DCT
2:23-cv-00384
Nearby Systems LLC v. Penney OpCo LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nearby Systems LLC (Texas)
- Defendant: Penney OpCo LLC d/b/a JC Penney (Virginia)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:23-cv-00384, E.D. Tex., 08/28/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains regular and established places of business within the Eastern District of Texas and has committed the alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s JC Penney mobile application infringes two patents related to integrating and displaying location data from disparate sources within mobile mapping applications.
- Technical Context: The technology addresses methods for taking location-based information found in one mobile application (e.g., a social media app or email) and plotting it on a digital map, potentially alongside pre-existing points of interest.
- Key Procedural History: U.S. Patent No. 9,532,164 is a continuation-in-part of an abandoned 2007 application. U.S. Patent No. 10,469,980 is a continuation of the application that matured into the '164 patent, creating a direct family relationship. The complaint does not mention any prior litigation or administrative proceedings involving these patents.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-12 | Earliest Priority Date for '164 and '980 Patents |
| 2016-12-27 | U.S. Patent No. 9,532,164 Issued |
| 2019-11-05 | U.S. Patent No. 10,469,980 Issued |
| 2023-08-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,532,164 - "Mashing Mapping Content Displayed On Mobile Devices"
The Invention Explained
- Problem Addressed: The patent describes a limitation in prior art mobile devices where new mapping content originating outside of a mapping application (e.g., an address in an email) could only be displayed on a new, separate digital map, which would not contain any previously displayed mappable information ('164 Patent, col. 1:28-36). This created a disjointed user experience.
- The Patented Solution: The invention proposes a system where "map-able content" from a "first non-browser application" (e.g., a social media app) can be activated to invoke a separate "second non-browser application" (a mapping app). The new location information is then displayed on the map in conjunction with the existing, "previously-displayed" mapping content, creating a single, consolidated map view from multiple application sources ('164 Patent, col. 1:37-47, FIG. 1C).
- Technical Importance: This technology sought to improve the integration of location-based services on mobile devices by allowing users to aggregate points of interest from different applications onto a single map without manual data entry ('164 Patent, col. 1:11-16).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶26).
- The essential elements of independent claim 1 are:
- A mobile device with storage for and a processor executing a first non-browser application and a second non-browser application (which is a mapping application).
- A user interface for the first non-browser application.
- A "mapping component" within the first application that is configured to invoke the second (mapping) application when "map-able content" is activated.
- The mapping component transmits the map-able content to an online mapping service, which is configured to communicate with the second (mapping) application.
- The complaint does not specify assertion of any dependent claims but reserves the right to do so.
U.S. Patent No. 10,469,980 - "Mashing Mapping Content Displayed On Mobile Devices"
The Invention Explained
- Problem Addressed: Similar to its parent patent, the '980 patent addresses the inconvenience of plotting location information found in disparate applications onto a digital map ('980 Patent, col. 1:21-36).
- The Patented Solution: The invention is a system for displaying location-based content on a mobile device. It features a "non-browser application" containing a "mapping component" that communicates with an "online mapping service" to download map data and display a map within the user interface of the non-browser application itself. The system uses the device's GPS to determine its location and can invoke a separate mapping application to get driving directions ('980 Patent, Abstract; col. 16:1-25).
- Technical Importance: This approach further embeds mapping capabilities within third-party applications, reducing the need for users to switch to a separate, dedicated mapping program for basic location visualization ('980 Patent, col. 1:11-16).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶42).
- The essential elements of independent claim 1 are:
- A mobile device with memory, a processor, a touch screen, and a GPS device.
- A first non-browser application stored in memory and executed by the processor.
- A "mapping component" within the first non-browser application configured to communicate with an online mapping service to download map data.
- The mapping component displays a map (based on the downloaded data and the device's GPS location) within the user interface of the first non-browser application.
- The memory also stores a second non-browser application that is a mapping application.
- The mapping component invokes this second mapping application to transmit a query for driving directions.
- The complaint does not specify assertion of any dependent claims but reserves the right to do so.
III. The Accused Instrumentality
Product Identification
- The "JC Penney App" for mobile devices and the website https://www.jcpenney.com/ (the "Accused Products") (Compl. ¶16-18).
