`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`
`The Background Solutions Prior Art System (“Background Solutions” or “Background Solutions System”) anticipates and/or renders obvious independent claims 1, 5, 9, and 15 of the ’188 patent under 35 U.S.C. § 102 and/or § 103,
`either alone or in combination with other prior art references (and/or in combination with the knowledge of a person of ordinary skill at the time of the invention), under the plain and ordinary meaning of the claims as properly
`construed and/or as construed by Miller Mendel in its Proposed Claim Construction and/or as applied by Miller Mendel in its Infringement Contentions.
`
`Miller Mendel’s Infringement Contentions have been included in the chart to the extent that they breathe clarity into the invalidity analysis; however, nothing stated herein shall be treated as an admission or suggestion that The City
`of Oklahoma City agrees with Miller Mendel regarding either the scope of any of the asserted claims or the claim constructions advanced by Miller Mendel in its Proposed Claim Construction and/or Infringement Contentions or
`anywhere else, or that any of The City of Oklahoma City’s accused systems meet any limitations of the claims. Nothing stated herein shall be construed as an admission or a waiver of any particular construction of any claim term.
`The City of Oklahoma City also reserves all rights to challenge any of the claim terms herein under 35 U.S.C. § 112, including by arguing that they are indefinite, not supported by the written description and/or not enabled. Accordingly,
`nothing stated herein shall be construed as a waiver of any argument available under 35 U.S.C. § 112.
`
`In the following chart, the Background Solutions System, an automated system in use in the United States prior to the ’188 patent and/or in public use or on sale in the United States prior to the ’188 patent, is described by reference
`to one or more documents concerning the function, operation, and/or features of the Background Solutions System. The City of Oklahoma City reserves the right to present direct evidence of the function, operation, and/or features
`of the Background Solutions System (including product samples, source code, and/or witness testimony), and to present alternative or additional documents concerning the function, operation, and/or features of the Background
`Solutions System as evidence that the Background Solutions System anticipates and/or renders obvious the asserted claims of the ’188 patent.
`
`Further, each prior art reference cited below, itself, anticipates and/or renders obvious the asserted claims of the ’188 patent. The City of Oklahoma City reserves the right to assert each prior art reference cited below that relates to
`the Background Solutions System as an independent prior art reference that anticipates and/or renders obvious the asserted claims of the ’188 patent.
`
`Evidence of the public availability of the Background Solutions system includes the following:
`
`•
`
`•
`
`•
`
`•
`
` Background Solutions Screenshot Products (“OKC-0002244”)
` Background Solutions Screenshot Services (“OKC-0002246”)
` Background Solutions Demo (“BGS-0006247”)
` Background Solutions Screenshot FAQ (“OKC-0002247”)
`
`The cited portions of the prior art references are merely illustrative, and The City of Oklahoma City reserves the right to rely on alternative or additional evidence, including uncited portions of the prior art references. Where the
`chart below states that the Background Solutions System “discloses” a limitation, such disclosure may be express, inherent, or implicit.
`
`In addition, one or more claims of the ’188 patent are rendered obvious in light of the Background Solutions System alone, the Background Solutions System in combination with the knowledge of a person of ordinary skill in the art
`at the time of the invention, or the Background Solutions System in combination with one or more of the references identified in Section II of The City of Oklahoma City’s Invalidity Contentions.
`
`
`
`
`
`1
`
`
`GUARDIAN EXHIBIT 1029
`Guardian Alliance Technologies, Inc. v. Miller
`
`

