IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF OKLAHOMA
`
`MILLER MENDEL, INC., a Washington
`Corporation; TYLER MILLER, an Oregon
`State resident,
`
`
`
`
`
`
`vs.
`
`Plaintiffs,
`
`
`THE CITY OF OKLAHOMA CITY, a
`municipal corporation,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`Case No. CIV-18-990-C
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`DEFENDANT THE CITY OF OKLAHOMA CITY’S
`NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`
`Defendant The City of Oklahoma City, pursuant to the Court’s Revised Scheduling
`
`
`
`
`
`
`
`Order [Dkt. No. 36], provides these Non-Infringement and Invalidity Contentions to
`
`Plaintiffs Miller Mendel, Inc. and Tyler Miller. OKC’s investigation is ongoing.
`
`Accordingly, OKC expressly reserves the right to modify, supplement, and otherwise
`
`amend these Non-Infringement and Invalidity Contentions as necessary as discovery
`
`progresses and following claim construction.
`
`I.
`
`INTRODUCTION
`
`Based on Plaintiffs’ Disclosure of Asserted Claims and Infringement Contentions
`
`(“Infringement Contentions”), served by Plaintiffs May 30, 2019, Plaintiffs assert the
`
`following patent and claims against OKC: U.S. Patent No. 10,043,188 (“the ’188 Patent”
`
`or “the Asserted Patent”), Claims 1, 5, 9, and 15 (collectively “the Asserted Claims”).
`
`These Non-Infringement and Invalidity Contentions use the term “PHOSITA” to refer to
`
`a person having ordinary skill in the art to which the Asserted Patent pertains.
`
`1
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`GUARDIAN EXHIBIT 1032
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`FOR THE WESTERN DISTRICT OF OKLAHOMA
`
`MILLER MENDEL, INC., a Washington
`Corporation; TYLER MILLER, an Oregon
`State resident,
`
`
`
`
`
`
`vs.
`
`Plaintiffs,
`
`
`THE CITY OF OKLAHOMA CITY, a
`municipal corporation,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`Case No. CIV-18-990-C
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`DEFENDANT THE CITY OF OKLAHOMA CITY’S
`NON-INFRINGEMENT AND INVALIDITY CONTENTIONS
`
`Defendant The City of Oklahoma City, pursuant to the Court’s Revised Scheduling
`
`
`
`
`
`
`
`Order [Dkt. No. 36], provides these Non-Infringement and Invalidity Contentions to
`
`Plaintiffs Miller Mendel, Inc. and Tyler Miller. OKC’s investigation is ongoing.
`
`Accordingly, OKC expressly reserves the right to modify, supplement, and otherwise
`
`amend these Non-Infringement and Invalidity Contentions as necessary as discovery
`
`progresses and following claim construction.
`
`I.
`
`INTRODUCTION
`
`Based on Plaintiffs’ Disclosure of Asserted Claims and Infringement Contentions
`
`(“Infringement Contentions”), served by Plaintiffs May 30, 2019, Plaintiffs assert the
`
`following patent and claims against OKC: U.S. Patent No. 10,043,188 (“the ’188 Patent”
`
`or “the Asserted Patent”), Claims 1, 5, 9, and 15 (collectively “the Asserted Claims”).
`
`These Non-Infringement and Invalidity Contentions use the term “PHOSITA” to refer to
`
`a person having ordinary skill in the art to which the Asserted Patent pertains.
`
`1
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`GUARDIAN EXHIBIT 1032
`Guardian Alliance Technologies, Inc. v. Miller
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`II.
`
`THE ’188 PATENT
`
`The ’188 Patent (application no. 14/721,707 (“the ’707 Application)) was filed May
`
`26, 2015, as a continuation of Application No. 13/441,648 (“the ’648 Application”), filed
`
`April 6, 2012, which issued as U.S. Patent No. 9,070,098 (“the ’098 Patent”).
