinary meaning of [‘remote’] and introduces
ambiguities into the claim.” Sur-reply 8. In particular, Patent Owner
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notes that Petitioner does not explain what “out of the way” means and
does not provide a way to determine the scope of its proposed
definition. Sur-reply 8.
Although the parties present separate constructions, both parties
contend that the outcome here would be the same under either party’s
construction. See Reply 17; Sur-reply 10. Petitioner argues that the “three-
key special command group” in Nguyen corresponds to the auxiliary push-
button switches, and is located remote from the other push-button switches
under its proposed construction because the buttons in the command group
are “out of the way” from the first and second pairs of push-button switches
(2, 4, 6, 8) and center push-button switch (5) in Nguyen. Pet. 22–23
(referring to annotated Fig. 7, reproduced above); Reply 17 (citing Ex. 1042
¶¶ 47–49). Petitioner contends Nguyen discloses remote auxiliary push-
button switches under Patent Owner’s construction as well, because
As depicted in Nguyen’s Fig. 7, the “Special Command Group
69” is separated from the “Five-Key Navigation Group 67” by a
space greater than the space separating the buttons in the “Five-
Key Navigation Group 67” (e.g., the space between “*” button
and the “4” button is greater than the space between the “4” and
“5” buttons).
Reply 17 (citing Ex. 1042 ¶ 50).
Patent Owner argues that the three-key special command group does
not satisfy the auxiliary push-button limitation because it is not “located
remote” from the other push-button switches in the standard 12-key
telephone touchpad layout used in Nguyen under either party’s proposed
construction. PO Resp. 34; Sur-reply 10–12. Patent Owner contends that
“the three-key special command group 69 is organized in the very same
‘standard 12-button telephone keypad’ with the five-key navigation group
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67,” and all the keys in the 12-key telephone touchpad are “set at a uniform
spacing.” PO Resp. 34–35; see also Sur-reply 11 (arguing that the five-key
navigation group and special command group are “part of an equidistant
pattern of buttons”). Patent Owner thus concludes that “the special
command group 69 is not ‘remote’ from the five-key navigation group 67
because its keys are not spaced from the five-key navigation group by a
distance greater than usual.” PO Resp. 35. Patent Owner also argues the
special command group buttons are not “out of the way” of the five-key
navigation group because they are “immediately adjacent” to the five key
navigation group, and are “just one row (i.e., the bottom row) within the
same pattern of buttons on the 12-button telephone keypad.” Sur-reply 12.
We agree with Patent Owner that Nguyen’s three key special
command is not “located remote” from the five-key navigation group under
either party’s construction of that term.10 Nguyen’s five-key navigation
group and three-key special command group are part of the same standard
telephone key pad. Ex. 1005, 12:16–19, Fig. 7. Based on Nguyen’s
Figure 7, we agree with Patent Owner that all the keys in the 12-button
telephone keypad are “set at a uniform spacing” and are “part of an
equidistant pattern of buttons.” PO Resp. 34–35; Sur-reply 11. Because
Petitioner relies on keys from the same keypad to satisfy the “located
remote” limitation, and all of the keys in the 12-button keypad in Nguyen’s
Figure 7 are spaced uniformly and in an equidistant pattern, we do not agree
that the keys in the special command group are separated by a space greater
than usual, as compared to the spacing of the other keys in the keypad.

10 In view of this, we decline to expressly construe “remote” or adopt one
party’s proposed construction over the other party’s construction.
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Furthermore, we do not agree that a person of ordinary skill in the art
would have considered the three keys in the special command group, which
are part of the same keypad as the five-key navigation group, to be “out of
the way” of the five-key navigation group. As Patent Owner points out, the
three-key special command group is immediately adjacent to the five key
navigation group, and are “just one row” below the five-key navigation
group within the same 12-button telephone keypad. Sur-reply 12. Petitioner
fails to present evidence sufficient to demonstrate why a person of ordinary
skill in the art would have considered adjacent keys within a single keypad
of uniformly-spaced keys to be “out of the way.” Instead, Petitioner simply
concludes that the special command group keys are “out of the way.” Reply
17. Dr. Bederson’s declaration, which Petitioner cites in support of its
conclusion, merely parrots the language in the Petition. Ex. 1042 ¶¶ 47–49.
Such conclusory statements, absent sufficient support, are entitled to little or
no weight. 37 C.F.R. §42.65(a).
We credit Dr. Shamos’s testimony that “remoteness is important so
that the voter does not confuse the auxiliary push-button switches with those
in the five-key grouping and so might push a button inadvertently.”
Ex. 2001 ¶ 104; see also Ex. 1027, 32:25–33:6 (Dr. Shamos testifying at his
deposition that “If you have a bunch of keys . . . that I’m manipulating, and I
have a different set that perform totally different functions, you don’t want
them close by. Because if I’m off by one row, I’ll end up inadvertently
pushing a button I shouldn’t be pushing”); Sur-reply 11–12.
We further note the distinction between Nguyen’s 12-button telephone
keypad and what the parties consider to be a depiction of remote auxiliary
push-button switches in the ’273 patent. Other than its use in the claims, the
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term “remote” does not appear in the ’273 patent. According to the parties,
however, Figures 19 and 20 of the ’273 patent provide some guidance on the
meaning of this term. Tr. 8:17–9:2 (counsel for Petitioner referring to
Figure 19 when discussing the meaning of the term “remote”); Tr. 31:3–12
(counsel for Patent Owner referring to Figure 20 when discussing the
meaning of “remote”).
Figures 19 and 20 of the ’273 patent are reproduced below.

