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2016 Giles S. Rich Memorial Moot Court Problem
This case involves an appeal from a final decision of the Patent Trial and Appeal Board
in an Inter Partes Review proceeding captioned Billary v. Shrub.
Clint Billary filed a petition before the USPTO to institute an Inter Partes Review of 5
claims 1 and 10 of US Patent 8,537,303. Billary argued that claim 1 was obvious over
an article by Billary published just before the patent was filed and that claim 10 was
anticipated over an earlier patent publication to Sandy Bernard. The inventor of the US
Patent 8,537,303, G.O.B. Shrub, had previously disclosed the subject matter of the
patent and attempted to disqualify Billary’s article as prior art by arguing Shrub’s earlier 10
disclosure put Billary’s article within the exception of 35 U.S.C. § 102(b)(1)(B) (post-
AIA). Shrub further argued that the Bernard patent publication did not meet each and
every element of claim 10 under a broadest, reasonable interpretation of that claim. The
Board ruled in favor of Billary and canceled claims 1 and 10.
Pursuant to 28 U.S.C. § 1295(a)(4)(A) & 35 U.S.C. § 141(c), Shrub filed this appeal in 15
the United States Court of Appeals for the Federal Circuit, seeking to reverse the
Board’s cancellation of claims 1 and 10. The appeal was docketed as Appeal No. 15-
9999. On appeal the parties stipulated to arguing only two issues: 1) the status of the
Billary Article as prior art under the America Invents Act; and 2) the proper construction
of claim 10, insofar as both issues control validity of claims 1 and 10. The USPTO 20
waived rights to participate in the appeal as an intervener.
Record Facts
The record on appeal is generally confined to the facts presented herein. Any fact not
recited is without support, except that clearly established, general facts consistent with
this record may be judicially noticed. 25
Technological background
State and county officials have sought to generally improve the voting experience In the
face of declining voter turnout, concerns over voter fraud, and technical difficulties in
counting votes in elections. These officials have largely turned to technology for
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solutions, especially electronic voting machines. In turn, innovators have designed new
voting machine technology to compete for this demand.
One issue underlying lower voter turnout in particular is a lack of enthusiasm and
political awareness among the electorate. Citizens complain that voting often feels like a
chore - becoming educated on issues and understanding positions taken by the myriad 5
candidates requires large amounts of attention and research. The physical act of voting
often means having to set aside time on a workday, gather appropriate identification,
and wait in an uncomfortable line to deal with unfamiliar and potentially glitchy voting
equipment. Many voters feel that their individual ballot has only a tiny impact on an
election result. Thus, citizens often conclude that the time they would spend voting is 10
better spent on other matters, including entertainment and socializing.
A separate, technical issue underlying problems with electronic voting machines is
decalibration of input devices, like touchscreens, on the machines. A voter may select
one candidate or option, but when decalibrated, the electronic voting machine selects
another candidate or option. In extreme circumstances decalibrated voting machines 15
display incorrect selections and even inaccurately record votes after different user input
has been entered. Household items, including magnetized and electronic handheld
devices, have been known to cause such decalibration. Thus, much decalibration
occurs accidentally; however, there are concerns about voter fraud by purposefully
causing decalibration in an opponent’s stronghold precincts. 20
Enter G.O.B. Shrub (hereinafter “Shrub”), entrepreneur and inventor. Shrub came up
with a social-network-enabled voting device that interacts with a voter’s online social
network to suggest or even “auto-vote” for candidates and issues, as well as post voter
activity to voters’ networks. The social network interface has increased voter turnout
and enthusiasm, making voters more engaged in the voting process and feel like they 25
voted “correctly” without much research into issues or candidates. Shrub also devised a
security system that protects against decalibration and alerts poll workers and voters
when decalibration has occurred. The security system uses a special touchscreen
material and comparison software to determine when a machine is decalibrated. Upon
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detecting decalibration, the machine alerts the voter or poll worker through a color
change and halts further use of the electronic voting machine until re-calibrated. Shrub
filed a patent application on these voting machine inventions on April 18, 2013 under
the Prioritized Examination Program, which issued as US Patent 8,537,303 (hereinafter
“the ‘303 Patent”) on October 1, 2013. 5
The ‘303 Patent
The ‘303 Patent states in its written description that “disclosed herein are several
example voting machines that solve problems long-existing in the democratic process
and in electronic voting machines.” In a first example, the detailed description section of
the ‘303 Patent discusses a voting machine with an input fidelity security system. Part of 10
the security system is a flexible electromagnetic shield incorporated in the touch screen
with associated software, described as such (reference characters omitted):
Using a comparison program as a submodule of the machine operation
program discussed above . . . in any language, such as Java, C++, Python,
.Net frameworks, etc. . . , the machine checks that the touch screen, which 15
is designed to store and display the ballot form, will accurately record a
finger tap at the indicated position next to a candidate or issue. An error in
calibration may be detected by a discrepancy in the shield’s input voltage
and the screen’s registered output. . . When the machine finds an error in
calibration, such as when a calibration tap does not result in a correctly 20
displayed or stored ballot form, the software program alerts the user. For
example, the software may change the touch screen, for example, from the
original color used in the touch screen to its complementary color, such as
red to green, violet to yellow, or blue to orange, to indicate the decalibration.
