VOTER VERIFIED, INC. v. ELECTION SYSTEMS SOFTWARE (M.D.Fla. 9-29-2010)

WILEY DANIEL, District Judge I. INTRODUCTION

THIS MATTER came before the Court on a hearing on April 28, 2010, on the cross-motions for summary judgment pending in the case relating to the first claim for relief seeking reinstatement of benefit payments under a long term disability plan [the "LTD Plan" or the "Plan"] sponsored by Ball Corporation ["Ball"] for certain employees of Ball and its affiliates. This claim is governed by the Employee Retirement Income Security Act of 1974, 29 U.S.C. § 1001, et seq. ["ERISA"]. On May 11, 2010, Defendants filed supplemental briefing in support of their summary judgment motion. I now turn to the facts relevant to the ERISA claim and then address the merits of the claim.

The parties have deferred resolution of the second claim for relief, seeking reinstatement of Plaintiff's other employee benefits concurrent with reinstatement of her LTD benefits, as they agree that resolution of this claim is contingent upon the ruling on the merits of Plaintiff's first claim.

II. FACTUAL BACKGROUND

A. The Initial Decision to Grant LTD Benefits to Plaintiff

Ball hired Plaintiff in early 1996 (Administrative Record ["AR"] 024, 077) to work as a design engineer for its subsidiary, Ball Aerospace and Technologies Corporation ["BATC"]. Plaintiff asserts that her job was physically and intellectually demanding, and she drew upon her undergraduate and masters degree in mechanical engineering ( id. 77) and experience with spacecraft design.

The AR refers to the Administrative Record tendered to the Court conventionally on June 2, 2008 (ECF No. 17). It also includes the Supplement to the Administrative Record submitted by Defendants on September 12, 2008 (ECF No. 49). Finally, it includes documents which Magistrate Judge Tafoya found should be part of the record when she granted in part Plaintiff's Motion for Supplementation of the Administrative Record by Order of December 30, 2008 (ECF No. 64). These documents were attached to her Order.

Plaintiff's job description and requirements are found in the AR at 31 and 145-46.

By mid-1997, Plaintiff began to experience illnesses with debilitating flu-like symptoms and severe fatigue. Work modifications were pursued. In early 1998 Plaintiff and Ball developed an arrangement for her to attempt to work from home but this arrangement did not last. By August 1999 Plaintiff asserts that the parties mutually recognized that she was disabled within the meaning of the Plan. Plaintiff received short term disability benefits between August 1999 and March 2000. (AR 077.)

As to long term disability ["LTD"] benefits, Ball's LTD Plan states that "you will be eligible to receive [such] benefits if your disability is deemed `total' by a physician." (AR 627-28.) The Plan defines this eligibility under two categories of disability. First, a claimant is eligible to receive LTD benefits if he or she is not able to perform his or her usual job during the first two years of the disability, i.e., an "own occupation" standard. ( Id.) After the second year, the claimant must be unable to perform any job for which he or she is reasonably qualified by training, education, or experience, i.e., an "any occupation" standard. ( Id.)

Plaintiff applied for LTD benefits on February 2, 2000 (AR 028, 030), providing a medical narrative of her treatment history from April 1997-February 2000. ( Id. 033-36.) She also provided medical records of laboratory and other tests from June 1997-June 1999 and clinical notes reflecting phone calls made to her doctors regarding her condition (no in-person exams appear to have been included). ( Id. 037-76.)

On March 15, 2000, Ball informed Plaintiff that the information provided did not contain any recent medical information (most was from early 1999 or prior). (AR 016.) She was asked to submit more current information for Ball to evaluate her claim of disability, including a medical narrative from her doctor regarding her condition, prognosis and "information on [her] ability to perform [her] usual job of Engineer." ( Id.) Plaintiff responded by providing a note from her chiropractor stating that she was currently being treated for chronic fatigue syndrome ["CFS"], there has been no change in her condition and none is anticipated for the next six months, and her prognosis "remains guarded". ( Id. 15). No clinical notes or medical records reflecting office visits or treatment were included.

On March 30, 2000, Ball informed Plaintiff by letter that while the chiropractor's note would be included in its decision making process, "the information provided is not detailed enough to provide a clear picture of total disability nor is a chiropractor qualified to give a medical opinion of total disability." (AR 14) (emphasis in original.) Ball stated that before a ruling could be made, it needed "additional information from a medical or osteopathic doctor", including a medical narrative regarding Plaintiff's condition and changes in same, her prognosis, and information on her ability to perform her usual job of Engineer. ( Id.)

On April 13, 2000, Plaintiff saw treating physician Dr. Hammerly for the first time. (AR 476-77.) The notes of the visit do not suggest any abnormal physical findings, but noted CFS, "sudden onset". ( Id.) While Defendants assert that this reflects only Plaintiff's self-reported symptoms, it appears from the notes that Dr. Hammerly made a medical finding that Plaintiff had CFS. ( Id. 477, 12.) The notes also indicate that lab tests were ordered to determine the underlying cause. ( Id. 12.)

On May 11, 2000, Dr. Hammerly wrote Ball that he had seen Plaintiff in his office on April 13, 2000, that he "reviewed her extensive history of health problems, medical evaluations, tests and treatment notes over the past three years", and that he ordered additional tests "to help ascertain the underlying cause of her chronic fatigue. . . ." (AR 12.) He stated that other than hormonal abnormalities which he was going to treat, he saw "no other obvious, treatable cause for her symptoms." ( Id.) He further stated that "[o]nce optimal hormone levels have been achieved", which he thought would take four to six months, "Barbara will have reached maximal improvement from medical therapies". ( Id.) "Until the hormone levels are corrected Barbara's inability to work due to fatigue and poor concentration can be expected to continue." ( Id.) He concluded:

Once the hormone levels have been corrected she will be either better (and able to work) or she will not be better. If Barbara's symptoms do not improve despite correcting the hormonal imbalances then the length of any future disability would be hard to predict (as we would not have any understanding of the underlying cause).

( Id.)

Contrary to Defendants' argument that Dr. Hammerly's findings were based only on Plaintiff's self-reports, the findings appear to represent a medical judgment based upon Dr. Hammerly's examination of Plaintiff and his statement that he reviewed Plaintiff's history, evaluations, tests and treatment. Plaintiff submits that Dr. Hammerly's letter explained her disability due to CFS, thus complying with Ball's request for a medical narrative describing her condition.

Plaintiff was granted LTD benefits under Ball's "own occupation" standard retroactive to March 7, 2000, based on Dr. Hammerly's opinion that she suffered from chronic fatigue and poor concentration. (AR 002-005.) Benefits were to be paid through September 6, 2000, at which time Ball stated it would need an update of Plaintiff's condition from her physician to determine if she was still eligible for benefits. ( Id. 002.) Ball also stated that Plaintiff was obligated to provide it with periodic updates of her condition prepared by her physician and that it "reserve[d] the right to have an independent medical examination ["IME"] performed" at Plaintiff's expense. ( Id.)

On November 20, 2001, Ball wrote Plaintiff stating that the file does not include information from the Social Security Administration ["SSA"] regarding Social Security Disability Insurance ["SSD" or "SSDI"] benefits and requesting a copy of the SSA's decision. (AR 098.) Ball stated that if Plaintiff had received a letter denying benefits, it was her obligation to pursue any reconsideration or appeals available to her. ( Id.)

In December 2001 the SSA issued a decision finding that Plaintiff was not able to perform her past relevant work due to CFS but could perform other sedentary work in the national economy including such jobs as office helper, sedentary assembler and cashier II. (AR 86-91.) Accordingly, it found that she was not disabled and denied her claim for SSDI benefits. ( Id.)

In March 2002, Plaintiff wrote Ball stating that she had fulfilled her agreement to seek SSDI benefits. (AR 81-82.) She also explained that she had found lawyers that were willing to represent her before the SSA but their fees would be automatically deducted from the amount awarded. ( Id. 81.) Thus, she would have received 75% back pay and 100% forwards pay in a favorable decision. ( Id.) She also stated:

As agreed when my Ball disability was approved, I would turn over any SSD money to Ball. So, I contacted Ball to explain that this is what I would receive and be able to turn over. But I was told explicitly, by several people, that Ball would not accept less than 100%, and that if I didn't receive 100% from SSD, I would have to pay the other 25%. . . . Maybe you realize the difficult situation this put me in: if a lawyer won (he expected to) it would have been a financial hardship on me. . . . So, to be able to give the company the 100% demanded, I had to represent myself.

( Id.)

B. The Administrator's Decision to Explore Whether Plaintiff Met the Change in Definition Applicable After 24 Months

In late 2001/early 2002 the Plan fiduciaries explored the change in definition ["CID"] applicable to LTD benefits after the first 24 months, from the "own occupation" standard to the "any occupation" standard. It is undisputed that the Plan's definition of disability would change in March 2002 after 24 months of benefits. Ball wrote Dr. Hammerly in December 2001 stating that it was unclear whether Plaintiff met the definition of "totally disabled" in the LTD Plan under the CID, stating that "[t]he plan's definition of total disability (since she has been disabled for more than 24 months) is the ability to perform any job for which she was reasonably qualified by training, education, or experience" and noting that her position prior to her disability was Engineer II. (AR 212.) Ball asked Dr. Hammerly to provide a medical opinion on this issue by January 15, 2002, "[i]n order to avoid a break in benefit checks." ( Id.)

Dr. Hammerly responded by letter of January 4, 2002, stating, "[a]t this time, and for the foreseeable future, Ms. Dubrovin is totally disabled from performing any job for which she is reasonably qualified by training, education, or experience." (AR 198.) Thereafter, according to Ball's records, Plaintiff was awarded LTD benefits due to CFS based on the "update from Milton Hammerly, M.D." ( Id. 530.) The record indicates that this award was approved on January 29, 2002, less than 24 months from her disability date, and there is a handwritten note that the benefits were approved until May 31, 2002. ( Id.) From this, it appears Ball approved the continuation of LTD benefits after the first 24 months with knowledge of the applicable CID. ( Id.; see also AR 212.) In other words, LTD benefits were set beyond the first 24 months using the CID to the "any" occupation standard and Dr. Hammerly's January 2002 letter. ( Id.)

