U.S. District Court to Decide Miller Mendel Patent Invalidity as US Patent and Trademark Office Foregoes Review

Guardian Alliance Technologies (GAT), today announced that the US District court in the Western District of Oklahoma will decide whether patents held by Miller Mendel, Inc. are valid or not. The announcement comes in the wake of a July 27, 2020 announcement by the US Patent and Trademark Office that they will forego a review of the MMI patent.

In October of 2018, Miller Mendel, Inc. (“MMI”) sued the City of Oklahoma City (“OKC”) in Oklahoma federal court, after the OKC Police Department chose the Guardian Background Investigation Platform over MMI’s eSoph system in an open bidding process. MMI alleges that the Guardian software infringes on MMI’s patent, but MMI did not sue Guardian, electing instead to sue OKC, a Guardian customer. Guardian is providing OKC with legal defense and has gathered overwhelming evidence that patents held by Miller Mendel are invalid and unenforceable. Guardian had asked the USPTO to review the evidence on hand, but they declined to commence a review and, thus, the matter will be decided in federal court. 

Evidence submitted to the court includes:

• The Patent Contains No Patentable Subject Matter.  The basic functions of the Miller Mendel software are not patentable under current US patent law. 
• Other Systems Existed Prior To The MMI Patent Filing (“prior art”).  Guardian and OKC have gathered overwhelming evidence that other software systems that performed identically to Miller Mendel’s eSOPH system were available years before Miller Mendel filed for its patent.  The prior existence of these systems render Miller Mendel’s patent invalid and unenforceable. 
• Failure To Disclose Constitutes Fraud On The Patent Office.  Unfortunately, despite clearly being aware of these systems and despite their legal obligation to disclose their existence to the Patent Office, Miller Mendel did not tell the US Patent Office about them and the Patent Office erroneously granted their patent.   A violation of duty of candor as mandated by 37 C.F.R. 1.56 with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid and may constitute fraud.  US Patent Office – Violation of Duty To Disclose

Indisputable evidence [click to view evidence], gathered through a public records request, clearly shows that Tyler Miller had detailed information about at least one of the pre-existing systems, but failed to disclose this information to the patent office.