from the United States District Court for the Northern
District of Florida in No. 1:16-cv-00267-MW-GRJ, Judge Mark
Anthony Italo Provitola, DeLand, FL, argued for
M. Evans, Jr., Senniger Powers LLP, St. Louis, MO, argued for
defendant-appellee. Also represented by Kyle G. Gottuso.
Newman, Lourie, and Reyna, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
Verified, Inc. ("Voter Verified") appeals from the
United States District Court for the Northern District of
Florida's dismissal under Fed.R.Civ.P. 12(b)(6) of its
claim for patent infringement, holding that the claims of
U.S. Reissue Patent RE40, 449 ("the '449
patent") are directed to patent-ineligible subject
matter and are thus invalid under 35 U.S.C. § 101.
See Voter Verified, Inc. v. Election Sys. & Software
LLC, No. 1:16-cv-267, 2017 WL 3688148, at *2 (N.D. Fla.
Mar. 21, 2017) ("Voter Verified NDFL").
For the reasons that follow, we affirm.
'449 patent, assigned to Voter Verified, was reissued on
August 5, 2008 from U.S. Patent 6, 769, 613, and is directed
to voting methods and systems that provide for
"auto-verification" of a voter's ballot.
See '449 patent Abstract. Generally, the patent
discloses a process in which a voter enters a vote into a
voting system; the system generates a corresponding printed
ballot; and the voter verifies the printed ballot for
accuracy and submits it for tabulation. See id. col.
1 l. 64-col. 2 l. 40, col. 2 l. 53-col. 3 l. 11.
we address the issues in the current appeal, an overview of
relevant events from a prior litigation is necessary. In
November 2009, Voter Verified sued the predecessors of
Election Systems & Software LLC ("Election
Systems") in the Middle District of Florida alleging
infringement of the '449 patent. Election Systems, which
produces and markets automated voting systems, counterclaimed
that the claims of the '449 patent were invalid under
§§ 101, 102, 103, and 112. In a series of summary
judgment orders, the district court made various validity and
infringement decisions. The court determined that claims 1-93
were not infringed and claim 94 was invalid as indefinite
under § 112. The court then entered summary judgment in
favor of Voter Verified concluding that all the claims of the
'449 patent, except for claim 94, were not invalid under
§§ 101 and 112, because Election Systems failed to
present any arguments or evidence regarding invalidity of
these claims. See Summ. J. Order at 18- 19,
Voter Verified, Inc. v. Premier Election Sols.,
Inc., No. 6:09-cv-1968 (M.D. Fla. Sept. 15, 2010), ECF
No. 155; Summ. J. Order at 20, Voter Verified, Inc. v.
Election Sys. & Software, Inc., No. 6:09-cv-1969
(M.D. Fla. Sept. 29, 2010), ECF No. 114; J.A. 239. No further
analysis of § 101 was provided. Finally, the court
dismissed without prejudice the claim of invalidity of claims
85 and 93 under § 102, having already determined that
they were not infringed, but held that claim 49 was invalid
under § 103, even though the court had also already
determined that it was not infringed. The court additionally
held that the remaining claims 1-48, 50-84, and 86-92 were
not invalid under §§ 102 and 103.
Verified appealed the holding of invalidity of claim 49, but
not of claim 94. See Voter Verified, Inc. v. Premier
Election Sols., Inc., 698 F.3d 1374, 1379 (Fed. Cir.
2012). Election Systems cross-appealed the upholding of the
validity of the remaining claims 1-48, 50-84, and 86-92.
briefing and oral argument, we affirmed the district
court's invalidity judgment of claim 49 under § 103.
Id. at 1379-81. We also determined that the district
court did not err in holding that claims 1-48, 50-84, and
86-92 were not proven invalid because, in failing to respond
to these arguments in its summary judgment briefing, Election
Systems had not met its burden to prove its invalidity
counterclaims by clear and convincing evidence. Id.
at 1381-82. Therefore, only claims 49 and 94 remain invalid.
brings us to the present case on appeal. In July 2016, Voter
Verified again sued Election Systems, this time in the
Northern District of Florida, alleging that certain voting
systems and equipment made or operated by Election Systems
infringed the '449 patent. Election Systems filed a
motion to dismiss the complaint under Rule 12(b)(6) arguing
that Voter Verified failed to state a claim upon which relief
could be granted because all the claims of the '449
patent are invalid under § 101. In response, Voter
Verified argued that issue preclusion, or collateral
estoppel, precludes Election Systems from relitigating the
§ 101 issue, which it argues had already been decided in
the prior litigation. Election Systems countered that issue
preclusion should not apply in this case because there was an
intervening change in the law. Regardless, Election Systems
contended that under Eleventh Circuit law, issue preclusion
would still not apply because two of the four required
elements of issue preclusion were not met. Specifically,
Election Systems argued that the § 101 issue was not
"actually litigated" and it was not "a
critical and necessary part of the judgment" in the
first litigation. See CSX Transp., Inc. v. Bhd. of Maint.