The machine then remains in this state and stops registering additional input 25
or casting a ballot until recalibrated.
In a second example, the detailed description of the ‘303 Patent describes a social
network-enabled function to automatically vote for a voter or recommend how the voter
should vote. An excerpt of this example is given below (reference characters omitted):
The machine is configured to connect to social networks in order to harvest 30
political preference information about contacts of the voter in the social
networks. For example, the voting machine may be connected through a
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TCP/IP interface to the Internet to log into social networks like Facebook,
LinkedIn, Twitter, SnapChat, Instagram, etc. Through these third-party
services, the machine can correctly identify the voter’s contacts and political
content posted to and visible in the voter’s social networks by the contacts.
The machine then processes the political content to determine which 5
candidates and issues are most preferred by the voter’s contacts...
For example, the processor may access a voter’s Twitter page and identify
political leanings of people the voter follows, by, for example, identifying
contacts who follow political candidates or retweet political statements. ...Or
for example, the processor may access a voter’s Facebook page and 10
identify politically-themed stories appearing in their newsfeed, as well as
tally how many friends like or follow particular political causes. Using these
gathered tallies of political activity from an authenticated service, the
processor can determine most popular or important candidates and issues
and either recommend them or vote them for the voter. 15
FIG. 3 of the ‘303 Patent is shown below, illustrating an example voting machine 100
with (inter alia) touch screen 110, processor 150, and memory 160, all connected to an
interface 200 with social networks 210, as described in the ‘303 Patent:
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Claims 1, 10, and 11 of the ‘303 Patent recite:
1. An electronic voting machine comprising:
a computer processor with memory;
a touch screen on or in the electronic voting machine, wherein the touch screen
includes a flexible conductive electromagnetic shield protecting the touch screen against 5
decalibration, wherein the computer processor is programmed to,
test the touch screen for decalibration,
indicate decalibration by changing an original color used in the touch screen
to a different color, and
halt further use of the electronic voting machine until the touch screen is re-10
calibrated.
10. An electronic voting machine comprising:
a computer processor with memory;
an input device configured to receive voting selections from a voter; and 15
an interface communicatively connected with at least one social network of the
voter, wherein the computer processor is programmed to,
access the social network of the voter,
identify political activity visible to the voter in the social network from
connections of the voter in the social network, 20
determine voting preferences of the connections based on the political
activity, and
at least one of, recommend to the voter and vote for the voter, the voting
preferences of the connections.
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11. The electronic voting machine of claim 10, wherein the social
network is Facebook.
During the original prosecution of the ‘303 Patent, claims 10 and 11 were rejected as
anticipated under 35 U.S.C. § 102(a)(1) (post-AIA) by a voting application called 30
VoteTrumper, first installed on mobile devices on January 14, 2012. The VoteTrumper
app included a “contact input” feature in which users could submit contact lists from
their mobile device into the VoteTrumper application. The feature would then analyze
those contacts from the phone for online political activity, including searching the
Internet. The feature would tally particular views and candidate support statements 35
among those found and finally display the results as a recommendation to the user as a
“Vote Like Your Friends” screen in the VoteTrumper application. The Examiner applied
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VoteTrumper’s contact input feature for the entire “access,” “identify,” “determine,” and
“recommend” configurations of the processor, with the VoteTrumper application as
installed on an Internet-capable smartphone with touchscreen meeting the remainder of
the claim.
In response, Shrub argued that VoteTrumper did not meet claims 10 or 11. Particularly, 5
Shrub filed the following remarks before the Examiner (emphasis in original):
Claim 10 recites a processor that “access[es] the social network of the
voter” and then identifies visible political activity “in the social network.”
VoteTrumper, however, accesses a contact list from a user’s mobile
device and then looks online for political activity of the contacts. The 10
device’s contacts and the Internet are not the same “social network” used
in the accessing and identifying of claim 10. As such, VoteTrumper fails to
teach or suggest the “social network” used in both the accessing and
identifying elements of claim 10. . .
