Starbucks Corp v. Fall Line Patents LLC

1. Case Identification

• Case #: IPR2019-00610
• Patent #: 9,454,748
• Filed: January 22, 2019
• Petitioner(s): Starbucks Corporation; American Multi-Cinema, Inc. and AMC Entertainment Holdings, Inc.; Boston Market Corporation; Mobo Systems, Inc.; McDonald’s Corporation and McDonald’s USA; Panda Restaurant Group, Inc. and Panda Express Inc.; Papa John’s International, Inc., Star Papa LP, and Papa John’s USA, Inc.
• Patent Owner(s): Fall Line Patents, LLC
• Challenged Claims: 1, 2, 5, 7, 19-22

2. Patent Overview

• Title: System and Method for Data Management
• Brief Description: The ’748 patent discloses a system for distributing electronic questionnaires to mobile devices. The system allows a client to design a questionnaire with corresponding "tokens," transmit it to a handheld device for a user to complete, and then transmit the user's responses back to a server for storage and analysis, even over intermittent network connections.

3. Grounds for Unpatentability

Ground 1: Obviousness over Barbosa - Claims 1 and 19-22 are obvious over Barbosa.

• Prior Art Relied Upon: Barbosa (Patent 6,961,586).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Barbosa discloses all limitations of the challenged claims. Barbosa teaches a method for conducting field assessments using handheld devices that download "templates" or "programs" (a questionnaire) from a server. The handheld device is equipped with a GPS receiver ("GPS integral thereto") to obtain location data. Petitioner contended that Barbosa's downloaded programs, written in an object-oriented language like Java, represent a "tokenized questionnaire" comprising "device independent tokens" because Java is an architecturally neutral language that runs on any machine with a Java Virtual Machine (JVM). After downloading the program and ending communication, the user executes it on the device to collect responses, which are stored locally before being transmitted back to a server for analysis and reporting.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference in view of the knowledge of a person of ordinary skill in the art (POSITA). The motivation was inherent in Barbosa's disclosure, which aimed to provide a comprehensive system for remote data collection.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as Barbosa described a complete, functional system for remote data collection using the claimed techniques.

Ground 2: Obviousness over Hancock - Claims 1, 2, 5, and 19-22 are obvious over Hancock.

• Prior Art Relied Upon: Hancock (Patent 6,202,023).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Hancock, which discloses a method for providing services over a computer network, teaches the claimed invention. Hancock describes a portable computing device with an embedded GPS receiver that connects to a server to download an application (the "Go2 Application"). Petitioner argued this application functions as a "tokenized questionnaire" by prompting the user for location, category, and other preferences. Once downloaded, the application is executed locally to create a data packet of user responses, which is stored on the device. The device then re-establishes communication to transmit the data packet to the server, which returns a URL with relevant results, forming a visually perceptible report. For the "device independent tokens" limitation, Petitioner argued that while Hancock is silent on the programming language, it would have been an obvious design choice for a POSITA to use Java to ensure the application could run on various devices, thus rendering the tokens device-independent.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. The motivation was to implement the described location-based service application in a way that was compatible with a wide range of mobile devices, a common goal at the time.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success in implementing Hancock's system using a well-known, platform-independent language like Java to achieve the desired device compatibility.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claims 1 and 19-22 are obvious over Barbosa in view of Bandera (Patent 6,332,127) to explicitly teach the use of Java for device-independent code. Petitioner also challenged claim 7 as obvious over Barbosa in view of Falls (Patent 5,991,771) to provide explicit teachings on managing intermittent connections in a "loosely networked" system. Similar combinations based on Hancock (Hancock in view of Bandera and Hancock in view of Falls) were also presented.

4. Key Claim Construction Positions

• "GPS integral thereto": Petitioner proposed this term means a "GPS receiver integral thereto." A POSITA would not understand the entire Global Positioning System (satellites, etc.) to be integral to a handheld device, but rather the receiver component.
• "token": Petitioner argued the term should be construed as "a distinguishable unit of a program, such as an index, an instruction, or a command that can represent something else such as a question, answer, or operation." This construction was previously adopted by the Board in an IPR for the parent ’816 patent.
• "loosely networked": Citing the specification, Petitioner proposed this term means "tolerant of intermittent network connections and tolerant of the type of network connection available." This allows information to be stored locally when a connection is unavailable and transmitted when it is restored.

5. Arguments Regarding Discretionary Denial

• Petitioner argued the Board should not exercise its discretion to deny institution. This petition was distinguished from a prior terminated IPR (the "Uber IPR") because it was filed by different petitioners, challenged different claims (notably independent claim 7), and the prior petitioners settled before an institution decision. It was also distinguished from another pending IPR (the "Unified IPR") because it challenged different claims and relied on entirely different prior art with no overlap. Petitioner asserted it did not use the prior petitions as a "roadmap" and that the primary references relied upon (Barbosa and Hancock) were never substantively considered during the patent's original prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 5, 7, and 19-22 of the ’748 patent as unpatentable under 35 U.S.C. §103.