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Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in Miller Mendel, Inc. v. City of Anna, Texas, Nos. 2022-1753, -1999 (July 19, 2024), affirming the U.S. District Court for the Eastern District of Texas’s grant of judgment on the pleadings.

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Miller Mendel, Inc. (“Miller Mendel”) develops pre-employment background investigation software for police departments. The City of Anna, Texas, (“City”) uses the Guardian Alliance Technologies (“GAT”) software platform.

Miller Mendel filed suit against the City alleging its use of the GAT platform infringes “at least Claims 1, 5, and 15” of U.S. Patent No. 10,043,188 (“the ’188 patent”). The ’188 patent is directed to “a software system for managing the process of performing pre-employment background investigations.” The City moved for judgment on the pleadings, alleging the claims of the ’188 patent are ineligible for patent protection under 35 U.S.C. § 101. The district court granted the motion. The City also filed a motion for attorneys’ fees that the district court denied. Miller Mendel appealed and the City cross-appealed.

The Federal Circuit affirmed. Examining the first step of the Alice test, the Court found the asserted claims are directed to the abstract idea of performing a background check. The Court explained that because “the problem facing the inventor was the abstract idea of performing background investigations more efficiently and effectively,” the invention was not an improvement in technology. The Court rejected Miller’s argument that claim 1 was not directed to an abstract idea because certain steps could not be completed in the mind or on pen and paper. The Court found that the patent was automating something that was already being done manually. The Court then determined that the asserted claims do not “transform the nature of the claim into a patent-eligible application” under the second step of the Alice test. The Court cited the method claim’s ability to have its steps performed “in any random order” and the patent’s use of conventional computer components to support this conclusion.

Finally, the Court found the district court only had subject matter jurisdiction over the asserted claims and properly invalidated only those claims. The Court also upheld the denial of City’s attorneys’ fees.

Coauthored by Peter Selness &amp; Kynleigh Williams.

CAFC Affirms Judgment on Pleadings for Nonpatentable Subject Matter in Miller Mendel Suit

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