`

`‘188 Patent – Claim 1
`
`[1-pre] A method for a
`computing device with
`a processor and a
`system memory to
`assist an investigator in
`conducting a
`background
`investigation of an
`applicant for a position
`within a first
`organization,
`comprising the steps
`of:
`
`[1a] receiving a first
`set of program data
`comprising
`information
`identifying the
`applicant, the
`position, the first
`organization, and the
`investigator;
`
`Plaintiffs’ Proposed
`Construction
`Computing device: “A device
`that computes. May be a single
`machine, a part of a machine
`(as in a blade in a rack of
`machines), or a network of one
`or more machines.”
`
`first
`First organization: “A
`recited organization within the
`claim,
`separate
`from any
`second organization recited
`within the claim, wherein an
`organization is an organized
`body of people with a
`particular purpose.”
`
`
`
`first
`First organization: “A
`recited organization within the
`claim,
`separate
`from any
`second organization recited
`within the claim, wherein an
`organization is an organized
`body of people with a
`particular purpose.”
`
`“Data
`Data:
`Program
`comprising information about
`a person or an organization.”
`
`job within an
`Position: “A
`organization.”
`
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`“The [Guardian Alliance] service
`is a cloud-based service provided
`by remote servers leased from
`Amazon
`([Guardian Alliance]
`Demo Video @ 0:30 – 1:13) [sic],
`so the ‘computing device’ is a
`remote server under the control
`of
`[Guardian Alliance]. The
`existence of the components
`computing device
`[sic]
`- a
`processor
`and
`memory
`(computer
`readable medium)
`with
`instructions on how to
`provide the [Guardian Alliance]
`service – can be inferred as all
`computing devices have these
`components.”
`
`The preamble is generally non-limiting with respect to system or apparatus claims. To the extent the preamble is a limitation,
`
`Background Solutions discloses a method for a computing device with a processor and a system memory to assist an investigator in conducting a background
`investigation of an applicant for a position within a first organization.
`
`See, e.g.,
`
` “Based on years of experience and instruction in the best background screening practices, Background Assistant embodies advanced features that will
`relieve the investigator of repetitive administrative tasks, allowing more time to focus on actual field investigation.” (OKC-0002244)
`
`This web based application eliminates the need for software installation, server cost and space and expensive I.T. support. The only thing that is needed is
`an internet connection making this product a versatile tool for the investigator.” (OKC-0002244)
`
`“This web-based system eliminates the need for software installation.” (BGS-00062470:30)
`
`“All that is needed is an internet connection, making it a versatile tool for the investigator able to be accessed through a desktop, or in the field on a
`predesignated laptop through a wireless connection.” (BGS-00062470:37)
`
`Background Solutions discloses receiving a first set of program data comprising information identifying the applicant, the position, the first organization,
`and the investigator.
`
`See, e.g.,
`
`
`“Provide an online application form for your applicants, customized with your logo, which captures hundreds of basic data points and can accommodate
`housands [sic] of pieces of your applicant’s information.” (OKC-0002244)
`
`“Eliminate the need for bulky forms, standardizes applicant information, and allows applicants to apply for employment with your agency without delay.”
`(OKC-0002244)
`
`[Annotated screen shots from the Background Solutions Prior Art System appear on the next two pages.]
`
`“The claim step ‘receiving a first
`set of program data’ reads on the
`[Guardian
`Alliance]
`server
`receiving information identifying
`the applicant, the position, the
`first organization,
`and
`the
`investigator,
`regardless
`of
`whether
`this
`information
`is
`received by
`the
`[Guardian
`Alliance] server in one bundle or
`coming in separately, possibly at
`different
`times.”
`
`(emphasis
`added)
`
`2
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`
`(BGS-0006247 at 00:30)
`
`
`
`
`3
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`
`(BGS-0006247 at 1:27)
`
`
`
`
`
`(BGS-0006247 at 3:22)
`
`4
`
`
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`[1b] storing a new
`applicant entry in the
`system memory, the
`new applicant entry
`associated with the
`first set of program
`data;
`[1c] transmitting an
`applicant hyperlink to
`an applicant email
`address associated
`with the applicant, the
`applicant hyperlink for
`viewing an applicant
`set of electronic
`documents;
`
`
`
`Applicant entry: “A system
`record associated with the
`applicant for the position with
`the organization, and for
`whom the background check
`will be performed.”
`
`link
`Applicant hyperlink: “A
`from [sic] a hypertext file or
`document to another location
`or file, typically activated by
`clicking on a highlighted word
`or image on the screen.”
`
`
`
`Alliance]
`[Guardian
`“The
`Applicant Portal has a section
`called “forms” that show a set of
`electronic documents. For each,
`there is a download and upload
`icon. The portal states ‘All items
`in the checklist must be turned
`into
`[sic] your
`investigator.’
`Though
`the video did not
`demonstrate this feature, the
`Applicant Portal appears to have
`electronic
`documents
`for
`viewing.
`The
`applicant
`questionnaire
`is
`itself
`an
`electronic document.”
`
`
`Background Solutions discloses storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data.
`
`See, e.g.,
`
`
`“Receive a printed copy of your applicant’s online application, while the information is maintained by Background Assistant in a detective worksheet.” (OKC-
`0002244)
`
`Background Solutions discloses transmitting an applicant hyperlink to an applicant email address associated with the applicant, the applicant hyperlink for
`viewing an applicant set of electronic documents;
`
`“In addition to an online application, Background Assistant also allows the detective to send an application to an applicant who has not yet applied for a
`position, but has expressed interest. Once the invitation has been received by the applicant, he or she will be able to complete the application as if it were
`in an online format.” (BGS-00062471:27)
`
`[1d] receiving an
`applicant electronic
`response with a
`reference set of
`program data, wherein
`
`Reference source: “A person
`invited
`to
`give personal
`reference
`information
`regarding the Applicant.”
`
`
`
`
`
`
`
`(BGS-0006247 at 1:27)
`
`Background Solutions discloses 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, wherein the reference source is a person, the program data including a reference email address
`associated with the reference source.
`
`See, e.g.,
`
`5
`
`
`