The Examiner withdrew the rejection based on these remarks and allowed the 15
application. In her Reasons for Allowance, the Examiner stated:
Claim 10 is allowable because, while the prior art discloses what is fairly
understood as an electronic voting machine, the prior art is not seen to
disclose such a machine using Facebook or another social network as
claimed by the Applicant. 20
In his Comments on the Reasons for Allowance filed with the issue fee payment, Shrub
made a general reply:
Although the Examiner identifies individual terms allegedly not disclosed by
the prior art, the claims are not necessarily limited to such terms. Rather,
the claims’ allowability must instead depend on their unique arrangement 25
and interrelation of terms and/or the advantages and unpredicted results of
such organization.
Shrub’s Conference Article & Presentation
A month prior to filing the patent application, on March 18, 2013, Shrub gave a
presentation at a technical conference sponsored by the Citizens Disunited Voting 30
Technology Association. Ahead of the presentation, Shrub emailed to the conference
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coordinator an article (hereinafter “the conference article”) and PowerPoint slides for
distribution to attendees. The coordinator accidentally deleted the article from the
conference materials without viewing it, so only the slides were given to attendees at
the conference. The conference article remained in the coordinator’s email inbox.
The undistributed conference article included the same subject matter as the ‘303 5
Patent. The presentation slides, however, were more general, showing and describing
only some features of an electronic voting machine. The slides described an
electromagnetic shield to protect against decalibration, as well as general processors,
memory, and C++ compiled programming to run the machine, including using the shield
to test for and respond to decalibration. Two sequential slides in the presentation 10
described screen functionality and showed a “before
decalibration” touch screen and then an “after
decalibration” touch screen. The “before decalibration”
touch screen was blank, or solid white, and the “after
decalibration” touch screen was shown with a diagonal line 15
fill, with a caption saying “visual alert is shown on screen
upon decalibration.” Speaking extemporaneously, Shrub
orally told the audience in conjunction with these slides,
“the after screen could be similar to the before calibration
touch screen, but in a complementary color scheme or 20
something like that to let voters and operators know about
the decalibration and the machine being unusable.” The
second slide showed the machine with the “after
decalibration” screen and a caption stating “no further
input can be processed by the machine until recalibrated.” 25
The two slides are shown at right.
About 200 people saw Shrub’s presentation, and several attendees expressed an
interest in it afterward to Shrub and in the press. Shrub directed attendees to the full
article he erroneously believed to be included in the conference materials. Two weeks
later Shrub became aware, due to attendees emailing him in confusion about not finding 30
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the article, that the article was not included. Shrub did not provide the article to the
inquiring attendees out to concern about the conference’s first publication rights, but he
emailed the conference coordinator. The coordinator found the article from the original
email, and CDs containing an audio-visual recordation of Shrub’s presentation, the
Powerpoint slides already distributed at the conference, and the rediscovered 5
conference article were later given to all attendees on April 11, 2013.
The Billary Article & The Goracle
Clint Billary (hereinafter, “Billary”) - a competitor of Shrub’s - heard general buzz from
the CDVTA conference that Billary did not attend. In response, Billary published an
article (“The Billary Article”) on advances in electronic voting machines in Jerry 10
Mander’s Electronics Weekly, a trade publication, on March 25, 2013. The Billary Article
described Billary’s electronic voting machine, trademarked as the “Goracle.” Billary had
not previously disclosed the Goracle, and in the Billary Article he stated
he was motivated to disclose following the conference “in light of rapid
innovation and new interest in this field, to establish the Goracle’s 15
market-leading features for the record.”
The Billary Article was lengthy, and, at various points disclosed several
voting machine features that Shrub described at the conference. The
Billary Article, however, described the Goracle as entirely using Java,
an interpretative code, to execute its functionality. The Billary Article 20
further indicated that upon decalibration, the Goracle touch screen
changes color, “such as from green to yellow,” blinks for about 2
minutes, shows the location where the magnetism or static electricity
effect had occurred on the touch screen, and then shuts down. An
image from the article is shown at right. Neither the Billary Article nor 25
Shrub’s conference slides state anything about the Internet.
The Bernard Publication
US Patent Publication 2013/0347160 to Sander Bernard (“The Bernard Publication”)
published in December of 2013. The Bernard Publication had a filing date in June 2012,
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and was directed to “Financial-Aware Voting Devices and Methods.” The Bernard
Publication disclosed software that could be installed on any “voting-capable” machine,
including “a mobile device, a desktop computer, or a computerized voting machine
capable of accessing electronic financial records.” In its detailed description the Bernard
Publication taught the following about an example voting machine loaded with this 5
software (reference characters omitted):
...Once the voter has been identified, the processor accesses the Internet
through the communicative connection . . . The processor may search
existing and known search engines, the Federal Election Commission
Website, and/or third-party contribution trackers like FundRace or 10
OpenSecrets with the voter identification. For example, the processor may
query campaign donations by the voter’s first and last name on fec.gov and
identify individuals and organizations to which the voter is associated and/or
has contributed.
