Nearby Systems LLC v. Deli Management

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Deli Management, Inc. d/b/a Jason's Deli (Texas)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:22-cv-00219, E.D. Tex., 06/17/2022
• Venue Allegations: Venue is alleged to be proper because Defendant maintains regular and established places of business in the district and has committed acts of patent infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s website and mobile application infringe patents related to combining and displaying location-based data from disparate sources onto a single digital map.
• Technical Context: The technology addresses the consolidation of mappable information from various software applications onto a unified map interface on a mobile device, a core function in modern location-based services.
• Key Procedural History: The asserted patents are continuations of an earlier, abandoned application, establishing a long development history. The '980' Patent is a continuation of the application that resulted in the '164' Patent, indicating a shared specification and a focus on refining the claimed subject matter.

Case Timeline

Date	Event
2007-10-12	Earliest Priority Date ('164 & '980 Patents)
2016-12-27	U.S. Patent No. 9,532,164 Issued
2019-11-05	U.S. Patent No. 10,469,980 Issued
2022-06-17	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,532,164 - "Mashing Mapping Content Displayed on Mobile Devices," issued December 27, 2016

The Invention Explained

• Problem Addressed: The patent describes a limitation in prior art mobile mapping systems where new location information originating from outside a mapping application (e.g., from a social media post or an email) could only be displayed on a new, separate map, thereby losing the context of any previously displayed points of interest (Compl., Ex. A, '164 Patent, col. 1:29-39).
• The Patented Solution: The invention provides a system where "mappable data from disparate sources" can be combined onto a "single digital map" within a mapping application. A "second set of mappable content, found outside the mapping application," is transmitted to the mapping application and displayed "in conjunction with any of the existing (i.e. previously-displayed) mapping content," preserving user context and avoiding the need to switch between different map views ('164 Patent, Abstract; col. 1:40-50). Figure 1C illustrates this by showing two distinct points of interest (104, 108) from different sources displayed together on a single map (102).
• Technical Importance: This method improves the usability of location-based services by allowing users to aggregate points of interest from multiple applications into a single, persistent map view.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶26).
• The essential elements of independent claim 1 include:
  • A system with a storage device storing a first and a second non-browser application.
  • A processor executing both applications.
  • A "mapping component of the first non-browser application" configured to "invoke" the second non-browser application when "map-able content" is activated.
  • The second non-browser application is a "mapping application."
  • The mapping component "transmits the map-able content to an online mapping service" that communicates with the second non-browser (mapping) application.

U.S. Patent No. 10,469,980 - "Mashing Mapping Content Displayed On Mobile Devices," issued November 5, 2019

The Invention Explained

• Problem Addressed: The '980 Patent addresses the same technical problem as the '164 Patent: location data found in one application, when mapped, would display on a new map devoid of any prior context ('980 Patent, col. 1:29-39).
• The Patented Solution: The patent describes a method and apparatus for mapping "addressable information" from "disparate applications" onto an "existing map." The system displays the new information "in addition to at least one prior mapping content previously displayed by the map-display application," which solves the problem of lost context ('980 Patent, Abstract). The detailed description explains that new content can be added to an existing map that already displays other points of interest ('980 Patent, col. 2:54-65).
• Technical Importance: As with the '164 patent, this technology streamlines user workflow by consolidating location data from multiple sources onto a single map view.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶42).
• The essential elements of independent claim 1 include:
  • A system with memory storing a first non-browser application and a processor executing it.
  • A touch screen displaying the user interface of the first non-browser application.
  • A "GPS device of the mobile device determining a location."
  • A "mapping component" of the first non-browser application that communicates with an "online mapping service" to download and display a map.
  • The memory also stores a "second non-browser application that is a mapping application."
  • The mapping component "invokes" the second (mapping) application and directs it to transmit a query including the mobile device's location and a destination to the online mapping service to obtain driving directions.