Hartford took over claims administration in early 2003 and revisited the CID for disability. Acting as an independent claim manager for Ball, it reviewed the claim file and requested updated medical information from Plaintiff and Dr. Hammerly to evaluate whether Plaintiff met the "any occupation" standard. (AR 133, 148-49, 160, 200-01.)

In conducting its review of the file in March 2003, Hartford noted that Plaintiff had been receiving benefits since March 7, 2000 "due to chronic fatigue (?)", that on "1/29/02, PH approved claim for an addtl six months" and that "[n]o medical information has been obtained since then." (AR 140.) The notes also indicate: "The med. info in file does not clearly state the primary dx." and "[t]he definition of disability is 24 month 00." ( Id. 138.) "CID — 3/7/02. There is no indication of an AO determination in the file. Need AO review to confirm if TDAO. This claim may require an IME, FCE and/or UDC review." ( Id. 140, 138.)

On April 8, 2003, Plaintiff signed an "Agreement Concerning Long-Term Disability Benefits" in which she agreed, among other things, "[t]o be examined by an independent physician, when requested by the Company or Claim Administrator, to determine my disability status under the terms of the plan. (AR 199.) The agreement stated that Plaintiff understood "that the Company has the right to reduce or stop my long-term disability benefit if I . . . "[f]ail to provide any information requested by the Company or Claim Administrator, which may be used to determine my ongoing disability status" or "[d]o not abide by the terms of this Agreement." ( Id.)

On April 16, 2003, Hartford received a questionnaire that it had asked Plaintiff to complete. (AR 148, 192-96.) On May 6, 2003, Hartford received an Attending Physician Statement and Physical Capacities Evaluation from Dr. Hammerly that it had requested. ( Id. 138.) Dr. Hammerly stated that Plaintiff's primary diagnosis was Chronic Fatigue Immune Dysfunction Syndrome ["CFIDS"], which I interpret to be roughly synonymous with CFS, and that "fatigue and cognitive dysfunction are the most disabling symptoms". ( Id. 188-89.) He opined that Plaintiff's sitting, standing and walking were extremely limited, filled out the physical capacities evaluation Hartford provided, and stated that a return to work at her "regular occupation" was "Not anticipated". ( Id. 188-191.)

After receipt of these documents, Hartford stated in its notes that "Dr. Hammerly represents that clmt has impairments. We need the med info to confirm clmt's functional capacity. This claim may require an IME. . . ." (AR 138.) Hartford also noted that Plaintiff's LTD benefits would end on July 31, 2003, which it extended to December 31, 2003. ( Id. 138-39.)

In June 2003, Hartford received more information regarding Plaintiff's claim. (AR 147, 161-186.) This included lab results, a handwritten medical narrative by Plaintiff regarding her symptomology from mid-2002-2003, and a log of medications/supplements she had been taking. ( Id.) Despite Hartford's recognition of the diagnosis by Dr. Hammerly of CFIDS ( id. 138), his medical findings including the fact that Plaintiff was totally disabled and the physical limitations he imposed in his Physical Capacities Evaluation which precluded any work, on June 24, 2003, Hartford's notes state that "there is NOTHING in these records indicating that claimant is disabled." ( Id. 147.)

In July 2003, Nurse Fanita Wilson of Hartford reviewed the file and determined that a physician peer review should be conducted to determine restrictions and limitations based on Plaintiff's medical condition. (AR 145-46.) She also determined that Dr. Hammerly needed to be contacted for more information. ( Id. 146.) She questioned why Plaintiff was not seeing an endocrinologist or psychiatrist and whether Plaintiff was receiving appropriate medical care. Finally, she asked, "Do the objective findings contained in the medical records support the EE's inability to perform the duties of all occupations either on a full time or part time basis?" ( Id.)

In August 2003, Hartford sent Plaintiff's medical records and job description to a medical consultant, Dr. Dibble, for review. (AR 144.) He is a family practitioner with Medical Advisory Group LLC ["MAG"]. Dr. Dibble did not examine Plaintiff, but completed a report on August 21, 2003, documenting his review of the medical records. ( Id. 134-37.) He noted that Plaintiff has CFIDS as well as hypothyroidism and hypoadrenalism ( id. 134), and that the record does not give evidence of any diagnosis other than simple hypothyroidism. ( Id. 136.) He also observed that the lab tests and physical exams showed no other abnormalities, nor was Plaintiff being treated for any. ( Id. 134-37.) While the tests/exams were negative, Plaintiff asserts that the absence of positive findings is part of the diagnosis of exclusion for CFIDS. It does not appear that Dr. Dibble addressed that issue in his report.

Dr. Dibble also noted that he discussed Plaintiff's condition with her physician Dr. Hammerly, a general internist. (AR 135-36.) According to Dr. Dibble, Dr. Hammerly told him that Plaintiff's fatigue and cognitive symptoms were "very subjective" and that there had been no formal evaluation of her physical capabilities or fatigue symptomology relative to job performance or endurance. ( Id.) Dr. Hammerly also purportedly told Dr. Dibble that it was not part of his practice to make assessments of work capacity, and did not identify any physical limitations Plaintiff had that might interfere with sedentary employment. ( Id. 136.) Finally, Dr. Hammerly purportedly told Dr. Dibble that Plaintiff had not had a formal psychiatric evaluation to rule out depression/mental illness, and that he had considered a diagnosis of obsessive compulsive disorder at various times. ( Id.)

Dr. Dibble concluded in his report, "[t]here has been no evidence in the record of any healthcare related issue that has not been properly addressed" and "[t]here is no diagnosis . . . that would preclude [Plaintiff] from the physical demands of Sedentary Level employment." (AR 136.) He does not reference Dr. Hammerly's diagnosis of CFS or CFIDS in his conclusion, even though earlier in his report he recited the fact that she has this impairment. ( Id. 134.) Further, Dr. Dibble recited an excerpt from Dr. Hammerly's attending physician statement and physical capacities evaluation report in which he said that Plaintiff was capable of the activities of sedentary level employment only "three hours daily". ( Id. 135.) Yet he concluded that "[t]here is . . . no evidence in the record of any physical limitation that would preclude her from undertaking the demands of Sedentary-level employment." ( Id. 136.)

In September 2003 Dr. Hammerly responded to Dr. Dibble's report, stating that it was "fine" except that (1) it would be "inaccurate to say that Barbara Dubrovin has not had a formal evaluation for her fatigue since she has had extensive testing over the past few years for possible causes of this" and (2) his "casual" mention of the possibility of obsessive compulsive disorder was not something he thought should be included in the record until she had an official psychiatric evaluation. (AR 152, see also 141.)

Also in September 2003, Defendants evaluated an independent medical review service, Medical Director Solutions, L.L.C. ["MDS"], to assist in the claim process. (Defs' Mot. for Summ. J. and Br. in Supp. ["Defs' Mot."], Ex. C-2, Second Decl. of Linda L. Berntson ["Berntson Second Decl."], ¶¶ 3-4, Ex. E, Decl. of Barry Mascarenas ["Mascarenas Decl."], ¶¶ 3-5.) Defendants assert that this evaluation included a confidential "trial" review of a claimant's file in order to allow the Plan to assess the quality of the services of MDS. ( Id.) Plaintiff's file was provided to MDS as part of this assessment, in part because the Plan had already received a medical review from Dr. Dibble which would be used to assess the quality of MDS' record review. ( Id.)

In September 2003 Dr. Nudelman, the physician from MDS who reviewed Plaintiff's file, purportedly determined that her medical records did not contain objective medical tests or evaluations demonstrating that she was unable to function in a work setting. (Def.'s Mot., Ex. D, Decl. of Mitchell Nudelman, M.D., ¶ 2.) Copies of Dr. Nudelman's report and the file about this review were not kept on file either by MDS or Ball, purportedly because this was merely a "trial" effort by MDS for evaluative purposes only. (Defs.' Mot., Berntson Second Decl., ¶ 4; Mascarenas Decl., ¶ 3.) Thus, Dr. Nudelman's report from September 2003 is not in the administrative record, even though Ball stated in some of its documents that the report was relied on to cut off Plaintiff's benefits. (AR 576, 759.)

On October 8, 2003, Ball sent a letter to Plaintiff explaining that, based upon Dr. Dibble's medical review and his conversation with Dr. Hammerly, under the "any occupation" standard Plaintiff no longer met the Plan's definition of total disability ("unable to perform any job for which [she was] reasonably qualified by training, education or experience."); therefore, her LTD benefits would be suspended as of October 31, 2003. (AR 523-524.) No further details were given as to the reasons for the suspension of benefits. The letter also explained Plaintiff's appeal rights. ( Id.) In this letter Ball confirmed that it was relying upon the definition of disability in the LTD Plan as of March 7, 2000, whereby the Plan ensures receipt of LTD benefits if her disability was "deemed total by a physician." ( Id. 430, 523.) Plaintiff asserts that even though the Plan requires the "specific reasons for the denial" and other specifics ( id. 652), no details were actually given in that letter.

In October 2003, Plaintiff requested "a copy of what is in my file, so I know what information you already have and what may be missing." (AR 516.) Ball sent "copies of information from your . . . (LTD) file, which supports our decision to terminate your LTD benefits as of October 31, 2003." ( Id. 517.) Plaintiff states that she was only provided four pages (one page from Hartford's claim examiner's notes from mid-2003 and three pages from Dr. Dibble in August 2003). ( Id. 518-21.) Ball's investigative plans were not provided, which were later found in part in the claim file. ( Id. 522, only p. 4 appears.)

C. Plaintiff's First Appeal

Plaintiff appealed the termination of her benefits, through counsel, in December 2003. (AR 423-25.) Her appeal included a six-page medical narrative written by Plaintiff in November 2003. ( Id. 426-29, 431-32.) It also included medical information from 2000-2003, including a number of tests. ( Id. 433-511.) Defendants point out that with a few minor exceptions, these tests were uniformly negative indicating no findings of significance. Id. Again, Plaintiff points out that they were part of the extensive diagnosis of exclusion for CFS.

