As law enforcement agencies across the country defend against schemes to defund the police amidst rising crime, another critical component of public safety is under fire.
The background investigation process used in vetting prospective police and deputy recruits, as well as other employees, is becoming progressively plagued by a fierce dispute between two software companies. One alleges its competitor is infringing on its patents.
However, it is not suing its competitor. It’s suing law enforcement agencies who use the competitor’s software.
Several Chiefs of Police, attorneys, and professional onlookers suspect the lawsuits against law enforcement agencies are an attempt to bankrupt the competitor who is absorbing all legal expenses.
In the meantime, the public image of sued agencies can be tainted as citizens question why their police or sheriff’s offices are violating law.
Due to the time-saving factors associated with using background investigation software, agencies wishing to streamline the background process are eager to put such products to use.
Setbacks in their ability to do so, obstructs their ability to improve what is often a slow and inefficient process, frequently resulting in potential recruits to search elsewhere for work.
Meanwhile, today’s younger generations often won’t even consider a law enforcement opportunity due to rising crime and political stunts.
Tyler Miller, 37, is Founder, President, and CEO of Miller-Mendel, a background investigations software development, and publishing company established in 2011. It is located in Seattle, Washington. On June 30, 2015, it received a patent for its flagship “eSOPH” product which eventually was expanded and referred to as “Patent ‘188.” It is sold to police departments, sheriffs’ offices, district attorneys’ offices, and other law enforcement agencies.
Guardian Alliance Technologies, a competitor to Miller-Mendel, formed in 2016 and is headquartered in Stockton, California. Marketing its background investigation software among other products and affiliations, it established The City of Oklahoma City as its first client in 2018.
According to Adam Anthony, Chief Operating Officer, Guardian hired a San Francisco area patent attorney, Charles Thoeming to evaluate the validity of Miller-Mendel’s patent after receiving notice from the firm that they owned a patent that could not be infringed.
Thoeming told The Free Press, “It was my assessment after looking at the claims and specifications of the Miller-Mendel patent that it was not patentable subject matter…and did not meet the two-part test of patent eligibility.”
Thoeming explained that in 2014, the U.S. Supreme Court established what is called the “Alice Ruling,” which essentially says that if a claim of patentability merely computerizes or automates what can be or has been done by humans, paper and pencils, it is not “art,” and is therefore not patentable.
This is a contention with Patent ‘188. The Alice Ruling has eviscerated approximately 4,000 patents, including software, rendering them invalid due to lack of true “invention;” however, a lawsuit or Inter Partes Review (IPR) must be filed to make an invalidated patent legally unenforceable.
Further, several companies – including POBITS and Background Solutions – pre-date Miller-Mendel’s software and were not patented, raising questions as to why patents were not applied for or issued to these firms.
Thoeming explained that the U.S. patent examiner who reviewed Miller-Mendel’s claims for patentability originally refused to patent eSOPH. But he said it’s fairly common that attorneys press technical issues until the examiner becomes exhausted. In this case, the examiner flipped and allowed the denied patent to be granted, leaving the patent for courts to decide.
Since 2018, Miller-Mendel has filed lawsuits against three of Guardian’s clients, starting with The City of Oklahoma City in Oklahoma. The Washington County Sheriff’s Office in Oregon, and the Alaska State Troopers and Commissioner of Public Safety have also been sued but were “stayed” by judges. On August 23, 2021, in the Document Navigator, a publication for patent attorneys, an article described the judicial decision to “stay” on the Alaska case. Citing “first-to-file” rules, the judge expressed that all three cases were against different Defendants but possessed the identical legal complaint of patent infringement on Patent ‘188.
As a result, the Alaska suit, like The Washington County Sheriff’s Office’s suit, would not move forward until a decision is made on the suit against The City of Oklahoma City. The judge remarked that “Plaintiffs made a tactical decision to file their first infringement suit in Oklahoma against another company and Plaintiffs must now live with that decision.”
Adam Anthony, Chief Operating Officer of Guardian Alliance Technologies was asked his thoughts about the stay on the Alaska State Troopers’ case.
“The stay of the Alaska case is welcome news and comes as no surprise, although I’m sure it was disappointing to Miller-Mendel since it seems their goal is to cost Guardian as much money as possible in hopes that we’ll go out of business before the City of Oklahoma City case runs its course. Mr. Miller claims to be a big law enforcement supporter, but he obviously has no problem harassing law enforcement agencies in an attempt to scare them away from Guardian. Meanwhile, MMI has refrained from arguing the matter between MMI and Guardian directly. We find this strategy and conduct cowardly and deplorable. It is our staunch belief that the MMI patent is invalid and unenforceable and we believe that will be proven in federal court in Oklahoma. Additional suits, if any, we would expect to be stayed. We respect intellectual property rights, but we’ll not be bullied out of the market because Mr. Miller holds an irrational belief that he has a right to monopolize it.”