`
`In their Infringement Contentions, Plaintiffs allege they are entitled to claim priority
`
`to U.S. Provisional Application 61/472,556 (“the ’556 Provisional Application”), which
`
`was filed April 6, 2011. However, the ’188 Patent does not actually claim priority to the
`
`’556 Provisional Application (see, OKC-0000001). The Application Data Sheet (OKC-
`
`0000508-0000512) submitted with the ’707 Application claims the benefit of only the ’648
`
`Application, not the ’556 Provisional Application. (OKC-0000509). The USPTO’s
`
`acknowledgement of receipt of the ’707 Application, mailed June 3, 2015, also states that
`
`the ’707 Application claimed priority only to the ’648 Application. (OKC-0000408).
`
`During prosecution of the ’707 Application, Miller did not file a Supplemental Application
`
`Data Sheet (or anything else) to establish his priority claim to the ’556 Provisional
`
`Application as required by USPTO Regulations. Thus, the priority date for the ’188 Patent
`
`is no earlier than April 6, 2012, not April 6, 2011, as alleged in Plaintiffs’ Infringement
`
`Contentions.
`
`III. OKC’S NON-INFRINGEMENT CONTENTIONS AND CHARTS
`
`Pursuant to the Court’s Revised Scheduling Order [Dkt. No. 36], OKC provides its
`
`Non-Infringement Contention charts for each of the Asserted Claims. See Exhibit 1. OKC’s
`
`Non-Infringement Contentions, positions, and charts are based on Plaintiffs’ proposed
`
`constructions, as provided with their Infringement Contentions. OKC bases its non-
`
`2
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`GUARDIAN EXHIBIT 1032
`Guardian Alliance Technologies, Inc. v. Miller
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`infringement contentions and positions on those constructions without conceding in any
`
`way that those constructions are correct, and instead expressly reserves the right to oppose
`
`those constructions at the time specified in the Court’s Revised Scheduling Order [Dkt.
`
`No. 36]. See, VI. Other Reservations and Explanations, infra.
`
`As shown in its non-infringement charts, OKC asserts it does not infringe any of the
`
`Asserted Claims, which are all independent claims and, therefore, cannot infringe any
`
`dependent claim depending therefrom. See, e.g. Monsanto Co. v. Syngenta Seeds, Inc., 503
`
`F.3d 1352, 1359 (Fed. Cir. 2007). OKC expressly reserves the right to amend its non-
`
`infringement contentions and charts.
`
`IV. OKC’S INVALIDITY CONTENTIONS AND CHARTS
`
`Pursuant to the Court’s Revised Scheduling Order [Dkt. No. 36], OKC identifies the
`
`following prior art now known to OKC to anticipate and/or render obvious at least one of
`
`the Asserted Claims under at least 35 U.S.C. §§ 102 and 103, either expressly or inherently
`
`as would have been understood by a PHOSITA at the time of the invention. The following
`
`patents, publications, and systems are prior art under at least 35 U.S.C. §§ 102 and 103.
`
`Invalidity claims charts for these references with respect to the ’188 Patent are attached as
`
`Exhibits 2 through 7.
`
`A. Prior Art Patents and Publications
`
`1. U.S. Patent No. 6,714,944, “System and Method for Authenticating and
`
`Registering Personal Background Data,” filed December 23, 1999, issued
`
`March 30, 2004 (“Shapiro”);
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`3
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`2. U.S. Patent No. 6,904,407, “Repository for Jobseekers’ References on the
`
`Internet,” filed September 24, 2001, issued June 7, 2005 (“Ritzel”);
`
`3. U.S. Patent No. 7,080,057, “Electronic Employee Selection Systems and
`
