DCT
5:23-cv-00120
Fall Line Patents LLC v. Wendy's Intl LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fall Line Patents, LLC (Oklahoma)
- Defendant: Wendy's International, LLC (Ohio); Quality is Our Recipe, LLC (Delaware)
- Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
- Case Identification: 5:23-cv-00120, E.D. Tex., 10/13/2023
- Venue Allegations: Venue is based on Defendant's transaction of business in the district, including making the accused Wendy's Mobile App available to residents, and maintaining a regular and established place of business in the form of a restaurant in Texarkana, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Wendy's Mobile App, in conjunction with its servers, infringes a patent related to methods for creating and executing location-aware, device-independent questionnaires on remote computing devices.
- Technical Context: The technology addresses cross-platform compatibility and intermittent network connectivity for mobile data collection, particularly for applications like field surveys or inspections conducted on early-2000s era handheld devices.
- Key Procedural History: The complaint notes that the asserted patent family has been subject to prior litigation, Fall Line Patents, LLC v. Zoe's Kitchen, Inc., where the court denied a motion to dismiss under 35 U.S.C. § 101 and later granted a summary judgment of validity under § 101. The patent-in-suit, U.S. Patent No. 9,454,748, has also survived an Inter Partes Review (IPR2019-00610), which confirmed the patentability of the sole asserted claim, Claim 7, while cancelling several other claims. A separate IPR proceeding (IPR2018-00043) resulted in the cancellation of other, non-asserted claims.
Case Timeline
| Date | Event |
|---|---|
| 2002-08-19 | ’971 Patent Priority Date (Provisional App. No. 60/404,491) |
| 2016-09-27 | ’971 Patent Issue Date |
| 2021-05-25 | Zoe's Kitchen Order denying motion to dismiss cited in complaint |
| 2022-12-19 | IPR Certificate issued confirming patentability of Claim 7 |
| 2023-06-29 | Zoe's Kitchen Order granting SJ of validity cited in complaint |
| 2023-10-13 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 9,454,748, "System and Method for Data Management," issued September 27, 2016.
The Invention Explained
- Problem Addressed: The patent describes a technological landscape (circa 2002) where creating data-gathering software was difficult due to the proliferation of handheld computers with incompatible operating systems and hardware (Compl. ¶ 23; ’971 Patent, col. 1:49-2:2). Developing custom programs was expensive, and any changes required recompiling and reinstalling the entire program on each device (Compl. ¶ 25; ’971 Patent, col. 3:7-10). Furthermore, these devices often had limited and unreliable network connectivity, making real-time data transfer to a central server a significant challenge (’971 Patent, col. 3:64-4:4).
- The Patented Solution: The invention proposes a system for creating "device-indifferent" questionnaires using tokens—an intermediate language that can be executed by a run-time package on various devices without recompilation (Compl. ¶ 26; ’971 Patent, col. 2:13-26). A questionnaire is designed on a central computer, tokenized, and then transmitted to remote devices. This system is also "communication channel indifferent," meaning it can use any available network connection and can store data locally if a connection is unavailable, transmitting it later when a connection is restored (Compl. ¶ 27; ’971 Patent, col. 5:4-12). The invention also specifically contemplates using an integrated GPS unit to automatically collect location data as part of the questionnaire process (Compl. ¶ 28; ’971 Patent, col. 10:55-65).
- Technical Importance: This approach sought to provide a universal, cross-platform solution for field data collection that was resilient to the intermittent network connectivity common in the early days of mobile computing (’971 Patent, col. 2:41-54).
Key Claims at a Glance
- The complaint asserts independent Claim 7.
- The essential elements of Claim 7 are:
- A method for collecting survey data comprising:
- (a) designing a questionnaire customized for a particular location with branching logic on a first computer, where the questionnaire requests location identifying information;
- (b) automatically transferring the questionnaire to a "loosely networked computer" with a GPS;
- (c) executing the questionnaire on the device at the particular location to collect user responses;
- (d) using the GPS to automatically provide location information as a response during execution;
- (e) automatically transferring collected responses "in real time" to a central computer via the "loose network"; and
- (f) making the transferred responses available via the Internet.
- The complaint does not explicitly reserve the right to assert other claims.
III. The Accused Instrumentality
- Product Identification: The Wendy's Mobile App operating in conjunction with Wendy's servers (Compl. ¶ 11).