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Figure 19 shows a perspective view of one embodiment of voter
assistance terminal 300. Ex. 1001, 3:53–56. Figure 20 shows voter
assistance terminal 300 of Figure 19 in its closed or transport state.
Ex. 1001, 3:57–58, 14:62–63. As shown in these figures, voter assistance
terminal 300 includes ballot marking device 302, touchscreen or voting
terminal 304, and ballot receiving slot 308. Ex. 1001, 13:63–65, 14:8–11.
Voting terminal 300 also includes sub-panel 312, comprising four arrow
keys and an enter key, which a user can use to navigate through voting
menus, and additional sub-panel 348 (shown in Figure 19 and labeled in
Figure 20). Ex. 1001, 14:25–44, 15:4–11. The ’273 patent teaches that
“additional sub-panel 348” can be “an additional sub-panel utilizing a key
configuration.” Ex. 1001, 15:4–11. As shown in Figures 19 and 20, sub-
panel 312 and additional sub-panel 348 are separated by a distance equal to
the width of touchscreen 304 or protective cover 338.
Consistent with this description of the figures, during the oral hearing
counsel for Patent Owner argued that “remote” in the context of the ’273
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patent is illustrated by the distance between the “additional buttons indicated
by the reference number 348” on the “panel on the lefthand side of the
console” in Figure 20 and the “four directional arrows with the select button
in the middle on the righthand side of the console.” Tr. 30:19–31–12.
Counsel for Patent Owner further noted that this distance, which is large
enough to “slide a ballot in the space between . . . those buttons,” is greater
than the usual spacing between the direction buttons and the select button in
the navigational pad used for scrolling on the righthand side of the console.
Tr. 31:1–12. Counsel for Petitioner agreed that the console depicted in
Figure 19, which is the same console as the one shown in Figure 20, shows
“something that appears to be either out of the way and/or at a greater than
usual distance.” Tr. 8:17–9:2 (stating “I think it’s figure 19 they show some
buttons that are over on I believe the left side of the housing”).
The distinction between push-button switches that “appear[ ] to be
either out of the way and/or at a greater than usual distance” as depicted in
the ’273 patent, and Nguyen’s three-key special command group is clear.
Unlike the spatial relationship between Nguyen’s three-key special
command group and five-key navigation group, the buttons in “additional
keypad 348” are not part of the same keypad as the direction buttons and the
select button of the navigation device. Instead, the two keypads are
positioned on separate consoles of voting machine 300 and are separated by
a distance equal to the width of touchscreen 304, protective cover 338, or
ballot 306.
Both Dr. Shamos’s testimony and the depiction of remote in the
figures of the ’273 patent weigh against Petitioner’s arguments that buttons
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from the same uniformly spaced telephone keypad constitute “remote” push-
buttons under either party’s construction.
For all of the foregoing reasons, we find Petitioner has not shown, by
a preponderance of evidence, that any push-button in Nguyen’s three-key
special command group constitutes “one or more auxiliary push-button
switches located remote from said first and second pairs of push-button
switches and said center push-button switch,” as claims 4, 12, and 16
require.
Alternatively, Petitioner argues that keypad 59 of Nguyen can act as
an input device, and also corresponds to the recited auxiliary push-button
switches. Pet. 23. Patent Owner argues that keypad 59 is not part of the
claimed navigation device because it is used only by an election official
prior to voting, and not used by a voter. PO Resp. 34–36. Petitioner did not
respond to Patent Owner’s arguments regarding keypad 59 in its Reply.
We agree with Patent Owner’s arguments regarding keypad 59.
Based on Nguyen’s disclosure, it appears that keypad 59, although it is an
input device, is not used by a voter to navigate through the different voting
contests and associated options. Instead, an election official uses the keypad
to configure a processing unit prior to voting. Ex. 1005, 7:51–52. As such,
keypad 59 does not constitute “one or more auxiliary push-button switches”
of the navigation device as claims 4, 12, and 16 require.
In view of the foregoing, we find Petitioner has failed to demonstrate
sufficiently that Nguyen discloses “one or more auxiliary push-button
switches located remote from said first and second pairs of push-button
switches and said center push-button switch,” as claims 4, 12, and 16
require.
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As a result, Petitioner has not shown by a preponderance of evidence
that claims 4, 12, and 16 are unpatentable as anticipated by Nguyen.
F. Claims 2, 3, 10, 11, 14, and 15 – Alleged Obviousness in view of
Nguyen and Marshall
Petitioner argues the subject matter of claims 2, 3, 10, 11, 14, and 15
would have been obvious in view of the combined disclosures of Nguyen
and Marshall. Pet. 35–43; Reply 17–20. These dependent claims are
directed to the shape of the push-button switches on the navigation device.
Specifically, claims 2, 10, and 14 depend from claims 1, 9, and 13,
respectively, and further require at least two push-button switches are
“uniquely shaped.” Ex. 1001, 18:34–35 (claim 2), 19:34–35 (claim 10),
20:23–24 (claim 14). Claims 3, 11, and 15 depend from claims 2, 10,
and 14, respectively, and require “said first pair of push-button switches are
generally triangularly shaped and point up and down respectively, said
second pair of push button switches are generally triangularly shaped and
point right and left respectively, and said center push-button switch is
generally rectangularly shaped.” Ex. 1001, 18:36–41 (claim 3), 19:36–42
(claim 11), 20:25–30 (claim 15).
Petitioner directs us to portions of Nguyen and Marshall that
purportedly teach or suggest all the limitations in claims 2, 3, 10, 11, 14,
and 15, and argues that a person of ordinary skill in the art would have found
it obvious to combine the teachings of Nguyen and Marshall.
With regard to the shape limitations of claims 2, 3, 10, 11, 14, and 15,
Petitioner contends Marshall discloses a navigation keypad consisting of
“four geometrically arranged arrow keys for directional navigation (up,
down, left and right) with a central select key.” Ex. 1006, 168, Fig. 2;
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Pet. 37. Petitioner contends the arrow keys are uniquely shaped, as claims 2,
10, and 14 require. Pet. 37, 42. Petitioner also contends that Marshall
discloses a first pair of arrow keys pointing up and down, a second pair of
arrow keys pointing right and left, and a center button that is generally
rectangular, as claims 3, 11, and 15 require. Pet. 40; Ex. 1006, Figure 2.
Patent Owner does not dispute that Marshall discloses the limitations
recited in claims 2, 3, 10, 11, 14, and 15. Based on Marshall’s description of
a navigational keypad with arrow keys for directional navigation, as well as
Marshall’s depiction of the navigational keypad in Figure 2, we find
Petitioner has demonstrated sufficiently that Marshall discloses the shape
limitations in claims 2, 3, 10, 11, 14, and 15.
With regard to the combination of Nguyen and Marshall, Petitioner
argues that a person of ordinary skill in the art
would have been motivated to use the uniquely shaped push-
buttons as taught in Marshall with the Nguyen system. A unique
button shape would allow a user to distinguish the button from
other buttons by touch alone without requiring the user to look at
the button. This is especially important to visually impaired
users. Incorporating a unique shaped button design into
Nguyen’s input device would increase accessibility of the
system.
Pet. 38; see also Reply 19–20 (again arguing a person of ordinary skill in the
art would have been motivated to make the proposed modification “in order
to increase system accessibility”); Ex. 1022 ¶¶ 114–115; Ex. 1042 ¶¶ 56–57.
Petitioner also contends that modifying Nguyen by “simply altering the
shape of the push-button switches” as taught by Marshall would involve
applying a known technique to a known design, to achieve a predictable
result, and a person of ordinary skill in the art would have had a reasonable
expectation of success. Pet. 38–39 (citing Ex. 1022 ¶¶ 114–115).
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Patent Owner contends that a person of ordinary skill in the art would
not have had any reason to modify Nguyen in view of Marshall to arrive at
the claimed invention because: (1) modifying Nguyen in view of Marshall
would violate Nguyen’s intended purpose and principle of operation; (2) the
proposed modification to Nguyen is directly contrary to the teachings and
suggestions of Marshall; and (3) Marshall does not provide motivation for
the proposed modification. PO Resp. 39–40.
As to Nguyen’s intended purpose, Patent Owner argues Nguyen seeks
to “enhance accessibility in voting by providing a system that allows a voter
to practice voting from home in the identical manner in which official voting
will be conducted.” PO Resp. 41. Patent Owner further argues Nguyen
achieves its intended purpose by “providing a practice-voting system that
can be accessed via a public telephone network and facilitating both practice
vote entry and official vote entry using a conventional telephone interface.”
PO Resp. 41. Patent Owner contends that Nguyen discloses no other way of
achieving its basic aims other than the use of a telephone interface having a
standard 12-key touchpad (PO Resp. 41 (citing Ex. 2001 ¶¶ 111–113)), and
that “[t]he reference as a whole demonstrates that Nguyen is not willing to
accept any change that takes away the ability to conduct practice voting
using a standard telephone” (PO Resp. 43 (citing Ex. 2001 ¶¶ 180–181)).
Patent Owner acknowledges the statement in Nguyen that the system
can be used with input devices other than the 12-key telephone touchpad, but
argues that a person of ordinary skill in the art would interpret this portion of
Nguyen as “merely contemplating other types of input systems that allow for
practice voting by telephone” because Nguyen expressly lists voice-
activation and voice-recognition systems as available alternatives, which can
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be carried out using a standard telephone. PO Resp. 44 (citing Ex. 2001
¶ 182).
Patent Owner further argues that Marshall’s navigation pad having
directional arrow buttons is not part of a standard phone interface, and by
modifying Nguyen to include Marshall’s navigation pad, “official vote
casting could no longer be conducted with an input device that is found on a
standard telephone,” which would “disable the core principle of operation by
which Nguyen achieves its intended purpose of improved voting
accessibility.” PO Resp. 45. Moreover, Marshall’s unique interface would
cause confusion among voters who practiced voting using a telephone with a
standard 12-key touchpad. PO Resp. 47. According to Dr. Shamos, “[t]he
pre-election practice performed by the voter would go for naught, and the
voter would have to learn a new interface, deceptively similar to that of a
telephone, but mysteriously different.” Ex. 2001 ¶ 172; PO Resp. 47.
Patent Owner also asserts that Nguyen criticizes, and therefore teaches
away from, input devices that require special buttons with different physical
shapes. Sur-reply 14 (quoting Ex. 1005, 3:1–9). According to Patent
Owner, instead of systems that require “special buttons,” Nguyen teaches the
use of a “‘standard, common, and familiar input device’ that every voter
already has at home connected and already connected via a phone line to the
outside world for practice voting,” which is the telephone keypad. Sur-
reply 14–15.
With regard to its argument that Marshall provides no motivation for
the proposed modification, Patent Owner asserts that Marshall studied the
effectiveness of various text entry methods carried out on a graphical
display, and disclosed that “text entry methods conducted via an audio
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interface are not pertinent to the graphical text entry methods to which it
pertains.” PO Resp. 48 (citing Ex. 1006, 168). Patent Owner also argues
that Marshall concluded that telephone-pad based text entry methods were
superior to navigation panel based text entry methods, and therefore
Marshall teaches away from the use of navigation panels for text entry. PO
Resp. 48–49 (citing Ex. 2001 ¶ 188). In view of this, according to Patent
Owner, “[i]n the absence of hindsight, a [person of ordinary skill in the art]
would have had no reason to modify Nguyen to use the navigation panel of
Marshall.” PO Resp. 49 (citing Ex. 2001 ¶ 189).
In its Reply, Petitioner argues that Patent Owner relies on “an
unreasonably narrow view that Nguyen’s disclosure is limited to using a
standard telephone keypad as input.” Reply 18. Petitioner asserts that
Nguyen itself suggests that non-telephone keypads can be used in Nguyen’s
systems. Reply 18–19 (citing Ex. 1005, 3:56–62 (referring to “keypad-based
user input devices”), 4:25–29, 8:21–27). Petitioner further contends that its
argument that a person of ordinary skill in the art would have had reason to
modify Nguyen in view of Marshall is not derived from Marshall itself.
Reply 19–20. Instead, Petitioner reiterates that a person of ordinary skill in
the art would have been motivated to modify Nguyen to increase system
accessibility, and that neither Patent Owner nor its declarant rebut this
motivation to combine. Reply 20.
After reviewing the evidence and arguments presented over the course
of this trial, we agree with Petitioner’s arguments and find the evidence
demonstrates that a person of ordinary skill in the art would have had reason
to combine the teachings of Nguyen and Marshall.
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Although Nguyen describes its invention in the context of using a
conventional telephone interface having a standard 12-key touchpad, it is
undisputed that Nguyen is not limited to telephone key pads. See Tr. 34:8–9
(counsel for Patent Owner agreeing that Nguyen is not limited to
telephones). Nguyen expressly states that
some components of the invention could be substituted for other
components, for example: various input devices could be used,
including but not limited to voice-activated responses or voice-
recognition software. However, for the sake of brevity and for
ease of understanding, the description of the system and methods
employed in the present invention will be made with reference to
voting applications using a standard 12-key telephone touchpad
input device.
Ex. 1005, 4:25–33 (emphasis added). This language indicates input devices
other than the standard 12-key telephone touchpad input device are
considered to be part of the claimed invention. Although Patent Owner is
correct that the two examples provided in this paragraph, voice-activated
responses or voice-recognition software, are suitable for use by a voter via a
standard telephone, we note that Nguyen expressly indicates that the
invention includes, but is not limited to, these two examples. Ex. 1005,
4:25–33.
Furthermore, Nguyen contains other statements that indicate the input
device in its claimed invention is not limited to a standard 12-key telephone
touchpad. For example, Nguyen states that “the present invention is directed
to a system and method for allowing users to hear automated choices and
then use a standard, common, and familiar input device to make selections,”
and “[i]t should be understood at the outset that the invention relates
generally to audio interface and keypad-based user input devices, which can
be used in a plethora of applications.” Ex. 1005, 3:51–59. The only
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qualifier to “keypad-based user input devices” expressed in the ’273 patent
is that they are “standard, common, and familiar” devices. Furthermore,
although perhaps not directly related to the input device itself, Nguyen
contemplates changes to its preferred embodiment that would “remove
the . . . telephone-compatibility present in the preferred embodiment.”
Ex. 1005, 7:33–38, 821–27; PO Resp. 41–43.
Contrary to Patent Owner’s contention, Nguyen’s principle of
operation is not limited to a practice-voting system that can be accessed by a
public telephone network and uses a conventional telephone interface. PO
Resp. 41. Instead, it includes any “standard, common, and familiar” keypad-
based user input devices that can be used in a “plethora of applications.”
Ex. 1005, 3:51–59. The use of such “standard, common, and familiar”
keypad-based user input devices would still allow a person of ordinary skill
in the art to achieve Nguyen’s intended purpose, which is, according to
Patent Owner, “enhance[ing] accessibility in voting by providing a system
that allows a voter to practice voting from home in the identical manner in
which official voting will be conducted.” PO Resp. 41; KSR, 550 U.S. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).
For example, Marshall discloses the use of a TV remote, having both
a number pad and directional buttons, as an input device. Ex. 1006, 168,
Fig. 2. Dr. Bederson testifies that “laying out buttons in a way that
physically corresponded to the things they were controlling was well-known,
and made good sense,” and that “[o]ne common way of laying out these
buttons” was the directional pad used on Marshall’s television remote,
consisting of four buttons laid out in a diamond shape with two buttons
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above and below each other to control vertical movement, two buttons to the
left and right of each other to control horizontal movement, and an action
button in the middle of that configuration. Ex. 1022 ¶¶ 28–29. Dr. Shamos
agreed with Dr. Bederson’s testimony that the directional pad was a
“common way of laying out” buttons on an input device. Ex. 2001 ¶ 66.
This evidence suggests that that the directional pad on the TV remote in
Marshall was at least a “common” input device. Pet. 36–37; Ex. 1022 ¶¶ 28,
29, 35–37, 113–115.
Petitioner further explains how the use of directional buttons can
increase user accessibility, especially for visually impaired voters, because
“[a] unique button shape would allow a user to distinguish the button from
other buttons by touch alone without requiring the user to look at the
button.” Pet. 38; Ex. 1022 ¶ 115. Dr. Bederson testifies that it was “well-
known that with triangularly shaped buttons the apex of the triangle
corresponds to the navigation direction (i.e., a right pointing triangle apex
suggest navigating to the right).” Ex. 1022 ¶ 115; see also Ex. 2001 ¶ 65
(Dr. Shamos testifying that “[n]ormally, one would expect the left and right
arrows to move a cursor or other indicator left or right, respectively, and
would expect the up and down arrows to move a cursor up or down”).
These characteristics align with the desired features in Nguyen’s input
device. See Ex. 1005, 3:51–54 (stating that the present invention is directed
to the use of “a standard, common, and familiar input device”), 5:51–55
(stating the invention relates to an audio interface system and navigation
system for users “to hear selection choices and input selections without the
need for visual interaction whatsoever”). As such, this evidence supports a
finding that a person of ordinary skill in the art would have considered a TV
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remote to be one of the various input devices that could be used in Nguyen’s
voting system. It also supports Petitioner’s arguments that a person of
ordinary skill in the art would have had a reasonable expectation of success,
which are not expressly disputed by Patent Owner. See Pet. 36–37;
Ex. 1022 ¶ 113–115.
We recognize that Nguyen states:
The type of navigation systems employed in current [voting]
systems requires special buttons and awkward menu structures
that are not intuitive. Most require the user to perceive and
interpret physical stimuli (such as button shapes or raise
appurtenances) associated with the buttons or keys. Because
these device use unique proprietary user interfaces, the voter
must spend time to learn how the device operates before the voter
can even begin to cast votes.
Ex. 1005, 3:1–9. We, however, disagree with Patent Owner’s
characterization of this language in Nguyen as criticizing any and all input
devices having special buttons with different physical shapes. Sur-reply 14.
Instead, we view Nguyen’s language to address input devices associated
with current voting systems that combine special buttons with unique
proprietary interfaces that are unfamiliar to a user. Ex. 1005, 3:1–9.
Marshall’s television remote control does not fall into this category. Instead,
the evidence suggests the type of buttons on Marshall’s TV remote are
intuitive and improve accessibility. Pet. 36–38; Ex. 1022 ¶¶ 28, 29, 35–37,
113–115.
Finally, Patent Owner’s focus on Marshall’s failure to provide a
rationale to combine is unavailing. See PO Resp. 48–50. As Petitioner
points out, a person of ordinary skill in the art would have been motivated to
modify Nguyen in view of Marshall based on the desire to improve
accessibility. Pet. 38–39. Petitioner does not rely on an express disclosure
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in Marshall for that aspect of its patentability challenge. Pet. 38–39.
Furthermore, we do not agree with Patent Owner’s argument that Marshall
teaches away from using an input device having triangular-shaped keys. PO
Resp. 48–49. For example, Patent Owner directs us to the results of one of
the trials in Marshall to support its teaching away argument. PO Resp. 48.
Although Marshall states that using the navigation panel keys was “not very
efficient and was slower than other schemes,” Marshall also reported that it
“received a high score for explicit preference” among users, and, therefore,
“preference and objective performance did not coincide.” Ex. 1006, 185.
The results showing the navigation panel/A-to-Z grid configuration received
a relatively high ranking on the scale of explicit preference undermine Patent
Owner’s teaching away argument.
For all of the foregoing reasons, we find Petitioner has established, by
a preponderance of evidence, that a person of ordinary skill in the art would
have had a reason to combine the teachings of Nguyen and Marshall to
achieve the claimed invention and would have had a reasonable expectation
of success in doing so. Pet. 36–38; Reply 19–20; Ex. 1022 ¶¶ 112–115;
Ex. 1042 ¶¶ 56–57. As result, we find Petitioner has demonstrated, by a
preponderance of evidence, that the subject matter of claims 2, 3, 10, 11, 14,
and 15 would have been obvious in view of Nguyen and Marshall.
G. Claims 17–19 – Alleged Obviousness in view of Nguyen and
McDermott
Petitioner argues that claims 17–19 are unpatentable as obvious in
view of the combined teachings of Nguyen and McDermott. Pet. 43–46;
Reply 21–22.
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Claim 17 depends from claim 13 and further requires the voting
system comprises a pre-printed ballot. Ex. 1001, 20:35–36. Claim 18
depends from claim 17, and requires the ballot marking device comprise “a
printing mechanism operable to mark said selection of at least one of said
options for each of said contests on said pre-printed ballot.” Ex. 1001,
20:36–40. Petitioner contends that McDermott discloses the limitations of
claims 17 and 18 based on its teaching that “the printed ballot ‘may be
produced by the printer by printing the votes of the voter on a pre-printed
election ballot . . . .’” Pet. 45 (quoting Ex. 1008 ¶ 12) (emphasis omitted).
Claim 19 depends from claim 18 and further requires “a ballot
scanning device operable to scan said ballot and tabulate said selection of at
least one of said options for each of said contests marked thereon.”
Ex. 1001, 20:41–44. Petitioner contends McDermott discloses a ballot
scanning machine that scans the paper ballot and imprints the ballot with a
validation marking or code, and a tabulation machine that includes “the
same ballot scanning mechanism as the ballot scanning machine.” Pet. 46
(citing Ex. 1008 ¶¶ 9, 13).
Petitioner further contends that a person of ordinary skill in the art
would have had reason to modify Nguyen in view of McDermott to include
a pre-printed ballot, printing mechanism, and ballot scanning device
because: (1) it would “provide voters with verifiable paper trails that could
be used by officials in the case of a manual recount;” (2) “allowing printing
on pre-printed ballots would result in a more efficient and robust system
because less time would be needed to print and less ink or toner would be
needed;” and (3) “scanning ballots would make it possible to tally votes
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electronically which could be easier than looking at each paper ballot by
hand.” Pet. 44–46 (citing Ex. 1022 ¶¶ 127, 131).
Patent Owner contends that claims 17–19 are not unpatentable
because Nguyen fails to disclose all of the limitations of claim 13, as
discussed above, and McDermott does not cure these deficiencies. PO Resp.
50; Sur-reply 15–16. Patent Owner also argues that a person of ordinary
skill in the art would not have been motivated to combine the teachings of
Nguyen and McDermott because Nguyen is incompatible with pre-printed
ballots. PO Resp. 50. According to Patent Owner “[i]f pre-printed ballots
were used with Nguyen, the voting apparatus would have no way of
knowing whether the pre-printed ballot listed contests and candidates
compatible with the electronic display, and Nguyen would simply overprint
its ballot format over the pre-printed one, causing total voter and poll worker
confusion.” PO Resp. 50–51 (citing Ex. 2001 ¶ 193).
In its Reply, Petitioner notes that Patent Owner’s argument “confuses
the disclosures relied upon in the Petition,” because the combination of
Nguyen and McDermott does not address a display screen, and, therefore,
Patent Owner’s argument that there would be some compatibility issue with
an electronic display is “immaterial.” Reply 22.
After reviewing the parties’ arguments and evidence developed during
trial, we determine the preponderance of evidence supports Petitioner’s
assertion that the subject matter of claims 17–19 would have been obvious
over the combined teachings of Nguyen and McDermott. As Petitioner
points out, McDermott discloses the use of a pre-printed ballot, a printing
mechanism, and a scanner, as required in claims 17–19. Ex. 1008 ¶ 9
(discussing ballot scanning machines as part of the tabulating machine), ¶ 12
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(“The printed ballot may be produced by the printer by printing the votes of
the voter on a pre-printed election ballot . . . .”), ¶ 13 (also discussing ballot
scanning machines). Patent Owner does not dispute Petitioner’s arguments
and evidence that McDermott discloses these limitations. Patent Owner’s
argument that McDermott does not cure the deficiencies of Nguyen with
regard to claim 13 is unavailing because, as discussed above, we have
determined that Petitioner has demonstrated by a preponderance of evidence
that Nguyen discloses all of the limitations of claim 13.
We also agree with Petitioner’s arguments that a person of ordinary
skill in the art would have had reason to modify Nguyen based on the
teachings of McDermott. Petitioner’s arguments are reasonable in view of
the teachings of the prior art, and are supported by the unrebutted testimony
of Dr. Bederson. Pet. 44–46; Ex. 1022 ¶¶ 127, 130–131; Ex. 1008 ¶¶ 9, 12,
13. Furthermore, we agree with Petitioner that Patent Owner’s argument as
to why a person of ordinary skill in the art would not have had a reason to
modify Nguyen in view of McDermott is flawed because it is based on
compatibility issues with an electronic display screen, whereas the
combination of Nguyen and McDermott does not involve an electronic
display screen. Reply 21–22.
For all of the foregoing reasons, we find Petitioner has established, by
a preponderance of evidence, that the combined teachings of Nguyen and
McDermott teach or suggest all of the limitations in claims 17–19 and that a
person of ordinary skill in the art would have had a reason to combine the
teachings of Nguyen and McDermott to achieve the invention recited in
claims 17–19 and would have had a reasonable expectation of success in
doing so. Pet. 44–46; Ex. 1022 ¶¶ 127, 130–131; Ex. 1008 ¶¶ 9, 12, 13. As
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result, we find Petitioner has demonstrated, by a preponderance of evidence,
that the subject matter of claims 17–19 would have been obvious in view of
Nguyen and McDermott.
H. Claims 5 and 8 – Alleged Obviousness in view of Neff and Nguyen
Petitioner contends that the subject matter of claims 5 and 8 would
have been obvious in view of the combined teachings of Neff and Nguyen.
Pet. 47–60; Reply 22–27.
1. Claim 5
Independent claim 5 is directed to a method of voting that allows a
voter to navigate a plurality of contests and a plurality of options associated
with the contests, and requires providing a display screen. Ex. 1001, 18:46–
49. Petitioner contends that Neff discloses an electronic voting system
comprising various hardware and software components, including “vote
clients” having a display screen. Pet. 47, 50 (noting that the voting system
contains a “sample display presented . . . for selecting a pair of candidates in
a race for an office”) (quoting Ex. 1007 ¶ 43)), 52 (referring to Ex. 1007,
Fig. 1).
Claim 5 further requires “providing a navigation device having a
center push-button switch, a first pair of push-button switches positioned
above and below said center push-button switch, and a second pair of push-
button switches positioned left and right of said center push-button switch.”
Ex. 1001, 18:51–55. Similar to the arguments made in connection with
claim 1, Petitioner argues Nguyen discloses a 12-key telephone touchpad
input device having a five-key navigation group that corresponds to the
push-button requirements in claim 5. Pet. 53–55.
Claim 5 also requires:
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visually presenting said contests and said associated options to
the voter on said display screen, wherein one of said first and
second pairs of push-button switches enables the voter to scroll
among said contests, and wherein the other of said first and
second pairs of push button switches enables the voter to scroll
among said options.
Ex. 1001, 18:56–62.
Petitioner contends that Nguyen discloses using the 4 and 6
keys in its five-key navigation group to navigate among the options
within a contest and the 2 and 8 keys to navigate among the different
contests. Pet. 54–55. Petitioner further contends that Neff discloses
using a computer mouse as an input mechanism, and that “[u]sing a
navigation pad with distinct buttons” such as the pad disclosed in
Nguyen “could be easier to use for people without experience using a
mouse or for those with mobility impairments that make it hard to
control a mouse,” making it a “more useful input device for electronic
voting.” Pet. 50 (citing Ex. 1022 ¶ 139), 55 (citing Ex. 1022 ¶ 147).
Thus, according to Petitioner, it would have been obvious to one of
ordinary skill in the art to improve Neff’s input device by replacing it
with the input interface disclosed in Nguyen having multiple
navigation keys. Pet. 50, 55–56.
Lastly, claim 5 requires “receiving a plurality of voting
selections from the voter, wherein said center push-button switch
enables the voter to make at least one voting selection for each of said
contests by selecting at least one of said options without providing
any input on other of said options.” Ex. 1001, 18:63–67. Petitioner
argues that Nguyen discloses the 5 key in its five-key navigation
group selects or deselects a candidate. Pet. 56–57.
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Patent Owner argues that Neff and Nguyen fail to disclose all of
the limitations recited in claim 5 because Neff fails to disclose or
suggest pairs of push-button switches that navigate a ballot, and
Nguyen fails to disclose or suggest push-button switches that perform
visual scrolling functions. PO Resp. 51–52. Patent Owner also
disagrees that Neff discloses using a mouse-like input for a voter to
vote. PO Resp. 17, 61.
After reviewing the parties’ arguments and evidence developed during
trial, we agree with Petitioner’s arguments and find the evidence
demonstrates sufficiently that the combined teachings of Neff and Nguyen
disclose or suggest all of the limitations of claim 1. Figure 1 of Neff depicts
vote client 134 as a computer monitor display with a mouse, which is “used
by voters to generate voted ballots.” Ex. 1007 ¶ 28, Fig. 1. Additionally,
Neff’s use of the term “click the next button” is a phrase commonly used to
refer to an action involving a computer mouse. Ex. 1007 ¶ 43. Furthermore,
Neff’s disclosure is not limited to vote clients using only touch-screen
displays, as Neff clearly indicates that touch-screen monitors are used in
“some embodiments.” Ex. 1007 ¶ 41.
As discussed above with regard to claim 1, Nguyen’s five-key
navigation group includes a center push-button switch and first and second
pairs of push-button switches in the configuration recited in claim 5, wherein
the center push-button switch enables the voter to make a voting selection
without providing any input on other options, and the first and second pair of
push-button switches enable the voter to scroll among said contests and
options. Ex. 1005, 12:9–59.
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This evidence supports Petitioner’s argument that the combined
teachings of Neff (a voting system having a display screen and mouse-like
input) and Nguyen (a keypad input device including a five-panel navigation
group for scrolling among contests and options and selecting candidates)
disclose or suggest all of the limitations in claim 5. Patent Owner’s
argument that Petitioner fails to demonstrate these references disclose all of
the limitations in claim 5 is unavailing, as it attacks the disclosures of Neff
and Nguyen individually, instead of focusing on the combined disclosures of
the references.
Based on the foregoing, we determine Petitioner has demonstrated by
a preponderance of evidence that the combined teachings of Neff and
Nguyen disclose or suggest all of the limitations of claim 5.
Patent Owner argues that a person of ordinary skill in the art would
not have had a reason to modify Neff in view of Nguyen to arrive at the
claimed invention. PO Resp. 52. In particular, Patent Owner argues that
Neff discloses a single format for visual presentation of a ballot, as shown in
Figure 6 below.