`Methods,” filed August 2, 2001, issued July 18, 2006 (“Scarborough”);
`
`4. U.S. Patent No. 7,136,865, “Method and Apparatus to Build and Manage a
`
`Logical Structure Using Templates,” filed April 8, 2002, issued November
`
`14, 2006 (“Ra”);
`
`5. U.S. Patent No. 7,155,400, “Universal Task Management System, Method
`
`and Product for Automatically Managing Remote Workers, Including
`
`Automatically Recruiting Workers,” filed November 14, 2001, issued
`
`December 26, 2006 (“Jilk”);
`
`6. U.S. Patent No. 7,246,067, “Secure Online Dating Support System and
`
`Method,” filed March 20, 2003, issued July 27, 2007 (“Austin”);
`
`7. U.S. Patent No. 7,346,541, “System, Method and Computer Readable
`
`Medium for Acquiring and Analyzing Personal History Information,” filed
`
`August 14, 2000, issued March 18, 2008 (“Cuttler”);
`
`8. U.S. Patent No. 8,799,243, “System and Method Providing for Regulatory
`
`Compliance,” filed October 25, 2006, issued August 5, 2014 (“Havlik”);
`
`9. U.S. Patent No. 8,842,156, “Unified Interactive Video Kiosk for Information
`
`Management and Method for the Same,” filed June 28, 2013, issued
`
`September 23, 2014 (“Alekhin”);
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`4
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`10. U.S. Patent No. 9,037,517, “Automation and Streamlining of Recruiting and
`
`Background Screening Via Bi-Directional Communication and Process
`
`Integration,” filed January 30, 2007, issued May 19, 2015 (“Malnati”);
`
`11. U.S. Patent Pub. No. 2003/0097342, “Method for Verifying Employment
`
`Data,” filed January 24, 2000, published May 22, 2003 (“Whittingtom”);
`
`12. U.S. Patent Pub. No. 2003/0171927, “Method and System for Verifying or
`
`Certifying Traits of Candidates Seeking Employment,” filed March 5, 2002,
`
`published September 11, 2003 (“Bernard”);
`
`13. U.S. Patent Pub. No. 2003/0208752, “Employee Candidate Computer and
`
`Web-Based Interactive Assessment Software and Method of Employee
`
`Candidate Assessment,” filed May 3, 2002, published November 6, 2003
`
`(“Farris”);
`
`14. U.S. Patent Pub. No. 2004/0053203, “System and Method for Evaluating
`
`Applicants,” filed September 16, 2002, published March 18, 2004
`
`(“Walters”);
`
`15. U.S. Patent Pub. No. 2004/0088173, “Interactive, Certified Background
`
`Check Business Method,” filed October 31, 2002, published May 6, 2004
`
`(“Mather”);
`
`16. U.S. Patent Pub. No. 2004/0230478, “Method and System for Streamlining
`
`Recruitment Process Through Independent Certification of Resumes,” filed
`
`May 4, 2004, published November 18, 2004, and tracing priority to U.S.
`
`Provisional App. No. 60/471,374, filed May 15, 2003 (“Saxena”);
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`5
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`17. U.S. Patent Pub. No. 2005/0033633, “System and Method for Evaluating Job
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`Candidates,” filed August 4, 004, published February 10, 2005, and tracing
`
`priority to U.S. Provisional App. No. 60/492,457, filed August 4, 2003
`
`(“LaPasta”);
`
`18. U.S. Patent Pub. No. 2005/0055231, “Candidate-Initiated Background
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`Check and Verification,” filed February 4, 2004, published March 10, 2005,
`
`and tracing priority to U.S. Provisional App. No. 60/501,210, filed
`
`September 8, 2003 (“Lee”);
`
`19. U.S. Patent Pub. No. 2005/0119875, “Identifying Related Names,” filed
`
`September 17, 2004, published June 2, 2005, and tracing priority to U.S.
`
`Provisional App. No. 60/503,585, filed September 17, 2003 and U.S.
