DCT

5:18-cv-00990

Miller Mendel Inc v. Oklahoma City City Of

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:18-cv-00990, W.D. Okla., 05/14/2025
  • Venue Allegations: Venue is alleged to be proper as Defendant Guardian Alliance Technologies, Inc. conducts substantial business in and has substantial contact with the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that they did not commit inequitable conduct during the prosecution of a patent related to background investigation management and allege Defendant Guardian Alliance Technologies defamed them by publicly accusing them of such conduct.
  • Technical Context: The technology involves a web-based software system designed to digitize and streamline the process of conducting pre-employment background investigations, particularly for law enforcement agencies.
  • Key Procedural History: This action is a Third Amended Complaint. The dispute centers on allegedly defamatory statements published by Defendant on a specific website, which Plaintiffs claim creates a reasonable apprehension of an imminent suit against them concerning inequitable conduct, thereby establishing an actual controversy for a declaratory judgment action.

Case Timeline

Date Event
2011-04-06 ’188 Patent - Earliest Priority Date
2018-08-07 ’188 Patent - Issue Date
2019-08-22 Alleged Defamatory Website Published
2025-05-14 Third Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,043,188 - "Background Investigation Management Service"

The Invention Explained

  • Problem Addressed: The patent's background section describes pre-employment background investigations, particularly in law enforcement, as a highly inefficient and paper-intensive process, reporting that investigators spend an average of 40 hours per applicant investigation, much of which involves managing paper packets and contacting references (col. 1:19-38). The patent notes that an automated system to make this process more efficient had "eluded the industry" (col. 1:38-41).
  • The Patented Solution: The invention is a web-based software system that allows an organization, such as a police department, to create, customize, and electronically send documents to job applicants ('188 Patent, Abstract). Applicants complete the required forms online, and the system manages the data, automates communications with references, and facilitates the electronic sharing of applicant information between different organizations, thereby reducing the need for hardcopy documents and manual processing ('188 Patent, col. 3:5-24; Fig. 1).
  • Technical Importance: The described technology aims to significantly reduce the time and cost associated with background checks by digitizing the entire workflow, from applicant data entry to reference management and inter-agency communication ('188 Patent, col. 3:37-41).

Key Claims at a Glance

  • The complaint does not assert any patent claims for infringement. The patent is at issue in the context of a declaratory judgment action regarding inequitable conduct during its prosecution. For context, independent claim 1 describes the core method:
    • Receiving program data identifying an applicant, position, organization, and investigator.
    • Storing a new applicant entry in system memory.
    • Transmitting a hyperlink to the applicant for viewing electronic documents.
    • Receiving an electronic response from the applicant that includes data about a reference source (e.g., a former employer).
    • Determining a "reference class" for that source and selecting a corresponding set of electronic documents (e.g., a specific questionnaire for former employers).
    • Transmitting a hyperlink to the reference source for them to view and complete these documents.
    • Receiving and storing the electronic response from the reference source.
    • Generating a suggested list of law enforcement agencies to contact based on the applicant's address.

III. Other Allegations

  • Defamation (First Claim for Relief): The complaint alleges that Defendant Guardian Alliance Technologies, Inc. ("GAT") published false statements asserting that Plaintiffs "committed fraud on the United States Patent & Trademark Office in the prosecution of Plaintiffs patents, including the ’188 Patent" (Compl. ¶10). These statements were allegedly made on the website "thetruthaboutmillermendel.com" with the intent to damage Plaintiffs' business and competitiveness (Compl. ¶10, ¶14). The complaint alleges these actions constitute libel under Oklahoma law (Compl. ¶11). No probative visual evidence provided in complaint.
  • Declaratory Judgment of No Inequitable Conduct (Second Claim for Relief): The complaint alleges that GAT's public accusations of fraud create an "actual case or controversy" because they place Plaintiffs in "reasonable apprehension of an imminent suit" regarding the enforceability of the ’188 Patent (Compl. ¶17, ¶20). Plaintiffs explicitly deny committing fraud or inequitable conduct and seek a declaratory judgment from the court that the ’188 Patent is not unenforceable on these grounds (Compl. ¶17, ¶21; Prayer for Relief ¶1). This claim is brought under the patent laws and the Federal Declaratory Judgment Act (Compl. ¶16).

IV. Analyst’s Conclusion: Key Questions for the Case

This case presents a procedural posture where the patent holder, rather than asserting infringement, is preemptively seeking to validate its patent against accusations of prosecution misconduct. The central questions for the court appear to be:

  • A primary issue will be one of jurisdictional ripeness: Do Defendant's alleged public statements on a website, accusing Plaintiffs of "fraud on the USPTO," create a sufficient "actual controversy" to give the court subject matter jurisdiction over a declaratory judgment action for no inequitable conduct?
  • A core factual question for the defamation claim will be one of truth and fault: Were Defendant's statements regarding patent prosecution fraud false, and were they published with the level of fault required by Oklahoma libel law, or can the statements be defended as substantially true or protected opinion?