- Functionality and Market Context: The complaint alleges that the accused instrumentality functions to "create and execute a location-specific questionnaire to collect responses from users" (Compl. ¶ 11). The functionality is described at a high level, implying that the Wendy's Mobile App, when used by a customer, presents questions relevant to their location (e.g., a specific restaurant) and gathers feedback or other data for transmission to Wendy's central servers. The complaint does not contain specific allegations about the commercial importance of the app, beyond its general availability and use in the district (Compl. ¶¶ 5-6). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
U.S. Patent No. 9,454,748 Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) designing a questionnaire including at least one question said questionnaire customized for a particular location having branching logic... requests location identifying information | Wendy's, through its servers, allegedly designs and provides a questionnaire that is specific to a user's location, such as a particular restaurant (the "particular location"). | ¶11 | col. 15:46-52 |
| (b) automatically transferring said designed questionnaire to at least one loosely networked computer having a GPS integral thereto | The location-specific questionnaire is allegedly transferred from Wendy's servers to a user's smartphone (the "loosely networked computer" with a GPS). | ¶11 | col. 15:53-56 |
| (c) when said loosely networked computer is at said particular location, executing said transferred questionnaire on said loosely networked computer, thereby collecting responses from the user | The Wendy's Mobile App allegedly executes the questionnaire when the user is at or near a Wendy's restaurant, collecting feedback or other responses. | ¶11 | col. 15:57-61 |
| (d) while said transferred questionnaire is executing, using said GPS to automatically provide said location identifying information as a response to said executing questionnaire | The app allegedly uses the smartphone's GPS to automatically provide location information as part of the data being collected by the questionnaire. | ¶11 | col. 15:62-65 |
| (e) automatically transferring via the loose network any responses so collected in real time to a central computer | The app allegedly transmits the user's responses over a cellular or Wi-Fi network (the "loose network") to Wendy's servers (the "central computer"). | ¶11 | col. 16:1-4 |
| (f) making available via the Internet any responses transferred to said central computer in step (e) | The system allegedly makes the collected responses available to Wendy's for internal use, which implies Internet-based access to the central server data. | ¶11 | col. 16:5-7 |
- Identified Points of Contention:
- Technical Question: A primary question is whether the accused app performs the function of step (d) as claimed. Specifically, what evidence does the complaint provide that the app uses the phone’s GPS to automatically provide location information as a response to the questionnaire itself, rather than using location services for a separate function, such as identifying nearby restaurants before a "questionnaire" is ever launched? The distinction between using location to select a questionnaire versus providing location as a response within the questionnaire will be critical.
- Scope Question: The infringement analysis may turn on the definition of "questionnaire." The complaint does not specify whether the accused "questionnaire" is a customer feedback survey, an interactive menu for placing an order, or another feature. The court may have to determine if these modern app features fall within the scope of a term described in the patent with "branching logic" and tokenization for early-2000s handheld devices.
V. Key Claim Terms for Construction
The Term: "questionnaire"
Context and Importance: This term is foundational to the claim. Its construction will determine whether a modern mobile app's user interface for ordering or feedback can be considered an infringing "questionnaire." Practitioners may focus on this term because Defendant will likely argue that the patent envisions a more complex, structured survey instrument than what is present in its app.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent suggests the term is broad, defining it as a "series of questions or statements, each of which calls for a response" (’971 Patent, col. 8:26-28) and using it interchangeably with "form" (’971 Patent, col. 8:36-38).
- Evidence for a Narrower Interpretation: The specification heavily emphasizes creating the questionnaire with "internal branching logic" using a graphical "tool bar" (’971 Patent, col. 8:34-54). The detailed "mystery shopper" example describes a complex, multi-step, timed data-gathering process far exceeding a simple feedback form (’971 Patent, col. 10:40-11:27), which could support a narrower definition.
The Term: "using said GPS to automatically provide said location identifying information as a response to said executing questionnaire"
Context and Importance: This term defines a key functional step. The case may hinge on whether the accused app's use of location data meets this specific limitation. Infringement requires not just using GPS, but using it to provide location information as a response to the questionnaire.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires providing the information "as a response," not necessarily "in response to a specific question." A plaintiff could argue that any automatic logging of GPS coordinates into the dataset associated with the user's other answers meets this limitation.
- Evidence for a Narrower Interpretation: Claim 7 explicitly states that the questionnaire "requests location identifying information" and that the GPS is used to "provide said location identifying information as a response." This suggests a direct request-and-fulfillment mechanism, where location data becomes one of the specific data points collected by the questionnaire, not just contextual data used for another purpose.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on Defendant allegedly providing instructions and encouraging customers to use the Wendy's Mobile App in an infringing manner (Compl. ¶ 16). Contributory infringement is based on the allegation that the accused products have special features that are a material part of the invention and have no substantial non-infringing use (Compl. ¶ 17).
- Willful Infringement: The complaint alleges willfulness based on Defendant's knowledge of the patent "at least as of the date when it was notified of the filing of this action" (Compl. ¶ 18). It further alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others" (Compl. ¶ 19), and characterizes Defendant's alleged infringement as objectively reckless (Compl. ¶ 20).
VII. Analyst’s Conclusion: Key Questions for the Case
- A key evidentiary question will be one of functional operation: Does the Wendy's Mobile App perform the specific method of using GPS to automatically provide location data as a response during the execution of a "questionnaire," or is the app's use of location services for a distinct, non-infringing purpose, such as finding nearby stores? The plaintiff will need to produce evidence mapping the app's actual operation to this precise claim language.
- A central legal issue will be one of definitional scope: Can the term "questionnaire", rooted in the patent's disclosure of tokenized, logic-driven forms for early-2000s handhelds, be construed to cover the user interface of a modern smartphone app for food ordering or customer feedback?
- A third major issue will be validity in view of the art: Although Claim 7 survived an IPR, which strengthens its presumption of validity, the case will likely involve a defense of invalidity based on prior art. The critical question will be whether Defendant can identify prior art—particularly art not considered during the IPR—that anticipates or renders obvious a method for location-based mobile data collection from the 2002 priority timeframe.