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`Provisional App. No. 60/079,233, filed March 25, 1998 (“Shaefer, JR.”);
`
`20. U.S. Patent Pub. No. 2005/0240431, “Employment Center,” filed May 25,
`
`2005, published October 27, 2005, and tracing priority to U.S. Provisional
`
`App. No. 60/430,144, filed December 2, 2002 (“Cotter”);
`
`21. U.S. Patent Pub. No. 2005/0240457, “Systems, Methods and Computer
`
`Program Products for Facilitating Evaluation of Job Applicants by Search
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`Committees,” filed January 25, 2005, published October 27, 2005, and
`
`tracing priority to U.S. Provisional App. No. 60/540,572, filed January 30,
`
`2004 (“Connally”);
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`6
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`22. U.S. Patent Pub. No. 2005/0273453, “Systems, Apparatus and Methods for
`
`Performing Criminal Background Investigations,” filed June 5, 2004,
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`published December 8, 2005 (“Holloran”);
`
`23. U.S. Patent Pub. No. 2006/0018520, “Biometric-Supported Name-Based
`
`Criminal History Background,” filed July 21, 2005, published January 26,
`
`2006, and tracing priority to U.S. Provisional App. No. 60/590,292, filed July
`
`21, 2004 (“Holloran”);
`
`24. U.S. Patent Pub. No. 2006/0080121, “Third-Party Confirmation of Self-
`
`Populated Data,” filed August 25, 2005, published April 13, 2006, and
`
`tracing priority to U.S. Provisional App. No. 60/604,746, filed August 25,
`
`2004 (“Chiang”);
`
`25. U.S. Patent Pub. No. 2006/0235884, “System and Method for Evaluating
`
`Talent and Performance,” filed April 18, 2005 and published October 19,
`
`2006 (“Pfenninger”);
`
`26. U.S. Patent Pub. No. 2006/0287970, “System for Verification of Job
`
`Applicant Information,” filed May 31, 2005, published December 21, 2006
`
`(“Chess”);
`
`27. U.S. Patent Pub. No. 2007/0038486, “Methods and Systems for Candidate
`
`Information Processing,” filed August 8, 2006, published February 15, 2007,
`
`and tracing priority to U.S. Provisional App. No. 60/706,948, filed August 9,
`
`2005 (“Mohn”);
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`7
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`28. U.S. Patent Pub. No. 2007/0250459, “Method and System for Conducting
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`Background Investigations,” filed March 7, 2007, published October 25,
`
`2007, and tracing priority to U.S. Provisional App. No. 60/779,447, filed
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`March 7, 2006 (“Schwarz”);
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`29. U.S. Patent Pub. No. 2008/0021759, “Method and System for Managing an
`
`Action,” filed July 19, 2006 and published January 24, 2008 (“Wasley”);
`
`30. U.S. Patent Pub. No. 2008/0033742, “Method and Apparatus for Performing
`
`Employee Background Checks,” filed August 3, 2007, published February 7,
`
`2008, and tracing priority to U.S. Provisional App. No. 60/835,205, filed
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`August 3, 2006 (“Bernasconi”);
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`31. U.S. Patent Pub. No. 2008/0306750, “Employment Screening System and
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`Method,” filed June 8, 2007 and published December 11, 2008 (“Wunder”);
`
`32. U.S. Patent Pub. No. 2009/0292641, “Universal Secure Registry,” filed
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`February 26, 2009, published November 26, 2009, and tracing priority to
`
`U.S. Patent App. No. 11/677,490, filed February 21, 2007, and U.S.
`
`Provisional App. No. 61/031,529, filed February 26, 2008 (“Weiss”);
`
`33. U.S. Patent Pub. No. 2009/0319331, “Methods and Apparatus to Respond
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`to Recalls,” filed June 19, 2008 and published December 24, 2009 (“Duffy”);
`
`34. U.S. Patent Pub. No. 2010/0287368, “Method, Apparatus and System for
`
`Hosting Information Exchange Groups on a Wide Area Network,” filed July
`
`6, 2010, published November 11, 2010, and tracing priority to U.S.
`
`Provisional App. No. 60/129,485, filed April 15, 1999 (“Shuster”);
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`8
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`35. U.S. Patent Pub. No. 2010/0332405, “Method for Assessing Reputation of
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`Individual,” filed October 24, 2008, published December 30, 2010, and
`
`tracing priority to U.S. Provisional App. No. 60/982,272, filed October 24,
`
`2007 (“Williams”); and
`
`36. U.S. Patent Pub. No. 2012/0089528, “System and Method for Quality
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`Control in a High Volume Talent Acquisition,” filed October 11, 2010,
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`published April 12, 2012 (“Parikh”).
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`B. Prior Art Systems
`
`OKC additionally identifies and relies on each of the additional patent or publication
`
`references that describe or are otherwise related to the prior art systems identified below:
`
`1. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to e-SOPH, as exemplified by the following
`
`references and documents and subject to further discovery: (1) Miller Mendel
`
`e-SOPH (electronic Statement of Personal History), 08-30-2010, e-SOPH
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`Specs (MIME00001507-00001598); and (2) Background Technologies,
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`LLC, Product Description Summary
`
`(MIME00001177-00001189)
`
`(collectively referred to as “e-SOPH”);
`
`2. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to ADP Screening and Selection Services, as
`
`exemplified by the following references and documents and subject to further
`
`discovery: (1) U.S. Patent Pub. No. 2008/0306750 (“Wunder”); (2)
`
`disclosures relating to ADP Screening and Selection Services; (3) The
`
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`Eternal Criminal Record by James B. Jacbos; and (4) prosecution histories
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`for United States trademark applications for SECUREHIRE (U.S. Reg. No.
