Fall Line Patents LLC v. Zoe's Kitchen Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Fall Line Patents, LLC (Oklahoma)
  • Defendant: Zoe's Kitchen, Inc. and Zoe's Kitchen USA, LLC (Delaware)
  • Plaintiff’s Counsel: Antonelli, Harrington & Thompson LLP
• Case Identification: 6:18-cv-00407, E.D. Tex., 08/15/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant transacts business in the district, has committed alleged acts of infringement there, and maintains a "regular and established place of business," including its principal executive offices and multiple restaurant locations.
• Core Dispute: Plaintiff alleges that Defendant’s Zoe's Kitchen Mobile App infringes a patent related to methods for managing and collecting data from remote computing devices.
• Technical Context: The technology addresses challenges in early mobile computing, specifically creating software that can run on diverse hardware platforms and operate reliably over intermittent network connections.
• Key Procedural History: The complaint was filed in August 2018. Subsequent to the filing, the asserted patent was the subject of at least two inter partes review (IPR) proceedings. IPR2019-00610 resulted in the cancellation of claims 1, 2, 5, and 19-22. IPR2018-00043 resulted in the cancellation of claims 16-18. The complaint’s primary infringement count is based on claim 1, which has since been 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 a time (c. 2002) when software applications for handheld computers suffered from significant compatibility issues, preventing an application written for one device from running on another from a different manufacturer Compl. ¶33 ’748 Patent, col. 1:49-2:2 Furthermore, these devices often had limited and unreliable network connectivity, making real-time data transmission difficult Compl. ¶33 ’748 Patent, col. 4:3-17
  • The Patented Solution: The invention proposes a method to overcome these problems by creating "device-indifferent tokens" that represent a "questionnaire" ('748 Patent, col. 5:21-26). These tokens can be executed by a common runtime package on various devices, eliminating the need to write separate native software for each one Compl. ¶36 ’748 Patent, col. 4:66-5:2 The system is also "loosely networked," meaning it attempts to transmit data in real-time but, if a network connection is unavailable, it stores the data locally and transmits it later when the connection is restored Compl. ¶37 ’748 Patent, col. 5:7-12
  • Technical Importance: The described technology aimed to enable the development of a single data-collection application that could be deployed across a fragmented landscape of handheld devices operating in the field Compl. ¶8
• Key Claims at a Glance:
  • The complaint asserts direct infringement of at least Claim 1 of the ’748 Patent Compl. ¶12
  • The essential elements of independent claim 1 are:
    • creating a questionnaire comprising a series of questions customized for a location;
    • said questionnaire including at least one question requesting GPS coordinates;
    • tokenizing said questionnaire, thereby producing a plurality of device indifferent tokens representing said questionnaire;
    • transmitting said plurality of tokens to a remote computing device;
    • executing at least a portion of said tokens on the remote device when it is at said location to collect a user response;
    • automatically entering the GPS coordinates into said questionnaire;
    • transmitting at least a portion of the user response to a server in real time via a network; and
    • storing said response at the server.
  • The complaint states that Defendant’s actions infringe "one or more claims of the patents-in-suit, including, for example, Claim 1" Compl. ¶25

III. The Accused Instrumentality

• Product Identification: The "Zoe's Kitchen Mobile App" ("accused products") Compl. ¶11
• Functionality and Market Context: The complaint describes the accused product as an application for remote computing devices that gathers and transmits location-specific information Compl. ¶11 A composite image displays multiple screens from the accused app, including the main menu, an order screen, and a list of restaurant locations Compl. p. 5 The app allows customers to browse menus, find restaurant locations, and place orders for food Compl. p. 5 The complaint alleges that the app's functionality for finding locations and placing orders constitutes the infringing method Compl. ¶¶13-21

IV. Analysis of Infringement Allegations

’748 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over whether the user interface and workflow of a standard restaurant ordering application constitutes a "questionnaire" within the meaning of the patent. The complaint's visual evidence shows a user selecting a specific restaurant location Compl. p. 3, which may support the "customized for a location" element. However, whether an ordering process is equivalent to the patent's described data-collection "questionnaire" raises a question for the court.
  • Technical Questions: The complaint's allegation of "tokenizing" is conclusory Compl. ¶16 A key technical question will be what evidence, if any, demonstrates that the Zoe's Kitchen Mobile App uses a system of "device indifferent tokens" as described in the patent, rather than using standard software development kits (SDKs) and compiled code for the iOS and Android operating systems, which the patent’s background section appears to distinguish its invention from ('748 Patent, col. 2:13-31).

V. Key Claim Terms for Construction

• The Term: "questionnaire"

  • Context and Importance: The infringement theory rests on the characterization of the accused app's ordering process as a "questionnaire." The definition of this term is therefore critical. Practitioners may focus on this term because its scope will determine whether the patent can read on a modern e-commerce application, or if it is limited to the survey-style data collection forms emphasized in the patent's examples.
  • Evidence for a Broader Interpretation: The patent states that the terms "program" and "form" are used interchangeably with "questionnaire" ('748 Patent, col. 8:39-41), and defines it broadly as a "series of questions or statements, each of which calls for a response" ('748 Patent, col. 8:27-30), which could arguably encompass an interactive food ordering menu.
  • Evidence for a Narrower Interpretation: The specification’s detailed embodiments focus on structured data-gathering tasks, such as a "mystery shopper" survey or medical data entry ('748 Patent, col. 10:40-11:21; ’748 Patent, col. 11:42-49). This context may support an interpretation that limits "questionnaire" to survey-like instruments rather than transactional interfaces.

• The Term: "tokenizing" / "device indifferent tokens"

  • Context and Importance: This term describes the core technical mechanism alleged to achieve cross-platform functionality. Infringement depends on whether the accused app actually performs this specific technical step.
  • Evidence for a Broader Interpretation: The patent describes tokens as representing instructions for logical or branching operations, which could be argued to describe any form of executable code at a high level ('748 Patent, col. 8:57-59).
  • Evidence for a Narrower Interpretation: The patent presents its token-based system as a specific solution to overcome the need for compiling applications for different target devices, requiring a specific "run-time package" to execute the tokens ('748 Patent, col. 2:18-26). This may support a narrower construction that distinguishes the claimed method from modern, standard app development practices where the operating system itself provides cross-platform abstraction layers.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement based on Defendant advising and directing its customers to download and use the accused app in its intended, allegedly infringing manner Compl. ¶25 It also alleges contributory infringement, asserting the app has special features not suitable for substantial non-infringing use Compl. ¶26
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the ’748 Patent as of the filing of the complaint Compl. ¶27 The complaint also alleges willful blindness, claiming on "information and belief" that Defendant has a policy of not reviewing the patents of others Compl. ¶28

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

• A core issue will be one of definitional scope: can the term "questionnaire", which is described in the patent in the context of structured data-collection surveys, be construed broadly enough to cover the transactional user interface of a modern restaurant-ordering mobile application?
• A key evidentiary question will be one of technical implementation: what evidence will be presented to show that the accused app utilizes a "tokenizing" process to create "device indifferent tokens," as claimed in the patent, as opposed to relying on standard, modern mobile software development frameworks that the patent was arguably designed to improve upon?
• A dispositive procedural question will be the impact of claim cancellation: given that the primary asserted claim (Claim 1) and several other claims were cancelled in inter partes review proceedings subsequent to the filing of the complaint, the viability of the case as pleaded is a central issue for the court to address.