5:24-cv-00170
Fall Line Patents LLC v. Advance Auto Parts
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fall Line Patents, LLC (Oklahoma)
- Defendant: Advance Auto Parts, Inc. (Delaware) and Advance Stores Company, Inc. (Virginia)
- Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
- Case Identification: 5:24-cv-00170, E.D. Tex., 11/25/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant transacts business, has committed alleged acts of infringement, and maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Advance Auto Parts mobile app and associated server infrastructure infringe a patent related to systems for managing and collecting data, including location data, from remote computing devices.
- Technical Context: The technology addresses challenges in cross-platform software compatibility and data collection for early-2000s handheld devices, particularly in environments with intermittent or low-bandwidth network connectivity.
- Key Procedural History: The complaint notes that the patent-in-suit, U.S. Patent No. 9,454,748, was previously subject to litigation where a court denied a motion to dismiss on patent eligibility grounds and later granted a motion for summary judgment of validity under 35 U.S.C. § 101. The patent has also survived 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 Claim 7, the sole claim asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2002-08-19 | '748 Patent Priority Date |
| 2016-09-27 | '748 Patent Issue Date |
| 2022-12-19 | '748 Patent Inter Partes Review Certificate (K1) Issued |
| 2023-08-22 | '748 Patent Inter Partes Review Certificate (K2) Issued |
| 2024-11-25 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
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 technical landscape (circa 2002) where data collection on remote handheld computers was plagued by inefficiencies (’748 Patent, col. 1:25-33). Key problems included software incompatibility across different device models, requiring custom-coded programs for each (’748 Patent, col. 1:50-2:2); the need to recompile and reinstall an entire application to make a single change (’748 Patent, col. 3:7-10); and the unreliability of then-existing methods for handling intermittent network connections, such as store-and-forward transmissions (’748 Patent, col. 4:3-17).
- The Patented Solution: The invention proposes a system using device-independent "tokens" to create a universal "questionnaire" that can be executed on any remote computer equipped with a compatible run-time package, regardless of its native operating system (’748 Patent, col. 2:13-26). This tokenization allows for incremental program updates and reduces bandwidth needs (’748 Patent, col. 5:26-32; col. 4:36-39). The system is designed to be "loosely networked," meaning it functions with intermittent connectivity by storing data locally when a network is unavailable and transmitting it automatically when the connection is restored (’748 Patent, col. 5:7-12).
- Technical Importance: The complaint asserts this approach was an advance over prior art because it enabled the creation of a single, dynamic application that could function across heterogeneous devices and networks without constant, costly recompilation (Compl. ¶¶25-26).
Key Claims at a Glance
- The complaint asserts independent Claim 7.
- The essential elements of Claim 7 are:
- Designing a "questionnaire" customized for a "particular location" that has "branching logic" and requests "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 information "as a response" to the questionnaire.
- Automatically transferring collected responses in "real time" to a central computer via the "loose network."
- 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 accused instrumentality is the "Advance Auto Parts mobile app" operating in conjunction with "Advance Auto servers" (Compl. ¶11).
Functionality and Market Context
The complaint alleges that the accused system is used to "create and execute a location-specific questionnaire to collect responses from users" (Compl. ¶11). The complaint does not provide further specific technical details on the operation of the app's features or its architecture. No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement of Claim 7 but does not contain a detailed claim chart. The following table synthesizes the infringement theory based on the complaint's general allegations.