`
`2,451,915), EASYHIRE (U.S. Reg. No. 2,441,579), POWERLINK (U.S.
`
`Reg. No. 2,442,675), CANDIDATELINK (U.S. Reg. No. 3,547,880),
`
`CRIMLINK (U.S. Reg. No. 2,989,167), ODYSSEY (U.S. Reg. No.
`
`3,069,197), and ALL THE HIRING TOOLS YOU NEED. FROM A NAME
`
`YOU CAN COUNT ON (U.S. Reg. No. 3,327,868) (collectively referred to
`
`as “ADP”);
`
`3. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to Taleo Recruit, as exemplified by the
`
`following references and documents and subject to further discovery:
`
`disclosures relating to Taleo Recruit (collectively referred to as “Taleo
`
`Recruit” or “Taleo”);
`
`4. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to Background Solutions, as exemplified by
`
`the following references and documents and subject to further discovery:
`
`disclosures relating to Background Assistant (collectively referred to as
`
`“Background Solutions”);
`
`5. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to Peace Officer Background Investigation
`
`Tracking System (“POBITS”), as exemplified by the following references
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`and documents and subject to further discovery: disclosures relating to
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`POBITS (collectively referred to as “POBITS”).
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`6. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to LexisNexis Screening Solutions, as
`
`exemplified by the following references and documents and subject to further
`
`discovery: disclosures
`
`relating
`
`to LexisNexis Screening Solutions
`
`(collectively referred to as “LexisNexis”);
`
`7. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to Tandem Select, as exemplified by the
`
`following references and documents and subject to further discovery:
`
`disclosures relating to Tandem Select (collectively referred to as “Tandem”
`
`or “Tandem Select”);
`
`8. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to Sterling Infosystems as exemplified by the
`
`following references and documents and subject to further discovery:
`
`disclosures relating to Sterling Infosystems (collectively referred to as
`
`“Sterling”); and
`
`9. Products, components, systems, and methods designed, developed, and/or in
`
`public use or on sale related to First Advantage, as exemplified by the
`
`following references and documents and subject to further discovery:
`
`disclosures relating to First Advantage (collectively referred to as “First
`
`Advantage”).
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`OKC additionally identifies and relies on any system, product, or public knowledge
`
`or use that embodies or otherwise incorporates any of the prior art patents and publications
`
`listed above. OKC reserves the right to identify and rely upon systems that represent
`
`different versions or are otherwise related variations of the related systems.
`
`C. Anticipation
`
`OKC identifies the following prior art now known to OKC to anticipate the Asserted
`
`Claims under at least 35 U.S.C. §§ 102(a), (b), (e), and/or (g), either expressly or inherently
`
`as understood by a PHOSITA. In some instances, OKC has treats certain prior art where
`
`certain elements are inherently present, and in particular where elements are inherently
`
`present based on Plaintiff’s proposed claim constructions provided with their Infringement
`
`Contentions.
`
`The Asserted Claims are anticipated by:
`
`● e-SOPH;
`
`● ADP; and
`
`● Background Solutions.
`
`See Exhibits 2 through 4.
`
`D. Obviousness
`
`OKC identifies the following exemplary combinations of prior are it presently
`
`intends to rely on to show that the Asserted Claims area obvious. In each instance, OKC
`
`contends that the identified claim is rendered obvious by the identified reference or
`
`references, either alone, or in combination with the knowledge of a PHOSITA. OKC’s
`
`inclusion of exemplary combinations does not preclude OKC from identifying other
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`invalidating combinations as appropriate. The exemplary combinations identified below
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`are alternatives to OKC’s anticipation and single-reference obviousness contentions, and
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`thus, they should not be interpreted as indicating that any of the individual references
`
`included in the exemplary combinations are not by themselves invalidating prior art under
`
`§§ 102 and/or 103.
