DCT
5:24-cv-00094
Fall Line Patents LLC v. Jersey Mikes Franchise Systems
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fall Line Patents, LLC (Oklahoma)
- Defendant: Jersey Mike's Franchise Systems, Inc. (New Jersey) and A Sub Above, LLC (Delaware)
- Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
- Case Identification: 5:24-cv-00094, E.D. Tex., 07/11/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business in the district, makes the accused mobile application available for sale and use in the district, and maintains a regular and established place of business in the district, citing a specific restaurant location in Plano, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s mobile application and associated server infrastructure for online ordering infringe a patent related to methods for managing and collecting location-specific data from remote computing devices.
- Technical Context: The technology at issue concerns systems for creating and deploying data-collection applications, such as surveys or forms, that can operate across various mobile devices and handle intermittent network connectivity.
- Key Procedural History: The asserted patent has a significant history. Inter Partes Review (IPR) proceedings resulted in the cancellation of numerous claims, but the sole asserted claim in this case, Claim 7, was found patentable. The complaint also cites a prior case involving the same patent ([Fall Line Patents, LLC](https://ai-lab.exparte.com/party/fall-line-patents-llc) v. Zoe's Kitchen, Inc., E.D. Tex.), noting that the court denied a motion to dismiss on Section 101 grounds and later granted Fall Line's motion for summary judgment of validity under Section 101, suggesting the patent's subject matter eligibility has previously been affirmed in this district.
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 | Order Denying Motion to Dismiss in Zoe's Kitchen case |
| 2022-12-19 | IPR2019-00610 Certificate Issued (Claim 7 patentable) |
| 2023-06-29 | Order Granting Summary Judgment of Validity in Zoe's Kitchen case |
| 2023-08-22 | IPR2018-00043 Certificate Issued (Claims 16-18 cancelled) |
| 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: The patent addresses technical challenges prevalent in the early 2000s related to developing applications for remote handheld computers (’748 Patent, col. 1:19-24). These challenges included software incompatibility across different device types, requiring separate custom programs for each platform, and the unreliability of network connections for devices used in the field, which complicated real-time data collection (’748 Patent, col. 1:49-2:7; 3:64-4:2).
- The Patented Solution: The invention proposes a system using device-independent "tokens" to create a "questionnaire" or form (’748 Patent, col. 5:21-26). This tokenized questionnaire can be executed on any remote device equipped with a compatible operating environment, eliminating the need to recompile and reinstall an entire application to make changes (’748 Patent, col. 5:26-32). The system is also designed for "loosely networked" environments, where it stores data locally if a network is unavailable and transmits it once a connection is restored (’748 Patent, col. 5:7-12). A key feature is the use of an integrated GPS unit to automatically collect location data, enabling the creation and execution of questionnaires customized for specific locations (’748 Patent, col. 10:55-65).
- Technical Importance: This approach sought to streamline the development of cross-platform mobile applications and enable more efficient and flexible data collection from remote field locations by abstracting away hardware and network differences. (Compl. ¶¶ 26-27).
Key Claims at a Glance
- The complaint asserts independent Claim 7. (Compl. ¶12).
- The essential elements of Claim 7 are:
- A method for collecting survey data and making responses available online.
- Designing a "questionnaire" with "branching logic" on a first computer, where the questionnaire is "customized for a particular location" and requests location information.
- Automatically transferring the questionnaire to a "loosely networked computer" that has an integrated GPS.
- Executing the questionnaire on the remote computer when it is at the "particular location" to collect user responses.
- While executing, using the GPS to "automatically provide" location information "as a response" to the questionnaire.
- 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 reserve the right to assert other claims.
III. The Accused Instrumentality
Product Identification
The "Jersey Mike's Mobile App" used in conjunction with "Jersey Mike's servers" (Compl. ¶11).
