2016 GSR Memorial Moot Court Problem - AIPLA … GSR Moot Court...1 2016 Giles S. Rich Memorial Moot...

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1 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

Transcript of 2016 GSR Memorial Moot Court Problem - AIPLA … GSR Moot Court...1 2016 Giles S. Rich Memorial Moot...

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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

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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.

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. . . 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

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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

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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

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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

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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