`
`The Asserted Claims are rendered obvious by:
`
`● e-SOPH;
`
`● ADP;
`
`● Background Solutions;
`
`● e-SOPH in combination with one or more of Mohn, Parikh, Lee, POBITS,
`
`Sterling, Tandem Select, First Advantage, HireRight, LaPasta, Ritzel,
`
`Bernasconi, and/or LexisNexis;
`
`● ADP in combination with one or more of Mohn, Parikh, Lee, POBITS,
`
`Sterling, Tandem Select, First Advantage, LaPasta, Ritzel, Bernasconi,
`
`Bernard, Cotter, Schwarz, LexisNexis, and/or Background Solutions; and
`
`● Background Solutions in combination with one or more of Mohn, Parikh,
`
`Lee, POBITS, Sterling, Tandem Select, First Advantage, HireRight, LaPasta,
`
`Ritzel, Bernasconi, and/or LexisNexis.
`
`See Exhibits 2 through 7.
`
`No showing of a specific motivation to combine prior art is required to combine the
`
`references disclosed above and in the attached claim charts, as each combination of art
`
`would have expected results and at most would simply represent a known alternative to
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`one of skill in the art. See Q.I. Press Controls, B.V. v. Lee, 732 F.3d 1371, 1379 (Fed. Cir.
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`2014); KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1739-40 (2007) (rejecting the
`
`Federal Circuit’s “rigid” application of the teaching, suggestion, or motivation to combine
`
`test, and instead applying an “expansive and flexible” approach). In fact, the Supreme
`
`Court held that a PHOSITA is “person of ordinary creativity, not an automaton” and “in
`
`many cases a person of ordinary skill in the art will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle.” KSR, 127 S. Ct. at 1742. Nevertheless, in addition
`
`to the information contained in the section immediately above and elsewhere in these
`
`contentions, OKC hereby identifies motivations and reasons to combine.
`
`One or more combinations of the prior art references identified above would have
`
`been obvious to a PHOSITA at the time of the invention because these references would
`
`have been combined using: known methods to yield predictable results; known techniques
`
`in the same way; a simple substitution of one known, equivalent element for another to
`
`obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art
`
`generally. See Q.I. Press Controls, 732 F.3d at 1379; Randall Mtg v. Rea, 733 F.3d 1355,
`
`1363 (Fed. Cir. 2013). Additionally, it would have been obvious to try combining the prior
`
`art references identified above because there were only a finite number of predictable
`
`solutions and/or because known work in one field of endeavor prompted variations based
`
`on predictable design incentives and/or market forces either in the same field of a different
`
`one. See Sanofi-Aventis Deutschland GmbH v. Glenmark Pharms. Inc., USA, 748 F.3d
`
`1354, 1360 (Fed. Cir. 2014); Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1352 (Fed. Cir.
`
`2010); In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009); KSR, 127 S. Ct. at 1742.
`
`14
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`GUARDIAN EXHIBIT 1032
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`
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`Moreover, the combinations of the prior art references identified above and in the claim
`
`charts would have been obvious because the combinations represent known potential
`
`options with a reasonable expectation of success. See InTouch Techs., Inc. v. VGO Comms.,
`
`Inc., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`
`Additional evidence that there would have been a motivation to combine the prior
`
`art references identified above includes the interrelated teachings of multiple prior art
`
`references; the effects of demands known to the design community or present in the
`
`marketplace; the existence of a known problem for which there was an obvious solution
`
`encompassed by the asserted claims; the existence of a known need or problem in the field
`
`of the endeavor at the time of the alleged invention(s); and the background knowledge that
`
`would have been possessed by a PHOSITA. See Norgren Inc. v. Int’l Trade Comm’n, 699
`
`F.3d 1317, 1322-23 (Fed. Cir. 2012); Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d
`
`1325, 1339 (Fed. Cir. 2010); Honeywell Int’l, Inc. v. United States, 609 F.3d 1292, 1306-
`
`07 (Fed. Cir. 2010).
`
`The motivation to combine the teachings of the prior art references disclosed herein
`
`is also found in the references themselves and in: (1) the nature of the problem being
`
`solved; (2) the express, implied, and inherent teachings of the prior art; (3) the knowledge
`
`of PHOSITAs; (4) the predictable results obtained in combining the different elements of
`
`the prior art; (5) the predictable results obtained in simple substitution of one known
`
`element for another; (6) the use of a known technique to improve similar devices, methods,
`
`or products in the same way; (7) the predictable results obtained in applying a known
`
`technique to a known device, method, or product ready for improvement; (8) the finite
`
`15
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`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`number of identified predictable solutions that had a reasonable expectation of success;
`
`and (9) known work in various technological fields based on design incentives or other
`
`market forces. See MPEP 2143.