III. The Accused Instrumentality

• Product Identification: The complaint identifies the "Jason's Deli Deli Dollars" app and the website www.jasonsdeli.com as the "Accused Instrumentalities" (Compl. ¶16-18).
• Functionality and Market Context:
  • The complaint alleges the Accused Instrumentalities provide a system for displaying map information that allows users to "identify and navigate to locations offering Defendant's products" (Compl. ¶26, ¶42). The app is also described as a tool "to earn rewards points after locating and ordering from the closest Jason's Deli" (Compl. ¶18). The complaint provides visual evidence, described as webpages showing the app's availability, that allegedly demonstrates its function of locating stores (Compl. ¶17-18; Ex. C-F).
  • The complaint alleges Defendant operates over 100 locations, suggesting the accused app serves as a key customer interface for a large restaurant chain (Compl. ¶7).

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail for an element-by-element claim chart analysis. The allegations are made at a high level, asserting that the general function of the Accused Instrumentalities infringes the patents.

• Identified Points of Contention:
  • Architectural Scope: Both the '164 and '980 patents claim a system involving a "first non-browser application" that "invokes" a "second non-browser application" that is a mapping application ('164 Patent, cl. 1; '980 Patent, cl. 1). A primary point of contention may be whether the architecture of the Jason's Deli app meets this two-application structure. The defense may argue the app uses a single, integrated mapping functionality via an API, which raises the question of whether this structure satisfies the claims' requirement for two distinct applications interacting.
  • Functional Specificity: Claim 1 of the '980 patent requires the system to use a "GPS device" and to obtain "driving directions" ('980 Patent, cl. 1). The infringement analysis will require evidence of whether the accused app specifically performs these functions as claimed, or if it uses other methods for location determination and navigation guidance. Similarly, for the '164 patent, the analysis will turn on whether the accused app "transmits the map-able content to an online mapping service" in the specific manner required by that claim ('164 Patent, cl. 1).

V. Key Claim Terms for Construction

'164 Patent

• The Term: "mapping component of the first non-browser application"
• Context and Importance: The definition of this term is critical for determining infringement. The dispute will likely focus on whether the accused app contains a "component" that is structurally or functionally distinct from an invoked "mapping application." Practitioners may focus on this term because if it is construed to require a distinct software module that controls a separate application, it may not read on modern apps that use integrated mapping APIs.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The shared specification describes the component in functional terms as a "software module receiving location information and relaying it to a mapping application," which could support a construction where any set of code performing this function qualifies, regardless of its architecture ('980 Patent, col. 2:5-7).
  • Evidence for a Narrower Interpretation: Figures 10A and 10B of the shared patent family depict the "MAPPING COMPONENT" and the "MAPPING APPLICATION" as separate and distinct blocks ('980 Patent, Figs. 10A, 10B). This visual depiction of structural separation could support a narrower construction requiring more than just functional difference.

'980 Patent

• The Term: "invokes the mapping application"
• Context and Importance: This term's construction will be central to the dispute. The question is whether "invokes" is limited to launching a separate, standalone application (e.g., opening Google Maps), or if it can also cover an API call that renders a map within the primary application's user interface.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification uses general language like "relaying address information to a mapping application and/or mapping service for display," which suggests that communicating with a service via an API could fall within the term's scope ('980 Patent, col. 1:13-16).
  • Evidence for a Narrower Interpretation: The specification provides an example where a mapping application is "minimized" and then "re-opened (i.e. brought to the forefront of the display, becoming an active application)," which strongly implies the interaction between two separate, top-level applications ('980 Patent, col. 3:35-49). This could support a narrower meaning that excludes embedded map views.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement based on Defendant distributing instructions and promoting the use of the Accused Instrumentalities in an infringing manner (Compl. ¶27, ¶43). It alleges contributory infringement on the basis that the accused products contain special features with no substantial non-infringing use (Compl. ¶28, ¶44).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents since at least the filing of the complaint (Compl. ¶29, ¶45). The complaint also alleges willful blindness, stating on information and belief that Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶30, ¶46).

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

• A core issue will be one of architectural scope: can the claims, which describe a system of two distinct non-browser applications interacting, be construed to read on a modern mobile app that likely uses an integrated mapping API to display location data within its own interface, rather than launching a separate program?
• A key procedural question will be one of pleading sufficiency: given the conclusory nature of the infringement allegations, the court may need to determine whether the complaint provides a plausible, non-speculative factual basis for how the Accused Instrumentalities meet the specific structural and functional limitations of the asserted claims, as required under the Iqbal/Twombly standard.