In December 2003, Ball again utilized Dr. Nudelman's services, forwarding Plaintiff's medical records to him for a medical peer review. (AR 576.) It appears that this was an official use of Dr. Nudelman's services, and was no longer a "trial" by Ball for evaluative purposes. Ball's letter to Dr. Nudelman reminded him that it had previously sent Plaintiff's file to him for a review, and that he had opined that there was not sufficient clinical documentation to support her claim for LTD. ( Id.) The letter also stated that "[a]s a result of your reply (which I interpret to mean his September 30, 2003 report), Barbara Dubrovin's LTD was suspended as of October 31, 2003", and advised him that she had appealed that decision. ( Id.)

On January 9, 2004, Dr. Nudelman completed his medical record review, finding:

After careful consideration of the medical records submitted for my review, it is my opinion within reasonable medical certainty at this time, that there is not sufficient objective clinical documentation submitted so as to support the claimant's assertion that she has been unable to perform the material and substantial duties of her own or any other occupation on the basis of Chronic Fatigue Syndrome or any other medical condition . . . metabolic, immunologic or otherwise.

(AR 573-75.) This report was not shared with Plaintiff until much later.

Dr. Nudelman explained that the medical evidence did not show that Plaintiff met the Center for Disease Control ["CDC"] criteria for CFS. (AR 573.) He observed that the original 1998 diagnosis appeared to be related to the presence of the Epstein-Barr virus, which the CDC had determined is not related to CFS. ( Id.) Further, he explained that other potential conditions, including psychiatric disorders, must be ruled out or excluded as a prerequisite to accurately diagnosing CFS. ( Id.) Dr. Nudelman noted that Plaintiff "has a litany of often stress related conditions, for which she has either not undergone appropriate medical evaluation and treatment, including . . . tinnitus, syncope, chronic headache, insomnia and sleep disturbance, cognitive dysfunction, for examples, all of unknown etiology." ( Id. 574.) As to the cognitive impairment, he noted that both a neurological evaluation and neuropsychological testing would be required as well as a sleep study. ( Id.)

Dr. Nudelman concluded that rather than CFS, "it is far more likely that the claimant's primary condition is Mental/Nervous (M/N) in nature", that a medical claims history should be run and that if the claims history "supports the need, the claimant should be referred for medical case management." (AR 574-75.) He also stated, "[a]t this time I see no need for any IME or FCE. This may become necessary at a later date." ( Id. 575.) Finally, Dr. Nudelman suggested surveillance, maybe in conjunction with an IME, and examination of "psychosocial" issues. ( Id.) Dr. Nudelman does not state in the letter what medical records Ball actually shared with him.

According to the Plan, the appeal "will be reviewed by a Plan fiduciary who had no role in the initial claim denial and the review will be an independent one without giving the original denial any special consideration. If a medical judgment is involved, the person reviewing your appeal will consult with a health care professional who has appropriate training and expertise in the field of medicine involved in the medical judgment and who had no role in the initial claim denial." (AR 653) (emphasis added). It appears that Ball did not comply with this directive since Dr. Nudelman was involved in the initial review and in the appeal. Again, while Ball disputes that Dr. Nudelman's report from his initial review was relied on to make its decision in October 2003 to suspend LTD benefits, there is record evidence to the contrary. Further, as discussed previously, when Ball utilized Dr. Nudelman's services on the appeal, it reminded him that he had previously reviewed Plaintiff's file and had opined that there was not sufficient clinical documentation to support her claim for LTD benefits.

On January 30, 2004, relying on the review of Dr. Nudelman, Ball wrote Plaintiff informing her that there was "inadequate objective documentation to support the assertion that you are disabled by Chronic Fatigue Syndrome or any other medical condition". (AR 611.) Ball stated that "the denial is based on the plan provisions that you do not meet disability guidelines as being unable to perform any job for which you are reasonably qualified by training, education or experience". ( Id.) Again, Plaintiff asserts that the letter did not provide the specifics it was required to under the Plan.

On March 9, 2004, Plaintiff requested reconsideration of the termination of her LTD benefits. (AR 720, renumbered as AR 1000.) She enclosed a March 8, 2004 letter from Dr. Hammerly, a purported expert in CFS/CFIDS, opining that Plaintiff could not work at that time and notes from an office visit that month. ( Id. 1000-1003.) Dr. Hammerly indicated in the March 8 letter that all of Plaintiff's symptoms including fatigue, "disrupted sleep, nausea, abdominal pain, muscle cramps, cognitive dysfunction (`brain fog'), and recurrent sore throats, swollen glands and low-grade fevers . . . seem to flare simultaneously when she attempts to engage in physical or mental activity for more than short periods of time (2 hours of sitting or 15 minutes of standing)". ( Id. 1001.) He concluded that CFIDS is a "diagnosis of exclusion" and that "[a] person with her symptoms and no pathology demonstrated on objective testing qualifies for a diagnosis of CFIDS." ( Id.)

Ball acknowledged that these documents provided by Plaintiff on March 9, 2004 (AR 1000-1003) were missing from the administrative record when it was submitted to the Court. Ball has not explained the reason for the missing evidence, particularly since a summary of a meeting of Ball's EBAC from March 2004 reflects its review of these missing documents (noting the letter from Dr. Hammerly). ( Id. 761.)

On March 23, 2004, EBAC reviewed Plaintiff's claim and authorized sending Plaintiff to an IME to fully assess her condition and ability to work. (AR 759-61.) The notes from this meeting reflect that the decision to cut off benefits on October 31, 2003 "was based upon an independent medical file review conducted by" Dr. Nudelman's company MDS, reflecting a reference to and citation from the missing report of September 30, 2003 by Dr. Nudelman. ( Id. 759.) The minutes also state that "the file received from [Plaintiff's] attorney was sent for a second review. Nothing in the second file review changed MDS's opinion." ( Id. 760.) This referenced the January 2004 report of Dr. Nudelman.

Plaintiff asserts that nothing in the EBAC minutes or the claim appeal summary shows that EBAC decided that an IME was actually "necessary." (AR 759-60.) EBAC also acknowledged in its minutes that Plaintiff had told Ball that she felt the Plan was "requiring her to go against a knowledgeable doctor's advice and worsen her health." ( Id.) The evidence Plaintiff presented in March 2004 emphasized progressive deterioration and that she could only be active for brief times. ( Id. 1000.) Plaintiff also expressed concerns with doctors not familiar with CFIDS. ( Id.)

On March 30, 2004, Ball sent a letter stating that EBAC had recommended that Plaintiff participate in an IME. (AR 571.) It asked Plaintiff to go to an IME to be scheduled by Ball, and stated, "Based on the results of the IME, a final decision will be made with regard to your eligibility in the LTD Plan." ( Id.) The letter indicated that Plaintiff would be contacted as to the date and time of her IME, and that she would be able to change the date if she needed to do so. ( Id.) Nearly a month in advance, on April 9, 2004, Plaintiff was informed that she was to meet with Dr. Monti Atkinson, Ph.D., on May 4, 2004 from 1:00 — 5:00 pm and on May 11, 2004 from 1:00 — 5:00 pm for an IME. ( Id. 416.)

On May 3, 2004, one day before the first part of the IME set for May 4, Plaintiff contacted the Plan and left a voice mail message. Per the transcript of the message, Plaintiff said that she would not be able to arrange transportation to the scheduled exam and that she would probably have the same problem with any "similar long psychological appointment". (AR 409.) She stated that she was willing to cooperate, but would not endanger her health in the process. ( Id.) She concluded in the message, "You have the authority, I hope you do, I hope we can continue to work together to get me back at the Company as soon as I am physically recovered. Give me a call . . ., but I will not be able to arrange transportation to a long, all afternoon psychological exam; next week or any other week. Thank you." ( Id.)

Ball offered to provide transportation so Plaintiff could attend. On May 4, 2004, the day of the IME, Plaintiff stated that in a message that she would not be able to make it to the appointment so Ball did not need to arrange transportation. (AR 409-410.) Ball asserts that Plaintiff provided no reason for her refusal to participate in the IME or for her decision to breach the LTD Agreement signed in April 2003 in which she agreed to attend any IMEs Ball requested. ( Id. 199.) Plaintiff denies that she failed to failed to cooperate, as she told Ball that she was not able to participate in such a long IME because it would damage her health per her voice mail message of May 3, 2004. Further, she states that the medical evidence indicated that such an IME was not reasonable and was not with a physician as required by the Plan.

It appears that the Plan administrator subsequently called and left a message for Plaintiff regarding the IME scheduled for May 11, 2004. (AR 416, 407.) Plaintiff did not attend that IME either. Ball's notes indicate those appointments were cancelled. ( Id. 416.) Ball asserts that Plaintiff thereafter neither contacted the Plan administrator nor made any further effort to comply with the requirements to participate in an IME. ( Id. 407.)

On June 1, 2004, Ball wrote Plaintiff notifying her that the appeal on her LTD claim had been denied. (AR 406-08.) The letter informed Plaintiff that the IME with Monti Atkinson was scheduled based on Dr. Nudelman's January 9, 2004 report, and that the appeal was being denied "because [Plaintiff] failed to cooperate with the reasonable request that [she] attend the IME appointments." ( Id. 406.) The letter also stated:

The LTD Plan language specifically states: "After the second year, you must be unable to perform any job for which you are reasonably qualified by training, education or experience in order to continue receiving LTD benefits." As the participant, you must establish eligibility for benefits from the LTD Plan, including that you meet this definition of total and permanent disability. Without having expert opinion based on appropriate findings from the IME mentioned above that you are permanently and totally disabled, you have not established your eligibility and the Committee has no choice but to determine that you are not qualified for continued LTD benefits.

( Id.)

Ball's letter denying the appeal concluded by stating that if Plaintiff was "willing to attend the IME and any follow-up IMEs that might be needed and agree to extend the regulatory time period within which the Committee is required to decide your appeal, this denial decision will be held in abeyance." (AR 408.) If this was not acceptable, Ball advised that Plaintiff had exhausted the administrative review process and was free to file a lawsuit if she disagreed with the Plan's decision. ( Id.)

Aside from notifying the Plan administrator of a change of address and her intention to pursue more care, Plaintiff had no contact with Ball for over one year. (AR 404.)