of Way Emps., 327 F.3d 1309, 1317 (11th Cir. 2003).
district court granted Election Systems's motion to
dismiss. See Voter Verified NDFL, 2017 WL 3688148,
at *2. The court concluded that the "two-step
analysis" recited in Alice Corp. v. CLS Bank
International, 134 S.Ct. 2347 (2014), constituted a
"substantial change" in the law such that "the
issue of patent validity is not precluded from further
litigation." Voter Verified NDFL, 2017 WL
3688148, at *1-2. The district court therefore did not reach
an issue preclusion analysis under Eleventh Circuit law. The
court then proceeded to analyze the claims of the '449
patent under the two-step § 101 framework. First, the
court determined that the patent was based on the abstract
idea of "vote collection and verification."
Id. at *2. Second, the court determined that the
voting system was made up of "generic computer
components performing generic computer functions, " and
that this was insufficient to transform the abstract idea
into patent-eligible subject matter. Id. As a
result, the court held that all the claims of the '449
patent were directed to patent-ineligible subject matter and
thus invalid under § 101. Id.
Verified timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
review a district court's dismissal under Rule 12(b)(6)
under the law of the regional circuit. Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat'l
Ass'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014). The
Eleventh Circuit reviews the grant of a Rule 12(b)(6) motion
de novo, accepting as true the complaint's
factual allegations and construing them in the light most
favorable to the plaintiff. Speaker v. U.S. Dep't of
Health & Human Servs. Ctrs. for Disease Control &
Prevention, 623 F.3d 1371, 1379 (11th Cir. 2010).
we reach the merits of the § 101 issue, we must first
determine whether the district court properly concluded that
the § 101 judgment from the prior litigation does not
have preclusive effect in this case for the reason that
Alice was an intervening change in the law.
See Wright et al., 18 Fed. Prac. & Proc. Juris.
§ 4425 (3d ed.) ("Preclusion is most readily
defeated by specific Supreme Court overruling of precedent
relied upon in reaching the first decision."); see
also Dow Chem. Co. v. Nova Chems. Corp. (Can.), 803 F.3d
620, 628-29 (Fed. Cir. 2015); Wilson v. Turnage, 791
F.2d 151, 157 (Fed. Cir. 1986) (determining that issue
preclusion was inapplicable when there was an
"intervening change in the legal atmosphere"). If
there were a change in the law, then issue preclusion would
not apply, which would allow us to reach the merits of the
§ 101 issue. If, however, there were not a change in the
law, then issue preclusion would still be a viable issue that
we need to evaluate.
Intervening Change in the Law
district court held that Alice was a
"substantial change" in the law such that issue
preclusion does not apply here. See Voter Verified
NDFL, 2017 WL 3688148, at *1. On appeal, Voter Verified
argues that issue preclusion should apply because there was
no change in the law, and Alice merely applied a
rule from Bilski v. Kappos, 561 U.S. 593 (2010),
which it states was the controlling law at the time the
district court in the prior litigation entered summary
judgment on the § 101 issue. Election Systems counters
that there was a change in the law, because "the
two-step analysis [was] established in Mayo and
further refined in Alice." Appellee's Br.
23; see also Oral Arg. at 23:34-25:25, Voter
Verified, Inc. v. Election Sys. & Software LLC, No.
17-1930 (Fed. Cir. Feb. 9, 2018),
agree with Voter Verified to the extent that it argues that
Alice was not an intervening change in the law, so
that it does not exempt a potential application of issue
preclusion. However, we ultimately conclude for the reasons
that follow that issue preclusion does not apply in this
change of law exception to issue preclusion to apply, three
conditions must be satisfied. First, "the governing law
must have been altered." Dow Chem., 803 F.3d at
629 (citations omitted). Second, "the decision sought to
be reopened must have applied the old law." Id.
(citations omitted). Third, the change in the law "must
compel a different result under the facts of the particular
case." Id. (citations omitted). Additionally,
in order to be intervening, the change in the law must have
occurred after the first case was finally decided. See
Wilson, 791 F.2d at 157 ("[A] judicial declaration
intervening between the two proceedings may so change the