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Figure 6 of Neff is a diagram showing a sample display for selecting
candidates in a race for office that includes a two-dimensional grid of
selectable candidate fields, a next icon for moving to a subsequent contest,
and a back icon for moving to a previous contest. Ex. 1007 ¶ 14.
Patent Owner contends that modifying Neff to include a five-key
navigation group of Nguyen would create a counterintuitive voting system
that would not facilitate voting. PO Resp. 53. Patent Owner notes Nguyen’s
vertically arranged 2 and 8 keys scroll among contests, but Neff’s screen
display uses horizontally spaced icons 621 and 623, with right and left
arrowheads, for moving among contests. According to Patent Owner, this
creates a directional conflict between Nguyen’s physical buttons and Neff’s
displayed buttons, and a person of ordinary skill in the art “would not, under
any circumstances, have considered bodily incorporating the five-key
navigation group 67 of Nguyen into the voting system disclosed in Neff.”
PO Resp. 53–54.
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The test for obviousness, however, “is not whether the features of one
reference may be bodily incorporated into another reference.” In re Wood,
599 F.2d 1032, 1037 (CCPA 1979). Furthermore, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR, 550
U.S. at 421. As such, we disagree that a person of ordinary skill in the art
would have ignored Nguyen’s teachings because of a “directional conflict”
when, as Dr. Bederson suggests, a person of ordinary skill in the art would
have been able to avoid any directional conflict by adopting the appropriate
button layout. Reply 24; Ex. 1042 ¶¶ 65–66. Dr. Shamos does not dispute
that a person of ordinary skill in the art would have been able to modify the
keys of Nguyen to work with Neff’s graphic layout. Ex. 1027, 81:18–24;
Reply 24–25.
Additionally, Nguyen’s use of the vertically oriented 2 and 8 push-
button switches to perform scrolling among contests is based on “a physical
ballot that is laid out with various contests located from top to bottom and
with various candidates within those contests laid out from left to right.”
Ex. 1005, 12:22–27; Ex. 1042 ¶ 65; Reply 24. Although this layout is
different from the layout of the ballot shown in Figure 6 of Neff, Neff
explicitly indicates that Figure 6 is just a sample display. Ex. 1007 ¶ 14.
The same is true for Nguyen’s system, including the 5-key navigation pad,
which is just a preferred embodiment. Ex. 1005, 12:9–10. A person of
ordinary skill in the art would have understood from Nguyen’s disclosure
that the keypad is configured with a particular ballot in mind, and that the
keypad could be configured differently based on a ballot that used a different
layout. KSR, 550 U.S. at 421. For example, we agree with Petitioner that if
the desired ballot organization involved scrolling horizontally to move
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among contests, a person of ordinary skill in the art would have understood
“that the ‘4’ and ‘6’ keys could instead be used to move between contests
depending on the context of the ballot.” See Reply 24; Ex. 1042 ¶¶ 65–66.
In addition to providing evidence demonstrating that a person of
ordinary skill in the art would have had the ability to alter Nguyen’s key
functionality to work with Neff, Petitioner also provides sufficient evidence
demonstrating that a person of ordinary skill in the art would have had
reason to do so. Neither Dr. Shamos nor Patent Owner disputes Petitioner’s
primary rationale for combining the teachings of Neff and Nguyen, which is
to provide a “more useful input device for electronic voting,” especially one
that “could be easier to use for people without experience using a mouse or
for those with mobility impairments that make it hard to control a mouse.”
Pet. 50; Ex. 1022 ¶ 139.
Finally, we disagree with Patent Owner’s argument that a person of
ordinary skill in the art would have used a directional input pad to move a
cursor on the graphical display instead of using Nguyen’s five-key
navigation group to scroll among options and contests (PO Resp. 54–57),
because it ignores the teachings of Nguyen. The fact that directional pads
were known and commonly used with graphic displays to move a cursor
suggests that using such a configuration is one alternative to Nguyen’s
configuration, not that a person of ordinary skill in the art would necessarily
use it over Nguyen’s configuration, as Patent Owner concludes.
PO Resp. 54–55.
For all of the foregoing reasons, we find Petitioner has established, by
a preponderance of evidence, that a person of ordinary skill in the art would
have had a reason to combine the teachings of Neff and Nguyen to achieve
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the invention recited in claim 5 and would have had a reasonable expectation
of success in doing so. Pet. 47–57; Reply 22–25; Ex. 1022 ¶¶ 139–147;
Ex. 1042 ¶¶ 63–66.
As result, we find Petitioner has demonstrated, by a preponderance of
evidence, that the subject matter of claim 5 would have been obvious in
view of Neff and Nguyen.
2. Claim 8
Claim 8 depends from claim 5, and further requires the “navigation
device to include one or more auxiliary push-button switches located remote
from said first and second pairs of push-button switches and said center
push-button switch.” Ex. 1001, 19:9–12. Petitioner relies on the same
arguments here as it did for claim 4, which recites the same limitations.
Pet. 58–60. For the same reasons discussed above in connection with claim
4, we do not agree with Petitioner’s arguments that Nguyen discloses one or
more auxiliary push-button switches located remote from the first and
second pairs of push-button switches and the center push-button switch of its
five-key navigation group. See Section II.E, supra.
As a result, we find Petitioner has not established, by a preponderance
of evidence, that the subject matter of claim 8 would have been obvious in
view of Neff and Nguyen.
I. Claims 6 and 7 – Alleged Obviousness in view of Neff, Nguyen,
and Marshall
Petitioner contends claims 6 and 7 are unpatentable as obvious in
view of the combined teachings of Neff, Nguyen, and Marshall. Pet. 60–64;
Reply 27. Claim 6 depends from claim 5, and further requires that at least
two of the push-button switches are uniquely shaped. Ex. 1001, 19:1–2.
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Claim 7 depends from claim 6, and requires “said first pair of push button
switches are generally triangularly shaped and point up and down
respectively, said second pair of push-button switches are generally
triangularly shaped and point right and left respectively, and said center
push-button switch is generally rectangularly shaped.” Ex. 1001, 19:3–8.
These limitations correspond to those recited in claims 2 and 3, respectively,
and Petitioner relies on the same arguments for the unpatentability of
claims 6 and 7 as it does for claims 2 and 3, namely that it would have been
obvious to a person of ordinary skill in the art to modify the shape of the
push-buttons in Nguyen’s five-key navigation group to include the uniquely
shaped buttons disclosed in Marshall, which would allow a user to
distinguish the buttons based on touch alone to increase accessibility of the
system. Pet. 36–39 (discussing claims 2 and 3), 60–64 (discussing claims 6
and 7).
Patent Owner similarly relies on arguments made in connection with
claims 2 and 3, and further argues that adding Marshall to the combination
of Neff and Nguyen does not cure the aforementioned deficiencies of the
proposed combination of Neff and Nguyen. PO Resp. 58–60. In particular,
Patent Owner argues that in view of Marshall, a person of ordinary skill in
the art would have modified Neff to include a navigation panel so that the
vertical and horizontal directional buttons cause a cursor to move in
corresponding directions on the screen, and a user must press a center select
key after moving the cursor over the “back” or “next” icon in order to scroll
among contests. PO Resp. 58–60; Sur-reply 23. Accordingly, Patent Owner
concludes that the combined teachings of Neff, Nguyen, and Marshall fails
to disclose “one of said first and second pairs of push-button switches [that]
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enables the voter to scroll among said contests,” as the claims require. PO
Resp. 60.
For the same reasons discussed above in Section II.F, we agree with
Petitioner’s arguments and evidence demonstrating Marshall discloses the
additional limitations of claims 6 and 7, and that a person of ordinary skill in
the art would have had a reason to modify the shape of Nguyen’s keys in the
five-key navigation group in view of Marshall. Pet. 60–64; Ex. 1022 ¶¶ 154,
157. Additionally, for the reasons discussed above, we agree with
Petitioner’s arguments and evidence that Neff and Nguyen disclose all of the
limitations in claim 5, and that a person of ordinary skill in the art would
have had reason to modify Neff in view of Nguyen to achieve the claimed
invention and would have had a reasonable expectation of successfully
doing so. See Section II.H, supra. In view of this, we disagree with Patent
Owner’s argument that a person of ordinary skill in the art “in possession of
Neff, Nguyen, and Marshall would not have modified Neff to include ‘one
of said first and second pairs of push-button switches [that] enables the voter
to scroll among said contests, and . . . the other of said first and second pairs
of push-button switches [that] enables the voter to scroll among said
options.’” PO Resp. 60. Nor do we agree with Patent Owner’s argument
that a person of ordinary skill in the art would have modified Neff to include
a navigation panel so that the vertical and horizontal directional buttons
cause a cursor to move in corresponding directions on the screen based on
Marshall’s disclosure. PO Resp. 58–60; Sur-reply 23. As discussed above,
such a conclusion requires ignoring the teachings of Nguyen.
For all of the foregoing reasons, we find Petitioner has established, by
a preponderance of evidence, that the combined teachings of Neff, Nguyen,
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and Marshall teach or suggest all of the limitations in claims 6 and 7 and that
a person of ordinary skill in the art would have had a reason to combine the
teachings of Neff, Nguyen, and Marshall to achieve the claimed invention
and would have had a reasonable expectation of success in doing so.
Pet. 36–38, 61–64. As result, we find Petitioner has demonstrated, by a
preponderance of evidence, that the subject matter of claims 6 and 7 would
have been obvious in view of Neff, Nguyen, and Marshall.
J. Petitioner’s Remaining Unpatentability Challenges
Petitioner asserts that claims 1–8 are unpatentable as obvious in view
of the combined teachings of Neff and Marshall (Pet. 64–83; Reply 28–29),
and claims 9–19 are unpatentable as obvious in view of the combined
teachings of Neff, Marshall, and McDermott (Pet. 83–102; Reply 29–30).
Independent claims 1, 5, 9, and 13 all require a navigation device
having a center push-button switch, a first pair of push-button switches
positioned above and below the center push-button switch, and a second pair
of push-button switches positioned left and right of the center push button
switch. Ex. 1001, 18:17–22 (claim 1), 18:51–55 (claim 5), 19:17–21
(claim 9), 20:8–13 (claim 13). These independent claims also require one of
said first and second pairs of push-button switches enables scrolling among
voting contests, wherein the other of said first and second pairs of push-
button switches enables scrolling among voting options for each contest.
Ex. 1001, 18:23–28 (claim 1), 18:57–62 (claim 5), 19:23–28 (claim 9),
20:14–18 (claim 13).
For these limitations in each of the independent claims, Petitioner
relies on Marshall’s disclosure of an input device having a center push-
button switch, a first pair of push-button switches positioned above and
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below the center push-button switch, and a pair of push-button switches
positioned left and right of the center push-button switch, and asserts:
With the combination of the Marshall input device, it would
have been obvious to one of ordinary skill in the art to allow a
voter to use one of said first and second pairs of push-button
switches to move among said contest selections, and the other
of said first and second pairs of push-button switches enables
the voter to move between the selection options.
Pet. 67–73 (citing Ex. 1022 ¶ 171), 82, 86–90, 99–100; Reply 28–29 (citing
Ex. 1042 ¶ 74).
Patent Owner argues that Marshall does not disclose or suggest a
navigation device having one pair of push-button switches that enables the
voter to scroll among contests and the other pair of push-button switches that
enables the voter to scroll among options. PO Resp. 61–62. According to
Patent Owner, Marshall discloses seven specific methods of using a five-key
directional navigation panel with a graphic interface, and each method
configures the directional keys contrary to the claimed method. PO
Resp. 58–59, 62.
We agree with Patent Owner. Petitioner does not direct us to any
portion of Marshall that discloses using one pair of push-button switches to
scroll among voting contests and another pair of push-button switches to
scroll among options. And the conclusory statements presented by
Petitioner (Pet. 72; Reply 28) and Dr. Bederson (Ex. 1022 ¶ 171; Ex. 1042
¶ 74) regarding what would have been obvious to a person of ordinary skill
in the art do not constitute sufficient evidence to meet Petitioner’s burden of
proof considering Marshall itself discloses using both pairs of push-button
switches to move a “highlight” up, down, left, or right among various
choices on a single screen. Ex. 1006, 170. This configuration is different
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from using only one pair of push-button switches for the very specific
operation of scrolling among voting contests, and the other pair of push-
button switches for the specific operation of scrolling among voting options
as required in the independent claims. Absent some suggestion in the
asserted prior art of the claimed limitation (e.g., Nguyen’s disclosure of a
five-key navigation pad with keys 2 and 8 scrolling among voting contests
and keys 4 and 6 scrolling among voting contests), we agree with Patent
Owner that Petitioner is attempting to “reconstruct the claimed invention
from improper hindsight.” PO Resp. 65; KSR, 550 U.S. at 421 (“A
factfinder should be aware, of course, of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”)
For all of the foregoing reasons, we find Petitioner has failed to
establish, by a preponderance of evidence, that the combined teachings of
Neff and Marshall teach or suggest all of the limitations in claims 1–8 or that
the combined teachings of Neff, Marshall, and McDermott teach or suggest
all of the limitations of claims 9–19. As result, we find Petitioner has failed
to demonstrate, by a preponderance of evidence, that the subject matter of
claims 1–19 would have been obvious in view of Neff and Marshall, either
alone or in combination with McDermott.
III. MOTION TO AMEND
In its Contingent Motion to Amend, Patent Owner states that if the
Board “finds any of issued claims 1–3, 9–11, 13–15, or 17–19 to be
anticipated and/or obvious under 35 U.S.C. §§ 102/103, [Patent Owner]
respectfully requests that the Board substitute the anticipated and/or obvious
claim(s) of claims 1–3, 9–11, 13–15, or 17–19 with the respective proposed
substitute claim of claims 20–31.” Mot. 1. For the reasons explained above,
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Petitioner has demonstrated by a preponderance of evidence that claims 1–3,
9–11, 13–15, and 17–19, are unpatentable as anticipated or obvious. As a
result, we analyze Patent Owner’s substitute claims 20–31.
A. Applicable Law
In an inter partes review, amended claims are not added to a patent as
of right, but rather must be proposed as a part of a motion to amend. 35
U.S.C. § 316(d). The Board must assess the patentability of proposed
substitute claims “without placing the burden of persuasion on the patent
owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir. 2017)
(en banc); see also Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129,
Paper 15 at 3‒4 (PTAB Feb. 25, 2019) (precedential). Subsequent to the
issuance of Aqua Products, the Federal Circuit issued a decision in Bosch
Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017)
(“Bosch”), as well as a follow-up order amending that decision on rehearing.
See Bosch Auto. Serv. Sols., LLC v. Iancu, No. 2015-1928 (Fed. Cir.
Mar. 15, 2018) (Order on Petition for Panel Rehearing).
In accordance with Aqua Products, Bosch, and Lectrosonics, Patent
Owner does not bear the burden of persuasion to demonstrate the
patentability of the substitute claims presented in the motion to amend.
Rather, ordinarily, “the petitioner bears the burden of proving that the
proposed amended claims are unpatentable by a preponderance of the
evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing);
Lectrosonics, Paper 15 at 3–4. In determining whether a petitioner has
proven unpatentability of the substitute claims, the Board focuses on
“arguments and theories raised by the petitioner in its petition or opposition
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to the motion to amend.” Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir.
2020).
Notwithstanding the foregoing, Patent Owner’s proposed substitute
claims 20–31 must meet the statutory requirements of 35 U.S.C. § 316(d)
and the procedural requirements of 37 C.F.R. § 42.121. Lectrosonics,
Paper 15 at 4–8. Accordingly, Patent Owner must demonstrate: (1) the
amendment proposes a reasonable number of substitute claims; (2) the
amendment responds to a ground of unpatentability involved in the trial, (3)
the proposed claims are supported in the original disclosure (and any earlier
filed disclosure for which the benefit of filing date is sought); and (4) the
amendment does not seek to enlarge the scope of the claims of the patent or
introduce new subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
B. Proposed Substitute Claims
Proposed substitute claim 20, with underlining indicating the language
added to original claim 1 and strikethroughs indicating language deleted, is
reproduced below.11
Claim 20 (replaces claim 1): A method of voting that
allows a voter to navigate a plurality of contests and a plurality
of options associated with each of said contests, said method
comprising:
[A] providing a touchscreen display;
[B] providing a navigation device comprising a center
push-button switch, a first pair of push-button switches
positioned above and below said center push-button switch, and
a second pair of push-button switches positioned left and right of
said center push-button switch;