D. The Second Appeal

On September 13, 2005, more than 15 months after the administrator denied her appeal, Plaintiff, through new counsel, contacted the Plan requesting an "appeal and/or request for reconsideration and/or new application" for LTD benefits. (AR 368-69.) The letter noted the offer in Ball's letter of June 1, 2004 as to the first appeal that it would hold the denial decision in abeyance if Plaintiff agreed to attend the IME and any follow-up IMEs that might be needed and to extend the regulatory time period for deciding the appeal and "confirm[ed] that Plaintiff was willing to do this". ( Id. 368.)

The letter from counsel attached additional medical evidence consisting of two IME reports of Plaintiff obtained by the SSA from Gregory Denzell, D.O., dated May 17, 2005, and John Burt, Ph.D., dated May 26, 2005. (AR 368.) Dr. Denzell agreed with the CFS diagnosis and imposed functional limitations stated in the letter wherein Plaintiff could not work more than four hours a day. ( Id. 368-369.) Dr. Burt was a psychological consultant who found that Plaintiff was being truthful in her exam with him and that while, cognitively she was in the high average range of functioning, given her high level of education and job history, it was probable she had declined in certain cognitive areas including "Working Memory, Visual Memory, and psychomotor functioning." ( Id. 369.)

In correspondence dated December 21, 2005, Plaintiff's counsel answered questions from Ball why Plaintiff was previously unwilling to participate in the IME. (AR 365-66.) He stated that Plaintiff had explained that she was physically unable to undergo long testing such as that proposed by Ball and that she objected to an IME for psychological testing when her diagnosis was based on a physical condition of CFS, not psychiatric symptoms. ( Id. 365.) Indeed, the letter stated that if depression was Plaintiff's only problem, she could probably work full time by taking antidepressants. ( Id.) Counsel also stated in the letter that he had advised Plaintiff "that it would be in her best interests to undergo appropriate medical evaluations, which may be asked by Ball Corporation." ( Id.) The letter concluded, "[i]n order to provide you with the information you need to properly evaluate Ms. Dubrovin's claim, I would suggest you have her examined by an objective physician who is very experienced with chronic fatigue, fibromyalgia, and related symptoms" and that if Ball needed anything else, to let him know. ( Id.)

Ball asserts that although the Plan's terms did not provide for another appeal, the Plan Administrator, in its discretion, allowed Plaintiff the opportunity to appeal. This was conditioned on her participation in an IME and any follow-up IMEs that were deemed necessary by Ball.

On January 31, 2006, Plaintiff was notified that an independent psychiatric examination ["IPE"] was scheduled with psychiatrist, Dr. Theron Sills, for February 15, 2006. (AR 381.) On February 23, 2006, Plaintiff's attorney informed Ball that Plaintiff failed to attend the IPE due to inclement weather conditions, that she had contacted the doctor's office to let them know and the office told her it was fine to reschedule, and asked what needed to be done to reschedule the appointment. ( Id. 380.) Counsel also stated, "[m]y client is willing to cooperate and apologizes for any inconvenience." ( Id.)

In response, Ball disputed that the weather was adverse and requested reimbursement for the cost of the IPE, but stated that it would reschedule it. (AR 378.) Plaintiff's counsel replied by stating that the roads were hazardous on the day of the IME that Plaintiff failed to attend, and attached copies of weather related pages from various newspapers to substantiate that claim. ( Id. 371-376.) Ball rescheduled the IME for March 20, 2006. ( Id. 370.) Before the appointment Ball rescheduled the IME again due to Plaintiff's concerns about adverse weather conditions. ( Id. 371.) The IME was rescheduled to April 17, 2006. ( Id. 344.)

Plaintiff attended the third scheduled IME in April 2006. The psychiatric assessment by Dr. Sills concluded that Plaintiff did not suffer from any psychiatric disorder that would prevent her from working. (AR 334-43.) Plaintiff asserts that this constituted the IME that Ball claimed it needed. She also asserts that Ball withheld the report from her for two and one half months, until August 8, 2006.

The Plan forwarded the results of the psychiatric assessment to Dr. Nudelman (involved now for a third time in the case) to review and determine whether the findings changed his prior opinion that there was insufficient medical evidence demonstrating that Plaintiff was unable to perform any occupation for which she was qualified. On June 15, 2006, Dr. Nudelman issued a report that the psychiatric assessment did not change his prior opinion. (AR 311-15.) In this report, Dr. Nudelman stated, contrary to the reports of Drs. Sills and Burt, that "I am still of the opinion that the claimant does have an underlying psychiatric condition". ( Id. 312-313.) In other words, while Ball's consultant Dr. Sills had ruled out a psychiatric condition, Dr. Nudelman insisted there was one. ( Id.) Indeed, he noted that "Dr. Sills' evaluation is essentially nothing more than an interview with the patient, in which he simply accepts the claimant's self-reported symptoms and medical history as factual." ( Id. 313.) Dr. Nudelman also noted that Plaintiff had still not complied with a request for additional medical records, and that once those are received and reviewed, "it might be necessary [to] schedule an independent psychological evaluation with a full battery of tests." ( Id. 314) (emphasis in original.)

On June 20, 2006, an internal e-mail of Ball questioned whether to "share the information received" and stated, "[o]nce we discuss my questions which we sort have done already, are we ready to send the denial?" (AR 320.)

On that same date, Plaintiff's counsel wrote Ball advising that a hearing on Plaintiff's social security claim was set for July 17, 2006, and requesting a copy of the IME results as soon as possible so that they were available for the hearing. (AR 295-96.) The letter also detailed the functional restrictions imposed by Dr. Hammerly in his Residual Functional Capacity Assessment which noted, among other things, that "Conversation greater than one hour causes fatigue cognitive dysfunction." ( Id.) Counsel also sent another letter to Ball asking for a copy of the IME results for the SSA hearing. ( Id. 319.)

Thereafter, even though Dr. Sill's IPE ruled out mental illness as a cause of Plaintiff's inability to work (AR 334-43) and Dr. Burt had commented on some probable cognitive deficits in the SSA proceeding, the Plan Administrator scheduled a neuropsychological IME to assess Plaintiff's cognitive functioning. This was done according to Ball because Dr. Hammerly had identified cognitive dysfunction as a basis for her inability to work ( id. 191, 1001), and Dr. Nudelman's January 2004 review recommended neuropsychological testing to evaluate cognitive functioning. ( Id. 257, 514.)

On July 14, 2006, Plaintiff was informed that an independent neuropsychological evaluation was scheduled for her on August 9, 2006. (AR 291.) This was scheduled from "8:00 AM — 5:00 PM (approx)" with Gregory Thwaites, who is not a physician.

On August 1, 2006 Plaintiff's counsel informed Ball that Plaintiff had received a favorable SSDI decision and, because SSA found her disabled due to CFS, not "psychological factors," the neuropsychological evaluation was irrelevant and unreasonable, particularly since Plaintiff had already undergone a psychiatric IME which despite requests had not been provided to Plaintiff. (AR 261-262.) The letter thus asked that the IME be cancelled. ( Id.) The letter also stated that "due to Ms. Dubrovin's disability, chronic pain and related symptoms, she is unable to participate in any 8 hour neuropsych (or other type of) evaluation." ( Id. 262.) The letter asked that the LTD benefits be restored based upon the SSDI findings. ( Id. 261-62.)

On August 7, 2006, Ball responded asking counsel to forward the SSDI written findings to Ball and stated that "any information used for the social security disability appeal may be helpful in the Company's determination of continued Long-term Disability Benefits. . . ." (AR 260.) However, Ball stated that its disability determination "is not contingent upon or determined by an approval of any Social Security Disability award." ( Id.) "Therefore, the Company requires that Ms. Dubrovin attend the scheduled neuropsychological evaluation on August 9, 2006, at the stated time." ( Id.) The letter concluded, "[o]nce the information has been reviewed, along with the results of the upcoming evaluation, we will inform Ms. Dubrovin of the Company's decision" and "will be more than willing to share the reports from the IME evaluations." ( Id.)

On August 8, 2006, Plaintiff's counsel responded that Plaintiff would not attend the IME, as she was n

ES S's Cross Motion for Summary Judgment will be granted to the extent it seeks a finding that the Risk Digest Articles qualify as prior art under 35 U.S.C. § 102(b).

II. The `613 patent

In the Complaint, VVI alleges that ES S infringed the `613 patent. (Doc. No. 1 ¶ 35.) VVI moves for summary judgment on the validity and infringement of '613 patent. (Doc. No. 71 at 20-22.) In response, ES S maintains that because the `613 patent was surrendered to the PTO as part of the reissue process, it cannot be infringed as a matter of law. (Doc. No. 84 at 4.)

Pursuant to 35 U.S.C. § 251, when a patent is "deemed wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent. . . ." Once a reissue patent has been granted, "the original patent cannot be infringed . . . for the original patent is surrendered." Seattle Box Co. v. Indus. Crating Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984). Notwithstanding the surrender of the original patent to the PTO, 35 U.S.C. § 252 provides that "in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending or abate any cause of action then existing. . . ." 35 U.S.C. § 252 (emphasis added). In sum, the original patent must be surrendered to the PTO in order for the reissue patent to be granted, rendering the original patent unenforceable. Despite this surrender, a patent holder may still enforce a claim of the reissued patent against infringing activity that occurred before the reissue date if the asserted reissued claim is substantially identical to a claim in the original patent. Bloom Eng'g Co., Inc. v. N. Am. Mfg., 129 F.3d 1247, 1250 (Fed. Cir. 1997). On the other hand, claims of the reissued patent that are not substantially identical to a claim in the

original patent cannot be asserted against infringing activity that occurred before the date of the reissue. Id.

Here, the original `613 patent issued on August 3, 2004. (Doc. No. 1-1 at 1.) On August 5, 2008, the `613 patent was surrendered to the PTO and reissued as the `449 patent. ( Id. at 10.) As a result, ES S cannot infringe the `613 patent. See Seattle Box, 731 F.2d at 827. While the claims of the reissued `449 patent that are substantially identical to the claims of the original patent are enforceable against ES S for infringing activity that occurred before the reissue date, the original patent itself is rendered unenforceable by the reissue process. Furthermore, because the `613 patent was surrendered to the PTO, the court need not consider its validity. See id. ("The statute does not allow the claims of the original patent some other form of survival. The original claims are dead.").

