Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`
`
`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.
`
`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”)
`
`•
`
`•
`
`Evidence of the public availability of additional prior art systems to be used in various combinations with the Background Solutions system includes the following:
`
`•
`
`• U.S. Patent Pub. No. 2007/0038486 (Mohn) (“OKC-0002877”), tracing priority to U.S. Provisional App. No. 60/706,948, filed August 9, 2005
`• U.S. Patent Pub. No. 2012/0089528 (Parikh) (“OKC-0003171”), filed October 11, 2010, published April 12, 2012
`• U.S. Patent Pub. No. 2005/0055231 (Lee) (“OKC-0002626”), tracing priority to U.S. Provisional App. No. 60/501,210, filed September 8, 2003
`POBITs, User Manual and Technical Reference copyrighted 2010 (“OKC-0002416”)
`•
`Sterling Infosystems, website screenshot dated April 3, 2010 (“OKC-0003614”)
`Tandem Select, website screenshot dated Feb 26, 2011 (“OKC-0003546”)
`First Advantage, website screenshot dated Jan 13, 2010 (“OKC-0003615”)
`• U.S. Pat No. 9037517 (Malnati)(“OKC-0003520”), filed January 30, 2007
`
`•
`
`•
`
`
`
`1
`
`GUARDIAN EXHIBIT 1030
`Guardian Alliance Technologies, Inc. v. Miller
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`• U.S. Pat No. 6904407 (Ritzel)(“OKC-0003228”), filed September 24, 2001
`• U.S. Patent Pub. No. 2008/0033742 (Bernasconi)(“OKC-0002932”), filed August 3, 2007
`LexisNexis Screening Solutions (“OKC-0002259,” “OKC-0002247,” and “OKC-0002253”)
`•
`
`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.
`
`
`
`
`
`
`
`2
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘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:
`
`a
`
`Plaintiffs’
`Proposed
`Construction
`Computing
`“A
`device:
`that
`device
`computes.
`May be
`single
`a
`machine,
`a
`part
`of
`(as
`machine
`in a blade in a
`rack
`of
`machines), or
`a network of
`one or more
`machines.”
`
`First
`organization:
`“A
`first
`recited
`organization
`within
`the
`claim,
`separate from
`any
`second
`organization
`recited within
`the
`claim,
`wherein
`an
`organization
`is
`an
`organized
`of
`body
`people with a
`particular
`purpose.”
`
`
`
`Plaintiffs’
`Position on
`Infringement
`“The [Guardian
`Alliance] service
`is a cloud-based
`service
`by
`provided
`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
`The
`Alliance].
`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
`these
`components.”
`
`have
`
`
`
`
`
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`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)
`
`
`See, e.g., OKC-0002877 at [0035], "In general, the subject invention can be implemented
`by any computer system having the requisite processing capabilities, software, and
`memory to implement the steps of the present invention. Preferably the invention is run
`on a computer server based system having auxiliary memory drives to store the user
`defined information. The system may be configured to be onsite, and operated within the
`realm of a human resources department. Alternatively, the system can also be
`implemented offsite, with subscribers having access to the system through passwords.
`The system may also be operated on a third party basis and subscribers charged on a per-
`person basis or on a timed subscription. The subject invention can also be utilized to
`process one candidate/employee at a time, or it can be used to process a number of
`candidates/employees
`at
`the
`same
`time. Processing of
`a number of
`candidates/employees at the same time enables the user to benefit from the automated
`processing of information, and the automated notification processes enable the user to
`be notified if certain actions are needed with respect to an individual or a group of
`candidates/employees."
`
`See, e.g., OKC-0003171 at Abstract, “A system and method for quality control in a high
`volume talent acquisition is disclosed. In one embodiment, a system for quality control in
`a high volume talent acquisition includes a processor, a quality talent acquisition database
`for storing a plurality of candidate e-dossiers and historical data associated with
`fraudulent practices used in the talent acquisition, memory operatively coupled to the
`processor and the quality talent acquisition database, and a quality talent acquisition
`module communicatively coupled to the processor and the quality talent acquisition
`database.”
`
`See also, OKC-0003171 at [0027], “During the HR interview, documents submitted by one
`or more prospective candidates may be verified using a document checklist T101....The
`one or more prospective candidates may be selected for job positions such as
`regular/permanent employee positions.”
`
`See also, OKC-0003171 at Figures 12–14 and [0068].
`
`See, e.g., OKC-0002626 at [0021], “Note that embodiments of the present invention can
`be implemented, for example, as a computer readable medium encoded with software,
`that when executed by a processor, causes the processor to carry out the method for
`performing a candidate-initiated background check and verification.”