'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 wherein at least one of said at least one questions requests location identifying information | Defendant's system creates a location-specific mobile application, which functions as a questionnaire, on its servers. | ¶11 | col. 15:45-51 |
| (b) automatically transferring said designed questionnaire to at least one loosely networked computer having a GPS integral thereto | The mobile application is downloaded and installed on users' mobile devices, which are loosely networked computers with integral GPS capabilities. | ¶11, ¶15 | col. 15:52-54 |
| (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 mobile app is used by customers at various locations to interact with Defendant's services and provide responses. | ¶11, ¶12 | col. 15:55-59 |
| (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 mobile app uses the device's GPS to provide location information as part of its functionality. | ¶11 | col. 15:60-63 |
| (e) automatically transferring via the loose network any responses so collected in real time to a central computer | The mobile app transmits user responses and collected data to Defendant's servers. | ¶11 | col. 16:1-4 |
| (f) making available via the Internet any responses transferred to said central computer in step (e) | Defendant uses the collected data on its servers, which are connected to the Internet. | ¶11 | col. 16:5-7 |
Identified Points of Contention
- Scope Questions: A central question may be whether a modern retail mobile application, with features like a store locator, constitutes a "questionnaire" with "branching logic" as contemplated by the patent. Further, it raises the question of whether using a device's location to filter search results is equivalent to being "customized for a particular location" in the manner described in the patent's specification (e.g., a "mystery shopper" survey for a specific restaurant) (’748 Patent, col. 10:37-54).
- Technical Questions: The complaint does not specify how the accused app's use of GPS data meets the claim limitation of "automatically provid[ing] said location identifying information as a response to said executing questionnaire." A key factual dispute may be whether the GPS data is used as an input for a function (like a search) or is collected and structured as a distinct "response" within the application's logic. Similarly, the complaint does not provide evidence that the accused app functions as a "loosely networked" system in the specific manner required by the patent (i.e., storing data locally during network outages and transmitting automatically upon reconnection).
V. Key Claim Terms for Construction
The Term: "questionnaire"
Context and Importance: The term's scope is fundamental to the infringement analysis. The patent describes questionnaires in the context of structured data collection forms, such as those used for field surveys or by "mystery shoppers" (’748 Patent, col. 10:37-54). Practitioners may focus on this term because its construction will determine whether a broader set of user interactions within a modern mobile app can be considered a "questionnaire."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states that a questionnaire is a "series of questions or statements" designed to "elicit such information from the shopper/user," which could be argued to encompass a sequence of prompts in a mobile app interface (’748 Patent, col. 8:26-29; col. 10:50-51).
- Evidence for a Narrower Interpretation: The specification repeatedly uses the term in the context of replacing paper forms for structured data entry tasks like "manufacturing inventory, quality inspections, delivery systems" (’748 Patent, col. 2:45-47). The detailed examples focus on explicit, question-and-answer survey formats, suggesting a more limited scope than general app interactions.
The Term: "loosely networked"
Context and Importance: This term is explicitly defined and is critical for distinguishing the invention from systems requiring a constant connection. Infringement will depend on whether the accused app exhibits the specific store-and-forward behavior described.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide evidence on this point, but a party could argue that any modern app's ability to cache some data for offline use meets the general concept.
- Evidence for a Narrower Interpretation: The patent provides a precise definition: "if any communication connection is available... network transmissions occur normally, in real time. 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. 5:7-12). This sets a specific functional requirement that the accused system must perform.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement by claiming Defendant advises and directs customers to use the app in an infringing manner through advertising, promotion, and instructions (Compl. ¶16). It alleges contributory infringement by asserting the accused app has "special features" designed for infringement 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 alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others" (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
Given that the asserted claim has survived post-grant validity challenges, the case may turn less on patentability and more on the factual details of infringement. The central questions for the court appear to be:
A core issue will be one of definitional scope: can the term "questionnaire", rooted in the patent’s context of structured data-entry forms for early 2000s handhelds, be construed to read on the user interface and functionality of a modern retail mobile application?
A key evidentiary question will be one of functional operation: what evidence will demonstrate that the accused app performs the specific technical steps of Claim 7, particularly the automatic provision of GPS data as a response and the "loosely networked" capability of storing and later transmitting data when a network connection is lost and restored?
The final determination may hinge on mapping technology across eras: does the accused mobile app, despite its modern design, fundamentally operate according to the specific, sequential method of data collection and transmission protected by the patent, or is there a technical and operational mismatch between the claimed invention and the accused system?