DCT
5:24-cv-00090
Fall Line Patents LLC v. Carls JR Restaurants LLC Pursuant To Court Order Docket Only In Lead Case 5 24 CV 89
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fall Line Patents, LLC (Oklahoma)
- Defendant: Carl's Jr. Restaurants LLC and CKE Restaurants Holdings, Inc. (Delaware)
- Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
- Case Identification: 5:24-cv-00090, E.D. Tex., 07/11/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business, has committed acts of infringement, and maintains regular and established places of business (restaurants) within the Eastern District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Carl's Jr. Mobile App, in conjunction with its servers, infringes a patent related to methods for creating and deploying location-aware, cross-platform data collection systems.
- Technical Context: The technology addresses creating and managing data collection applications, described as "questionnaires," for remote handheld devices in a manner that is independent of the device's specific hardware or operating system and tolerant of intermittent network connectivity.
- Key Procedural History: The asserted patent, U.S. Patent No. 9,454,748, has a significant post-issuance history. It has survived two inter partes review (IPR) proceedings. In IPR2019-00610, the asserted Claim 7 was found patentable while several other claims were canceled. In IPR2018-00043, additional claims were canceled. The complaint also notes that in a prior case before the same judge ([Fall Line Patents, LLC](https://ai-lab.exparte.com/party/fall-line-patents-llc) v. Zoe's Kitchen, Inc.), the court denied a motion to dismiss and later granted Fall Line's motion for summary judgment on validity under 35 U.S.C. § 101, suggesting the patent's subject matter has previously overcome an eligibility challenge.
Case Timeline
| Date | Event |
|---|---|
| 2002-08-19 | '748 Patent Priority Date |
| 2016-09-27 | '748 Patent Issue Date |
| 2017-10-06 | IPR2018-00043 filed |
| 2019-01-22 | IPR2019-00610 filed |
| 2021-05-25 | Zoe's Kitchen motion to dismiss denied |
| 2022-12-19 | IPR Certificate issued confirming patentability of Claim 7 |
| 2023-06-29 | Zoe's Kitchen summary judgment of validity under § 101 granted |
| 2023-08-22 | IPR Certificate issued canceling claims 16-18 |
| 2024-07-11 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,454,748 - System and Method for Data Management
The Invention Explained
- Problem Addressed: In the early 2000s, developing software for data collection on handheld computers was challenging due to a fragmented market with diverse hardware, incompatible operating systems, and unreliable network connectivity (Compl. ¶23; ’748 Patent, col. 1:48-2:2). Creating separate, custom applications for each device type was inefficient and costly, and dealing with intermittent network access required specialized solutions (Compl. ¶23; ’748 Patent, col. 2:41-54, 3:20-24).
- The Patented Solution: The invention proposes a method where a central server is used to design a "questionnaire" which is then "tokenized" into a device-independent format (’748 Patent, col. 8:40-59). These tokens, representing questions and logic, can be sent to and executed by any remote device equipped with a compatible operating system layer, eliminating the need to recompile the entire application for each platform (’748 Patent, col. 5:15-32). The system is designed for "loosely networked" environments, storing data locally when a connection is unavailable and transmitting it when restored (’748 Patent, col. 5:3-12). The method also leverages an integrated GPS to automatically capture location information as part of the data collection process (’748 Patent, col. 5:45-49).
- Technical Importance: This approach aimed to provide a unified framework for developing and deploying mobile data collection applications across a heterogeneous device landscape, a significant hurdle at the time (Compl. ¶8).
Key Claims at a Glance
- The complaint asserts independent Claim 7 (’748 Patent, col. 15:7-16:2).
- The essential elements of Claim 7 are:
- A method for collecting survey data comprising:
- (a) designing a questionnaire with branching logic for a particular location on a first computer;
- (b) automatically transferring the questionnaire to a "loosely networked computer" with an integrated GPS;
- (c) executing the questionnaire on the remote computer when it is at the particular location to collect user responses;
- (d) while executing, using the GPS to automatically provide location information as a response;
- (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 prayer for relief seeks a judgment that "one or more claims" have been infringed, but the body of the complaint specifically identifies only Claim 7 (Compl. ¶12, 12a).
III. The Accused Instrumentality
Product Identification
The "Carl's Jr. mobile app" operating "in conjunction with Carl's Jr. servers" (Compl. ¶11).
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. ¶11). Functionally, the app is alleged to "direct customers to, and receive orders from customers for, one or more Carl's Jr. restaurants" (Compl. p. 3). The complaint does not provide specific technical details about the app's architecture or how it processes user interactions beyond these general statements.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint. The complaint's allegations are presented in a narrative format; their application to the elements of the asserted claim is summarized below.