`
`See, e.g., OKC-0002416 at p. 1, “POBITS is a database application for managing all aspects
`of a background investigation for a law enforcement position, and for managing many
`
`3
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`Investigations simultaneously…. Because POBITS
`is web-based, all
`background
`participants in the investigation can use the system to contribute to the process. Because
`POBITS is web-based, all participants in the investigation can use the system to contribute
`to the process. Because POBITS is web-based, all participants in the investigation can use
`the system to contribute to the process.
`…
`For example, the Investigator enters a Candidate's basic information into POBITS such as
`Name and Email Address, then opens a Personal History Statement for the Candidate to
`complete on-line.”
`
`See, e.g., OKC-0003520 at claim 1, col. 10, ln. 16-20, reciting “at an integration framework
`proxy comprising a processor for executing computer executable code, wherein said
`computer executable code, at least in part, generates first data representing a background
`screening order particular to an applicant tracking system.”
`
`See, e.g., OKC-0002932 at [0004], “Methods are taught herein to perform employee
`background checks. One method for performing a prior employment record check on an
`employee comprises providing a database for a new employer to enter at least a name
`and a contact address for a new employee, requiring a submission of a unique access code
`with a designation of either no prior employers or at least one prior employer by the new
`employee, making a first request to each prior employer to conduct a records check of the
`new employee when there exists at least one prior employer and forwarding a response
`from each prior employer to the new employer when there exists at least one prior
`employer.”
`
`See, e.g., OKC-0002259, p. 1, “LexisNexis Screening Solutions offers premier-‐level, Web-‐
`based screening tools that will help you easily and effectively screen BOTH employees and
`volunteers, at a substantially reduced price through a unique partnership with our
`organization.”
`
`See, e.g., OKC-0002259, p. 2, “LexisNexis Screening Solutions combines advanced
`technology and an extensive depth and breadth of data to provide you with fast,
`accurate results, and a convenient, easy-to-use Website for ordering your reports and
`receiving your results.”
`
`See, e.g., OKC-0002259, p. 3, “Today, LexisNexis Screening Solutions utilizes advanced
`technology and sophisticated nationwide databased to provide near instant access to
`background information at a low cost, making background screening affordable and
`accessible for nonprofits securely on the internet.”
`
`
`
`
`4
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`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.]
`
`
`(BGS-0006247 at 00:30)
`
`
`
`
`5
`
`includes a computer
`invention
`See, e.g., OKC-0002877 at [0037], "The subject
`implemented system for collecting and analyzing data associated with a job candidate
`from a plurality of data providers, the system comprising: a discrepancy database that
`stores customized discrepancy rules (process 15 in FIG. 2); a collection module operable
`to send an electronic communication to the plurality of reference providers to request
`information relating to each candidate and to electronically receive data from the plurality
`of reference providers through a computer network (process 21 in FIG. 2); an analysis
`module operable to evaluate the received data against the discrepancy database
`(processes 23-29, 31-33 in FIG. 2); and a reporting module to generate a report based on
`the evaluations of a pool of candidates (process 30 in FIG. 2), the candidate report being
`used to further customize said discrepancy database in order to modify the pool size of
`candidates receiving a positive evaluation."
`
`See, e.g., OKC-0003171 at [0026], "At step 102, a plurality of candidate e-dossiers
`associated with a plurality of candidates are compiled and stored in a quality talent
`acquisition database (e.g., the quality talent acquisition database 1104 of FIG. 11)."
`
`See also, OKC-0003171 at Fig. 12 (depicting a line for the recruiter name and HR
`interviewer name) and [0027].
`
`See, e.g., OKC-0002626 at [0018], “The method may further include prompting the
`candidate to provide personal information needed to execute the query. The personal
`information includes, for example, at least one of the candidate's name, social security
`number, date of birth, and current address.”
`
`See, e.g., OKC-0002416 at p. 1, “For example, the Investigator enters a Candidate's basic
`information into POBITS such as Name and Email Address, then opens a Personal History
`Statement for the Candidate to complete on-line. The Investigator then invites the
`Candidate to the POBITS system. This is a simple mouse-dick action that creates user
`credentials and sends an email to the Candidate. The Candidate then uses POBITS to
`update their personal information and complete their Personal History Statement. Once
`complete, they submit the form electronically. Once submitted, the Investigator is notified
`and is able to review the information provided by the Candidate. At this point, the
`Investigator begins the "footwork", of contacting all of the Candidate's provided
`references.”
