DCT
3:21-cv-00129
Miller Mendel Inc v. Alaska State Troopers
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Mendel Inc. (Washington) and Tyler Miller (Oregon)
- Defendant: Alaska State Troopers (Alaska) and James E. Cockrell, Commissioner
- Plaintiff’s Counsel: Lane Powell LLC; Rylander & Associates PC
- Case Identification: 3:21-cv-00129, D. Alaska, 05/28/2021
- Venue Allegations: Venue is alleged to be proper as Defendants are situated and reside within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s use of the Guardian Platform software for background investigations infringes a patent related to a background investigation management service.
- Technical Context: The technology concerns web-based software systems designed to automate and streamline the process of conducting pre-employment background investigations, particularly for public safety and law enforcement agencies.
- Key Procedural History: The complaint alleges that Plaintiffs provided formal written notice of infringement to the Alaska Department of Public Safety on January 12, 2021. In a letter dated February 17, 2021, the Department denied that its use of the accused platform infringes the patent. The complaint also preemptively addresses the issue of Eleventh Amendment sovereign immunity, arguing that it should be considered waived, in part because a third-party technology provider, Guardian Alliance Technology Inc., allegedly has a contractual obligation to indemnify the State of Alaska.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-06 | Earliest Priority Date for '188 Patent |
| 2018-08-07 | U.S. Patent No. 10,043,188 Issues |
| 2021-01-12 | Plaintiff provides formal written notice of infringement to Defendant |
| 2021-02-17 | Date of Defendant's letter denying infringement |
| 2021-05-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,043,188 - "Background Investigation Management Service"
- Issued: August 7, 2018
The Invention Explained
- Problem Addressed: The patent describes traditional pre-employment background investigations, particularly in law enforcement, as being highly inefficient and time-consuming, often taking 40 hours per applicant and relying on extensive paper-based questionnaires and manual data verification ('188 Patent, col. 1:20-41).
- The Patented Solution: The invention is a web-based software system that automates and manages the background investigation process. It allows an organization to create, customize, and electronically transmit documents to an applicant ('188 Patent, Abstract). The system is designed to receive electronic responses from both the applicant and third-party references, process the information, and manage the workflow, thereby reducing the reliance on hardcopy documents and improving efficiency ('188 Patent, col. 3:5-20). A key feature is the ability to share applicant data between different organizations to avoid redundant investigations ('188 Patent, col. 4:15-29).
- Technical Importance: The technology aimed to solve the significant logistical and time-cost problems associated with paper-intensive, manual background check procedures in a field where thoroughness is critical ('188 Patent, col. 1:38-41).
Key Claims at a Glance
- The complaint asserts independent claims 1, 5, and 15 (Compl. ¶20). The infringement allegations focus on method claim 1.
- The essential elements of independent claim 1 include:
- (a) receiving initial program data identifying an applicant, position, organization, and investigator;
- (b) storing a new applicant entry in system memory;
- (c) transmitting a hyperlink to the applicant for viewing electronic documents;
- (d) receiving an applicant response containing data about a reference source, including the reference's email address;
- (e) determining a "reference class" based on the reference source data;
- (f) selecting a set of electronic documents based on that reference class;
- (g) transmitting a hyperlink to the reference's email address for viewing the selected documents;
- (h) receiving an electronic response from the reference source;
- (i) storing the reference's response and associating it with the applicant entry; and
- (j) generating a suggested list of law enforcement agencies based on the applicant's residential address.
- The complaint reserves the right to assert additional claims (Compl. ¶20).
III. The Accused Instrumentality
Product Identification
- The "Guardian Alliance Technologies investigation software platform," referred to as the "Guardian Platform" (Compl. ¶20).
Functionality and Market Context
- The complaint describes the Guardian Platform as an "investigation software platform" used by the Defendant, Alaska State Troopers, to assist investigators in "conducting a background investigation of an application within an organization" (Compl. ¶¶ 20, 47).
- The complaint does not provide specific, independent details on how the Guardian Platform operates. Instead, it alleges that the Defendant's use of the platform on a computing device performs, step-by-step, the method recited in Claim 1 of the '188 Patent (Compl. ¶20).
- The complaint alleges the Alaska State Troopers awarded a contract to Guardian Alliance Technology Inc. (GAT) for use of the platform and were aware of Plaintiff's competing eSOPH system at the time (Compl. ¶76). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
Claim Chart Summary
The complaint alleges infringement of at least Claim 1. The core allegations are presented by block-quoting the claim language and asserting that the Defendant's use of the Guardian Platform meets each limitation (Compl. ¶¶ 20, 47).