11 Patent Owner indicates that the brackets are not part of the proposed
claim, but are included for reference annotation purposes only. Mot. at
Appendix A, 2 n.1.
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[C] presenting said contests and said associated options to
the voter, wherein said presenting said contests and said
associated options to the voter comprises displaying on the
touchscreen display a discrete presentation screen for each of the
contests, each discrete presentation screen comprising a name for
each of the options associated with the respective contest, the
names for the options associated with each respective contest
being displayed in a single vertical column on the respective
presentation screen, [D]wherein one of said first and second pairs
pair of push-button switches enables the voter to scroll among
said contests without any other user input, and wherein the other
of said first and second pairs pair of push-button switches enables
the voter to scroll among said options without any other user
input, [E] wherein presenting said contests comprises
communicating a name for a contest after the voter scrolls to the
contest, and wherein presenting said associated options
comprises communicating the name for the option after the voter
scrolls to the option;
[F] wherein scrolling among said contests comprises
changing which of the discrete presentation screens is displayed
on the touchscreen display; and
[G] receiving a plurality of voting selections from the
voter, wherein said center push-button switch enables the voter
to make at least one voting selection for each of said contests by
selecting at least one of said options without providing any input
on other of said options.
Mot. at Appendix A, 2–3.
Proposed substitute claim 21 amends original claim 2 to depend from
claim 20 instead of claim 1. Mot. at Appendix A, 3. Proposed substitute
claim 22 amends original claim 3 to depend from claim 21 instead of
claim 2. Mot. at Appendix A, 3.
Proposed substitute claim 23 with underlining indicating language
added to original claim 9, and strikethrough indicating language deleted, is
reproduced below.
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Claim 23 (replaces claim 9): A method of voting that
allows a voter to navigate a plurality of contests and a plurality
of options associated with each of said contests, said method
comprising:
[A] providing a set of headphones;
[B] providing a touchscreen display configured to visually
present said contests and said associated options to the voter;
[C] providing a navigation device comprising a center push-
button switch, a first pair of push-button switches positioned
above and below said center push-button switch, and a second
pair of push-button switches positioned left and right of said
center push-button switch;
[D] audibly presenting said contests and said associated
options to the voter via said headphones after the voter elects to
have said contests and said associated options presented audibly,
[E] wherein one of said first and second pairs of push-button
switches enables the voter to scroll among said contests, and
wherein the other of said first and second pairs of push-button
switches enables the voter to scroll among said options, [F]
wherein audibly presenting said contests comprises
communicating a name for a contest after the voter scrolls to the
contest, and wherein audibly presenting said associated options
comprises communicating the name for the option after the voter
scrolls to the option;
[G] adjusting the touchscreen display after the voter elects to
have said contests and said associated options presented audibly
so that said contests and said associated options are not visually
presented on the touchscreen display as said contests and said
associated options are presented audibly via said headphones;
and
[H] receiving a plurality of voting selections from the voter,
wherein said center push-button switch enables the voter to make
at least one voting selection for each of said contests by selecting
at least one of said options without providing any input on other
of said options.
Mot. at Appendix A, 3–4.
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Proposed substitute claim 24 amends original claim 10 to depend from
claim 23 instead of claim 9. Mot. at Appendix A, 4. Proposed substitute
claim 25 amends original claim 11 to depend from claim 24 instead of
claim 10. Mot. at Appendix A, 4.
Proposed substitute claim 26 with underlining indicating language
added to original claim 13, and strikethrough indicating language deleted, is
reproduced below.
Claim 26 (replaces claim 13): A voting system voter
assistance terminal comprising:
[A] a top housing having a first side portion, a second side
portion, and a recess between the first side portion and the second
side portion:
[B] a ballot marking device;
[C] one or both of a display screen and a set of headphones in
communication with said ballot marking device and configured
to present a plurality of contests and a plurality of options
associated with each of said contests, [D] the display screen
being electrically connected to the ballot marking device and
movable relative to the top housing between a first position and
a second position, at least a portion of the display screen being
received in the recess in the first position and spaced apart above
the recess in the second position; and
[E] a navigation device in communication with said ballot
marking device and comprising a sub-panel having a center
push-button switch, a first pair of push-button switches
positioned above and below said center push-button switch, and
a second pair of push-button switches positioned left and right of
said center push-button switch, the sub-panel being supported on
the first side portion of the top housing, [F] wherein said
navigation device is configured such that one of said first and
second pairs of push-button switches enables scrolling among
said contests, wherein the other of said first and second pairs of
push-button switches enables scrolling among said options; and
wherein said center push-button switch enables the entry of at
least one voting selection for each of said contests by selecting
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at least one of said options without providing any input on other
of said options.
Mot. at Appendix A, 5.
Proposed substitute claim 27 amends original claim 14 to depend from
claim 26 instead of claim 13. Mot. at Appendix A, 5. Proposed substitute
claim 28 amends original claim 15 to depend from claim 27 instead of
claim 14. Mot. at Appendix A, 6. Proposed substitute claim 29 amends
original claim 17 to depend from claim 26 instead of claim 13. Mot. at
Appendix A, 6. Proposed substitute claim 30 amends original claim 18 to
depend from claim 29 instead of claim 17. Mot. at Appendix A, 6.
Proposed substitute claim 31 amends original claim 19 to depend from
claim 30 instead of claim 18. Mot. at Appendix A, 6.
C. Statutory and Regulatory Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” Lectrosonics, Paper 15 at 4–8.
1. Claim Listing
The motion to amend includes a claim listing, as required by
37 C.F.R. § 42.121(b). Mot. at Appendix A.
2. Reasonable Number of Substitute Claims
“There is a rebuttable presumption that a reasonable number of
substitute claims per challenged claim is one (1) substitute claim.”
Lectrosonics, Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). The
Petition challenges 19 claims, and Patent Owner proposes 11 substitute
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claims. Thus, based on numbers alone, Patent Owner proposes no more than
one substitute claim for each challenged claim. Mot. 1–2.
Petitioner argues that there is not a one-to-one ratio of challenged
claims to substitute claims because Patent Owner failed to propose substitute
claims for original dependent claims 4, 12, and 16 to change their
dependency from original claims 1, 9, and 13, respectively, to proposed
substitute claims 20, 23, and 26, respectively. Pet. Mot. Sur-reply 3–4. As a
result, Petitioner contends that claims 4, 12, and 16, if found patentable and
re-written in independent form in an IPR certificate to include all of the
limitations of claims 1, 9, and 13, respectively, would effectively become
independent substitutes for claims 1, 9, and 13. Pet. Mot. Sur-reply 4.
According to Petitioner, this would mean each of claims 1, 9, and 13 would
have two substitute independent claims, 4 and 20 for claim 1, 12 and 23 for
claim 9, and 16 and 26 for claim 13. Pet. Sur-reply 4.
Claims 4, 12, and 16 are not part of Patent Owner’s motion to amend.
Thus, regardless of whether claims 4, 12, and 16, when re-written in
independent form to include all of the limitations of claims 1, 9, and 13,
respectively, “effectively” become independent substitutes for claims 1, 9,
and 13, they do not change the fact that Patent Owner did not propose, in its
Motion, more than one substitute claim to replace independent claims 1, 9,
and 13.
Accordingly, we determine that the number of proposed claims is
reasonable.
3. Respond to Ground of Unpatentability
We next consider whether the proposed substitute claims respond to a
ground of unpatentability involved in this trial. Lectrosonics, Paper 15 at 5–
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6. Patent Owner responds to the grounds of unpatentability at pages 12–25
of the Motion. In particular, Patent Owner presents claim amendments in an
attempt to add features to further distinguish the substitute claims as
patentable over the references asserted in the instituted grounds. Mot. 12–
25. Petitioner does not argue otherwise. See generally Opp. In light of the
above, we determine that the amended language in the proposed substitute
claims is responsive to the grounds of unpatentability involved in this trial.
4. Scope of Amended Claims
“A motion to amend may not present substitute claims that enlarge the
scope of the claims of the challenged patent.” Lectrosonics, Paper 15 at 6–7
(citing 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). Patent Owner
argues the proposed substitute claims include narrowing limitations.
Mot. 2–3. In particular, Patent Owner argues that in addition to the
limitations expressly added to the claims, the language removed from
claims 1 and 13 also narrows the claims, and argues the changes to the
preamble in several claims do not broaden the claims because the original
preambles were not limiting. Mot. 2–3. Petitioner does not argue otherwise.
See generally Opp.
We determine that the limitations added to proposed claims 20–31 do
not enlarge the scope of the original claims.
5. New Matter/Written Description
“A motion to amend may not present substitute claims that . . .
introduce new subject matter.” Lectrosonics, Paper 15 at 6–7 (citing
35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). Accordingly, “the
Board requires that a motion to amend set forth written description support
in the originally filed disclosure of the subject patent for each proposed
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substitute claim, and also set forth support in an earlier filed disclosure for
each claim for which benefit of the filing date of the earlier filed disclosure
is sought.” Id. at 7 (citing 37 C.F.R. § 42.121(b)(1)–(2)). For this
requirement, Patent Owner must cite “to the original disclosure of the
application, as filed, rather than to the patent as issued.” Id. at 8.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to a person of ordinary skill in the art that the inventor
had possession of the claimed subject matter at the time of filing, rather than
the presence or absence of literal support in the specification for the claim
language. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
Patent Owner argues that the proposed substitute claims are fully
supported by U.S. Patent Application No. 10/454,345 (Ex. 2003, (“the ’345
application”)), and directs us to several portions of the ’345 application in
support of its arguments. Mot. 3–12. Petitioner argues claims 20–31 lack
written description support and/or are indefinite,12 focusing on independent
substitute claims 20, 23, and 26, but indicating the substitute dependent