. . .With the identified voter political connections from the Internet, the 15
processor may further determine political activity of the voter’s connections
by identifying the connections’ online activity, including any party affiliation,
political keywords on websites associated with the connections, political
affiliations of other contributors to the connections searchable online as
discussed above, and so on. . . . Having identified the connections’ political 20
activity and affiliations, the processor may display a . . . most common,
political position to the voter . . . that may be further matched with a
candidate or position available for selection to the voter on a ballot on the
same machine.
. . .In this way, voters may be presented with suggestions for how to vote 25
based on how they have financially contributed, all through online
information freely available. Voters may thus better align their ballot with
their relatively more important financial influence, . . .and their financial
connections’ interests.
Proceedings and Evidence in the IPR of the ‘303 Patent 30
In June of 2014, Shrub learned about the Goracle. Based on obtained technical
specification, Shrub identified that the Goracle had an electromagnetic shield with
decalibration detection software and was also Internet-capable and configured to
generate voting suggestions based on the voter’s online connections. Shrub concluded
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that the Goracle infringed claims 1 and 10 of the ‘303 Patent and sent Billary a cease-
and-desist letter on June 9, 2014, which stated, in part:
...your machine is further seen to contain every element of claim 10 of the
‘303 Patent. The Goracle is configured to access the Internet and gather
political information about a voter’s connections on the Internet. The 5
machine then offers a recommendation to the voter based on an analysis
of this political information. This is the same configuration as in claim 10.
Billary consulted with his attorney, who analyzed the cease-and-desist letter, compared
the Billary Article to the ‘303 Patent, and uncovered the Bernard Publication in a prior
art search of the ‘303 Patent. Billary then filed a petition for Inter Partes Review 10
(hereinafter, “IPR”) with the PTAB on claims 1 and 10 of the ‘303 Patent on August 4,
2014. In the IPR petition, Billary cited elements of the Billary Article as prior art under 35
U.S.C. 102(a)(1) that rendered claim 1 of the ‘303 Patent obvious. Billary further cited
the Bernard Publication as prior art under 35 U.S.C. 102(a)(2) that anticipated claim 10
of the ‘303 Patent. Shrub, caught off guard by the new IPR procedure and by his 15
previous ignorance to the Billary and Bernard Publications, failed to file a preliminary
response to the petition. The PTAB instituted an IPR on the petition’s grounds against
claims 1 and 10 of the ‘303 Patent on November 24, 2014.
During the IPR, the parties stipulated that the Billary Article disclosed each and every
feature of claim 1 in an enabling manner but disputed whether features of the Billary 20
Article were available as prior art. The parties further stipulated that the ‘303 Patent and
Shrub’s conference article disclosed the same subject matter with regard to claim 1 in
the ‘303 Patent. The parties lastly stipulated that the Bernard Publication disclosed a
computer processor, memory, input device, and an Internet interface but disputed
whether the Bernard Publication disclosed the programming functions of claim 10 as 25
properly interpreted.
First, the parties disputed to what extent the Billary Article was excluded as prior art by
35 U.S.C. § 102(b)(1)(B), newly enacted under the AIA. During his testimony period,
Shrub submitted an affidavit authenticating a copy of the conference CD including his
presentation PowerPoint slides as performed and distributed at the conference on 30
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March 18, 2013, and the conference article as earlier emailed but not distributed until
April 11, 2013. Shrub further attested to the nature of the conference, interactions with
attendees, and the discovery about the article being originally omitted from the
conference materials.
Shrub argued that, through the conference, he had publicly disclosed the subject matter 5
of the ‘303 Patent before the Billary Article. Shrub argued that the conference article
itself had been sufficiently “publicly disclosed” under § 102(b)(1)(B) as of his emailing
the article to the conference coordinator prior to March 18, 2013, so that the entire later
Billary Article should be excepted from the prior art. Shrub argued in the alternative that
the slides and presentation disclosed at the conference sufficiently fell within the subject 10
matter of claim 1, or were sufficiently similar to the Billary Article, for 102(b)(1)(B) to
exclude all aspects of the Billary Article as prior art.
Billary countered that the materials Shrub proffered through the conference were
insufficiently similar to the Billary Article to remove it as prior art. Billary first argued that
the article submitted via email to the conference was not “publicly disclosed” at the 15
conference. Billary next argued that the program slides, disclosing functionality written
in C++, was sufficiently different than the Billary Article disclosing functionality written in
Java, such that the “subject matter disclosed” was not present and thus not excepted
from the Billary Article. Billary argued in the alternative that the Billary Article, describing
the touch screen’s color change from green to yellow, was more specific than the 20
generic white-to-diagonal-line-fill change shown in the presentation slides. Further, the
slides described the touch screen as not accepting further input, while the Billary Article
more specifically described the machine as shutting down. Billary argued that these
differences should allow at least these elements of the Billary Article to be applied as
prior art against the ‘303 Patent in the AIA’s first-to-file regime. Billary concluded that, 25
taken with existing voting machine technology such as VoteTrumper and the Bernard
Publication, these elements of the Billary Article rendered claim 1 obvious.
