On August 15, 2018, Fall Line Patents, LLC asserted U.S. Patent No. 9,454,748 against a number of companies. Specifically, Fall Line alleged in nine separate lawsuits that the mobile applications provided by AMC Entertainment, McDonald’s, Boston Market, Panda Express, Papa John’s, Pizza Hut, Regal Cinemas, Starbucks, and Zoe’s Kitchen directly infringe at least Claim 1 of the ‘748 patent. All of the lawsuits were filed in the Eastern District of Texas and request permanent injunctions as well as damages.
The ‘748 patent itself is titled “System and Method for Data Management” and, according to the complaints, it “addresses the need to collect location-specific information on a variety of hardware and software platforms without the need to create separate and individualized software for each of the numerous manufacturers of remote computing devices.” Asserted Claim 1 recites the following:
1. A method for managing data including the steps of:
(a) creating a questionnaire comprising a series of questions customized for a location;
(b) said questionnaire including at least one question requesting GPS coordinates;
(c) tokenizing said questionnaire, thereby producing a plurality of device indifferent tokens representing said questionnaire;
(d) transmitting said plurality of tokens to a remote computing device;
(e) when said remote computing device is at said location, executing at least a portion of said plurality of tokens representing said questionnaire at within said remote computing device to collect a response from a user;
(f) automatically entering the GPS coordinates into said questionnaire;
(g) transmitting at least a portion of said response from the user to a server in real time via a network; and
(h) storing said response at said server.
In addition to allegations of direct infringement of Claim 1, the complaints also make certain allegations regarding indirect infringement based on customer use of the accused mobile applications.
Additionally, the complaints preemptively make certain allegations regarding the patentability of the ‘748 patent, apparently assuming a validity challenge in this wonderful world of Alice in which we are all forced to live. The patentability allegations list technical problems ostensibly addressed by the ‘748 patent, possibly to frame the ‘748 patent as an improvement to computer functionality for future reliance on the Federal Circuit’s guidance in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) that such improvements may be found non-abstract at step one of the U.S. Supreme Court’s two-step Alice framework for determining patent eligibility. The allegations regarding patentability found in Fall Line’s complaints also include statements that certain claim elements are not well-understood, routine, or conventional, apparently in case the ‘748 patent is held to be abstract and thus necessitating reliance on step two of the two-step Alice framework.
But patent eligibility may not even be Fall Line’s biggest problem. The ‘748 patent is a continuation of another patent, U.S. Patent No. 7,822,816. Not only did that patent have all its claims canceled in an ex parte reexam, but the original assignee of the ‘748 patent had to file a terminal disclaimer to overcome the ‘816 patent for the ‘748 patent to issue in the first place.
As you might be aware, when a terminal disclaimer is filed, the patent applicant agrees not only to a shortened patent term but also that the later-filed patent will only be enforceable so long as both patents are commonly owned. But according to the USPTO’s assignment database, Fall Line only owns the ‘748 patent while the ‘816 patent is still owned by the original assignee, Macrosolve. What’s more, the ‘748 patent even had an intervening assignment from Macrosolve to another company before that company ultimately assigned the ‘748 patent to Fall Line.
So it looks like the ‘748 patent might be unenforceable. Despite this, Fall Line has sued not only the nine companies listed above but also a number of other companies earlier this year for infringement of the same patent. Those companies include American Airlines, Uber, and GrubHub. Perhaps Fall Line has a reason it believes the ‘748 patent is still enforceable, but at first glance it looks like they have filed a bunch of nuisance lawsuits meant to coerce settlements out of the defendants.
It’s also worth noting that even though the terminal disclaimer issue might be a fatal blow to Fall Line’s ability to enforce the ‘748 patent, Fall Line’s problems do not end there. The ‘748 patent has also had an inter partes review (IPR) instituted against it as of April 5, 2018, though the IPR was not instituted against Claim 1. Furthermore, petitioner Unified Patents did not challenge the validity of Claim 1 and so even after the U.S. Supreme Court’s decision in SAS Institute v. Iancu back in April that the Patent Trial and Appeal Board does not have the authority to partially institute a petition for IPR against some but not all requested claims, Claim 1 looks like it will survive. But that’s not to say any of the defendants accused of infringement by Fall Line will refrain from filing their own IPRs to challenge Claim 1.