`
`By Plaintiffs’ asserted priority date of April 6, 2011—and certainly by the legally
`
`correct priority date, i.e. April 6, 2012—the concept of conducting background
`
`investigations using a streamlined, electronic process to reduce the time and amount of
`
`documentation was well known. Particularly, the process of using the residential
`
`address(es) of the applicant to create or generate a list of law enforcement agencies in a
`
`particular area was also well known. Therefore, at the time of the invention, a PHOSITA
`
`would have been motivated to combine the range of electronic background investigation
`
`references, recognizing that the technologies, processes, and concepts disclosed therein
`
`would be useful as applied to a large variety of applications. The combination of these
`
`references with each other and/or with the knowledge of a PHOSITA involves only
`
`applying known methods to known problems to yield predictable results, or using a simple
`
`substitution of one known element for another to obtain predictable results, and therefore
`
`would have been obvious.
`
`E. “On-Sale” Bar Under 35 U.S.C. § 102(b)
`
`OKC contends that the Asserted Claims are invalid under 35 U.S.C. § 102(b)
`
`because e-SOPH, which embodies the Asserted Claims, was the subject of at least one
`
`commercial offer for sale prior to the critical date of the ’188 Patent, i.e. April 6, 2011.
`
`The “on-sale” bar of § 102(b) applies when two conditions are satisfied before the critical
`
`date: (1) the product must be the subject of a commercial offer for sale; and (2) the
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`16
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`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`invention must be ready for patenting. Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67
`
`(1998). An invention is ready for patenting by proof of reduction to practice before the
`
`critical date or by proof that prior to the critical date the inventor had prepared drawings
`
`or other descriptions that were sufficiently specific to enable a person skilled in the art to
`
`practice the invention. Id. at 67-68.
`
`Plaintiffs admit that e-SOPH was reduced to practice, i.e. ready for patenting, by no
`
`later than August 30, 2010. (See MIME00001507-00001598). Discovery, including third-
`
`party discovery, directed to the “commercial offer for sale” prong is ongoing, but
`
`previously-produced documentation authored by Plaintiffs states they have been offering
`
`e-SOPH since 2010. (See OKC-0001244). As a product embodying the Asserted Claims
`
`was offered for sale prior to the critical date of April 6, 2011, the Asserted Claims are
`
`invalid under 35 U.S.C. § 102(b).
`
`F. “Public Use” Bar Under 35 U.S.C. § 102(b)
`
`OKC contends that the Asserted Claims are invalid under 35 U.S.C. § 102(b)
`
`because e-SOPH, which embodies the Asserted Claims, was in public use prior to the
`
`critical date of the ’188 Patent, i.e. April 6, 2011. Public use “includes any use of the
`
`[claimed] invention by a person other than the inventor who is under no limitation,
`
`restriction or obligation of secrecy to the inventor.” Petrolite Corp. v. Baker Hughes, Inc.,
`
`96 F.3d 1423, 1425 (Fed. Cir. 1996).
`
`Discovery, including third-party discovery, directed to Plaintiffs’ pre-critical date
`
`disclosures of e-SOPH is ongoing, but Plaintiffs have already produced documentation
`
`evincing that Tyler Miller disclosed the invention to individuals under no confidentiality
`
`17
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`GUARDIAN EXHIBIT 1032
`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`or secrecy obligations to Mr. Miller prior to the critical date of April 6, 2011. (See
`
`MIME00004998-00005005 and MIME00005056-00005058). Accordingly, the Asserted
`
`Claims are invalid under 35 U.S.C. § 102(b) because they were in public use prior to the
`
`critical date.
