Guardian files a “Petition for Inter Partes Review” with the US Patent and Trademark Office

Oct. 10, 2019

On October 10, 2019, Guardian filed a “Petition for Inter Parties Review” with the US Patent and Trademark Office challenging the validity of a patent held by Miller Mendel, Inc.  The filing requests that the patent undergo a new USPTO review in light of what Guardian regards as overwhelming evidence that indicates that the Miller Mendel patents are invalid and unenforceable.  

In October of 2018, Miller Mendel, Inc. sued the City of Oklahoma City in Oklahoma federal court for patent infringement after OKC implemented the Guardian Alliance Technologies, Inc. background investigation platform.  MMI claims that the Guardian Platform infringes on patents held by Miller Mendel.

Guardian has been defending OKC in the suit and Guardian and OKC have compiled evidence that the patents are invalid and unenforceable and have filed with the USPTO requesting that the patents be canceled.

The Evidence, in general, consists of the following:

(1) Other software systems that performed identically to Miller Mendel’s eSOPH system — such as those developed and sold by Background Solutions, ADP, and others — were available years before Miller Mendel filed for its first patent.  The prior existence of these systems render Miller Mendel’s patents invalid and unenforceable.  Unfortunately, Miller Mendel did not tell the US Patent Office about the existence of these other systems and the Patent Office erroneously granted their patents. 

(2) The basic functions of the Miller Mendel software are not patent-eligible under US patent law.

The US Patent Office is expected to render a decision on this matter sometime during 2020.

A copy of the Petition for Inter Partes Review can be reviewed here:

Petition for Inter Partes Review – Miller Mendel Patents – PDF

The filing is also accessible publicly through the USPTO website link below.

Enter “IPR2020-00031” in the AIA Review Number field on the right side, then click on the “View Document” button on the right side of the next screen.