`

`‘188 Patent – Claim 1
`
`the reference set of
`program data
`comprises information
`regarding a reference
`source, wherein the
`reference source is a
`person, the program
`data including a
`reference email
`address associated
`with the reference
`source;
`[1e] determining a
`reference class of the
`reference source
`based on the
`reference set of
`program data;1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`
`
`“Electronically transfer data from the online application to an investigator worksheet where multiple layer security for your data is achieved through the
`use of individual user passwords, and a 256-bit data encryption process.” (OKC-0002244)
`
`“Receive a printed copy of your applicant’s online application, while the information is maintained by Background Assistant in a detective worksheet.”
`(OKC-0002244) (emphasis added)
`
`“Data from the online application is electronically transferred to an investigator worksheet.” (BGS-00062473:04)
`
`Reference class: “A category of
`reference source having some
`property or
`attribute
`in
`common and differentiated
`from other
`categories of
`reference sources.”
`
`
`
`“The [Guardian Alliance] Demo
`video does not directly show that
`employers are also automatically
`extracted from the PHS and
`categorized as employers based
`on information in the PHS but
`states that it does occur.”
`
` Background Solutions discloses determining a reference class of the reference source based on the reference set of program data.
`
`See, e.g.,
`
`“Provide an online application form for your applicants, customized with your logo, which captures hundreds of basic data points and can accommodate
`housands [sic] of pieces of your applicant’s information.” (OKC-0002244) (emphasis added)
`
`
`
`1 In addition to the 35 U.S.C. §§ 102 and/or 103 ground(s) for invalidity as presented herein, other basis for invalidity may apply. Specifically, independent claim 1 of the ‘188 patent should be construed as invalid under 35 U.S.C. §
`101 because it is directed to an abstract idea (performing background checks and collecting information from references) and mental processes—i.e., “determining a reference class,” as recited in claim element [1e]. The language in
`[1e] of “determining a reference class” does not transform independent claim 1 into patent-eligible subject matter because it describes a function that background investigators may be performing in their heads—i.e., determining
`the type of reference based on the pre-defined categories of references provided on the Applicant question modules (reproduced above with respect to claim element [1d]). In order to be patent-eligible, the claims must do more
`than describe an abstract mental process engaged in routinely, either entirely within an investigator’s mind, or potentially by other resources in the background check process. See Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289, 1293 (2012). As the e-SOPH Prior Art manuals highlight, the features of e-SOPH are merely automating a known process that is described as having long been performed by hand by human headhunters and
`investigators, for example. See e-SOPH 98, section III, p. 5 and e-SOPH 89, section III, p. 3 (“[e-SOPH] Technologies modernizes the existing archaic paper system that has been used year after year. Our solution simply turns everything
`electronic.”).
`
`Thus, independent claim 1 is impermissibly broad and not meaningfully distinguishable from a background investigator’s mental processes. Independent claim 1 is not patent eligible because § 101 does not “embrace a process
`defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads.” See SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x. 950,
`954 (Fed. Cir. Jan. 24, 2014).
`
`Alternatively, if the step of “determining a reference class” is not done mentally by the investigator, independent claim 1 is invalid under 35 U.S.C. § 112 for failing to satisfy the enablement and written description requirements. In
`order to satisfy both the enablement and written description requirements, “a patent specification must describe the invention sufficiently so that one of ordinary skill in the art would understand that the inventor possessed the
`subject matter claimed and, separately, must teach one of ordinary skill in the art how to make and use the invention.” The ‘188 patent does not describe how the e-SOPH system uses applicant-provided information and “determin[es]
`a reference class” from such information, nor does it describe that the inventors possessed knowledge of how to achieve such results. Therefore, even if independent claim 1 meets the requirements under § 101, it is not valid under
`§ 112.
`
`6
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`“Easity [sic] manage and organize correspondence as it is returned and as references, prior employers and family members are contacted, Background
`Assistant provides easy to use dialogue boxes to document information as it is gathered.” (OKC-0002244)
`
`
`
`
`
`
`7
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`
`
`[1f] selecting a
`reference set of
`electronic documents
`based on the
`reference class of the
`reference source;2
`
`[1g] transmitting a
`reference hyperlink to
`
`Reference hyperlink: Plaintiffs
`did not provide a construction
`
`“The [Guardian Alliance] demo
`video shows that a questionnaire
`can be sent to a selected relative.
`- GA Demo Video @ 10:2510:31.
`This
`questionnaire
`appears
`specific
`for
`relatives.
`It
`is
`different than the questionnaire
`sent
`to previous employers,
`which is tailored to employers -
`GA Demo Video @ 11:15-11:21.”
`
`“The [Guardian Alliance] Demo
`Video does not
`show
`the
`
`
`(BGS-0006247 at 1:55 and 2:14)
`
`Background Solutions discloses selecting a reference set of electronic documents based on the reference class of the reference source.
`
`See, e.g.,
`
`“Choose to auto generate educational, employment, landlord, and character reference correspondence. All inquiry letters are preformatted and provide
`both a cover letter and questionnaire when applicable.” (OKC-0002244)
`
`“Correspondence to law enforcement agencies within that radius will be prepared by Background Assistant.” (BGS-0006247 4:55)
`
`
`
`Background Solutions discloses transmitting a reference hyperlink to the reference email address, the reference hyperlink for viewing the reference set of
`electronic documents.
`
`
`2 Furthermore, similar to the comments regarding claim element [1e], the language in claim element [1f] does not recite anything more than a mental step. Instead, element [1f] simply recites that documents are selected based on
`the pre-defined categories of references provided on the Applicant question modules (reproduced above with respect to claim element [1d]).
`8
`
`
`

