May 3, 2022 – Seattle, Washington – Miller Mendel’s Founder, President & CEO Tyler Miller has released an open letter explaining Miller Mendel’s reasoning for filing an appeal to an Eastern District of Texas judge’s decision to grant a motion to dismiss the patent infringement lawsuit against the City of Anna (Texas). The letter also corrects incorrect information Guardian Alliance Technologies has published related to the Eastern District of Texas Judge’s decision.

Re: Miller Mendel’s eSOPH Patent Remains in Full Effect After Judge’s Decision

On April 14, 2022, an Eastern District of Texas judge granted a motion to dismiss the patent infringement lawsuit against the City of Anna. Miller Mendel has filed an appeal related to the judge’s decision. The patent remains in full effect until the appeal has been decided, likely sometime in or after 2025.

This letter will explain Miller Mendel’s reasoning for the appeal, along with correcting incorrect information Guardian Alliance Technologies has published related to the Eastern District of Texas Judge’s decision.

BACKGROUND

On October 9, 2018, Miller Mendel filed its first patent infringement complaint in the Oklahoma Western District Court against the City of Oklahoma for the Oklahoma City Police Department’s use of the Guardian Alliance Technologies background software. On October 14, 2020, Miller Mendel filed an amended complaint which added Guardian Alliance Technologies to the lawsuit.

On January 13, 2019, the City of Oklahoma City filed a Motion to Dismiss the lawsuit in the Oklahoma Western District Court. On March 12, 2019, Senior United States District Judge Robin Cauthron denied their Motion to Dismiss.

On October 10, 2019, Guardian Alliance Technologies filed for an Inter-Partes Review (IPR) with the United States Patent and Trademark Office (USPTO). In their IPR filing to the USPTO, Guardian Alliance Technologies alleged Miller Mendel’s patent should be invalidated. A panel of three USPTO judges reviewed Guardian Alliance Technologies’ IPR filing and denied Guardian’s request to invalidate Miller Mendel’s patent. Guardian then went on to file three related appeal-type actions with the USPTO regarding the USPTO’s decision. All filings by Guardian Alliance Technologies with the USPTO were denied by the USPTO judges and, as a result, Miller Mendel’s patent remains in full effect.

In or around 2021, Miller Mendel became aware the City of Anna (Texas) was likely infringing on Miller Mendel’s patent through their police department’s use of the Guardian Alliance Technologies’ software. Miller Mendel respectfully requested the City of Anna cease their use of the infringing software. The City of Anna did not respond and continued to use the Guardian Alliance Technologies software and therefore continued to infringe the Miller Mendel 10043188 patent issued by the USPTO. On December 2, 2021, Miller Mendel filed a patent infringement complaint in the federal court for the Eastern District of Texas against the City of Anna.

In defense of that action, the City of Anna, represented by the same counsel who represents Guardian Alliance Technologies and Oklahoma City, filed a motion to dismiss on the same grounds that were filed in the Oklahoma Western District Court and which had been denied by that court on March 12, 2019.

Guardian Alliance Technologies and Miller Mendel are faced with the indisputable fact that two federal judges made opposite, conflicting decisions regarding motions to dismiss made on the same grounds filed by counsel for Guardian Alliance Technologies; one judge granted the Motion to Dismiss and the other judge denied the Motion to Dismiss in Miller Mendel’s favor.

Additionally, three USPTO Patent Trial and Appeal Board (PTAB) judges reviewed Guardian Alliance Technologies’ multiple attempts to invalidate Miller Mendel’s patent at the USPTO PTAB level and denied Guardian, maintaining Miller Mendel’s patent in full effect.

Miller Mendel has had the patent infringement matter reviewed by four experienced and respected patent litigation attorney and patent application prosecutors. When we consider the assigned USPTO patent examiners analyzed the patent application for over two years before granting Miller Mendel the 10043188 patent, the USPTO denying Guardian’s three-plus attempts to invalidate the patent and one federal district court judge denying Guardian Alliance Technologies’ request, appealing the Eastern District of Texas court’s decision is a prudent next step.

On April 21, 2022, Guardian Alliance Technologies made the following statements in several press releases. Miller Mendel asserts these statements by Guardian Alliance Technologies are incorrect.

Guardian stated Miller Mendel’s patent has been “invalidated.” This is not correct. The Eastern District of Texas court decision may ultimately invalidate three of fifteen claims of the patent, but only if the Federal Circuit Court of Appeals agrees with the Eastern District of Texas Court. If other claims remain valid in the patent, the patent as a whole is not “invalidated.” In this case where an appeal has been filed, all claims in the patent remain one hundred percent valid and enforceable until the federal appeals court reviews and makes their decision. An appeals court decision isn’t likely to occur until 2025 or later.

Guardian stated the Eastern District of Texas judge’s decision “ends all cases previously filed by MMI.” That statement is not correct. Beyond the fact that the Eastern District of Texas’ ruling is under appeal, some of the other cases filed by Miller Mendel include other claims and are filed under different applicable law. The Eastern District of Texas judge’s decision cannot impact other cases where other claims or legal authorities are the basis of the complaint in those other courts. Additionally, the Alaska and Oregon cases are both “stayed” specifically on the grounds of waiting for the outcome of the Oklahoma case. The Oklahoma Western District Court is the court that denied the Motion to Dismiss.

Guardian stated, “In dismissing the action, Judge Gilstrap invalidated the MMI software patent that was the entire basis for the lawsuit.” This statement is not correct. As stated above, different lawsuits involving the Guardian Alliance Technologies software have different claims and assert different authorities. If Miller Mendel hadn’t filed an appeal, only three claims of fifteen in the patent could have been invalidated. Aside from that fact, the lawsuits filed in other jurisdictions don’t all include the same claims or authorities, and therefore the Eastern District of Texas court’s decision cannot typically impact those lawsuits.

Guardian’s press release states, “Now that MMI’s patent has been invalidated, Guardian and its customers are free to continue using Guardian’s background investigation software without threat of claims of infringing MMI’s now-invalidated patent.” This statement is not correct. Miller Mendel’s patent is not invalidated. A small number of claims (three of fifteen) within the overall patent are in question. All claims and the entire patent remain valid and enforceable until the United States Court of Appeals for the Federal Circuit renders a decision, which Miller Mendel would not expect to happen until sometime in or after 2025. Miller Mendel can continue to enforce its intellectual property rights under the patent until the Court of Appeals hears and renders a decision.

Miller Mendel also has two continuation patents currently in process with the USPTO.

Respectfully,

Tyler Miller
President & CEO

 

Miller Mendel Contact:
Info @ MillerMendel.com
(206) 330 – 2094

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