III. Invalidity

A. Anticipation

VVI seeks a finding on summary judgment that the claims of the `449 patent are not invalid as anticipated under 35 U.S.C. § 102. (Doc. No. 71 at 21-22.) In response, ES S contends that claims 49, 56, 85, 93, and 94 of the `449 patent are invalid as anticipated under 35 U.S.C. § 102. (Doc. No. 84 at 19.)

A patent is invalid as anticipated if the invention "was described in a printed publication . . . before the invention thereof by the applicant for the patent." 35 U.S.C. § 102(a). Thus, anticipation embodies the concept of novelty — if a "device or process has been previously invented (and disclosed to the public), then it is not new, and [] the claimed invention is anticipated by the prior invention." Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). In order to establish anticipation, a party must demonstrate "that the four corners of a single prior art document describe every element of the claimed invention." Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006) (internal citation and quotation omitted). Disclosure of each element independently, however, is insufficient to support a finding of anticipation. The Federal Circuit "has long held that anticipation requires the presence, in a single prior art disclosure, of all elements of a claimed invention arranged as in the claim." Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (emphasis in original).

Despite the requirement that each element be described within the four corners of a document, a prior art reference that does not explicitly disclose each element of a claimed invention may still anticipate the claimed invention "if [the] missing characteristic is necessarily present, or inherent, in the [] reference." Schering Corp. v. Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).

Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure would be sufficient.

Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (citation omitted) (emphasis in original). When the prior art reference is silent about the asserted inherent characteristics, extrinsic evidence may be used to fill the gaps by demonstrating that the "missing descriptive element is necessarily present in the thing described in the reference. . . ." Id.

A patent is presumed valid under 35 U.S.C. § 282, and a party challenging a patent's validity bears the burden to prove the factual elements of invalidity by clear and convincing evidence. Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1324 (Fed. Cir. 2006). In order to determine if the party asserting invalidity has met its statutory burden of proof, a court must consider an examiner's decision on an original or reissue application. Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1354 (Fed. Cir. 2007). This "burden of proof is not reduced when prior art is presented to the court which was not presented to the PTO." Id. (internal citation omitted). What a prior art reference discloses in an anticipation analysis is a factual determination that may be decided on a motion for summary judgment only if no material facts are disputed. Novo Nordisk Pharm. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005).

The "clear and convincing" standard is an intermediate standard lying somewhere between the "beyond a reasonable doubt" and the "preponderance of the evidence" standards of proof. Addington v. Texas, 441 U.S. 418, 425 (1979). Although the exact definition is elusive, "clear and convincing evidence" has been described as evidence that "place[s] in the ultimate factfinder an abiding conviction that the truth of its factual contentions are highly probable." Colorado v. New Mexico, 467 U.S. 310, 316 (1984) (internal quotations omitted).

1. Claims 49, 85, and 93 of the `449 Patent and the Benson Article

ES S maintains that the Benson Article, entitled "Computerized Voting," discloses every element of claims 49, 85, and 93 of the `449 patent, rendering these claims invalid as anticipated. (Doc. No. 84 at 23.) In response, VVI maintains that the Benson Article fails to disclose a computer voting station programmed to meet the elements of the claims at issue. (Doc. No. 100 at 15.)

Claims 85 and 93 recite the element of "voting by a voter using a computer voting station programed to present an election ballot [and] accept input of votes from the voter according to the election ballot . . ." Claim 49 recites "voting by a vector using a computer voting station programed to present an election ballot [and] accept input of votes from the vector according to the election ballot . . ." Therefore, in order to anticipate these claims, the Benson Article must disclose a computer voting station programmed to present an election ballot and accept the input of votes. See Novo Nordisk Pharms., 424 F.3d at 1354-55.

Claim 49 of the original `613 patent recites "voting by a voter using a computer voting station. . . ." `613 Patent (emphasis added). Claim 49 of the reissued `449 patent recites "voting by a vector using a computer voting station. . . ." `449 Patent (emphasis added). The parties do not contend that this amendment is relevant to the present motions.

The Benson Article does not explicitly disclose the use of a computer programmed in this manner. (Doc. No. 84-6 at 12.) Instead, the article refers to the use of an "electronic voting booth." ( Id.) Nonetheless, ES S's expert, Michael Shamos, contends that the disclosed phrase "`electronic voting booth' is a "computer voting station programmed to present an election ballot." (Doc. No. 95-2 at 1.)

Typically, "testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference. The testimony is insufficient [to establish anticipation] if it is merely conclusory." Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002) (internal citation omitted); Tech-Search, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002) ("Mere denials or conclusory statements are insufficient."). The Federal Circuit has made clear that "it is not the task of the district court to attempt to interpret [] general testimony to determine whether a case of invalidity has been made out, particularly at the summary judgment stage. Indeed, to accept [] generalized testimony as evidence of invalidity is improper." Id. at 1316. Here, Shamos neither provides an interpretation of the programmed computer element nor explains how the Benson Article discloses the element. Instead, Shamos merely states, in a conclusory fashion, that the term "electronic voting station" discloses the programmed computer element. (Doc. No. 95-2 at 1.) The record contains no other evidence to support a finding that the Benson Article discloses this element, either expressly or inherently. ES S therefore fails to establish by clear and convincing evidence that the Benson Article discloses the programmed computer limitation.

However, the evidence in the record is sufficient to create a genuine issue of material fact regarding whether the Benson Article inherently discloses the programmed computer element. Accordingly, the court declines to grant summary judgment on the issue of anticipation of claims 49, 85, and 93 of the `449 patent by the Benson Article.

2. Claim 94 and the Benson Article

ES S maintains that claim 94 of the `449 patent is also anticipated by the Benson Article. (Doc. No. 84 at 23.) In response, VVI contends that the Benson Article fails to disclose a computer voting station programmed to meet the limitations of claim 94 and therefore does not anticipate claim 94 of the `449 patent. (Doc. No. 100 at 15.)

In order to anticipate claim 94 of the `449 patent, the Benson Article must disclose each and every limitation of the claim, either expressly or inherently. Novo Nordisk Pharms., 424 F.3d at 1354-55. Claim 94 recites:

A self-verifying voting system comprising: one or more voting stations comprising: . . . (c) one or more computer programs which operate in a computer to: present the election ballot for voting; accept input of the votes from the voter; store the votes of the voter in the computer; print the votes of the voter so that the votes of the voter are readable by the voter and comparable by the voter with the votes the voter input; accept input of the voter as to whether the printed votes are acceptable or unacceptable; and record the votes stored in the computer which are acceptable. . . .

Therefore, in order to anticipate claim 94, the Benson Article must disclose a computer program that operates to preform these enumerated tasks.

In an effort to support its claim that the Benson Article anticipates claim 94, ES S represents that the "Benson [Article] recites `a menu-driven ballot on a computer screen.'" (Doc. No. 84 at 23) (emphasis added). However, the Benson Article does not refer to a computer screen. (Doc. No. 84-6.) Instead, it refers to "a menu-driven ballot on the screen." ( Id. at 12) (emphasis added). Next, ES S refers the court to the declaration of Michael Shamos who opines that the Benson Article discloses each and every limitation of claim 94 of the `449 patent. (Doc. No. 95-2 at 6.) In support of this assertion, Shamos provides a claim chart wherein the only reference to the computer program element is a quote from the Benson Article with the terms "computer program" added by Shamos in parentheses after the phrase "electronic voting booth." Shamos does not provide an interpretation of the computer program element, nor does he explain how the term "electronic voting booth" discloses a programmed computer. Instead, Shamos simply states, in a conclusory fashion, that the computer program element is disclosed in the Benson Article, presumably in the phrase "electronic voting booth." (Doc. No. 95-2 at 6.) The record contains no other evidence supporting a finding that the Benson Article discloses the computer program element. ES S therefore fails to establish by clear and convincing evidence that the Benson Article discloses the computer program limitation of claim 94, either expressly or inherently.

The claim chart provided by Shamos states: "[s]uppose an electronic voting booth [computer program], with a screen of some sort. . . ." (Doc. No. 95-2 at 6.)

However, the evidence in the record is sufficient to create a genuine issue of material fact regarding whether the Benson Article inherently discloses the computer program element and therefore anticipates claim 94. Accordingly, the court declines to grant summary judgment on the issue of anticipation of claim 94 of the `449 patent by the Benson Article.

3. Claim 56 and the Strini Patent

ES S maintains that the Strini Patent anticipates claim 56 of the `449 patent. (Doc. No. 84 at 23.) In response, VVI contends that the Strini Patent does not disclose each and every limitation of claim 56. (Doc. No. 100 at 9.) The parties fail to address the issue of display of both general voting instructions and direction to the voter for operation of the system.

In order to anticipate claim 56, the Strini Patent must disclose each and every limitation of the claim, either expressly or inherently. Novo Nordisk Pharms., 424 F.3d at 1354-55. Claim 56 recites "one or more voting stations comprising: (a) one or more computer programs which operate in a computer to display general voting instructions, at least one election ballot showing the candidates and/or issues to be voted on, and direction to the voter for operation of the system. . . ." Therefore, in order to anticipate claim 56, the Strini Patent must disclose a computer program that operates to display both general voting instructions and directions to the voter regarding the operation of the system. Despite this requirement, ES S does not cite, and this court is unable to find, such a disclosure in the Strini Patent. While the Strini Patent repeatedly discloses the use of a touch screen to display parties, candidates, and preferences, it does not disclose the display of any type of instruction or direction. (Doc. No. 84-7.) Because there is no evidence in the record to support a finding that the Strini Patent discloses the display of instruction or direction, ES S fails to create a genuine issue of material fact regarding whether the Strini Patent anticipates claim 56 of the `449 patent. Accordingly, VVI's Motion for Summary Judgment will be granted to the extent it seeks a finding that claim 56 is not invalid as anticipated under 35 U.S.C. § 102.

4. Claims 1-48, 50-55, 57-84, and 86-92

In the Complaint, VVI contends that ES S infringes the `449 patent. (Doc. No. 1 ¶¶ 27-28, 32.) VVI seeks a finding on summary judgment that the claims of the `449 patent are not invalid as anticipated under 35 U.S.C. § 102. (Doc. No. 71 at 21-22.) In response, ES S contends that claims 49, 56, 85, 93, and 94 of the `449 patent are invalid as anticipated under 35 U.S.C. § 102 by the disclosed prior art. (Doc. No. 84 at 20.)