`

`‘188 Patent – Claim 1
`
`the reference email
`address, the reference
`hyperlink for viewing
`the reference set of
`electronic documents;
`
`Plaintiffs’ Proposed
`Construction
`for “reference hyperlink” but
`they did provide one
`for
`“applicant hyperlink,” which is
`included here:
`
`link
`Applicant hyperlink: “A
`from [sic] a hypertext file or
`document to another location
`or file, typically activated by
`clicking on a highlighted word
`or image on the screen.”
`
`
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`contents of the email, so it does
`not show a reference hyperlink.
`However, the Full Demo v2 shows
`the email which reads: ‘Below
`you will find a link included in the
`email that will direct you to an
`online questionnaire.’”
`
`
`See, e.g.,
`
`“Incoming correspondence can be tracking [sic] using response links provided in the application. We feel, if it is important enough to send out, you should
`track its receipt.” (BGS-00062476:07)
`
`“Easity [sic] manage and organize correspondence as it is returned and as references, prior employers and family members are contacted, Background
`Assistant provides easy to use dialogue boxes to document information as it is gathered.” (OKC-0002244)
`
`“Eliminate the need for bulky forms, standardizes applicant information, and allows applicants to apply for employment with your agency without delay.”
`(OKC-0002244)
`
`
`[1h] receiving a
`reference electronic
`response to the
`reference set of
`
`Reference electronic response:
`“Information
`received
`electronically from a reference
`
`
`
`
`(BGS-0006247 at 2:14)
`
`Background Solutions discloses receiving a reference electronic response to the reference set of electronic documents from the reference source.
`
`See, e.g.,
`
`
`
`
`9
`
`
`