’188 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) receiving a first set of program data comprising information identifying the applicant, the position, the organization, and the investigator; | Use of the Guardian Platform to receive initial applicant and case data. | ¶20(a) | col. 15:55-59 |
| (b) storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data; | Use of the Guardian Platform to store a new entry for the applicant. | ¶20(b) | col. 15:60-63 |
| (c) transmitting an applicant hyperlink to an applicant email address associated with the applicant...for viewing an applicant set of electronic documents; | Use of the Guardian Platform to send a hyperlink to the applicant. | ¶20(c) | col. 15:64-67 |
| (d) receiving an applicant electronic response with a reference set of program data...wherein the reference source is a person... | Use of the Guardian Platform to receive applicant-provided information about a reference person. | ¶20(d) | col. 16:1-6 |
| (e) determining a reference class of the reference source based on the reference set of program data; | Use of the Guardian Platform to determine a class for the reference source. | ¶20(e) | col. 16:7-9 |
| (f) selecting a reference set of electronic documents based on the reference class of the reference source; | Use of the Guardian Platform to select documents based on the determined class. | ¶20(f) | col. 16:10-12 |
| (g) transmitting a reference hyperlink to the reference email address...for viewing the reference set of electronic documents; | Use of the Guardian Platform to send a hyperlink to the reference person. | ¶20(g) | col. 16:13-16 |
| (h) receiving a reference electronic response to the reference set of electronic documents from the reference source; | Use of the Guardian Platform to receive the reference person's response. | ¶20(h) | col. 16:17-19 |
| (i) storing the reference electronic response in the system memory, associating the reference electronic response with the new applicant entry; and | Use of the Guardian Platform to store the reference's response and link it to the applicant. | ¶20(i) | col. 16:20-23 |
| (j) generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address. | Use of the Guardian Platform to generate a list of law enforcement agencies. | ¶20(j) | col. 16:24-27 |
Identified Points of Contention
- Pleading Sufficiency: A primary legal question is whether the complaint's element-by-element recitation of the claim, without providing specific facts about the accused product's operation, is sufficient to state a plausible claim for relief or is merely a conclusory allegation.
- Technical Questions: The complaint's lack of technical detail raises the question of whether the Guardian Platform actually performs the specific, conditional logic required by the claim. For instance, what evidence demonstrates that the accused product "determin[es] a reference class" and then "select[s] a reference set of electronic documents based on the reference class," as opposed to using a more generic or static process for all reference types?
- Scope Questions: The infringement analysis will question whether the Guardian Platform's functions map to the specific sequence of operations in Claim 1. For a method claim, the order of steps can be critical, and any deviation in the accused process could support a non-infringement argument.
V. Key Claim Terms for Construction
The Term: "reference class"
Context and Importance: This term appears in the core logic of the claimed method (steps e and f), where a "class" is determined and then used to select specific documents. The breadth of this term is critical; if it means any simple categorization (e.g., "family," "employer"), infringement may be easier to prove. If it requires a more specific, system-defined functional category, the infringement analysis becomes more difficult. Practitioners may focus on this term because it appears to be a point of novelty distinguishing the invention from a generic document management system.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification includes figures and descriptions of different "reference types" such as "Family Member," "Neighbors," "Landlords," and "Employer" ('188 Patent, FIG. 4, FIG. 26). A party could argue these "types" are synonymous with the claimed "class."
- Evidence for a Narrower Interpretation: The claim structure links the "determining" of a class directly to the "selecting" of documents, suggesting the "class" is a functional construct that dictates system behavior ('188 Patent, col. 16:7-12). A party could argue this requires more than a simple label and implies a specific data structure or attribute that the system uses to execute a rule.
The Term: "generating a suggested reference list"
Context and Importance: This is the final step of the claimed method and a key output. The dispute will likely center on what actions constitute "generating" a "suggested" list. If a simple database lookup based on an address satisfies this limitation, infringement may be more likely. If it requires a more complex algorithmic process, non-infringement becomes more plausible.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim links the generation to a simple input ("an applicant residential address"), which could support an argument that any automated production of a list of agencies in a geographic area meets this limitation ('188 Patent, col. 16:24-27).
- Evidence for a Narrower Interpretation: The specification describes this function as an "Address Locator" feature that "retrieve[s]" agency information ('188 Patent, col. 10:48-55). The use of the word "suggested" in the claim may be argued to imply an element of curation, recommendation, or ranking that goes beyond merely displaying all possible results from a database search.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b) (Compl. ¶¶ 26, 58). The factual basis appears to be that the Defendants (Alaska State Troopers and Commissioner Cockrell) contracted for and provided the Guardian Platform to their employees (investigators) for the purpose of performing background checks, thereby causing them to perform the steps of the patented method (Compl. ¶¶ 20, 47, 67).
- Willful Infringement: The complaint alleges that infringement has been willful and deliberate (Compl. ¶29). This allegation is based on the Defendants' continued use of the Guardian Platform after receiving "formal written notice" of the '188 Patent from the Plaintiffs on or about January 12, 2021 (Compl. ¶34).
VII. Analyst’s Conclusion: Key Questions for the Case
- A threshold, case-dispositive issue will be one of sovereign immunity: can the Plaintiffs overcome the Eleventh Amendment to pursue damages against the Alaska State Troopers, and does the alleged indemnification agreement with a third-party vendor constitute a waiver of that immunity, as the complaint suggests?
- A key pleading and evidentiary question will be one of factual sufficiency: are the complaint's infringement allegations, which mirror the language of Claim 1 without detailing the accused product's specific operations, plausible enough to survive a motion to dismiss? If so, what factual evidence will be required to prove that the Guardian Platform performs the specific, multi-step process recited in the patent?
- The core technical dispute will likely be a question of functional specificity: does the accused Guardian Platform's method for handling references involve the claimed two-step logic of first "determining a reference class" and then "selecting" a tailored set of documents based on that class, or does it employ a more generic workflow that falls outside the scope of the asserted claims?