Miller Mendel, Inc. v. City of Anna

Authored by: Jeremy J. Gustrowsky

In a recent decision, the Federal Circuit affirmed that certain patent claims covering a software system for managing pre-employment background checks are not eligible for patent protection. Miller Mendel, Inc. had sued the City of Anna, Texas, alleging that the city’s use of the Guardian Alliance Technologies software infringed claims 1, 5, and 15 of U.S. Patent No. 10,043,188. The patent described a system that automates many steps of the background investigation process, such as sending emails with hyperlinks and generating lists of law enforcement agencies based on an applicant’s address.

The court found that these claims were directed to the abstract idea of performing a background check, which is not patentable subject matter under U.S. law. Even though the system used computers and automated certain tasks, the court explained that simply using generic computer components to carry out routine steps does not make an idea patent-eligible. The court also noted that the patent did not claim any specific improvement to computer technology itself, but rather just used computers as tools to automate a traditional process.

Miller Mendel argued that some steps in the patent, like sending hyperlinks by email, could not be done by hand and therefore should be patentable. However, the court disagreed, stating that the inability to perform every step in the mind or on paper does not automatically make a claim eligible for a patent. The court also clarified that its decision only applied to the specific claims Miller Mendel asserted (claims 1, 5, and 15), not to the entire patent.

Finally, the City of Anna requested that Miller Mendel pay its attorneys’ fees, arguing that the case was “exceptional” due to the weakness of Miller Mendel’s position. The court declined, finding that Miller Mendel had a reasonable basis to believe its patent was valid and that its conduct during the litigation was not unreasonable or vexatious.