`

`‘188 Patent – Claim 1
`
`electronic documents
`from the reference
`source;
`
`Plaintiffs’ Proposed
`Construction
`in response to an
`source
`invitation to provide personal
`reference information
`regarding the applicant.”
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`“Easity [sic] manage and organize correspondence as it is returned and as references, prior employers and family members are contacted, Background
`Assistant provides easy to use dialogue boxes to document information as it is gathered.” (OKC-0002244)
`
`“Incoming correspondence can be tracking [sic] using response links provided in the application. We feel, if it is important enough to send out, you should
`track its receipt.” (BGS-00062476:07)
`
`
`
`
`[1i] storing the
`reference electronic
`response in the system
`memory, associating
`the reference
`electronic response
`
`
`
`
`(BGS-0006247)
`
`
`
`Background Solutions discloses storing the reference electronic response in the system memory, associating the reference electronic response with the
`new applicant entry.
`
`See, e.g.,
`
`
`“Easity [sic] manage and organize correspondence as it is returned and as references, prior employers and family members are contacted, Background
`Assistant provides easy to use dialogue boxes to document information as it is gathered.” (OKC-0002244)
`
`the
`from
`responses
`“The
`references are not actually on the
`screen next to their names. The
`responses are certainly stored on
`the [Guardian Alliance] server
`and a link to the stored responses
`is displayed on the screen next to
`
`10
`
`
`

`

`‘188 Patent – Claim 1
`
`with the new
`applicant entry; and
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`their names. The
`link to the
`response is displayed on a web
`page for the applicant, identified
`by the applicant’s name and
`picture. Thus, the response has
`been associated with the new
`applicant entry.”
`
`
`
`“All reports and correspondence are in PDF format and can be saved to a personal hard drive or storage device.” (OKC-0002247)
`
`
`
`11
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`[1j] generating a
`suggested reference
`list of one or more law
`enforcement agencies
`based on an applicant
`residential address.
`
`Suggested reference list: “A list
`of references suggested by the
`system.”
`
`
`
`“The [Guardian Alliance] server
`generates a suggested reference
`list of one or more
`law
`enforcement agencies based on
`the
`applicant
`address.
`Specifically, it looks to see what
`county the applicant’s address is
`in then generates a list of all
`known agencies in that county.”
`
`
`
`
`(BGS-0006247 at 6:16 and 6:32)
`
`Background Solutions discloses generating a suggested reference list of one or more law enforcement agencies based on an applicant residential address.
`
`See, e.g.,
`
`
`“Automatically generate law enforcement correspondence based on applicant address data. Background Assistant, using information from National Public
`Safety Information Bureau, producers of the Law Enforcement Directory, has embedded public safety address information in the application that
`automatically prints to correspondence documents.” (OKC-0002244)
`
`“Investigators may automatically generate law enforcement correspondence based on applicant address data.” (BGS-0006247 4:30)
`
`“Locations identified by the applicant in the application are automatically scanned to generate the appropriate correspondence for each applicant and
`correspondence to law enforcement agencies within that radius will be prepared by Background Assistant.” (BGS-0006247 4:45)
`
`12
`
`
`

`

`‘188 Patent – Claim 1
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on
`Background Solutions Prior Art System
`Infringement
`
`
`(BGS-0006247 at 4:37)
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`
`