12 We recognize the issue of indefiniteness under 35 U.S.C. § 112 pertains to
the patentability of the proposed substitute claims for which Petitioner bears
the burden of proof. Nevertheless, to the extent Petitioner presents a
substantive argument regarding this issue, we address it here because
Petitioner addresses written description and indefiniteness together under its
analysis of whether Patent Owner’s Motion meets the requirements of 35
U.S.C. § 316(d) and 37 C.F.R. § 42.121. See Opp. 2–10.
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claims that depend from claims 20, 23, and 26 lack written description
support for the same reasons. Opp. 3–9.
With regard to claim 20, Petitioner argues that there is no support for
“displaying on a touchscreen display a discrete presentation screen for each
of the contests.” Opp. 3–4. In particular, Petitioner argues the term
“discrete” never appears in the specification or the drawings, and Patent
Owner does not propose an express construction of the term in its Motion,
resulting in the term being indefinite. Opp. 4. Petitioner states that to the
extent “discrete” means “separate,” the ’273 patent does not disclose a
separate presentation screen for each contest because “each contest may
have write-in editor screens (FIGS. 25f and 25g) that are the same for each
contest and all of the contests may be displayed in a selection review screen.
(Fig. 25i).” Opp. 4.
As noted above, the test for determining compliance with the written
description requirement is not the presence or absence of literal support in
the specification for the claim language. See Ariad, 598 F.3d at 1351. Thus,
the fact that the term “discrete” does not appear in the original disclosure
alone does not demonstrate a lack of written description support.
Furthermore, we disagree with Petitioner’s contention that the term
“discrete” is indefinite, as evidence of record demonstrates that a person of
ordinary skill in the art would have understood the scope of this limitation.
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (“[A]
patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.”); In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)
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(holding a claim is indefinite when it contains words or phrases whose
meaning is “unclear in describing and defining the claimed invention”). For
example, during the oral hearing, counsel for Petitioner indicated that
“discrete” means “separate.” Tr. 17:19–18:2. Counsel for Patent Owner
indicated that discrete means having no more than one contest on a screen,
and all of the candidates for a contest are on the same screen. Tr. 43:16–21.
Under either definition of the term, we find at least Figures 25a and 25e
depict discrete presentation screens for individual voting contests because
the candidates for each contest are presented together on the same screen
and each contest is displayed on its own, separate screen. Ex. 2003,
Figures 25a, 25e. The fact that the contests shown in Figures 25a and 25e
each include an option for a write in candidate, and the fact that a voter’s
selections for each contest may subsequently be displayed together on an
additional selection review screen does not negate the system’s inclusion of
separate presentation screens for individual voting contests. We note that
substitute claim 20 does not require displaying only a discrete presentation
screen for each contest.
Petitioner also argues that substitute claim 20 introduces new matter
because it “recites only the touchscreen being used,” whereas the original
disclosure describes an embodiment that uses the touchscreen and key
buttons. Opp. 4–5. Therefore, according to Petitioner, “a touchscreen
display only embodiment with the discrete presentation screens is also not
supported and lacks written description.” Opp. 5. Claim 20, however, is not
limited to a “touchscreen display only embodiment,” as it expressly includes
the use of push-button switches in conjunction with a touch screen as part of
a navigation device. Mot. at Appendix A, 2–3.
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Petitioner next argues the recitation in claim 20 that “each discrete
screen comprising a name for each of the options associated with the
respective contest” lacks written description support. Opp. 5. According to
Petitioner, the “name for each of the options” is either the name of a
candidate or a “Yes” or “No” proposition and the ’273 patent discloses that a
number of contest screens have a write-in label, which is neither a name of a
candidate nor a “Yes” or “No” proposition. Opp. 5. Petitioner further
argues that the write-in screens themselves have neither a name of a
candidate nor a “Yes” or “No” proposition. Opp. 5. As shown in
Figures 25a and 25e, however, the voting options for each contest are listed
on the screen, and one “option” that can be selected is “write in.” Thus, we
disagree that the phrase “the names for the options” is limited to the name of
a candidate or the choice between “Yes” and “No,” as Petitioner argues.
Opp. 5. Furthermore, Patent Owner is not relying on the write-in editor
screens themselves as providing written description support for “discrete
presentation screen.” Mot. 4–5.
Petitioner argues that the language requiring the push-buttons to
enable the voter to scroll “without any other user input” in claim 20 lacks
written description support because the phrase does not appear in the
original disclosure or any drawing, and because the original disclosure
“discloses that all of the control options (that enable to the voter to scroll)
may be accomplished using the touchscreen or the touchscreen and/or audio
sequence,” meaning that some other user input can enable the voter to scroll.
Opp. 6–7. Again, as noted above, the absence of literal support in the
specification for a claim term is not determinative. See Ariad, 598 F.3d
at 1351. Furthermore, the fact that some embodiments involve using the
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touchscreen to scroll through voting options does not detract from the
disclosure of other embodiments that do not involve using the touchscreen to
accomplish that task. And Patent Owner directs us to portions of the
original disclosure that describe scrolling among contests and options using
only the press buttons of the navigation sub-panel to scroll through contests
and voting options. Mot. 5; Ex. 2003, 4:6–16, 40:14–20, 41:10–18, claim 1.
With regard to claim 23, Petitioner disputes that there is written
description support for the method step requiring “audibly presenting said
contests and said associated options to the voter via said headphones after
the voter elects to have said contests and said associated options presented
audibly.” Opp. 7–8. Petitioner points out that Patent Owner relies on the
following statement for written description support of the “audibly
presenting” limitation: “Specifically, the voter can insert the headphone
jack 316 into the voter assistance terminal 300 after electing to have the
contests and associated options presented audibly.” Opp. 7. According to
Petitioner, Patent Owner asserts that something other than inserting the
headphone jack into the terminal performs the election step in the claim, but
Petitioner contends there is nothing in the original disclosure demonstrating
that “something other than the headphone jack elects the audible
presentation.” Opp. 8.
In support of its position that claim 23 does not include new matter,
Patent Owner contends that Figure 22b shows the claimed voter assistance
terminal includes a screen having “AUDIO prompt 514 which toggles the
digitized audio voting sequence on and off.” PO Mot. Reply 5; Ex. 2003,
39:1–2, Fig. 22b; Mot. 6–7 (citing Figs. 19–25 and page 39 of the original
disclosure in support of Patent Owner’s written description argument). We
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agree with Patent Owner’s contention that this is an example of a voter
electing to have contests presented audibly that is different from inserting
the headphone jack into the terminal. PO Mot. Reply 4–6.
Petitioner also argues that there is no written description support for
“adjusting the touchscreen display after the voter elects” to have the contest
and options presented audibly. Opp. 8. Specifically, Petitioner argues that
at most, the specification discloses that the display shuts down (turns black),
but the claim encompasses any method for adjusting the touchscreen display
such that the contests and cases are not visually presented, which is broader
than any disclosure in the specification. Opp. 8–9 (citing Ex. 1027, 109:7–
110:1 (Dr. Shamos testifying that the touchscreen display can be adjusted in
various ways)).
“[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Ariad, 598
F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir.
2005)). We are not aware of evidence on this record demonstrating that the
concept of adjusting a screen to prevent the visual display of information is
complex or unpredictable. The testimony from Dr. Shamos regarding the
various ways of adjusting the screen so that the contests and options are not
visually presented suggests that doing so would have been a routine matter
to a person of ordinary skill in the art and part of the existing knowledge in
the field. Ariad, 589 F.3d at 1351; In re Wallach, 378 F. 3d 1330, 1334
(Fed. Cir. 2004). As such, the specification’s failure to list every possible
way of adjusting a screen does not demonstrate a lack of written description
support for claim 23. Ariad, 589 F.3d at 1351; Wallach, 378 F. 3d at 1334.
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With regard to claim 26, Petitioner argues that there is no written
description support for the requirement of “a top housing having a first side
portion, a second side portion, and a recess between the first side portion and
the second side portion” because claim 26 requires there to be “no
relationship” between the top housing and the ballot marking device recited
later in claim 26. Opp. 9–10. The portion of the original disclosure that
Patent Owner relies on, however, clearly shows the ballot marking device
being positioned between top housing 340 and lower housing 334. Opp. 9–
10; Ex. 2003, 35:14–16, Figs. 19, 20. We disagree that claim 26 includes a
requirement regarding any specific relationship, or lack thereof, between the
top housing and the ballot marking device. Claim 26 simply recites that the
voter assistance terminal comprises both, which is consistent with the
description in the original disclosure. Mot. at Appendix A, 5; Ex. 2003,
35:11–16, Figs. 19, 20. Not only does this demonstrate written description
support, but it also undermines Petitioner’s argument that substitute claim 26
is indefinite. Opp. 9–10.
After considering the parties’ arguments and evidence, including
Patent Owner’s citations to the ’345 application for the limitations of
proposed substitute claims 20–31, we determine that the proposed substitute
claims do not present new matter, are not indefinite, and Patent Owner has
set forth support in the original disclosure for the proposed substitute claims.
6. Conclusion
Patent Owner’s Motion meets the statutory requirements of 35 U.S.C.
§ 316(d) and the requirements of 37 C.F.R. § 42.121.