Second, the parties disputed the proper construction of claim 10, and whether it was
anticipated by the Bernard Publication. The parties argued and offered evidence as to
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whether the “social network” recited in claim 10 could be interpreted to include
accessing any information from the Internet. Such information would include FEC
information available online, as used by the Bernard Publication.
For intrinsic evidence, Shrub pointed to the examples in the ‘303 Patent specification as
being more limited than the Internet generally, instead requiring third-party services like 5
Facebook or Instagram. Shrub further relied on the prosecution history as explicitly
disclaiming the Internet generally. Billary countered that the specification and
prosecution were not clearly limiting, and further pointed to claim 11, under a claim
differentiation argument, as requiring “social network” in claim 10 to mean something
more than a third-party service like Facebook. 10
For extrinsic evidence, Shrub offered his own testimony by deposition, under leave by
the Board, as the inventor of the ‘303 Patent and nine other US patents for voting
machines and as an expert with a Bachelor’s and Master’s degrees in communications
and marketing and having worked in voting technology for over 20 years. Shrub
proffered a 2010 Merriam Webster Dictionary of the term “social network” as “an online 15
service or site through which people create and maintain interpersonal relationships . . .
such as Facebook and Twitter.” Shrub further testified as the inventor of the ‘303 Patent
that “social network” as claimed could not encompass the generic Internet, based on the
specification and the structure of claim 10, excerpted below:
Patentee Attorney: What is a social network in your ‘303 Patent? 20
Shrub: The social network is a third-party website or service online. Online
as in accessible through the Internet but not the Internet itself. . . . Like
Facebook or LinkedIn or what was MySpace years ago before it became
[inaudible] and as set out in the ‘303 Patent. It’s not the Internet itself,
because you have to have user login and personal accounts for a social 25
network. Anyone can access the Internet. . . .
Shrub: This is why claim 10 recites that the machine uses connections in
the social network and identifies political activity visible to the voter in the
social network. You can’t have that on just the Internet, the machine has to
be looking in a network, like Facebook or what have you, to determine 30
connections and visible content. This is the only way to make sure the
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political activity is accurate . . .you know, that it’s actually from someone
associated with the voter as seen through the logged-in user of the service
[inaudible] the example of Facebook.
[on cross-examination] 5
Petitioner Attorney: Are you familiar with a social network as a sociological
term to describe any social connection, including people connected by
networked computers?
Shrub: I am, but in that sense you wouldn’t talk about visibility. Any activity 10
occurring in the network. . .(interrupted)
Petitioner Attorney: So, yes is your answer. Why didn’t you simply redefine
the term social network in your ‘303 Patent to exclude this well-established
broad meaning you knew about?
Shrub: Well I did define it in prosecution of the ‘303 Patent. But as to the 15
‘303 specification well it’s prolix. I mean, look, . . . those in the field would
have understood the machine wasn’t just going out and crawling the Internet
to see who the voter knew. That’s going to turn up junk. A social network
here was using a well-established definition and it’s not (emphasis) the
Internet. It’s a third-party service like the Facebook or now Twitter. So we 20
already had selected this specific definition of social network by the context
the invention worked in to get accurate results.
Petitioner Attorney: But the claimed machine could crawl the Internet, right?
You agree the Internet could be used with the voting machine of the ‘303
Patent, but it would just yield poor results, junk as you say? 25
Shrub: Yes you could program it however you wanted. . . But I don’t know
why anyone would do that. . . it’s certainly not what I sought with the ‘303
Patent, because those results would be junk, just pure… (interrupted)
Billary, for his part, pointed to evidence that “social network” in the context of the ‘303
Patent could include the general Internet, and pages publicly accessible thereon that 30
socially linked votes to one another, like the content of FEC filings available online and
used by the Bernard Publication. Billary further pointed to the same dictionary proffered
by Shrub as including another definition of “social network” as including any “network of
individuals . . . connected by interpersonal relationships,” including the Internet.
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Billary also offered an affidavit by Dr. RandAyn Praul, a PhD in computer science who
specializes in Big Data organization and analysis for population-level datasets. Dr. Praul
had notably created a complex database and associated software for tracking electoral
trends and predicting election outcomes through social media called FourTwentySeven.
Her testimony is excerpted below: 5
By 2013, electoral technologists and forecasters used “social network” to
mean any social arrangement of voters, including voter connection or
association information freely accessible on the Internet. Indeed, the
Internet - beyond just social media websites like LinkedIn or Twitter - had
and continues to yield very useful voter information through networking, like 10
website traffic data, message board posts, FEC information, etc. . .
