In August 2021, The Free Press reported that a critical component of law enforcement and public safety – the pre-employment background investigation check – is under fire in the courts.
At stake is the ability of law enforcement agencies to automate and vastly improve their hiring process of police chiefs, officers, sheriffs, deputies, and other law enforcement personnel.
Amidst threats of defunding the nation’s police and the need for upstanding citizens to assume law enforcement roles, the infant-stage software industry that cuts the law enforcement hiring process by 50% with vastly improved background information gathering is at war over an allegedly ill-gotten software patent.
In a Motion for Judgment on April 14, Judge Rodney Gilstrap in the Eastern District of Texas invalidated a background investigation software patent issued by the U.S. Patent and Trademark Office in 2017 to Miller Mendel, Inc., of Seattle, Washington.
The judge made his decision in consideration of Miller Mendel’s lawsuit against the Anna Police Department over its use of Guardian Alliance Technologies’ (GAT) rival software. Miller Mendel has sued several law enforcement agencies over use of GAT’s product, declaring infringement of its patent by doing so.
Regarding Miller Mendel’s patented software, Gilstrap wrote in his decision that, “At the end of the day, it remains a ‘common pre-employment background investigation,’ which is not eligible for patent protection.”
Miller Mendel’s software called “ESoph” was originally declared unpatentable by the U.S. Patent and Trademark Office due to lack of invention or possessing “original art” as defined by the patent office’s guidelines.
But veteran patent attorney, Charles Toeming, told The Free Press the USPTO reversed course and issued the patent likely under pressure from Miller Mendel’s attorneys. Gilstrap presented details in his decision that confirm the USPTO examiner who refused to patent “ESoph” was in fact, debating patentability with Miller Mendel’s attorneys when he finally conceded. Toeming said it was common that examiners get exhausted, throw up their hands and say “Fine. Let the courts decide.”
Miller Mendel has shot back against Judge Gilstrap’s decision to render its patent “moot,” and filed an appeal. The appeal is expected to take up to three years to conclude, according to a Miller Mendel press release.
However, the press release states that, “A panel of three USPTO judges reviewed Guardian Alliance Technologies’ IPR filing (a valid substitute for a lawsuit) and denied Guardian’s request to invalidate Miller Mendel’s patent.” But the denial by the USPTO pertained to technical procedures and not whether “Esoph” was patentable.
Adam Anthony, Chief Operating Officer for Guardian Alliance Technologies could not be reached for comment.