`
`See, e.g., OKC-0002932 at [0013]-[0015], “After the database is set up, an employer uses
`its unique access code to enter data related to a new employee into the database in step
`14. If the database is on-line, by way of the previous example, the employer can access it
`via a website to enter the new employee data. Such data includes at least name and
`contact information, such as email address and/or telephone number…. The database is
`
`Plaintiffs’
`Position on
`Infringement
`“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,
`of
`regardless
`this
`whether
`is
`information
`received by the
`[Guardian
`Alliance] server
`in one bundle or
`coming
`in
`separately,
`possibly
`different
`times.”
`(emphasis
`added)
`
`at
`
`Plaintiffs’
`Proposed
`Construction
`First
`organization:
`“A
`first
`recited
`organization
`within
`the
`claim,
`separate from
`any
`second
`organization
`recited within
`the
`claim,
`wherein
`an
`organization
`is
`an
`organized
`of
`body
`people with a
`particular
`purpose.”
`
`Program
`Data:
`“Data
`comprising
`information
`a
`about
`person or an
`organization.”
`
`“A
`Position:
`job within an
`organization.”
`
`
`‘188 Patent
`– Claim 1
`
`[1a]
`receiving a
`first set of
`program
`data
`comprising
`information
`identifying
`the
`applicant,
`the position,
`the first
`organization,
`and the
`investigator;
`
`
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`accessible to the new employee using the unique employee access code, preferably on-
`line through a website portal.”
`
`
`
`
`
`
`
`
`
`
`(BGS-0006247 at 1:27)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`
`(BGS-0006247 at 3:22)
`
`
`
`
`
`See, e.g., OKC-0003520 at col. 2, lns. 64-66, “FIGS. 2, 3, 4, 5, 6, and 7 are diagrams of user
`interfaces by which a user interacts with an applicant tracking system and/or a
`background screening system.”
`
`See also, OKC-0003520 at col. 1, lns. 40-48, “The background screening systems further
`do not have the ability to electronically invite the recruiter and/or applicant in completing
`any missing information required to perform the background screening process.
`Background screening systems also generally provide access to the background screening
`report at the end of the process. As such, the usefulness of current background screening
`systems is limited. For these and other reasons, therefore, there is a need for the present
`invention.”
`
`See also, OKC-0003520 at col. 5, lns. 28-36, “The [applicant tracking] system 102 may send
`the [background screening] system 104 initial data for a potential candidate, whereupon
`the recruiter in question is redirect to a web site to determine the type of background
`screening that is to be ordered. There are two steps in this process: a web service or SOAP
`request to the system 104 that includes authentication information; and, a universal
`resource locator (URL) address that is returned to redirect the user into the application of
`the system 104.”
`
`
`
`
`7
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`See also, OKC-0003520 at col. 8, lns. 19-22, “The UserAreaHR fragment is used to define
`information about the recruiter who is requesting to view or create a background
`screening order.”
`
`See also, OKC-0003520 at col. 7, lns. 65-66, “These elements contain information that
`identifies which company and recruiter, for instance, are sending the data.”
`
`See also, OKC-0003520 at Figs. 2–4 and 6.
`
`
`
`
`
`
`
`8
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`[1b] storing
`a new
`
`Applicant
`entry:
`
`“A
`
`
`
`Background Solutions discloses storing a new applicant entry in the system memory, the new applicant entry
`associated with the first set of program data.
`
`
`
`10
`
`
`See, e.g., OKC-0002259, p. 2, “LexisNexis Screening Solutions combines advanced
`technology and an extensive depth and breadth of data to provide you with fast, accurate
`results, and a convenient, easy-to-use Web site for ordering your reports and receiving
`your results….’With the new process, however, each recruiter logs on to our LexisNexis
`Screening Solutions online portal and sends each candidate an information request
`directly….The employee candidate can gather and enter all the information we need---at
`their convenience.’”
`
`See, e.g., OKC-0002877 at [0028], “FIG. 2 is a top-level process diagram 20 of an
`embodiment of the invention wherein data or other information used for evaluating a
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`
`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)
`
`“discrepancy” in a candidates background information are loaded onto the system at
`process 21.”
`
`See also, OKC-0002877 at [0033], “As many of the different background checks can be
`assimilated into the subject invention electronically, it may be preferable that the system
`automatically update the candidate's/employee's file as each of the different background
`checks are completed. Consequently, the candidate/employees files are maintained
`without the need to constantly monitor the results of the different background checks
`taken.”
`
`See also, OKC-0002877 at Fig. 2.
`
`
`11
`
`
`
`
`
`Plaintiffs’
`Position on
`Infringement
`
`Plaintiffs’
`Proposed
`Construction
`system record
`associated
`with
`the
`applicant for
`the position
`with
`the
`organization,
`and for whom
`the
`background
`check will be
`performed.”