Of course, regarding voting technology - like here an Internet-capable voting
machine - that used a “social network” to make a political recommendation,
I would understand that to include any voter arrangement and social
connection, whether it be through the Internet generally or a social media 15
service like Facebook. All those sources would have worked to find political
content to which the voter was exposed or involved in . . . If someone talking
about voter demographics or electoral analysis wanted to refer specifically
to something narrower than the general Internet or any network of people
and limited to a specific site - LinkedIn connections, Twitter followers, 20
YouTube fans, or Facebook groups - they would use the term “social
networking service” or “social media outlet,” not just “social network.”
The Final Written Decision
The PTAB issued its final written decision on July 17, 2015. A majority of the Board
ruled in favor of Billary on claim 1, with one judge dissenting. The Board unanimously 25
ruled in favor of Billary on claim 10. In light of these rulings, the final decision ordered
claims 1 and 10 cancelled from the ‘303 Patent.
The majority opinion regarding claim 1 is excerpted below:
As a preliminary matter, because Shrub filed his patent application on April
18, 2013, the AIA rules govern this case. . . 30
Shrub first attempts to use his conference article as “subject matter . . .
publicly disclosed” under § 102(b)(1)(B) to eliminate the Billary Article as
15
prior art where it teaches similar voting machine technology. We find this
argument unpersuasive. While the term “publicly disclosed” is new in § 102
post-AIA, the term and its analogs “publicly available” and “publicly
accessible” have long been prerequisites for prior art disclosures. See, e.g.,
In re Bayer, 568 F.2d 1357, 1359-60 (C.C.P.A. 1978); In re Bass, 474 F.2d 5
1276, 1296-98 (C.C.P.A. 1973). The change to the actual term “publicly
disclosed” merely codifies this usage. See 157 Cong. Rec. S1041 (daily ed.
Mar. 1, 2011).
Under existing caselaw, the conference paper is not publicly available. As
admitted in Shrub’s affidavit, the conference article was not publicly 10
disseminated until April 11, 2013, after the Billary Article’s publication. That
Shrub may have intended the article to become widely distributed earlier by
emailing it to the conference coordinator is of no moment – no member of
the public knew of or could in any way access the paper until April 11, 2013.
See In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) (public availability 15
required article to be physically present and available at conference). . .
We find only that the slides and the actual oral presentation given to
attendees were “subject matter . . . publicly disclosed” under § 102(b)(1)(B).
. . Billary would have us go further and disregard the oral content of the
presentation from this subject matter, because it was not printed or easily 20
reproducible until provided on CD. . . We find, however, that § 102(b)(1)(B)
specifically avoids any use of a “printed publication”-like term, embracing
any form of disclosure. It is thus our position that any form of disclosure,
including an oral presentation to hundreds of listeners, qualifies as “subject
matter . . . publicly disclosed.” See, e.g., 78 Fed. Reg. 11059, 11081 (Feb. 25
14, 2013); MPEP § 2153.02 (§ 102(b)(1)(B) excepted material need not be
disclosed in particular manner).
Comparing the slides and presentation to the Billary Article, however,
reveals that much of the Billary Article differs from the technical details in
the slides and presentation. Specifically, it is undisputed that the Billary 30
Article taught 1) implementation and code of the voting machine entirely in
Java; 2) disclosed a specific screen color change (green to yellow) to alert
a user of decalibration; and 3) indicated that the machine deactivates –
powers down – after detecting decalibration. . . .These are all different than
Shrub’s slides and presentation discussion, which teach use of a compiled, 35
C++ code, a “complementary color scheme or something like that” for the
alert, and a halting of input without shutdown following decalibration.
16
. . . These differences are sufficient to keep the programming, alerting, and
post-decalibration response as prior art under § 102(a)(1). The exception
provided by § 102(b)(1)(B) is narrow, and it requires the singular “subject
matter disclosed” in the intervening prior art to be the same “subject matter
. . . publicly disclosed by the inventor.” 35 U.S.C. § 102(b)(1)(B). While the 5
statute may tolerate minor rephrasing or restatement of subject matter,
distinct or more specific subject matter in the intervening prior art will not be
excluded as prior art if the inventor discloses other or general subject
matter. See MPEP § 2153.02.