`
`G. Invalidity Under 35 U.S.C. § 101
`
`OKC identifies grounds of invalidity based on 35 U.S.C. § 101. The Asserted
`
`Claims are invalid because they claim an abstract idea without adding any inventive
`
`concept. OKC has previously disclosed its theory of invalidity under § 101 in its Renewed
`
`Motion to Dismiss Plaintiffs’ Complaint. [Dkt. No. 23]. Further, OKC anticipates
`
`supplementing the theories and arguments raised in that motion as discovery progresses,
`
`and ultimately anticipates re-asserting its § 101 position in either a 12(c) motion for
`
`judgment on the pleadings or in a motion for summary judgment.
`
`1. Patent-Ineligible Subject Matter
`
`Simply, the Asserted Claims relate to the concept of conducting background
`
`investigations using an electronic, streamlined process. The Asserted Claims further claim
`
`the step of generating a list of local law enforcement agencies using the residential address
`
`disclosed by the applicant during the automated application process. Obtaining,
`
`integrating, and displaying information are abstract ideas, the combination of which fails
`
`to constitute a patentable invention. See, e.g., Electric Power Grp., LLC v. Alstom S.A., 830
`
`F.3d 1350, 1354 (Fed. Cir. 2016) (“gathering and analyzing information for a specified
`
`content, then displaying the results” is an abstract idea). The Asserted Claims do not
`
`convert the abstract idea into a patent-eligible application because they merely recite
`
`18
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`Guardian Alliance Technologies, Inc. v. Miller
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`
`
`conventional components and/or limit the abstract idea to a particular technological
`
`environment. Documents already produced by Plaintiffs best articulate why the Asserted
`
`Claims are patent ineligible under § 101: “The e-SOPH modernizes the existing archaic
`
`paper system that has been used year after year. e-SOPH simply turns most everything
`
`electronic.” (MIME00001511).
`
`2. Mental Steps
`
`The Asserted Claims are also invalid under 35 U.S.C. § 101 because they require
`
`steps that are not meaningfully distinguishable from a background investigator’s mental
`
`processes. The Asserted Claims are 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).
`
`H. Invalidity Under 35 U.S.C. § 112
`
`OKC identifies grounds of invalidity based on (1) lack of enablement under 35
`
`U.S.C. § 112, first paragraph; and (2) indefiniteness under 35 U.S.C. § 112, second
`
`paragraph. These contentions shall not be construed as an admission that any claim
`
`construction advanced by OKC in this case is in any way inconsistent, flawed or erroneous.
`
`Nor should these contentions prevent OKC from advancing claim construction and/or non-
`
`infringement positions in lieu of, or in addition to, invalidity positions. Further, these
`
`contentions shall not be construed as an admission of or acquiescence to Plaintiffs’
`
`purported construction of the claim language or of other positions advanced by Plaintiffs
`
`during the course of this litigation. OKC’s Invalidity Contentions under 35 U.S.C. § 112
`
`19
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`Guardian Alliance Technologies, Inc. v. Miller
`
`
`
`may depend, in part, on the Court’s claim construction, as well as Plaintiffs’ asserted claim
`
`scope. Accordingly, OKC only identifies the issues under 35 U.S.C. § 112 of which it is
`
`presently aware.
`
`1. Lack of Written Description Under 35 U.S.C. § 112(1)
`
`The ’188 Patent does not provide sufficient written description to establish that the
`
`inventors were in possession of the alleged inventions recited in certain ones of the
`
`Asserted Claims at the time the ’188 Patent was filed. See Ariad Pharms., Inc. v. Eli Lilly
`
`& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Stated another way, the applicants did not
`
`describe their purported inventions in a manner that “reasonably conveys to those skilled
`
`in the art that the inventor had possession of the claimed subject matter as of the filing
`
`date.” Id. To the extent the following limitations are even definite (under 35 U.S.C. § 112,
`
`second paragraph), the ’188 Patent fails to sufficient describe them as required by 35
`
`U.S.C. § 112, first paragraph:
`
`● “determining a reference class of the reference source based on the reference
`
`set of program data”
`
`2. Lack of Enablement Under 35 U.S.C. § 112(1)
`
`The specification of the ’188 Patent does not enable one or ordinary skill in the art
`
`to make and use the following recited elements without undue experimentation:
`
`● “determining a reference class of the reference source based on the reference
`
`set of program data”
`
`3. Indefiniteness Under 35 U.S.C. § 112(2)
`
`20
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`
`
`
`OKC contends that the following claim limitations are indefi
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