`
`‘188 Patent
`– Claim 1
`
`applicant
`entry in the
`system
`memory, the
`new
`applicant
`entry
`associated
`with the first
`set of
`program
`data;
`
`
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`See, e.g., OKC-0003171 at [0026], “During the HR interview, documents submitted by one
`or more prospective candidates may be verified using a document checklist T101. An
`exemplary detailed document checklist T101 is shown in FIG. 12 and is explained in more
`detail below with reference to the FIG. 12. The one or more prospective candidates may
`be selected for job positions such as regular/permanent employee positions, contract
`employee positions, campus recruited employee positions, lateral employment positions,
`and the like).”
`
`See also, OKC-0003171 at Fig. 12 (depicting a line for organization name and HR
`interviewer name) and Fig. 1.
`
`See also, OKC-0003171 at [0028]–[0029], “At step 106, information associated with
`fraudulent practices used in the pre-selection interviews is obtained and the obtained
`information is stored in the quality talent acquisition database. Further, one or more
`candidates are selected for a post-selection process based on an outcome of the pre-
`selection interviews. The candidate e-dossiers associated with the selected one or more
`candidates are updated using any additional information obtained during the pre-
`selection interviews.
`…
`At step 108, the selected one or more candidates are sampled in real-time based on an
`outcome of the post-selection process using the candidate e-dossiers, the historical data
`associated with fraudulent practices and an input and trigger based statistical algorithm,
`as illustrated in FIGS. 2 through 5. For example, the selected one or more candidates are
`randomly sampled using the processor based on a first set of parameters. The first set of
`parameters is obtained from the candidate e-dossiers and the historical data associated
`with fraudulent practices.”
`
`See, e.g., OKC-0002626 at [0131]–[0132], “Note that if so desired, the user interface allows
`the viewer to order more reports (additional checks and verifications) for the candidate.
`The additional reports might include, for example, education verification and community
`standing, or civil and criminal record checks for other states. As can be seen, if the viewer
`selects more reports to be ordered, the underlying methodology includes emailing 550
`the candidate to request approval for more reports to be run.
`…
`If the candidate approves, then the method includes emailing 545 a release code (or other
`form of approval) back to the requesting party. The requesting party/candidate
`combination may be, for example, a potential employer/employee, a potential
`date/suitor, or potential customer/tradesman.”
`
`See, e.g., OKC-0002416 at p. 1, “See, e.g., OKC-0002416 at p. 1, “For example, the
`Investigator enters a Candidate's basic information into POBITS such as Name and Email
`
`
`
`12
`
`

`

`Exhibit 7 - U.S. Patent No. 10,043,188 Invalidity Claim Chart over the Background Solutions Prior Art System in Combination with Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First
`Advantage, HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`Background Solutions Prior Art System
`
`Mohn, Parikh, Lee, POBITS, Sterling Infosystems, Tandem Select, First Advantage,
`HireRight, LaPasta, Ritzel, Bernasconi, and/or LexisNexis
`
`‘188 Patent
`– Claim 1
`
`Plaintiffs’
`Proposed
`Construction
`
`Plaintiffs’
`Position on
`Infringement
`
`Address, then opens a Personal History Statement for the Candidate to complete on-line.
`The Investigator then invites the Candidate to the POBITS system. This is a simple mouse-
`dick action that creates user credentials and sends an email to the Candidate. The
`Candidate then uses POBITS to update their personal information and complete their
`Personal History Statement. Once complete, they submit the form electronically. Once
`submitted, the Investigator is notified and is able to review the information provided by
`the Candidate. At this point, the Investigator begins the "footwork", of contacting all of
`the Candidate's provided references.”
`
`See, e.g., OKC-0003520 at col. 8, lns. 52-54, “It transmits any relevant information that has
`been collected on the subject applicant within the system 102 to the system 104.”
`
`See also, OKC-0003520 at Fig. 5.
`
`
`
`See, e.g., OKC-0002932 at [0013]-[0015], “After the database is set up, an employer uses
`its unique access code to enter data related to a new employee into the database in step
`14. If the database is on-line, by way of the previous example, the employer can access it
`via a website to enter the new employee data. Such data includes at least name and
`contact information, such as email address and/or telephone number…. The database is
`accessible to the new employee using the unique employee access code, preferably on-
`line through a website portal.”
`
`See, e.g., OKC-0002877 at [0034], “The means for notifying can also be user-defined and
`some options contemplated include, E-mails, generation of a notice report or letter, or a
`paged message.”
`
`[1c]
`transmitting
`an applicant
`
`Applicant
`hyperlink: “A
`link from [sic]
`
`“The [Guardian
`Alliance]
`Applicant Portal
`
`Background Solutions discloses tra