Here, the C++ code of the conference presentation, which controls all 10
functionality of the voting machine, is a distinct species from the Java in the
Billary Article. This is sufficient to bring all functionality of the Java code of
the Billary Article out from the § 102(b)(1)(B) exception, including the
functionality recited in claim 1. . . Shrub does not contest that this
functionality is sufficient to render all elements of claim 1 obvious. 15
. . .Similarly, the complementary color screen change in the conference
presentation is either too general or distinct from the green-yellow switch
disclosed by Billary Article. And the “the machine being unusable” and not
receiving further input are similarly too general from the Billary Article’s
specific disclosure of shutdown. We find neither of these features qualifies 20
for exclusion under § 102(b)(1)(B). . . . Shrub also does not contest that
these features, taken together, render claim 1 obvious in light of prior smart
voting machines. . .
Contrary to Shrub’s argument, we find our approach – requiring exact
similarity in technical content between Inventor and intervening disclosures 25
- most consistent with the language of § 102(b)(1)(B). We also find Shrub’s
policy arguments for a broader exception to already be addressed and
refuted by the Office in considering this rule. See 78 Fed. Reg. 11059,
11065-68 (Feb. 14, 2013) (Comments 30-36 and Responses, illustrating
rationale underlying strict interpretation of § 102(b)(1)(B)). 30
The dissenting judge argued that the exception of § 102(b)(1)(B) should apply, based
on Shrub’s conference presentation. The partial dissent on claim 1 is excerpted below:
§ 102(b)(1)(B) was clearly intended to make an inventor’s earlier disclosure
. . . have the same effect as a priority filing. . . Under a priority analysis, we
need only establish that the priority disclosure support and enable the claim 35
17
at issue. If the priority disclosure does, § 102(b)(1)(B) eliminates all prior art
falling in the year between such disclosure and the filing date of the claim.
. . .a priority-type interpretation of § 102(b)(1)(B) is not only the most natural
reading of the language, it is the interpretation from the legislative history. .
. stating, “[a]n inventor who publishes his invention, or discloses it a trade 5
show or academic conference, or otherwise makes it publicly available, has
an absolute right to priority if he files his application within one year of his
disclosure.” 157 Congressional Record S1041 (daily ed. Mar. 1, 2011)
(emphasis added).
The Shrub presentation disclosed and reasonably enabled all aspects of 10
claim 1 within one year of the filing of the ‘303 Patent. . . . [E]very variation
of species falling within a claim – whether it be programming language
chosen, exact screen color change, or type of post-decalibration
inaccessibility – need not be disclosed to support a computer-implemented
claim under § 112; rather, the general functionality and examples offered by 15
the Shrub presentation suffice to show possession and allow recreation of
the subject matter of claim 1. . . . That is enough to provide priority for, and
thus protect, claim 1 from the intervening Billary Article under a proper
interpretation of § 102(b)(1)(B).
The majority’s approach [of] allowing “minor variations” between 20
disclosures to overcome the § 102(b)(1)(B) exception completely
undermines the grace period afforded by this provision and invites
intermeddling and cloaked derivation . . . by allowing the intervener to simply
take and add detail or swap a technical term to an Inventor’s earlier
disclosure and thereby defeat patentability. . . . Because this is a is a 25
statutory interpretation issue of first impression and substantive patent law,
our reviewing court will . . . ultimately provide the correct interpretation [of §
102(b)(1)(B)] without regard to the majority’s and USPTO rules’ mistake.
See Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996).
The unanimous opinion regarding claim 10 is excerpted below: 30
The parties dispute the proper interpretation of the term “social network” as
recited in claim 10. We find the following facts pertinent as extrinsic
evidence and supported at least by a preponderance:
-Finding of Fact #1: At the time the ‘303 Patent was filed, “social network”
was understood to have multiple definitions in the field. One definition 35
includes general human networks, including the Internet, and another
18
definition refers specifically to third-party networking services like
Facebook. The dictionary cited by the parties supports both these
definitions, and we credit both parties’ testimony, taken together, as
reflecting the existence of these two definitions.
-Finding of Fact #2: Mr. Shrub testified that the “social network” as used in 5
claim 10 of the ‘303 Patent required user login to a third-party service such
as Facebook or Twitter. In a cease-and-desist letter sent on his behalf,
Shrub equated a machine, the Goracle, which searches for mere “online
social connections,” with the subject matter of claim 10.
. . .In an Inter Partes Review of an unexpired patent, claims are given their 10
broadest, reasonable interpretation consistent with the specification. In re
Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279-82 (Fed. Cir. 2015). In so
interpreting, we look to the broadest meaning of the language and structure
of the claims first, relying on the teachings of the specification and any
original prosecution history to confirm that such meaning is reasonable. See 15
Microsoft Corp. v. Proxyconn, Inc., slip op. 2014-1542 at 6-7 (Fed. Cir. June
16, 2015). Expert testimony and dictionaries are useful only to understand
the technological background of the claims. See Tempo Lighting, Inc. v.
Tivoli, LLC, 742 F.3d 973, 977-78 (Fed. Cir. 2014).