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D. Patentability of Substitute Claims
1. Proposed Substitute Claims 20–22
Petitioner contends that substitute claims 20–22 are unpatentable as
obvious in view of the combined disclosures of Neff, Marshall, and
Boldin.13 Opp. 10.
With regard to claim 20, Petitioner indicates that various elements of
substitute claim 20 are disclosed in Neff and Marshall as set forth in the
Petition. Opp. 11. This includes Petitioner’s argument that Neff and
Marshall teach or suggest that “[p]ush-button switches enables the voter to
scroll . . .” as set forth in Section V.F.4.iii of the Petition. Opp. 11; see also
Pet. 64 (showing that Section V.F addresses the obviousness of claims 1–8
under Neff in view of Marshall). As discussed in Section II.J above,
however, we do not agree with Petitioner’s arguments in the Petition that
Neff and Marshall teach or suggest this limitation.
In addition to maintaining the requirement that the first and second
pairs of push-button switches enable the voter to scroll among voting
contests and options, Patent Owner’s proposed amendments to substitute
claim 20 further specify that the second pair of push-button switches enables
the voter to scroll among contests and the first pair of push-button switches
enables the voter to scroll among options. Mot. at Appendix A, 2.
Substitute claim 20 adds an additional limitation, requiring that the first and
second pairs of push-buttons switches enable scrolling among options and
contests “without any other user input.” Mot. at Appendix A, 2.

