The information herein is provided in an effort to clarify facts surrounding legal complaints filed by Miller Mendel, Inc. (“MMI”) against law enforcement agencies in various states which allege that use of software provided by Guardian constitutes infringement on a patent held by Miller Mendel Inc.
SUMMARY
ON APRIL 14, 2022, A FEDERAL JUDGE IN TEXAS RULED THAT THE MMI PATENT CLAIMS DO NOT ADDRESS PATENTABLE SUBJECT MATTER, DISMISSED THE CASE AGAINST ANNA PD AND INVALIDATED THE CLAIMS ASSERTED, THUS ELIMINATING ANY BASIS FOR A SOLE SOURCE JUSTIFICATION.
Chronology of Events
March of 2018: Guardian engaged an IP attorney to review the MMI patent and to provide guidance regarding whether the Guardian system infringed on it or not. The opinion provided suggested the patent contained no patentable subject matter based on current patent law and is therefore invalid and unenforceable.
October of 2018: MMI sued the City of Oklahoma City (“OKC”) in Oklahoma federal court, after the OKC PD chose the Guardian Background Investigation Platform over MMI’s “eSoph” system in an open bidding process. Guardian is providing indemnity to OKC. MMI issued a press release regarding the suit: Press Release
February 2021: MMI sued the Washington County Sheriff’s Office in Oregon (“WCSO”). Guardian is providing indemnity to WCSO. In March 2021, the MMI suit against WCSO was stayed pending the outcome of the OKC case. MMI again issued a press release regarding the suit: Press Release
June 2021: MMI sued the Alaska State Troopers and the Commissioner of the Alaska DPS. Guardian is providing indemnity to Alaska. In August 2021, the MMI suit against ADPS was stayed pending the outcome of the OKC case. MMI did not issue a press release regarding this lawsuit.
Dec 2, 2021: MMI sued the Anna Police Department. Guardian is providing indemnity to Anna. MMI again issued a press release regarding the suit: Press Release
February 15, 2022: Anna PD filed a Motion for Judgment on the Pleadings, asking that the case be dismissed and that the patent be invalidated. MOTION HERE
April 14, 2022: The Federal Judge granted Anna’s Motion, invalidating the patent and dismissing the case. RULING HERE
May 2, 2022: MMI filed an Appeal and a Motion for Reconsideration. MOTION HERE
June 9, 2022: the Judge denied the MMI Motion for Reconsideration. RULING HERE
August 5, 2022: Guardian filed a suit against MMI alleging various antitrust violations, tortious interference with commercial contracts, fraud on the patent office, attempt at monopolization, trade libel, and other allegations. Guardian is seeking declaratory judgments invalidating all MMI patents in full as well as monetary damages. COMPLAINT HERE
October 11, 2022: MMI filed motions to strike and dismiss Guardian’s complaint under the California anti-SLAPP (Strategic Lawsuits Against Public Participation) statute. MOTIONS HERE
December 8, 2022: The judge dismissed MMI’s October 11th motions and ordered a stay on Guardian’s suit pending the outcome of MMI’s appeal of the patent invalidation. RULING HERE
April 4th, 2023: The USPTO rejected MMI’s efforts to bolster their invalid patent, stating, in part “the claims are a textbook (sic) abstract…because nothing in the claim elements preclude any of the steps from practically being performed in the mind.” Basically meaning, the claims of the patent are not patent eligible subject matter. USPTO RULING HERE
July 18, 2024: The Federal Circuit Appellate Court upheld the decision of the United States District Court for the Eastern District of Texas, and affirmed that the MMI patent does not contain patent eligible subject matter, thereby upholding the invalidation decision handed down in the Anna PD case. The court determined that these claims were directed towards an abstract idea and lacked any inventive concept.
APPEALS COURT OPINION HERE | APPEALS COURT ORDER HERE
THE INVALIDATION OF THE CLAIMS IN THE MMI PATENT REMOVES THE BASIS FOR THE OTHER CASES
AND/OR ANY ADDITIONAL NEW CASES AND, AS STATED ABOVE,
ELIMINATES THE BASIS FOR A SOLE SOURCE PROCUREMENT JUSTIFICATION
Summary of facts regarding the MMI patent
1.) No Patentable Subject Matter.
The basic functions of the Miller Mendel software are not patentable under current US patent law and the patent describing it, therefore, is invalid and unenforceable.
2.) Other Systems Existed Prior To The MMI Patent Filing (“prior art”).
Other software systems that performed in substantially identical ways to Miller Mendel’s eSOPH system — such as those developed and sold by Background Solutions, ADP, POBITS, and others — were available years before Miller Mendel filed for its patent. The prior existence of these systems render Miller Mendel’s patent invalid and unenforceable.
3.) Failure To Disclose Constitutes Fraud On The Patent Office – An Invalidating Event.
THIS EMAIL, obtained through an open records request from the King County Sheriff’s Office, shows clearly that Tyler Miller had detailed knowledge of at least one of the systems that predated his, but Miller Mendel did not tell the US Patent Office about it.
Any prior art (other systems) known by the applicant or the applicant’s representative must be disclosed to the Patent Examiner in order to fulfill the “duty of candor” mandated by 37 C.F.R. 1.56 A violation of duty of disclosure 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