Here, there is no redefinition of the term “social network,” which has 20
established meanings overlapping in scope. FF1. The specification is
directed to processor-based voting machines whose configurations are
enabled only by electronic communications, such as via familiar protocols
such as TCP/IP to gather information, so a “social network” in claim 10
reasonably requires only a computerized arrangement of human activities, 25
such as a private LAN among various users, or the Internet.
Shrub argues that only the more limited “third-party social networking
service” meaning is consistent with the claim structure and teachings of the
‘303 specification. . . . While it is perhaps awkward to speak of content
“visible to the voter” or a “connection of the user in” the Internet, since a 30
publicly-accessible page on the Internet will inherently be visible and
connected to all other users, it is not preclusive. . . .Without an explicit
redefinition, we find both the language of claim 10 and the specification will
bear an interpretation of “social network” that is not limited to third-party
services such as Facebook or Twitter. 35
. . . Shrub’s further arguments of prosecution disclaimer are unpersuasive.
Shrub argues that comments from both himself and the Examiner that
19
caused the ‘303 Patent to issue illustrate that “social network” is limited to
something less than the entire Internet. See, e.g., Computer Docking
Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008). . . .
Disavowal of claim scope during prosecution must be unmistakably clear.
01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 5
2012). No such clarity exists in the prosecution history of the ‘303 Patent.
The Examiner and Inventor disputed how claim 10’s “social network”
compared to prior art, but the Inventor never clearly stated a definition or
limitation of “social network” per se. Rather, the Inventor’s response is
plausibly directed toward distinguishing claim 10 on the basis that the 10
VoteTrumper prior art used two different social networks - a phone contact
list and the Internet - whereas claim 10 required use of the same social
network, regardless of any exact definition of social network. . . .
Nor is the Examiner’s comment at allowance regarding an understanding of
the “social network” term limiting. Prosecution disclaimer typically cannot 15
arise from a unilateral statement of an Examiner. See Innova/Pure Water,
Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1124 (Fed. Cir.
2004). Here it appears that the Inventor not only did not adopt, but refuted
the Examiner’s comments at allowance, noting that the claims were broader
than stated by the Examiner. . . . Taken together with the cease-and-desist 20
letter (FF2), we find that these statements fail to show clear disclaimer and
further bring into question Shrub’s self-benefiting testimony now for a limited
meaning of “social network.” . . . This is the quintessential reason for
invoking a broadest, reasonable interpretation - that a patentee may not
argue narrowly for allowance, and then broadly at enforcement. In re 25
Reuter, 640 F.2d 1015, 1019 (C.C.P.A. 1981).
Lastly, we do not find the parties’ arguments regarding claim 11, reciting
that “the social network is Facebook,” to be particularly useful in interpreting
claim 10. Claim differentiation suggests that claim 10 includes something
broader than Facebook. See, e.g., Wenger Mfg., Inc. v. Coating Machine 30
Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001). This permits an
interpretation including the entire Internet, of which Facebook is a part.. . .
.Thus, the doctrine is not contravened by interpreting “social network” more
broadly than just third-party networking services like Facebook that can be
logged into through the Internet, and it is reasonable to give claim 10 the 35
broader interpretation we have here.
In sum, we find it entirely reasonable to interpret claim 10 in a manner
encompassing use of general information on the Internet, including the FEC
20
pages used in the Bernard Publication. Under such a construction, Billary
does not contest that the Bernard Publication anticipates claim 10 . . .
. . .ORDERED that claims 1 and 10 of the ‘303 Patent are CANCELLED.
Shrub sought a re-hearing before the Board on August 19, 2015, which the Board
summarily denied on September 23, 2015 without modifying the original opinion. Shrub 5
filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit on November
4, 2015, docketed as Appeal No. 15-9999. Shrub and Billary stipulated to arguing only
the prior art status of the Billary article under § 102(b)(1)(B) and the proper construction
of claim 10 – and that these issues controlled the validity of claims 1 and 10 - on appeal.
The USPTO waived its right to intervene in the appeal. Briefing is currently underway, to 10
be followed by oral argument.
Proceedings Timeline
January 14, 2012 VoteTrumper Released
June, 2012 Bernard Publication Filing Date
March 18, 2013 Shrub Conference Presentation
March 25, 2013 Billary Article Published
April 11, 2013 Shrub Conference Article Distributed
April 18, 2013 Shrub’s ‘303 Patent Application Filed
October 1, 2013 Shrub’s ‘303 Patent Issued
December, 2013 Bernard Publication Published
June 9, 2014 Shrub’s Cease-and-Desist Letter Sent
August 4, 2014 Billary’s IPR Petition on ‘303 Patent
November 24, 2014 IPR of ‘303 Patent Instituted
July 17, 2015 IPR Final Written Decision Issued
November 4, 2015 Notice of Appeal to CAFC Filed