Fall Line Patents LLC v. Subway IP LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Fall Line Patents, LLC (Oklahoma)
  • Defendant: Subway IP LLC (Delaware), FWH Technologies, LLC (Delaware), and Franchise World Headquarters, LLC (Connecticut)
  • Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
• Case Identification: 5:23-cv-00119, E.D. Tex., 10/13/2023
• Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendant transacts business in the district, has committed alleged acts of infringement there, and maintains a regular and established place of business in the form of at least one Subway restaurant.
• Core Dispute: Plaintiff alleges that Defendant’s Subway mobile app and associated server infrastructure infringe a patent related to methods for creating and executing location-aware questionnaires on remote computing devices.
• Technical Context: The technology addresses cross-platform software compatibility and data synchronization over intermittent networks for mobile data collection applications, a significant challenge during the proliferation of early handheld computing devices.
• Key Procedural History: The complaint notes that the patent family has been subject to prior litigation (Fall Line Patents LLC v. Zoe's Kitchen Inc), in which a court reportedly denied a motion to dismiss and later granted summary judgment that the claims were valid under 35 U.S.C. § 101. The patent-in-suit has also survived multiple inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office, which resulted in the cancellation of several claims but confirmed the patentability of the single claim asserted in this case, Claim 7.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,454,748 - "System and Method for Data Management"

• Patent Identification: U.S. Patent No. 9,454,748, titled “System and Method for Data Management,” issued on September 27, 2016.

The Invention Explained

• Problem Addressed: The patent’s background section describes the technical difficulties of developing data-gathering applications for the fragmented handheld computer market of the early 2000s (Compl. ¶24). These problems included software incompatibility across different devices, requiring expensive and time-consuming custom programming for each platform, and unreliable, low-bandwidth network connections that hampered real-time data collection in the field (’748 Patent, col. 1:49-2:2, 3:64-4:1).
• The Patented Solution: The invention claims to solve these problems through a system that uses device-independent “tokens” to represent a questionnaire’s questions and logic, allowing a single questionnaire to be executed on different types of devices without needing to be recompiled (Compl. ¶27; ’748 Patent, col. 4:33-39). The system is designed for “loosely networked” environments, where it can store user responses on the device if a network connection is lost and transmit them once the connection is restored (Compl. ¶28; ’748 Patent, col. 5:7-12). The method also contemplates using a device’s integrated GPS to automatically capture location information as part of the data collection process (Compl. ¶29; ’748 Patent, col. 5:48-49).
• Technical Importance: This approach sought to create a more flexible and resilient framework for mobile data collection by abstracting away the underlying hardware and accommodating the reality of intermittent network access (Compl. ¶9, 25).

Key Claims at a Glance

• The complaint asserts infringement of independent claim 7 (’748 Patent, col. 15:7-42).
• The essential elements of Claim 7 are:
  • Designing a questionnaire customized for a particular location, which includes branching logic and requests location-identifying information.
  • Automatically transferring the designed questionnaire to a "loosely networked computer" that has an integrated GPS.
  • Executing the questionnaire on the computer when it is at the particular location to collect user responses.
  • While executing, using the GPS to automatically provide location-identifying information as a response.
  • Automatically transferring collected responses in real time over the loose network to a central computer.
  • Making the transferred responses available via the Internet.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

• The "Subway mobile app" operating "in conjunction with Subway servers" (Compl. ¶12).

Functionality and Market Context

• The complaint alleges the accused system is used to "create and execute a location-specific questionnaire to collect responses from users" (Compl. ¶12).
• Functionally, the complaint states the Subway Mobile App is used to "direct customers to, and receive orders from customers for, one or more Subway restaurants" (Compl. ¶7).
• The complaint does not provide further detail for analysis of the accused instrumentality's commercial importance or market positioning.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

'748 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary issue may be whether the term "questionnaire," as used in the patent, can be read on the food ordering interface of the Subway mobile app. The patent’s examples focus on survey-like instruments, such as for "mystery shoppers" (’748 Patent, col. 10:37-45), raising the question of a potential mismatch with a transactional e-commerce function.
  • Technical Questions: The complaint's allegations are general. A technical question is what evidence exists that the accused app implements "branching logic" as required by claim 7(a). Another is whether the app actually performs the "store-and-forward" function of a "loosely networked" system, or if it requires a persistent connection to operate.

V. Key Claim Terms for Construction

• The Term: "questionnaire"

• Context and Importance: This term is foundational to the asserted claim. The case may turn on whether the accused app’s ordering process qualifies as a "questionnaire." Practitioners may focus on this term because its construction could either bring the accused system within the claim's scope or place it entirely outside.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification suggests the term is not rigid, stating that "the terms 'program' and 'form' are used interchangeably with questionnaire" (’748 Patent, col. 8:36-38), which could support an interpretation covering any structured data input system.
  • Evidence for a Narrower Interpretation: The detailed examples in the patent describe a "mystery shopper" using the system to answer specific questions about service quality, cleanliness, and wait times (’748 Patent, col. 10:37-11:27). This could support a narrower construction limited to survey or data-gathering instruments, as opposed to transactional ones.

• The Term: "loosely networked"

• Context and Importance: This term defines the required operational environment and functionality for transferring both the questionnaire and the user responses. Its interpretation is critical for elements (b) and (e) of Claim 7.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent provides an explicit definition: a system "tolerant of intermittent network connections," where "if a network connection is unavailable at that moment, the information is temporarily stored in the device and later transmitted when the connection is restored" (’748 Patent, col. 5:4-12). This could be argued to cover any modern app with basic caching or offline retry capabilities.
  • Evidence for a Narrower Interpretation: The context of the patent, written when mobile connectivity was less reliable, could support an interpretation requiring a more robust and central store-and-forward architecture designed specifically to overcome frequent and prolonged network outages, as opposed to transient interruptions.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting that Defendant provides instructions and directs its customers to use the Subway app in a manner that infringes (Compl. ¶17). It alleges contributory infringement by claiming the app has special features for this infringing use that are not staple articles of commerce and lack substantial non-infringing uses (Compl. ¶18).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patent from the date the lawsuit was filed (Compl. ¶19). The complaint also alleges a pre-suit "policy or practice of not reviewing the patents of others," which it characterizes as willful blindness (Compl. ¶20-21).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "questionnaire," which the patent illustrates with survey-style data collection, be construed to cover the transactional food-ordering and payment interface of the accused Subway mobile app?
• A key evidentiary question will be one of functional proof: what evidence will be presented to demonstrate that the accused app performs the specific technical operations required by Claim 7, particularly the implementation of "branching logic" and the "loosely networked" store-and-forward capability for user responses as defined by the patent?
• Given the patent's litigation history, a central question will be how the court applies the specific limitations of Claim 7—which survived validity challenges—to the modern architecture of the accused e-commerce system, and whether the alleged infringement theory presents a factual match to the claim language.