DCT
3:21-cv-00168
Miller Mendel Inc v. Washington County Oregon
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Miller Mendel, Inc. (Washington)
- Defendant: Washington County, Oregon, and Washington County Sheriff's Office (Oregon)
- Plaintiff’s Counsel: RYLANDER & ASSOCIATES Associates
- Case Identification: 3:21-cv-00168, D. Or., 02/01/2021
- Venue Allegations: Venue is alleged to be proper as Defendants are situated and reside within the District of Oregon.
- Core Dispute: Plaintiff alleges that Defendant’s use of the Guardian Alliance Technologies software platform for conducting background checks infringes a patent related to background investigation management systems.
- Technical Context: The technology at issue pertains to web-based software systems designed to automate and streamline the process of conducting pre-employment background investigations, particularly for law enforcement agencies.
- Key Procedural History: Plaintiff is the exclusive licensee of the patent-in-suit. The complaint notes that on December 9, 2020, Plaintiff served a tort claim notice upon Defendants, who did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-06 | Earliest Priority Date for U.S. Patent No. 10,043,188 |
| 2018-08-07 | U.S. Patent No. 10,043,188 Issued |
| 2020-08-30 | Alleged Start Date of Infringement |
| 2020-12-09 | Plaintiff Served Tort Claim Notice on Defendants |
| 2021-02-01 | Complaint for Patent Infringement Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,043,188 - "BACKGROUND INVESTIGATION MANAGEMENT SERVICE" (Issued Aug. 7, 2018)
The Invention Explained
- Problem Addressed: The patent describes the process of conducting pre-employment background investigations, particularly in law enforcement, as being labor-intensive and heavily reliant on paper documents, requiring investigators to spend an average of 40 hours per applicant managing a packet of questions and waivers (’188 Patent, col. 1:19-34). The patent notes that the industry had "eluded... an automated system to help a background investigator more efficiently and effectively conduct a background investigation" (’188 Patent, col. 1:37-41).
- The Patented Solution: The invention is a web-based software system that automates the management of background investigations (’188 Patent, Abstract). The system allows an organization to create, customize, and electronically transmit documents like questionnaires and agreements to applicants and their references. It then receives and organizes the electronic responses, streamlining data collection and review for the investigator (’188 Patent, col. 4:6-18; Fig. 1).
- Technical Importance: The patented system sought to reduce the administrative burden of background checks by automating tasks, thereby decreasing reliance on hardcopy documents and creating a more efficient management process for individual investigations (’188 Patent, col. 4:13-18).
Key Claims at a Glance
- The complaint asserts infringement of at least independent Claim 1 and dependent claims 5 and 15 (Compl. ¶12).
- Independent Claim 1, a method claim, includes the following essential elements:
- Receiving a first set of program data identifying an applicant, position, organization, and investigator.
- Storing a new applicant entry in system memory associated with that data.
- Transmitting a hyperlink to the applicant for viewing a set of electronic documents.
- Receiving an electronic response from the applicant that includes a reference set of program data (e.g., information about a reference person, including an email address).
- Determining a "reference class" of the reference source based on the reference data.
- Selecting a reference set of electronic documents based on the determined reference class.
- Transmitting a hyperlink to the reference source's email address for viewing the selected reference documents.
- Receiving an electronic response from the reference source.
- Storing the reference's electronic response and associating it with the applicant's entry.
- Generating a suggested reference list of one or more law enforcement agencies based on an applicant's residential address.
III. The Accused Instrumentality
Product Identification
- The "Guardian Alliance Technologies investigation software platform," referred to as the "Guardian Platform" (Compl. ¶12).