A patent is presumed valid under 35 U.S.C. § 282, and ES S bears the burden to prove the factual elements of invalidity under 35 U.S.C. § 102 by clear and convincing evidence. Yoon Ja Kim, 465 F.3d at 1324. Notwithstanding this burden, ES S fails to provide any evidence supporting a finding that claims 1-48, 50-55, 57-84, and 86-92 of the `449 patent are invalid as anticipated under 35 U.S.C. § 102. Accordingly, summary judgment will be granted for VVI to the extent VVI seeks a finding that claims 1-48, 50-55, 57-84, and 86-92 of the `449 patent are not invalid as anticipated under 35 U.S.C. § 102.

B. Obviousness

VVI maintains that ES S fails to create a genuine issue of material fact regarding the obviousness of the `449 patent under 35 U.S.C. § 103. (Doc. No. 71 at 21-22; Doc. No. 91 at 9.) ES S contends that the asserted claims are invalid as obvious in light of various combinations of prior art references detailed in the expert report of Michael Shamos. (Doc. No. 84 at 23-24.) However, ES S does not fully brief the issue of obviousness but instead requests permission to submit additional briefing on the issue if the court determines that claims 49, 56, 85, 93, and 94 of the `449 patent are not anticipated by the disclosed prior art. ( Id.) Having determined that these claims are not anticipated by the disclosed prior art, the court will grant ES S leave to file a supplemental summary judgment motion addressing the issue of obviousness in accordance with the deadlines set forth in the Case Management and Scheduling Order. (Doc. No. 54.)

C. Invalidity — 35 U.S.C. § 101 and § 112

In its Counterclaim, ES S alleges that the `449 patent is invalid under 35 U.S.C. § 101 and § 112. (Doc. No. 7 ¶ 8.) VVI moves for summary judgment on the issue of invalidity under 35 U.S.C. § 101 and § 112, arguing that ES S fails to present sufficient evidence to create a genuine issue of material fact as to the invalidity of the `449 patent under either section. (Doc. No. 71 at 22-24.) ES S provides no response in opposition to VVI's arguments regarding invalidity under 35 U.S.C. § 101, but it alleges that claim 94 of the `449 patent is invalid as indefinite under 35 U.S.C. § 112 ¶ 6. (Doc. No. 84 at 18.)

A patent is presumed valid, and ES S bears the burden to prove the factual elements of invalidity under 35 U.S.C. § 101 and § 112 by clear and convincing evidence. Libel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed. Cir. 2007); Arrhythmia Research Tech., Inc., v. Corazonix Corp., 958 F.2d 1053, 1056 (Fed. Cir. 1992); see also Canon Computer Sys., Inc. v. Nu-Kote Intern., Inc., 134 F.3d 1085, 1088 (Fed. Cir. 1990) ("[W]here the challenger fails to identify any persuasive evidence of invalidity, the very existence of a patent satisfies the patentee's burden on the validity issue."). Notwithstanding this burden, ES S fails to provide evidence supporting a finding that any claim of the `449 patent, aside from claim 94, is invalid under either 35 U.S.C. § 101 or § 112. Accordingly, summary judgment will be granted for VVI to the extent VVI seeks a finding that the claims of the `449 patent, excluding claim 94, are not invalid under either 35 U.S.C. § 101 or § 112. The validity of claim 94 will be addressed separately. See infra section IV.B.

IV. Infringement

VVI moves for summary judgment on the issue of the Accused Systems' infringement of claim 49 of the `449 patent. (Doc. No. 71 at 2, 10.) In response, ES S moves for summary judgment on the issue of the Accused Systems' non-infringement of claims 49, 56, 85, 93, and 94. (Doc. No. 84 at 4.)

An infringement analysis involves two steps. First, the court must construe the claims, a question of law in which the scope and meaning of the asserted claims is defined. Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1341 (Fed. Cir. 2003). The claims as construed are then compared to the accused device. Id. This is a question of fact. Insituform Techs., Inc. v. Cat. Contracting, Inc., 161 F.3d 688, 692 (Fed. Cir. 1998). To prevail, a plaintiff must establish by a preponderance of the evidence that the accused device infringes one or more claims of the patent either literally or under the doctrine of equivalents. Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1374 (Fed. Cir. 2009).

"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal citation omitted). Generally, claim terms take on their ordinary and accustomed meanings as understood by one of ordinary skill in the pertinent art at the time of filing. Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368 (Fed. Cir. 2003). "The inquiry into how a person of ordinary skill in the art understands a claim term therefore provides an objective baseline from which to begin claim interpretation." Phillips, 415 F.3d at 1313.

In construing the meaning of claim terms, courts must first examine the patent's intrinsic evidence. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Intrinsic evidence includes the claim language, the specification, and the prosecution history. Id. The claims themselves provide substantial guidance as to the meaning of particular claim terms. Phillips, 415 F.3d at 1314. A term's context in the asserted claim can be instructive, and courts presume a difference in meaning and scope when a patentee uses different phrases in separate claims. Id. For example, when a dependent claim adds a limitation to an independent claim, it is presumed that the independent claim does not include the limitation. Id.

"[T]he specification `is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of the disputed term.'" Id. (quoting Vitronics, 90 F.3d at 1582). A patentee may define his own terms in the specification, giving a claim term a different meaning than the term would otherwise possess, or a patentee may disclaim or disavow the claim scope otherwise included in the ordinary and accustomed meaning of the term. Id. at 1315. The specification may also assist in the construction of ambiguous claim terms "where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone." Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The prosecution history is another tool used to supply the proper context for claim construction, as a patent applicant may define a term in the prosecution of the patent or otherwise limit the scope of a claim term. Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004).

In addition to consulting intrinsic evidence, the claim language, the specification, and the prosecution history, the court may also consult extrinsic evidence, including dictionaries, treaties, encyclopedias, and expert testimony. Phillips, 415 F.3d at 1324. Although extrinsic evidence can be useful, it is "less significant than the intrinsic record in determining the `legally operative meaning of claim language.'" Id. at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 358 F.3d 858, 862 (Fed. Cir. 2004). Extrinsic evidence is less reliable than intrinsic evidence and must not be "used to contradict the meaning that is unambiguous in light of the intrinsic evidence." Vitronics, 90 F.3d at 1583-84.

Once the claim terms have been construed, the court compares the claims, as construed, to the accused device. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001). "Direct infringement requires a finding that one or more claims of the patent read on the accused device, either literally or under the doctrine of equivalents." Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005) (internal citations omitted). To literally infringe a claim, "each and every limitation set forth in [the] claim must be found in an accused product, exactly." Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). "If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). "A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product or method was insubstantial or that the accused product or method performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product or method." AquaTex Indus., Inc. v. Techniche Solutions, Chem. Co., 479 F.3d 1320, 1326 (Fed. Cir. 2007) (internal citations omitted). Equivalents are assessed on a limitation-by-limitation basis. Id.

A. Claims 49, 85, and 93

VVI maintains that there are no genuine issues of material fact relating to the Accused Systems' infringement of claim 49 of the `449 patent. (Doc. No. 71 at 2, 10.) In response, ES S moves for a finding of non-infringement of claims 49, 85, and 93, arguing that because no single party performs or controls each step of the claimed methods, the claims cannot be infringed by ES S. (Doc. No. 84 at 6.)

"Direct infringement requires a party to perform or use each and every step or element of a claimed method or product." BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380 (Fed. Cir. 2007) (citing Warner-Jenkinson Co., Inc. v. Hilton Davis Corp., 520 U.S. 17, 20 (1997)). "When a party participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standards for liability under indirect infringement." Id. at 1379. A finding of indirect infringement requires, as a predicate, a finding that some party directly infringes and thus performs each step of the claimed method. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004). Therefore, "[a]bsent direct infringement of the patent claims, there can be neither contributory infringement or inducement of infringement." Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986).

Notwithstanding the general requirement that a single party must perform each step of a patented method in order to establish infringement, liability cannot be avoided "simply by contracting out steps of a patented process to another entity." BMC Res., 498 F.3d at 1381. Instead, where the actions of multiple parties combine to perform the steps of a claimed method, the claim "is directly infringed if one party exercises `control or direction' over the entire process such that every step is attributable to the controlling party, i.e. the `mastermind.'" Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008) (citing BMC Res., 498 F.3d at 1380-81). The requisite level of control or direction over the act committed by a third party is established when "the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party." BMC Res., 498 F.3d at 1380. On the other hand, "arms-length cooperation will not give rise to direct infringement by any party." Id.

In order to evaluate the alleged infringement of claims 49, 85, and 93, the court must first construe the asserted claims to determine which party performs the various method steps. ES S argues that the steps in claims 49, 85, and 93, if performed at all, would be performed by multiple actors. (Doc. No. 84 at 5.) VVI concedes that the method steps at issue are not performed by a single actor, but it maintains that ES S exerts sufficient control over the voters' actions to establish a claim of direct infringement. (Doc. No. 100 at 3.) Neither of the litigants addresses the issue of determining which party performs the various steps of the claimed methods.

The terms of the claims themselves indicate that a voter performs steps (c), (d), and (e) of claim 49, steps (a), (c), and (d) of claim 85, and steps (a), (b), (c), and (d) of claim 93. In fact, these claims specifically state that the steps are to be performed "by the voter." Accordingly, the court construes these claim elements as requiring performance by a voter.