Numerous other law enforcement agencies have been threatened to be sued by Miller-Mendel, according to Anthony.
Some experts say Miller-Mendel may never sue Guardian because it is located near Silicon Valley where judges are tech-savvy and better scrutinizers of patent law.
Jeff Brinkley, Chief of Police for Mason City, Iowa, was a Beta user during Guardian’s software development and has used the product for four years. He said, “I received an email where Miller kept clarifying for me as to how Guardian was using applicant information, suggesting they were selling it…based on what I knew about the software I did not believe that to be an issue, but I believe I contacted our city attorney to review the matter. I asked Miller-Mendel, do you intend to sue us? I asked this in an email to whom I believe was Tyler Miller, and he never really specifically answered that. I informed Miller that…we were just the user…we aren’t the keyholders to the kingdom, and we are just a small department running six to eight backgrounds a year. I asked why he didn’t sue Guardian and he never answered that, either. I have not become aware that Mason City is subject to litigation by Miller-Mendel.”
But Tyler Miller told The Free Press that users of patent-infringing software are legally allowed to be sued. “If users were not licensing and using (patent-infringing) products, then what would be the damages? It’s the end-users use of software that causes the damage. Guardian can make software, but if nobody’s buying it, what’s the damages?”
Miller also indicated that he informs law enforcement agencies of patent infringement before he sues. He added, “Guardian was telling agencies we wouldn’t be filing any more lawsuits, and they didn’t have anything to worry about. That is completely untrue and we are continuing to file lawsuits.”
Miller is currently a City Councilman in Scappoose, Oregon and is a former suspended reserve deputy for the Columbia County Sheriff’s Office in Washington state.
On August 25, 2017, pamplinmedia.com reported that Miller threatened the executive director of a special communications project he was working on with a complaint of sexual harassment against another person, if he would not provide Miller with compensation or greater responsibilities in the district.
This information was reported through Bullard Law Group who conducted an internal investigation in tandem with the Clackamas County District Attorney’s Office, according to the news report. The investigation showed no proof Miller committed any criminal act, but he was found to be “vindictive” or seeking revenge when he filed the sexual harassment complaint, which was believed to have merit but occurred at least a year earlier than Miller’s threats.
But Miller then filed a tort claim notice against the Columbia County Sheriff’s Office in May 2018 to clear his name. The outcome of the case is unknown, but Miller was terminated from his reserve position in August 2017, according to a December 2017 Pamplin news report.
Miller diverted attention from The Free Press’s questions regarding his patent’s validity and accused Guardian of violating applicant data privacy laws which Brinkley described in his remarks. He claimed that Guardian’s sharing of applicant data is a much bigger issue than patent infringement, and suggested a story be written about it.
Ryan Layne, CEO of Guardian replied to Miller’s remarks. “Mr. Miller’s allegations demonstrate that he doesn’t understand how the Guardian software works, and that’s fine with us.”
Justin Biedinger, who formerly worked in the U.S. Navy Intelligence community and served thirteen years at the Stockton Police Department in California is the Founder of Guardian Alliance Technologies.
He responded to Miller’s claim that a technical expert determined Guardian “built their system off Miller-Mendel’s patent.” He said, “As a former background investigator, I knew the needs of the job and I knew what the tool needed to do. I didn’t need to copy anything. When I was still working as a background investigator, I actively searched for software and I never found eSOPH. I had never even heard of MMI or eSOPH before receiving a letter from them in late 2017. By then, Guardian’s software was in beta and about to go on the market.”
Dunlap Codding of Oklahoma City, Oklahoma is the law firm representing The City of Oklahoma City. It filed an 84-page Inter Partes Review October 10, 2019, citing several competitors pre-existed Miller-Mendel’s formation in 2011. This establishes there was “prior art” in the marketplace. The question is, did Miller-Mendel disclose to the U.S. Patent and Trademark Office any knowledge it had of their existence, which is required by patent law, and would potentially render their patent immediately invalid and unenforceable? Dunlap Codding’s attorney, Evan Talley, stated he would not comment on the case.
Law enforcement agencies have been notified by Guardian that Miller-Mendel’s website misleadingly claims Guardian’s arguments against its patent have been denied by the U.S. Patent and Trademark Office. Guardian stated the rejections are not associated with whether Miller-Mendel’s patent is valid.
Ultimately, the USPTO decided not to engage in a review of the MMI patent, citing procedural reasons for not doing so.
Miller-Mendel’s website claims Guardian’s arguments against its patent have been denied by the U.S. Patent and Trademark Office, but Guardian states, and the record shows, that the patent office didn’t even consider the evidence presented in the IPR, leaving the matter to be decided in Oklahoma federal court.
The Free Press will continue to provide coverage on the case.
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