Functionality and Market Context
- The complaint alleges that Defendants use the Guardian Platform on a computing device "in conducting a background investigation of an application within an organization" (Compl. ¶12). It further alleges that Plaintiff's own commercial product, the "eSOPH" system, directly competes with the accused Guardian Platform used by Defendants (Compl. ¶15). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’188 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a first set of program data comprising information identifying the applicant, the position, the organization, and the investigator; | receiving a first set of program data comprising information identifying the applicant, the position, the organization, and the investigator; | ¶12 | col. 15:56-61 |
| storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data; | storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data; | ¶12 | col. 16:1-4 |
| transmitting an applicant hyperlink to an applicant email address associated with the applicant, the applicant hyperlink for viewing an applicant set of electronic documents; | transmitting an applicant hyperlink to an applicant email address associated with the applicant, the applicant hyperlink for viewing an applicant set of electronic documents; | ¶12 | col. 16:5-10 |
| receiving an applicant electronic response with a reference set of program data, wherein the reference set of program data comprises information regarding a reference source... | receiving an applicant electronic response with a reference set of program data, wherein the reference set of program data comprises information regarding a reference source... | ¶12 | col. 16:11-17 |
| determining a reference class of the reference source based on the reference set of program data; | determining a reference class of the reference source based on the reference set of program data; | ¶12 | col. 16:18-20 |
| selecting a reference set of electronic documents based on the reference class of the reference source; | selecting a reference set of electronic documents based on the reference class of the reference source; | ¶12 | col. 16:21-23 |
| transmitting a reference hyperlink to the reference email address... | transmitting a reference hyperlink to the reference email address... | ¶12 | col. 16:24-28 |
| receiving a reference electronic response to the reference set of electronic documents from the reference source; | receiving a reference electronic response to the reference set of electronic documents from the reference source; | ¶12 | col. 16:29-31 |
| storing the reference electronic response in the system memory, associating the reference electronic response with the new applicant entry; and | storing the reference electronic response in the system memory, associating the reference electronic response with the new applicant entry; and | ¶12 | col. 16:32-35 |
| generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address. | generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address. | ¶12 | col. 16:36-39 |
Identified Points of Contention
- Evidentiary Questions: The complaint provides allegations that track the language of Claim 1 without offering specific factual evidence (such as screenshots or technical documents) demonstrating how the accused Guardian Platform performs each claimed step. A central question for discovery will be whether the Guardian Platform's actual operation maps to each of the specific, sequential method steps required by the claim.
- Scope Questions: The complaint alleges direct infringement by Washington County, a user of the software. A question for the court may be whether the Defendant's "use" of the third-party Guardian Platform constitutes "performance" of all steps of the claimed method, or if some steps are performed exclusively by the software vendor, which would raise questions about divided infringement.
V. Key Claim Terms for Construction
The Term: "reference class"
- Context and Importance: This term is critical to the core logic of the claimed method, which requires first "determining" a class and then "selecting" documents based upon it. The construction of this term will dictate how sophisticated the accused system's categorization of references must be to infringe.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide an explicit definition for "reference class", which could support an argument for its plain and ordinary meaning, covering any general categorization of a reference source (’188 Patent, col. 16:18-20).
- Evidence for a Narrower Interpretation: The specification provides a list of exemplary reference types, including "relatives, employers, supervisors, co-workers, neighbors, and personal references" (’188 Patent, col. 8:22-24). Figures also show specific reference types such as "Family Member," "Neighbors," and "Employer" (’188 Patent, Fig. 4, Fig. 26). This may support a narrower construction limited to categories related to personal history for a background check.
The Term: "generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address"
- Context and Importance: This is the final and highly specific functional step of Claim 1. Proving that the accused Guardian Platform performs this exact function will be a key element of Plaintiff's infringement case.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue this term should be read broadly to encompass any feature that presents law enforcement agency information to the user in connection with an applicant's address.
- Evidence for a Narrower Interpretation: The specification describes a specific "Address Locator" feature designed to "retrieve law enforcement and court names, addresses and phone numbers for a pre-defined radius around the applicant's past and current addresses" (’188 Patent, col. 10:48-53). This detailed description could support a narrower construction requiring a similar automated, location-based search and retrieval function.
VI. Other Allegations
Indirect Infringement
The complaint makes a conclusory allegation of infringement through acts of inducement under 35 U.S.C. § 271(b) (Compl. ¶21). It does not, however, plead specific facts to support the elements of knowledge and intent, such as alleging that the software vendor provided instructions or encouragement to use the Guardian Platform in the specific manner that allegedly infringes the patent.
Willful Infringement
The complaint alleges that infringement has been "willful and deliberate" based on the allegation that "Defendants had notice of the '188 Patent" (Compl. ¶¶11, 24). The complaint does not specify whether this alleged notice was pre-suit or post-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary support: The complaint's infringement allegations directly mirror the language of Claim 1 without presenting extrinsic evidence of the accused platform's functionality. The case will therefore depend significantly on whether discovery produces evidence that the Guardian Platform performs each of the specific, sequential functions recited in the asserted claims.
- The case will also involve a question of functional specificity: Assuming the accused platform performs analogous functions, the dispute will likely focus on whether its operation meets the specific claim requirements. For example, does the platform's handling of references rise to the level of "determining a reference class" and then "selecting" documents based on that class, and does it perform the precise function of "generating a suggested reference list of... law enforcement agencies based on an applicant residential address"?