Claim 49 recites:
A method of voting providing for self-verification of a ballot comprising the steps of:
(a) voting by a vector using a computer voting station programmed to present an election ballot, accept input of votes from the vector according to the election ballot, temporarily store the votes of the voter;
(b) printing of the votes of the voter from the votes temporarily stored in the computer for the voting station;
(c) comparison by the voter of the printed votes with the votes temporarily stored in the computer for the voting station;
(d) decision by the voter as to whether a printed ballot is acceptable or unacceptable;
(e) inputting of information as to the acceptability of a printed ballot by the voter; and
(f) submission of an acceptable printed ballot for tabulation.
Claim 85 recites:
A method of voting providing for self-verification of a ballot comprising the steps of:
(a) voting by a voter using a computer voting station programmed to present an election ballot, accept input of votes from the voter according to the election ballot, temporarily store the votes of the voter;
(b) printing of the votes of the voter from the votes temporarily stored in the computer for the voting station;
(c) comparison by the voter of the printed votes with the votes temporarily stored in the computer for the voting station;
(d) decision by the voter as to whether a printed ballot is acceptable or unacceptable; and
(e) submission of an acceptable printed ballot for tabulation.
Claim 93 recites:
A self-verifying voting method comprising the steps of:
(a) voting by a voter using a computer voting station programmed to present an election ballot, accept input of votes from the voter according to the election ballot, store the votes of the voter;
(b) printing of the votes of the voter from the votes temporarily stored in the computer for the voting station;
(c) examination by the voter of the printed votes for correctness and comparison with the votes the voter input;
(d) decision by the voter as to whether a printed ballot is acceptable or unacceptable; and
(e) recording of the acceptable votes stored in the computer
(f) submission of the acceptable printed votes; and
(g) tabulation of the acceptable recorded and/or acceptable printed votes.

Mr. Provitola testified during his deposition that elements (c), (d), and (e) of claim 49, element (e) of claim 85, and elements (c), (d), and (f) of claim 93 are performed by a voter. (Doc. No. 81-1 at 5-10.)

On the other hand, step (b) of claims 49, 85, and 93 simply recites the method step of "printing of the votes of the voter." There is no indication in either the claim language or the specification that the voter performs step (b), nor is there any indication that the voter is required to perform a specific step in order to initiate the printing of the votes. In addition, the parties do not contend that the voter performs every step of claims 49, 85, and 93. (Doc. No. 84 at 4-6; Doc. No. 100 at 2-4.) Instead, the specification repeatedly discloses that the claimed voting system automatically prints the votes after the voter inputs his or her votes into the voting program. See, e.g., '449 Patent fig.3; col. 3 ln. 26-30; col.3 ln. 64-67; col. 5 ln. 1-14. For example, the specification states that "[a] printed ballot produced by the computer voting station which shows the votes of a voter is then presented to the voter." `449 Patent col. 2 ln. 26-29 (emphasis added). The specification also states that the "vote of the voter is [] presented to the voter in the form of a paper ballot, printed by the printer for that voting station, the paper ballot being produced by the printer in the printing process by the computer program. . . ." Id. col. 5 ln. 1-4 (emphasis added). Finally, the specification does not suggest that any party, other than a printer, is capable of performing the step of printing the votes of the voter. Accordingly, the court finds that step (b) in claims 49, 85, and 93 is performed by a printer.

Having determined that step (b) is performed by a printer, the court must next determine if ES S, which has been shown to develop and market the Accused Systems, exercises sufficient control or direction over the steps performed by the voters such that each step of the asserted method claims is attributable to ES S. The only evidence in the record directly indicating that ES S controls the voters' actions is the instruction the Accused Systems provide the voters regarding use of the Accused Systems. (Doc. No. 37.) However, in Muniauction, the Federal Circuit determined that instructing users on the use of an online auction method constituted insufficient evidence of control to establish any theory of infringement. 532 F.3d at 1330. Moreover, VVI has identified no legal theory under which ES S might be held vicariously liable for the actions of the voters. Thus, even considering the evidence in the light most favorable to it, VVI fails to create a genuine issue of material fact concerning whether ES S exercises sufficient control or direction over the actions of

The parties do not assert, and the court does not find, that the voters exercise sufficient direction or control over step (b) to establish direct infringement. As discussed previously, the specification does not indicate that the voter is required to perform any specific step, aside from voting, in order to initiate in the printing of the votes. Instead, the specification indicates that the claimed voting system prints the votes automatically after the voter inputs his or her vote into the voting program. Thus, the voter does not exercise sufficient direction or control over step (b) to render step (b) attributable to the voter.

the voters such that each step of the claimed methods is attributable to ES S. Accordingly, ES S's Cross Motion for Summary Judgment will be granted to the extent it seeks a finding that the Accused Systems do not infringe claims 49, 85, and 93 of the `449 patent.

B. Claims 56 and 94

Claim 56 of the `449 patent recites "a means for tabulating the printed ballots generated by said one or more voting stations." Claim 94 of the `449 patent similarly recites "a means for tabulating the acceptable votes of the voter recorded and/or printed in said one or more voting stations." ES S contends that these quoted limitations are recited in a "means-plus-function" format and therefore should be construed to cover only those structures specifically disclosed in the specification as performing the recited function. (Doc. No. 84 at 15-16.) ES S maintains that the disclosed structure for tabulating printed votes is an "electro-optical sensing device that can read filled-circles or other ballot selection markings, such as filled-ovals or filled rectangles." ( Id. at 17.) ES S further contends that the disclosed structure corresponding to the tabulating recorded votes function is a general purpose computer, rendering claim 94 invalid as indefinite. ( Id. at 18.) VVI concedes that the contested limitations are "means-plus-function" limitations but argues that the scope of the limitation in claim 56 should be construed to include tabulation by hand. (Doc. No. 100 at 7-8.) VVI offers no response in opposition to ES S's contention that claim 94 is invalid as indefinite. ( Id.)

1. Means-Plus-Function Limitations

A "means-plus-function" limitation recites a function to be performed without reciting a specific structure for performing the function. Instead, the limitation recites a "means" for performing the stated function. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). Title 35 U.S.C. § 112, ¶ 6 requires that such "means" limitations "be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof" for performing the claimed function. 35 U.S.C. § 112, ¶ 6; Lockheed Martin, 324 F.3d at 1318. Use of the term "means" in a claim limitation creates a presumption that § 112, ¶ 6 has been invoked. Kemco Sales, Inc. v. Control Papers Co., Inc., 203 F.3d 1352, 1361 (Fed. Cir. 2000). That presumption is overcome if the properly construed claim limitation recites a sufficient structure to perform the claimed function. Id. (internal citation omitted).

Section 112, paragraph 6 states that "[a]n element in a claim for a combination may be expressed as means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6.

The proper construction of a means-plus-function limitation involves two steps. First, the court must identify the claimed function. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1324 (Fed. Cir. 2001) (citing Kemco, 208 F.3d at 1361). Once the function is established, the patent must be examined to identify the corresponding structure disclosed in the specification that performs the claimed function. Lockheed Martin, 249 F.3d at 1324. A structure is "corresponding only if the specification [] clearly associate[s] the structure with the performance of the function." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002) (internal citation omitted). A court "may not import structural limitations from the written description that are unnecessary to perform the claimed function." Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001). Failure to disclose an adequate structure corresponding to the recited function "results in the claim being of indefinite scope, and thus invalid." Cardiac Pacemakers, 296 F.3d at 1114; Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001).

Literal infringement of a means-plus-function claim limitation "requires that the relevant structure in the accused device performs the identical function recited in the claim and be identical or equivalent to the corresponding structure in the specification." Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1099 (Fed. Cir. 2008) (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006)). Once the relevant structure in the accused device has been identified, a party may prove it is equivalent to the disclosed structure by "showing that the two perform the identical function in substantially the same way, with substantially the same result." Kemco, 208 F.3d at 1364. The party asserting infringement ultimately bears the burden of proof on this issue.

If the accused structure is not equivalent to the disclosed structure under a theory of literal infringement because it does not perform the identical function of the disclosed structure, it may nevertheless be an "equivalent" for purposes of establishing infringement under the doctrine of equivalents. Id. at 1364. Unlike literal infringement, the doctrine of equivalents does not require the accused structure to perform the identical function of the disclosed structure. Instead, infringement may be established under the doctrine of equivalents where the accused structure is found to perform substantially the same function as the disclosed structure. Dawn Equip. Co. v. Ky. Farms Inc., 140 F.3d 1009, 1016 (Fed. Cir. 1998).

2. Claim 56

Claim 56 of the `449 patent recites "a means for tabulating the printed ballots generated by said one or more voting machines." The use of the term "means" creates a presumption that the limitation should be construed as a means-plus-function limitation under § 112, ¶ 6. See Kemco Sales, 203 F.3d at 1361. This presumption is further supported by the fact that the limitation recites a corresponding function but does not recite a definite structure for performing that function. Id. In fact, the claim language corresponding to the function fails to recite any structure for performing the means function. Furthermore, the parties do not dispute the construction of the limitation as a means-plus-function limitation. Accordingly, the court finds that the "means for tabulating the acceptable votes" limitation of claim 56 is a "means-plus-function" limitation under § 112, ¶ 6.

Having determined that the limitation falls under § 112, ¶ 6, the court must begin the construction of the limitation by identifying the function related to the means language. See Telemac, 247 F.3d at 1324. In accordance with the plain language of the claim, the function recited in claim 56 relating to the means language is "tabulating the printed ballots." See JVW Enters., Inc. v. Interact Accessories, Inc., 424 F.3d 1324, 1330 (Fed. Cir. 2005) ("A court may not adopt[] a function different from that explicitly recited in the claim.").

In order to infringe claim 56 of the `449 patent either literally or under the doctrine of equivalents, a relevant structure in ES S's AutoMark System must perform either the identical function of tabulating printed ballots or a substantially similar function. Welker Bearing, 550 F.3d at 1099. The undisputed evidence in the record, however, demonstrates that no structure in the AutoMark System is capable of tabulating printed ballots. (Doc. No. 84-2 ¶¶ 11-12.) While the AutoMark System is capable of marking a single printed ballot or reading a single printed ballot for verification purposes, there is no evidence to establish that the AutoMark System is also capable of tabulating the paper ballots it marks or reads. ( Id. ¶ 13.) Instead, a jurisdiction using the AutoMark System that wishes to tabulate the printed ballots would have to do so by hand or with the assistance of a separate tabulation machine. ( Id. ¶¶ 12-13.) Thus, the Automark System does not perform the identical function of the means-plus-function limitation of claim 56, nor does it perform a substantially similar function. Accordingly, ES S's Cross Motion for Summary Judgment will be granted to the extent it seeks a finding that the AutoMark System does not infringe claim 56 of the `449 patent, either literally or under the doctrine of equivalents.

The AutoMark System erases a voter's selection as soon as the ballot is marked. (Doc. No. 84-2 ¶¶ 11, 14.) As a result, the AutoMark System is also incapable of tabulating electronically stored votes.