`

`
`
`‘188 Patent –
`Claim 5
`[5-pre] A non-
`transitory
`computer-
`readable
`medium having
`stored thereon
`instructions
`which, when
`executed by a
`processor of a
`computing
`device with a
`system memory,
`cause the
`computing device
`to perform the
`steps of a
`method to assist
`an investigator in
`conducting a
`background
`investigation of
`an applicant for a
`position within a
`first organization,
`the steps of the
`method
`comprising:
`[5a] receiving a
`first set of
`program data
`comprising
`information
`identifying the
`applicant, the
`position, the first
`organization, and
`the investigator;
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`
`Plaintiffs’ Proposed
`Construction
`Computing device: “A device
`that computes. May be a single
`machine, a part of a machine
`(as in a blade in a rack of
`machines), or a network of one
`or more machines.”
`
`first
`First organization: “A
`recited organization within the
`claim,
`separate
`from any
`second organization
`recited
`within the claim, wherein an
`organization
`is an organized
`body of people with a particular
`purpose.”
`
`
`
`Plaintiffs’ Position on Infringement
`
`Background Solutions Prior Art System
`
`“The [Guardian Alliance] service is a
`cloud-based
`service provided by
`remote servers leased from Amazon
`([Guardian Alliance] Demo Video @
`0:30 – 1:13) [sic], so the ‘computing
`device’ is a remote server under the
`control of [Guardian Alliance]. The
`existence
`of
`the
`components
`computing device [sic] - a processor and
`memory (computer readable medium)
`with instructions on how to provide the
`[Guardian Alliance] service – can be
`inferred as all computing devices have
`these components.”
`
`The preamble is generally non-limiting with respect to system or apparatus claims. To the extent the preamble is a limitation,
`
`Background Solutions discloses a method for a computing device with a processor and a system memory to assist an investigator in conducting a background
`investigation of an applicant for a position within a first organization.
`
`See, e.g.,
`
` “Based on years of experience and instruction in the best background screening practices, Background Assistant embodies advanced features that will
`relieve the investigator of repetitive administrative tasks, allowing more time to focus on actual field investigation.” (OKC-0002244)
`
`This web based application eliminates the need for software installation, server cost and space and expensive I.T. support. The only thing that is needed is
`an internet connection making this product a versatile tool for the investigator.” (OKC-0002244)
`
`“This web-based system eliminates the need for software installation.” (BGS-00062470:30)
`
`“All that is needed is an internet connection, making it a versatile tool for the investigator able to be accessed through a desktop, or in the field on a
`predesignated laptop through a wireless connection.” (BGS-00062470:37)
`
`
`first
`First organization: “A
`recited organization within the
`claim,
`separate
`from any
`second organization
`recited
`within the claim, wherein an
`organization
`is an organized
`body of people with a particular
`purpose.”
`
`“Data
`Data:
`Program
`comprising information about a
`person or an
`organization.”
`
`“The claim step ‘receiving a first set of
`program data’ reads on the [Guardian
`Alliance] server receiving information
`identifying the applicant, the position,
`the
`first organization,
`and
`the
`investigator, regardless of whether this
`information
`is
`received by
`the
`[Guardian Alliance] server
`in one
`bundle or coming in separately, possibly
`at different times.” (emphasis added)
`
`Background Solutions discloses receiving a first set of program data comprising information identifying the applicant, the position, the first organization,
`and the investigator.
`
`See, e.g.,
`
`
`“Provide an online application form for your applicants, customized with your logo, which captures hundreds of basic data points and can accommodate
`housands [sic] of pieces of your applicant’s information.” (OKC-0002244)
`
`“Eliminate the need for bulky forms, standardizes applicant information, and allows applicants to apply for employment with your agency without delay.”
`(OKC-0002244)
`
`[Annotated screen shots from the Background Solutions Prior Art System appear on the next two pages.]
`
`14
`
`
`

`

`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on Infringement
`Background Solutions Prior Art System
`
`‘188 Patent –
`Claim 5
`
`Plaintiffs’ Proposed
`Construction
`
`
`Position: “A
`organization.”
`
`
`job within an
`
`
`(BGS-0006247 at 00:30)
`
`
`
`
`15
`
`
`

`

`‘188 Patent –
`Claim 5
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on Infringement
`Background Solutions Prior Art System
`
`
`(BGS-0006247 at 1:27)
`
`
`
`
`
`(BGS-0006247 at 3:22)
`
`16
`
`
`
`
`

`

`‘188 Patent –
`Claim 5
`
`Plaintiffs’ Proposed
`Construction
`
`Exhibit 4 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System
`Plaintiffs’ Position on Infringement
`Background Solutions Prior Art System
`
`[5b] storing a
`new applicant
`entry in the
`system memory,
`the new applicant
`entry associated
`with the first set
`of program data;
`[5c] transmitting
`an applicant
`hyperlink to an
`applicant email
`address
`associated with
`the applicant, the
`applicant
`hyperlink for
`viewing the
`applicant set of
`electronic
`documents 3;
`
`
`
`Applicant entry: “A system
`record associated with
`the
`applicant for the position with
`the organization, and for whom
`the background check will be
`performed.”
`
`
`Background Solutions discloses storing a new applicant entry in the system memory, the new applicant entry associated with the first set of program data.
`
`See, e.g.,
`
`
`“Receive a printed copy of your applicant’s online application, while the information is maintained by Background Assistant in a detective worksheet.” (OKC-
`0002244)
`
`link
`Applicant hyperlink: “A
`from [sic] a hypertext file or
`document to another location
`or file, typically activated by
`clicking on a highlighted word
`or image on the screen.”
`
`
`
`[Guardian Alliance] Applicant
`“The
`Portal has a section called “forms” that
`show a set of electronic documents. For
`each, there is a download and upload
`icon. The portal states ‘All items in the
`checklist must be turned into [sic] your
`investigator.’ Though the video did not
`demonstrate this feature, the Applicant
`Portal appears to have electronic
`documents for viewing. The applicant
`questionnaire
`is
`itself an electronic
`document.”
`
`Background Solutions discloses transmitting an applicant hyperlink to an applicant email address