13 WO 03/060837 A1, published July 24, 2003 (Ex. 1023).
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Petitioner argues that the combined teachings of Neff and Marshall
disclose or suggest these limitations, because Neff discloses that a user can
click a box to select a candidate and click next button 621 to proceed to next
contest, and can do so without any other user input. Opp. 15. Petitioner
further argues that a person of ordinary skill in the art would use the push-
button switches disclosed in Marshall for the reasons set forth in the Petition.
Opp. 14–15 (citing Petition, Section V.F.3). Petitioner does not contend
Boldin discloses these limitations. Opp. 11 (discussing Boldin’s disclosure
of touchscreens). In its Sur-reply, Petitioner contends that “Marshall
specifically discloses that input could be accomplished ‘with the navigation
keys only . . .’,” and, therefore, “a user could navigate an interface with only
the navigation keys without any other user input.” Pet. Mot. Sur-reply 6.
Substitute claim 20, however, requires more than simply “navigat[ing]
an interface with only the navigation keys.” Claim 20 specifies that certain
keys, and only those keys, perform certain scrolling operations. Petitioner
has not directed us to evidence sufficient to establish that Neff or Marshall
discloses a pair of push-button switches that enable a user to scroll among
voting contests without any other user input. Nor has Petitioner directed us
to evidence sufficient to establish that Neff or Marshall discloses a different
pair of push-button switches that enable a user to scroll among voting
options without any other user input. Instead, Petitioner has simply provided
evidence that Marshall’s entire navigation pad, i.e., all of the buttons
collectively, can be used to enable scrolling among voting options and
contests, not that particular buttons, and only those buttons, enable specific
scrolling operations, as substitute claim 20 requires.
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In view of the foregoing, we find Petitioner has not demonstrated by a
preponderance of evidence that the combined disclosures of Neff and
Marshall teach or suggest all of the limitations of substitute claim 20.
Claims 21 and 22 depend from claim 20, and therefore include all of the
limitations in claim 20. As a result, we reach the same conclusion for
proposed substitute claims 21 and 22. For all of the foregoing reasons, we
find that Petitioner has not established by a preponderance of evidence that
proposed substitute claims 20–22 are unpatentable as obvious in view of
Neff, Marshall, and Boldin.
2. Proposed Substitute Claims 23–25
Petitioner argues that claims 23–25 are unpatentable as obvious over
the combined disclosures of Neff, Marshall, McClure14, and McDermott or
Nguyen. Opp. 16.
With regard to claim 23, Petitioner indicates that various elements of
substitute claim 23 are disclosed in Neff and Marshall as set forth in the
Petition. Opp. 17 (citing only Sections V.G and V.F of the Petition as
disclosing certain limitations of claim 23); see also Pet. 64 (showing that
Section V.F addresses the obviousness of claims 1–8 under Neff in view of
Marshall), 83 (showing that Section V.G. addresses the obviousness of
claims 9–19 under Neff in view of Marshall and McDermott). This includes
Petitioner’s argument that Neff and Marshall teach or suggest “push-button
switches enables the voter to scroll . . .” as set forth in Section V.F.4.iv15 of