'748 Patent 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 on a first computer platform... | The Carl's Jr. app and servers are alleged to "create... a location-specific questionnaire." | ¶11 | col. 8:40-50 |
| (b) automatically transferring said designed questionnaire to at least one loosely networked computer having a GPS integral thereto; | The app is made available for download by customers to their mobile devices, which have GPS capabilities. | ¶15 | col. 5:40-43 |
| (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 app is used by customers at or near Carl's Jr. locations to "receive orders," which constitutes executing the questionnaire and collecting user responses. | p. 3, ¶11 | col. 10:55-65 |
| (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 system is alleged to be "location-specific," which suggests the use of GPS to provide location data as part of the app's operation. | ¶11 | col. 10:55-65 |
| (e) automatically transferring via the loose network any responses so collected in real time to a central computer; and, | The system is alleged to "collect responses from users," which implies data transfer from the mobile app back to Carl's Jr. servers. | ¶11 | col. 6:1-6 |
| (f) making available via the Internet any responses transferred to said central computer in step (e). | This element is not explicitly alleged but is inherent in a client-server system where a corporate entity collects and uses data from a consumer-facing app. | ¶11 | col. 6:45-49 |
Identified Points of Contention
- Scope Questions: Does the process of placing a food order through the "Carl's Jr. Mobile App" meet the definition of a "questionnaire" as contemplated by the patent? The patent’s detailed example describes a formal "mystery shopper" survey, raising the question of whether a transactional mobile commerce application falls within the claim's scope (c.f. ’748 Patent, col. 10:37-11:27).
- Technical Questions: What evidence does the complaint provide that the accused app contains "branching logic" as required by claim 7(a)? Further, what is the technical basis for the allegation that the app uses GPS to provide location information as a "response to said executing questionnaire" (7(d)), as opposed to using location services for a distinct purpose such as identifying nearby restaurants? The complaint does not detail the app's specific functionality to a degree that answers these questions.
V. Key Claim Terms for Construction
The Term: "questionnaire"
Context and Importance: This term is foundational to the infringement analysis. The case may turn on whether a mobile ordering interface constitutes a "questionnaire." Practitioners may focus on this term because if it is construed narrowly to mean only a formal survey, the infringement case may be weakened.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the terms "program" and "form" are used interchangeably with "questionnaire," suggesting it could encompass any software designed to gather user input through a series of prompts (’748 Patent, col. 8:36-39).
- Evidence for a Narrower Interpretation: The patent’s most detailed embodiment describes a multi-step "mystery shopper" survey with explicit questions about service time, cleanliness, and employee friendliness, which could support a narrower construction limited to such survey-like instruments (’748 Patent, col. 10:37-11:27).
The Term: "response to said executing questionnaire"
Context and Importance: The construction of this term is critical for claim element 7(d), which requires that GPS data be provided as a "response." The dispute will likely center on whether the app's general use of location services meets this specific claim requirement.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes information being "collected automatically rather than entered manually, e.g., time and date, position information if the device includes a GPS receiver," which could suggest any automatically gathered data, including GPS location, qualifies as a response (’748 Patent, col. 5:45-49).
- Evidence for a Narrower Interpretation: The patent repeatedly frames responses as user inputs to specific questions or prompts (’748 Patent, col. 9:36-44). A party could argue that for GPS data to be a "response," it must be captured in direct reply to a specific query within the questionnaire's logic, not merely as background context for the application.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement based on Defendant allegedly directing and instructing customers to use the mobile app in an infringing manner through advertising and other promotions (Compl. ¶16). It alleges contributory infringement by asserting the app has special features designed for infringement with no substantial non-infringing uses (Compl. ¶17).
- Willful Infringement: Willfulness is alleged based on Defendant having knowledge of the ’748 Patent "at least as of the date when it was notified of the filing of this action" (Compl. ¶18). The complaint also pleads willful blindness, alleging on information and belief that Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "questionnaire," which in the patent is exemplified by a formal survey, be construed to cover the transactional user interface of the accused mobile ordering application?
- A second central question will be one of technical proof: can the Plaintiff provide sufficient evidence that the accused app’s functionality maps onto the specific method steps of Claim 7? In particular, does the app's use of location services constitute "using said GPS to automatically provide said location identifying information as a response to said executing questionnaire," or is there a functional distinction that avoids infringement of that element?
- Finally, a key legal issue will be the impact of the extensive post-issuance proceedings: how will the arguments made by the patentee to successfully defend Claim 7 during inter partes review be used by the parties and the court to construe the claim's scope and analyze both infringement and validity?