Functionality and Market Context
The complaint alleges the accused system allows Defendant to "create and execute a location-specific questionnaire to collect responses from users" (Compl. ¶11). It further states the mobile app is used to "direct customers to, and receive orders from customers for, one or more Jersey Mike's restaurants" (Compl. ¶6). The complaint does not provide specific technical details about the app's operation, such as how it uses location data or implements its user interface. The primary function described is facilitating mobile food orders for Defendant's restaurant franchises (Compl. ¶¶ 5-6). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’974,748 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| designing a questionnaire including at least one question said questionnaire customized for a particular location having branching logic on a first computer platform... | Defendant creates a "location-specific questionnaire" through its mobile app and servers. | ¶11 | col. 15:8-13 |
| automatically transferring said designed questionnaire to at least one loosely networked computer having a GPS integral thereto; | The Jersey Mike's Mobile App is downloaded by customers onto their smartphones, which are loosely networked computers with GPS. | ¶15 | col. 15:14-16 |
| 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; | Customers use the mobile app to place orders, which constitutes executing the questionnaire and collecting responses. | ¶6, ¶11 | col. 15:17-20 |
| while said transferred questionnaire is executing, using said GPS to automatically provide said location identifying information as a response to said executing questionnaire; | The complaint does not provide specific factual allegations detailing how the accused app uses GPS to automatically provide location information as a response during execution. It alleges the system is "location-specific." | ¶11 | col. 15:21-24 |
| automatically transferring via the loose network any responses so collected in real time to a central computer; and, | The mobile app transmits customer orders from the user's phone to Jersey Mike's servers. | ¶6 | col. 15:25-28 |
| making available via the Internet any responses transferred to said central computer in step (e). | The complaint does not contain specific allegations on how the collected responses are made available via the Internet. | col. 15:29-31 |
Identified Points of Contention
- Scope Questions: A primary issue may be whether a mobile food ordering interface constitutes a "questionnaire" with "branching logic" as contemplated by the patent. The defense may argue that the patent's context (e.g., mystery shoppers, data entry forms) requires a more formal survey-like structure than a typical e-commerce transaction.
- Technical Questions: The infringement theory may depend heavily on how the accused app uses location data. A key question is whether the app "us[es] said GPS to automatically provide said location identifying information as a response to said executing questionnaire," as required by element 7(d). The complaint does not provide specific facts to support this element, raising the question of whether location is used merely to identify nearby stores before the ordering process begins, or if it is actively and automatically supplied as a data input during the order itself.
V. Key Claim Terms for Construction
The Term: "questionnaire"
- Context and Importance: The viability of the infringement claim depends on this term being construed broadly enough to read on a mobile application's ordering interface. Practitioners may focus on this term because Defendant will likely argue that its ordering app is not a "questionnaire," which implies a survey or formal data collection instrument.
- Intrinsic Evidence for a Broader Interpretation: The patent specification uses the terms "questionnaire" and "form" interchangeably and describes its purpose as prompting a user "with a series of questions or statements, each of which calls for a response," a description that could plausibly cover an ordering workflow (’748 Patent, col. 8:26-28, 8:36-38).
- Intrinsic Evidence for a Narrower Interpretation: The detailed examples in the specification focus on structured data-gathering tasks like a mystery shopper's report or medical data entry, which could support an argument that the term is limited to a survey or inspection context, not a commercial transaction (’748 Patent, col. 10:37-11:47).
The Term: "customized for a particular location"
- Context and Importance: The definition will determine what level of location-based adaptation is required for infringement. The dispute may turn on whether simply presenting a menu for a user-selected store satisfies this limitation, or if it requires more dynamic customization based on real-time GPS data.
- Intrinsic Evidence for a Broader Interpretation: The claim language is general, and one could argue that any questionnaire whose content (e.g., available items, pricing) is specific to a chosen location is "customized."
- Intrinsic Evidence for a Narrower Interpretation: The patent repeatedly ties the customization to GPS coordinates, stating the system creates "questions customized for a location" and can "automatically enter[] the GPS coordinates into said questionnaire" (’748 Patent, col. 13:49-50, 13:60-62). This could suggest the customization itself must be a direct function of the GPS data.
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement, stating that Defendant encourages and instructs its customers to use the mobile app in an infringing manner through advertising and distribution (Compl. ¶16). It also alleges contributory infringement, claiming the accused products contain "special features" that are not "staple articles of commerce suitable for substantial non-infringing use" (Compl. ¶17).
Willful Infringement
Willfulness is alleged 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). 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
Given that the patent's validity has been tested in prior proceedings, the case will likely focus intensely on infringement.
- A core issue will be one of definitional scope: Can the term "questionnaire", as described in a patent focused on structured data collection, be construed to encompass the transactional user interface of a modern mobile ordering application?
- A key evidentiary question will be one of functional operation: Does the Jersey Mike's app actually perform the specific function of using GPS to "automatically provide said location identifying information as a response" to the ordering process, as required by Claim 7, or is there a fundamental mismatch in its technical implementation of location services? The complaint's lack of specific factual allegations on this point suggests this will be a central area of discovery and dispute.