14 US 6,250,548 B1, issued June 26, 2001 (Ex. 1024).
15 Although Petitioner cites V.F.4.iv of the Petition, that section addresses a
different limitation. Pet. 73. We understand Petitioner intended to cite
Section V.F.iii, which addresses the “enables a voter to scroll” limitation
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the Petition. Opp. 17. As discussed in Section II.J above, however, we do
not agree with Petitioner’s arguments in the Petition that Neff and Marshall
teach or suggest this limitation. And although Petitioner includes Nguyen
among the list of prior art that invalidates substitute claim 23, Petitioner
never discusses Nguyen in connection with substitute claim 23, or directs us
to any portion of Nguyen that discloses or suggests a limitation of claim 23.
Additionally, claim 23 is directed to a method of voting that includes
“providing a touchscreen display configured to visually present [voting]
contests and [] associated options to the voter” and “audibly presenting
[voting] contests and [] associated options to the voter via [] headphones
after the voter elects to have [the] contests and [] associated options
presented audibly.” Mot. at Appendix A, 3–4. Claim 23 further requires, in
an added limitation, “adjusting the touchscreen display after the voter elects
to have said contests and said associated options presented audibly so that
said contests and said associated options are not visually presented on the
touchscreen display as said contests and said associated options are
presented audibly via said headphones.” Mot. at Appendix A, 4.
Petitioner does not direct us to any portion of Neff, Marshall,
McClure, McDermott, or Nguyen that discloses or suggests adjusting the
touchscreen display after the voter elects to have the voting options
presented audibly so that the options are not visibly presented on the
touchscreen. Opp. 20. Instead, Petitioner argues generally that a person of
ordinary skill in the art “would have been strongly motivated to offer a
solution to individuals with disabilities, including nonvisual access in a way

(Pet. 70), and is the section Petitioner cited with regard to this limitation
when addressing claim 20. Opp. 11.
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that protects those individual’s privacy,” noting that the Help America Vote
Act (“HAVA”) requires such privacy. Opp. 20 (citing Ex. 1042 ¶ 110;
Ex. 1041).
Although we agree with Petitioner that a person of ordinary skill in
the art would have had a reason to protect the voting privacy of an individual
with disabilities, Petitioner has not provided sufficient evidence or
explanation demonstrating why a person of ordinary skill in the art would
have protected the privacy of a voter by adjusting the touchscreen display in
the specific manner recited in claim 23. KSR, 550 U.S. at 418 (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”) (emphasis added). For example, Petitioner
does not contend that adjusting the screen is the only way to protect the
privacy of a voter under HAVA, or that it has advantages over other ways of
protecting privacy. Cf. Tr. 44:20–45:4 (counsel for Patent Owner arguing
that “voting machines are already positioned in a voting booth where privacy
is met under HAVA. That doesn't change just because the person is blind . .
. . If you’ve already met HAVA how does that teach you to turn your screen
off.”). Absent such evidence or explanation, Petitioner’s argument appears
to improperly rely on hindsight. KSR, 550 U.S. at 421 (“A factfinder should
be aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.”).
Additionally, Petitioner’s argument that a person of ordinary skill in
the art would have known of several ways to adjust a touchscreen display so
that voting contests and options are not visually presented on the
touchscreen (Pet. Mot. Sur-reply 8), in and of itself is not persuasive, as “[a]
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patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” KSR, 550 U.S. at 418.
In view of the foregoing, we find Petitioner has not demonstrated by a
preponderance of evidence how the combined disclosures of Neff, Marshall,
McClure, McDermott, or Nguyen teach or suggest all of the limitations of
substitute claim 23. Claims 24 and 25 depend from claim 23, and therefore
include all of the limitations in claim 23. As a result, we reach the same
conclusion for proposed substitute claims 24 and 25. For all of the
foregoing reasons, we find that Petitioner has not established by a
preponderance of evidence that proposed substitute claims 23–25 are
unpatentable as obvious in view of Neff, Marshall, McClure, McDermott,
and Nguyen.
3. Proposed Substitute Claims 26–31
Petitioner argues that claims 26–31 are unpatentable as obvious over
the combined disclosures of Neff, Marshall, McDermott and Narisawa16.
Opp. 20–21.
With regard to claim 26, Petitioner indicates that various elements of
substitute claim 26 are disclosed in Neff, Marshall, and McDermott as set
forth in the Petition. Opp. 21 (citing Sections V.G of the Petition as
disclosing certain limitations of claim 26); Pet. 83 (showing that Section
V.G addresses the obviousness of claims 9–19 under Neff in view of
Marshall and McDermott). This includes Petitioner’s argument that Neff
and Marshall teach or suggest “push-button switches enables scrolling” as

16 JP 2002-260044, published Sept. 13, 2002 (Ex. 1026).
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set forth in Section V.G.7.iv–v of the Petition. Opp. 21–22. As discussed in
Section II.J above, however, we do not agree with Petitioner’s arguments in
the Petition that Neff and Marshall teach or suggest this limitation.
Petitioner does not rely on Narisawa for this limitation. Opp. 22–24.
In view of the foregoing, we find Petitioner has not demonstrated by a
preponderance of evidence how the combined disclosures of Neff, Marshall,
McDermott and Narisawa teach or suggest all of the limitations of substitute
claim 26. Claims 27–31 depend either directly or indirectly from claim 26,
and therefore include all of the limitations in claim 26. As a result, we reach
the same conclusion for proposed substitute claims 27–31. For all of the
foregoing reasons, we find that Petitioner has not established by a
preponderance of evidence that proposed substitute claims 26–31 are
unpatentable as obvious in view of Neff, Marshall, McDermott and
Narisawa.
4. Conclusion
For the reasons set forth above, we determine that Petitioner has not
demonstrated by a preponderance of evidence that proposed substitute
claims 20–31 are unpatentable. Thus, we grant Petitioner’s Contingent
Motion to Amend.

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IV. CONCLUSION
In summary:

Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment
Substitute Claims Proposed in the Amendment 20–31
Substitute Claims: Motion to Amend Granted 20–31
Substitute Claims: Motion to Amend Denied
Substitute Claims: Not Reached

Claims 35 U.S.C § Reference(s)/Basis
Claims
Shown
Unpatentabl
e
Claims
Not shown
Unpatentable
1, 4, 9, 12,
13, 16
102 Nguyen 1, 9, 13 4, 12, 16
2, 3, 10, 11,
14, 15
103 Nguyen,
Marshall
2, 3, 10, 11,
14, 15
17–19 103 Nguyen,
McDermott 17–19
5, 8 103 Neff,
Nguyen 5 8
6, 7 103 Neff,
Nguyen,
Marshall
6, 7
1–8 103 Neff,
Marshall 1–8
9–19 103 Neff,
Marshall,
McDermott
9–19
Overall
Outcome
1–3, 5–7, 9–
11, 13–15,
17–19
4, 8, 12, 16
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V. ORDER
It is hereby,
ORDERED that, claims 1–3, 5–7, 9–11, 13–15, and 17–19 of the ’273
are held unpatentable;
FURTHER ORDERED, claims 4, 8, 12, and 16 of the ’273 have not
been proven to be unpatentable;
FURTHER ORDERED that Patent Owner’s Contingent Motion to
Amend is granted; and
FURTHER ORDERED that because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Timothy Lohse
Harpreet Singh
Larissa Bifano
DLA PIPER LLP
tim.lohse@dlapiper.com
harpreet.singh@dlapiper.com
larissa.bifano@dlapiper.com

For PATENT OWNER:

Robert Evans, Jr.
Michael Hartley
Kathleen Petrillo
LEWIS RICE LLC
revans@lewisrice.com
mhartley@lewisrice.com
kpetrillo@lewisrice.com