Fall Line Patents, LLC v. Jack in The Box Inc. 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: Jack in the Box Inc. and Different Rules, LLC (Delaware)
  • Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
• Case Identification: 5:24-cv-00093, E.D. Tex., 07/11/2024
• Venue Allegations: Venue is alleged based on Defendant transacting business in the district, committing acts of infringement in the district, and maintaining a regular and established place of business in the district via its restaurant locations.
• Core Dispute: Plaintiff alleges that Defendant’s mobile application and associated server infrastructure for customer ordering infringe a patent related to location-aware data collection on remote devices.
• Technical Context: The technology addresses methods for creating and deploying cross-platform, location-specific questionnaires on handheld computers, particularly in environments with intermittent network connectivity.
• Key Procedural History: The complaint notes that the asserted patent, U.S. Patent No. 9,454,748, was previously litigated in Fall Line Patents, LLC v. Zoe's Kitchen, Inc., where the court denied a motion to dismiss and later granted a summary judgment of validity under 35 U.S.C. § 101. Public records associated with the patent also show it has survived at least one inter partes review (IPR) proceeding (IPR2019-00610), in which the patentability of the asserted Claim 7 was confirmed, while other claims were cancelled.

Case Timeline

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

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

The Invention Explained

• Problem Addressed: The patent describes technical challenges prevalent in the early 2000s for data collection on handheld computers, such as software incompatibility across different hardware and operating systems, which required custom development and compilation for each device type (Compl. ¶23; ’748 Patent, col. 1:49-2:2). Further problems included the difficulty of updating applications, which often required a complete re-installation to implement even minor changes (Compl. ¶25; ’748 Patent, col. 3:7-10), and the unreliability of network connections for devices used in the field (Compl. ¶23; ’748 Patent, col. 3:64-4:1).
• The Patented Solution: The invention proposes a system using device-independent "tokens" to represent a questionnaire’s questions and logic, allowing a single designed questionnaire to be executed on various remote devices without needing to be recompiled for each one (Compl. ¶26; ’748 Patent, col. 5:21-32). To address network issues, the system employs a "loosely networked" approach, where data is stored locally on the device if a connection is unavailable and transmitted later when a connection is restored (Compl. ¶27; ’748 Patent, col. 5:7-12). The system also leverages an integrated GPS unit to automate the collection of location data and enable the execution of questionnaires customized for specific locations (Compl. ¶28; ’748 Patent, col. 10:55-65).
• Technical Importance: This approach aimed to unify a fragmented mobile computing landscape by enabling developers to create a single data-collection application that could be deployed and incrementally updated across a diverse ecosystem of devices with varying network capabilities (Compl. ¶8).

Key Claims at a Glance

• The complaint asserts independent Claim 7 of the ’748 Patent (Compl. ¶12). The prayer for relief requests judgment on "one or more claims" (Compl. p. 12, ¶a).
• The essential elements of independent Claim 7 are:
  • A method for collecting survey data comprising:
  • designing a questionnaire customized for a particular location, which includes branching logic and at least one question requesting location identifying information;
  • automatically transferring the questionnaire to a "loosely networked computer" that has an "integral" 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 to a central computer via the "loose network"; and
  • making the transferred responses available via the Internet.

III. The Accused Instrumentality

Product Identification

The "Jack in the Box Mobile App" operating in conjunction with "Jack in the Box servers" (Compl. ¶11).

Functionality and Market Context

The complaint alleges that the accused instrumentality comprises a system to "create and execute a location-specific questionnaire to collect responses from users" (Compl. ¶11). According to the complaint, Jack in the Box uses the mobile app to direct customers to its restaurants and to receive orders from those customers (Compl. ¶6). The system is alleged to operate by customers downloading and using the mobile app, which then interacts with Defendant's servers (Compl. ¶15). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’9,454,748 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the "Jack in the Box Mobile App," an interface for commercial transactions (ordering food), can be properly characterized as a "questionnaire" for "collecting survey data" as those terms are used in the patent. The defense may argue that the patent's context of mystery shopping and field data collection is distinct from the app's function.
  • Technical Questions: The infringement analysis may focus on whether the accused app is "customized for a particular location" beyond simply identifying nearby stores, and whether it contains the "branching logic" required by Claim 7(a). Further, the meaning of "real time" transfer in element 7(e) and whether the accused system meets this limitation could become a point of dispute.

V. Key Claim Terms for Construction

• The Term: "questionnaire"

  • Context and Importance: This term is foundational to the infringement claim. The case may turn on whether a food-ordering interface falls within the scope of "questionnaire." Practitioners may focus on this term because its construction could be dispositive.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent specification states that a questionnaire is a "series of questions or statements, each of which calls for a response" and uses the term interchangeably with "program" and "form" (’748 Patent, col. 8:26-39), a definition that could arguably encompass a food ordering workflow.
    • Evidence for a Narrower Interpretation: The detailed embodiments described in the patent focus on applications like "mystery shoppers" reporting on restaurant experiences and medical providers collecting patient data, suggesting a primary context of formal information gathering rather than commercial transactions (’748 Patent, col. 10:40-42; col. 11:43-47).

• The Term: "customized for a particular location"

  • Context and Importance: This limitation in Claim 7(a) requires a specific link between the questionnaire's design and a location. Infringement depends on how deeply the accused app's content is tied to a user's location.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: This could be interpreted to mean the questionnaire is simply designed to be triggered or used at a specific location, which aligns with the complaint's allegation of a "location-specific questionnaire" (Compl. ¶11).
    • Evidence for a Narrower Interpretation: The specification's example of a mystery shopper implies that the questions themselves are tailored to a specific establishment being evaluated (’748 Patent, col. 10:40-55). This could support a construction requiring the content of the questionnaire to change based on the location, not just its availability.

• The Term: "loosely networked"

  • Context and Importance: This term appears in claim elements (b) and (e) and is explicitly defined in the patent, making its application a factual question about the accused system's behavior.
  • Intrinsic Evidence for Interpretation: The specification defines "loosely networked" as a system that is "tolerant of intermittent network connections" and, when a connection is unavailable, "the information is temporarily stored in the device and later transmitted when the connection is restored" (’748 Patent, col. 5:4-12). This definition will likely control the term's meaning, shifting the dispute to whether the Jack in the Box app exhibits this store-and-forward capability.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement theory is based on Defendant providing the mobile app to its customers and directing them on its use (Compl. ¶16). The contributory infringement theory alleges the app has special features for infringing use that lack substantial non-infringing uses (Compl. ¶17).
• Willful Infringement: Willfulness is alleged based on post-suit knowledge of the patent from the filing of the action (Compl. ¶18). The complaint also alleges pre-suit willful blindness, asserting that Defendant maintains a "policy or practice of not reviewing the patents of others" and acted with objective recklessness (Compl. ¶19, ¶20).

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

• A core issue will be one of definitional scope: can the term "questionnaire", as defined and exemplified in the patent in the context of surveys and field data collection, be construed to cover a mobile application whose primary purpose is to facilitate a commercial food order?
• A key evidentiary question will be one of technical implementation: what evidence will be presented to show that the accused mobile app incorporates the specific "branching logic" and is "customized for a particular location" in a manner that goes beyond simply identifying the nearest store, as required by Claim 7?
• A central strategic question will concern patent resilience: how will the patent's history—specifically, the survival of the asserted Claim 7 through an inter partes review and a prior judicial finding of validity in separate litigation—impact the Defendant's ability to mount an invalidity defense and influence the overall trajectory of the case?