This story was originally published by The National Law Journal, an American Lawyer affiliate.

An appellate opinion about a voting machine patent released on the eve of Election Day sheds light on how information posted on the Internet can be prior art, leading to a finding of invalidity.

On November 5, the U.S. Court of Appeals for the Federal Circuit issued a unanimous ruling affirming a finding that one of Voter Verified Inc.’s patent claims is invalid as obvious in light of an article posted on the Risks Digest website. The court also upheld a finding that the defendants did not infringe 93 of Voter Verified’s claims for a patent involving automated systems and methods for voting in an election, and that a different claim is invalid for indefiniteness.

The consolidated appeal in Voter Verified Inc. v. Premier Election Solutions Inc. covers two patent infringement actions that Voter Verified brought in November 2009 against companies that make automated voting systems. One case is against Election Systems & Software Inc. Another is against Diebold Inc. and its former subsidiary, Premier Election Solutions Inc., which is now an Election Systems subsidiary. Senior Judge Patricia Fawsett of the Middle District of Florida issued final judgments in favor of the defendants in August 2011 in the Premier case and in in September 2011 in the Election Systems case.

In its appeal of Fawsett’s invalidity determination of the patent claim because of the Risks Digest article, Voter Verified claimed that a web-based reference must be “searchable by pertinent terms over the internet” to qualify as a prior art “printed publication.” It also claimed that there was no evidence of indexing on any database that would have allowed the public to locate the Risks Digest website and the relevant article.

Judge Alan Lourie wrote the opinion, joined by judges Jimmie Reyna and Evan Wallach.

The Federal Circuit panel rejected Voter Verified’s claim that the defendants “‘provided no evidence of any indexing on any database’ that would have allowed the interested public to locate the Risks Digest website.” Lourie wrote, “[W]hile often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references like the [1986] article as printed publications within the prior art.…When considering whether a given reference qualifies as a prior art ‘printed publication,’ the key inquiry is whether the reference was made ‘sufficiently accessible to the public interested in the art’ before the critical date.”

Lourie noted that while “indexing is a relevant factor in determining accessibility of potential prior art, particularly library-based references,” it’s just one factor. “Moreover, indexing is no more or less important in evaluating the public accessibility of online references than for those fixed in more traditional, tangible media. . .Thus, while often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references like the [1986] article as printed publications within the prior art.”

Lourie explained that The Risks Digest website “was undisputedly open to any internet user by the critical date” in 1999. Even if the website was not indexed by that time, “the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the [1986] article using that website’s own search functions and applying reasonable diligence.”

Voter Verified’s lawyer, Anthony Provitola, a solo practitioner in DeLand, Fla., said his client planned to file a petition for a rehearing. “There’s some confusion with regard to this issue of prior art and I think it has to be straightened out,” Provitola said.

Robert Evans Jr., a partner at St. Louis-based Senniger Powers, who represented the defendants said his clients are “very happy that the court found that every claim was either invalid or not infringed or both invalid and not infringed.” From a prior art perspective, the ruling was a good application of current law as to information that is available over the Internet, Evans said. “The court correctly stated that the touchstone is public accessibility to the information.”

Evans said the judges appeared to be moved by information available at the time as shown by the Internet Archive’s Wayback Machine, an archive of Web pages dating back to 1996. The defendant also had a declaration from the person who ran the website at the time, who worked with interested people skilled in the art, he said.

“A more interesting case would be [one that relies on evidence from] a website with fewer participants, but that will be a case for another day. They laid out a good framework for how to prove up something that is prior art on the Internet,” Evans said.

Although the ruling applies to the current patent law and not the prior art provisions of patent reform that are scheduled to take effect in March, lawyers are likely to rely on this case to interpret the new statute, said Scott McBride, a partner at Chicago-based McAndrews, Held & Malloy, who isn’t involved in the case. “The court used the language publicly available. That language is arguably similar to the prior art portion of the new statute, which is not yet in force. That new statute uses the language otherwise available to the public,” McBride said.