With respect to the iVotronic RTAL System, the evidence in the record demonstrates that as the voter makes selections, the printer prints a continual hard-copy log of each action taken by the voter. (Doc. No. 84-2 ¶ 21.) These hard-copy logs are retained for audit purposes. ( Id. ¶ 23.) At the end of the election, the iVotronic RTAL System also prints summary reports from its permanent memory that appear in both a bar code and a human readable format. ( Id. ¶ 22.) There is no evidence in the record to establish that the iVotronic RTAL System includes a structure capable of tabulating either the hard-copy log or the summary reports. ( Id. ¶ 23-24.) Instead, a jurisdiction using the iVotronic RTAL System that wishes to tabulate the hard-copy log would have to do so by hand. ( Id. ¶¶ 25, 26.) If the jurisdiction wishes to tabulate the summary reports, that jurisdiction would have to either use a separate bar code scanner or manually count the printed totals. ( Id. ¶ 24.) Because the iVotronic RTAL System is incapable of tabulating the printed hard-copy log or the summary reports, it does not perform the identical function of the means-plus-function limitation of claim 56, tabulating the printed ballots, nor does it perform a substantially similar function. Accordingly, ES S's Cross Motion for Summary Judgment will be granted to the extent it seeks a finding that the iVotronic RTAL System does not infringe claim 56 of the `449 patent, either literally or under the doctrine of equivalents.

ES S does not sell any product that can scan or otherwise tabulate the hard-copy log containing each individual voter's selections. (Doc. No. 84-2 ¶ 26.) Steve Bolton, Vice President of Intellectual Property Management for ES S, states in his declaration that he has "never seen or heard of a jurisdiction reviewing and counting the individual entries on the paper audit tape." ( Id. ¶ 25.)

3. Claim 94

Claim 94 of the `449 patent recites "a means for tabulating the acceptable votes of the voter recorded and/or printed in said one or more voting stations." The use of the term "means" creates a presumption that the limitation should be construed as a means-plus-function limitation under § 112, ¶ 6. See Kemco Sales, 203 F.3d at 1361. That the claim language recites a corresponding function but does not recite a structure for performing the function further supports a finding that the limitation falls under § 112, ¶ 6. Id. In addition, the parties do not dispute the construction of the limitation as a means-plus-function limitation. Accordingly, the court finds that the "means for tabulating the acceptable votes" limitation of claim 94 is a "means-plus-function" limitation under § 112, ¶ 6.

In order to construe the means-plus-function limitation of claim 94, the function of the limitation must first be established. See Telemac, 247 F.3d at 1324. The claim language recites a function of "tabulating the acceptable votes of the voter recorded and/or printed." While neither the claim itself or the specification defines the term "recorded votes," paragraph (c) of claim 94 recites "one or more computer programs which operate in a computer to . . . record the votes stored in the computer which are acceptable." The means-plus-function limitation of tabulating the recorded votes follows limitation (c). In light of this claim language, the court finds the term " the acceptable votes of the voter recorded" in the means-plus-function limitation refers back to the acceptable votes stored in the computer described in paragraph (c). The function of the means-plus-function limitation in claim 94 is therefore "tabulating the acceptable votes of the voters stored in the computer and/or the printed votes."

Having determined the function, the corresponding structure described in the specification must be identified. The specification of the `449 patent discloses "a computer program for directing the voting process for the voter and for vote counting." `449 Patent col. 2 ln. 14-16. The specification also states that "the vote data which was temporarily stored in the voting station computer is finally stored for processing by the computer program." `449 Patent col. 5 ln. 33-36. The specification does not disclose any other structure corresponding to the function of tabulating the acceptable votes of the voters stored in the computer. Accordingly, the court finds that the structure corresponding to the function of tabulating the acceptable votes of the voters stored in the computer is a computer program.

In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, the Federal Circuit consistently requires that the structure disclosed in the specification be more specific "than simply a general purpose computer or microprocessor." Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The point of this requirement is to limit the scope of the claim to the structure and its equivalents and thus avoid purely functional claiming. Med. Instrumentation Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) ("If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee . . . is attempting to claim a [function] unbounded by any reference to structure in the specification."). Because "general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to the corresponding structure that performs the function," as required by § 112 ¶ 2. Aristocrat, 521 F.3d at 1333. Therefore, in a means-plus-function claim where the disclosed structure is a general purpose computer programmed to carry out a particular function, the claim is invalid as indefinite if the specification fails to disclose an algorithm for performing the claimed function. Net Moneyin, 545 F.3d at 1367 (citing Aristocrat, 512 F.3d at 1334); WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).

In the present case, the only structure disclosed in the specification of the `449 patent that corresponds to the function of tabulating the acceptable votes of the voter stored in the computer is a general purpose computer. Thus, in order to avoid a finding of invalidity for indefiniteness, the specification must also disclose an algorithm for performing the claimed function, "regardless of [the algorithm's] simplicity." Net Moneyin, 545 F.3d at 1367. Because the specification fails to disclose such an algorithm or any class of algorithms for performing the claimed function of tabulating votes stored in the computer, claim 94 of the `449 patent fails to disclose a sufficient structure corresponding to the claimed function, rendering the claim invalid as indefinite. See Aristocrat, 513 F.3d at 1338. Accordingly, ES S's Cross Motion for Summary Judgment will be granted to the extent ES S seeks a finding that claim 94 is invalid.

V. Intervening Rights

ES S asserts that "VVI's claims are barred by the doctrine of intervening rights." (Doc. No. 17 ¶ 49.) VVI moves for summary judgment on the issue of intervening rights, arguing that because claim 49 of the reissued `449 patent is substantially identical to claim 49 of the `613 patent and infringed by the Accused Systems, ES S has not acquired intervening rights. (Doc. No. 71 at 16-18.) In response, ES S maintains that because it does not infringe any claim of the reissued `449 patent that is substantially identical to a claim of the `613 patent, including claim 49, it is entitled to absolute intervening rights. (Doc. No. 84 at 25.)

The affirmative defense of intervening rights protects parties who are accused of infringing patent claims set forth in a broadened reissue patent when the alleged infringement occurred before the reissue patent was granted. BIC Leisure Prods., Inc. v. Windsurfing Int'l, Inc., 1 F.3d 1214, 1220 (Fed. Cir. 1993). The first sentence of 35 U.S.C. § 252 defines absolute intervening rights:

A reissued patent shall not abridge or affect the right of any person or that person's successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent.

35 U.S.C. § 252. Thus, in order to receive protection against infringement under a theory of absolute intervening rights, the accused party must establish: (1) that a tangible article or product was in existence before the reissue date; and (2) that the product did not infringe any claim of the original patent. Shockley v. Arcan, Inc., 248 F.3d 1349, 1359 (Fed. Cir. 2001).

In the present case, the parties agree that claim 49 of the reissued `449 patent is substantially identical to claim 49 of the original `613 patent. However, ES S has been found not to infringe claim 49 of the `449 patent, and VVI has yet to establish that ES S infringes any other valid claim of the `449 patent that is substantially identical to a claim of the original `613 patent. Because ES S has not been found to infringe a valid claim of the reissued patent that is substantially identical to a claim in the original patent, ES S is not barred, at this point in the litigation, from receiving protection under a theory of absolute intervening rights. Accordingly, VVI's Motion for Summary Judgment

will be denied at this juncture to the extent it seeks a finding that ES S is not entitled to assert intervening rights.

VI. Rule 26 Disclosures

VVI maintains that ES S failed to disclose the Strini Patent (Doc. No. 84-7) and the affidavit of Christopher Butler ("Butler Affidavit") (Doc. No. 84-6) in accordance with Federal Rule of Civil Procedure 26 and should therefore be prohibited from using these documents in support of the Cross-Motion for Summary Judgment. (Doc. No. 100 at 8-9.) ES S contends that while the Strini Patent and Butler Affidavit were not disclosed to VVI in its initial Rule 26 disclosure, these documents were disclosed to VVI on CDs of documents sent to VVI prior to the filing of the Cross-Motion for Summary Judgment. (Doc. No. 107 at 7.) Copies of the letters sent to VVI along with the CDs indicate that the CDs included copies of the contested documents and were mailed prior to the filing date of the Cross Motion for Summary Judgment. There is no evidence in the record supporting a contrary finding. Accordingly, the court declines to preclude ES S from relying on the Butler Affidavit and the Strini Patent in support of the Cross Motion for Summary Judgment.

Conclusion

Based on the foregoing, the Second Motion for Summary by Voter Verified, Inc. (Doc. No. 71, filed Apr. 28, 2010) is GRANTED in part and DENIED in part as follows:

1. The Motion is GRANTED to the extent VVI seeks a finding that the claims of the `449 patent are not invalid under 35 U.S.C. § 101;

2. The Motion is GRANTED to the extent VVI seeks a finding that the claims of the `449 patent, other than claim 94, are not invalid under 35 U.S.C. § 112;

3. The Motion is GRANTED to the extent VVI seeks a finding that claims 1-48, 50-84, and 86-92 of the `449 patent are not invalid as anticipated under 35 U.S.C. § 102.

3. The Motion is DENIED in all other respects.

The Cross-Motion for Summary Judgment of Non-Infringement and Patent Invalidity by Election Systems Software, Inc. (Doc. No. 84, filed May 28, 2010) is GRANTED in part and DENIED in part as follows:

1. The Motion is GRANTED to the extent ES S seeks a finding that the `613 patent was surrendered to the PTO during the reissue process and therefore cannot be infringed by ES S;

2. The Motion is GRANTED to the extent ES S seeks leave to file a supplemental summary judgment motion addressing the issue of obviousness;

3. The Motion is GRANTED to the extent ES S seeks a finding that the Accused Systems do not infringe claims 49, 56, 85, and 93 of the `449 patent;

4. The Motion is GRANTED to the extent ES S seeks a finding that claim 94 of the `449 patent is invalid under 35 U.S.C. § 112;

5. The Motion is GRANTED to the extent ES S seeks a finding that the Risk Digest Articles qualify as prior art for the purpose of analyzing the validity of the `449 patent under 35 U.S.C. § 102; and

6. The Motion is DENIED in all other respects.

DONE and ORDERED in Orlando, Florida on September 29, 2010.