Functionality and Market Context
- The complaint alleges the Accused Products, particularly the JC Penney App, provide systems and methods for displaying map information on mobile devices (Compl. ¶26, ¶42). This functionality is described as allowing customers "to locate stores and/or manage their accounts after locating and ordering from the closest JC Penney location" (Compl. ¶18). The complaint references Exhibits C, D, and E as evidence of the app's infringing functionality, which are described as webpages concerning the app's availability and features (Compl. ¶16-18, List of Exhibits). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint alleges infringement but does not provide a detailed mapping of accused features to specific claim limitations. The following tables synthesize the plaintiff's apparent infringement theory based on the general allegations.
’164 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a storage device of a mobile device storing a first non-browser application and a second non-browser application... wherein the second non-browser application is a mapping application | A user's smartphone stores the JC Penney App (the "first non-browser application") and a separate, standard mapping app like Apple Maps or Google Maps (the "second non-browser application") (Compl. ¶17). | ¶17, ¶26 | col. 15:15-21 |
| a mapping component of the first non-browser application configured to invoke the second non-browser application on the mobile device when map-able content displayed on the user interface is activated | The JC Penney App allegedly includes software code that launches the separate mapping application when a user interacts with store location information ("map-able content") within the app's interface (Compl. ¶26). | ¶26 | col. 15:5-13 |
| wherein the mapping component transmits the map-able content to an online mapping service configured to communicate with the second non-browser application | The JC Penney App is alleged to transmit store location data to an online service, which in turn provides the data to the invoked mapping application for display (Compl. ¶21, ¶26). | ¶21, ¶26 | col. 15:13-17 |
’980 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a GPS device of the mobile device determining a location of the mobile device | The JC Penney App allegedly uses the smartphone's GPS to determine the user's location, for example, to find nearby stores (Compl. ¶18, ¶42). | ¶18, ¶42 | col. 16:9-11 |
| a mapping component of the first non-browser application configured to... display a map within the user interface of the first non-browser application... wherein the map data is based on the location of the mobile device | The JC Penney App allegedly contains a component that displays a map of store locations directly within its own application interface, with the map content being based on the user's GPS location (Compl. ¶42). | ¶42 | col. 16:12-20 |
| wherein the mapping component invokes the mapping application and directs the mapping application to transmit a query including... a destination location to... obtain driving directions | From the in-app map, the JC Penney App allegedly launches a separate mapping application and passes it a selected store's location data for the purpose of obtaining and displaying driving directions (Compl. ¶42). | ¶42 | col. 16:23-25 |
Identified Points of Contention
- Factual Evidence: The complaint's allegations are conclusory and lack technical specifics. A central point of contention will be the factual question of how the JC Penney App actually operates. Discovery will be required to determine if its architecture—specifically its method of displaying maps and interacting with other applications—matches the sequences and components recited in the claims.
- Scope Questions: For the ’164 patent, a key question is whether a standard API call from the JC Penney App to an external mapping service and/or application meets the definition of a "mapping component" that "transmits the map-able content" as claimed. For the ’980 patent, a dispute may arise over whether embedding a standard map view (e.g., from a Google Maps API) constitutes "display[ing] a map within the user interface" in the manner required by the claim, or if the claim requires a more distinct data handling and rendering process.
V. Key Claim Terms for Construction
The Term: "mapping component" (’164 Patent, claim 1; ’980 Patent, claim 1)
- Context and Importance: This term is the technological core of both patents. Its construction will determine whether the claims cover standard software functionality (e.g., a simple API call) or are limited to a more specialized software module. Practitioners may focus on this term because its scope dictates whether common app development practices fall within the patents' reach.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not explicitly limit the "mapping component" to a particular structure, potentially allowing it to cover any software code that performs the recited functions of invoking another application or communicating with a service.
- Evidence for a Narrower Interpretation: The specifications describe the "mapping component" with more detailed functionality, such as normalizing location data, processing drag-and-drop inputs, and managing multiple data sources ('980 Patent, FIG. 3A-3B; col. 4:16-48). A defendant may argue that the term should be limited to a component possessing these more specific features described in the preferred embodiments.
The Term: "display a map within the user interface of the first non-browser application" (’980 Patent, claim 1)
- Context and Importance: This limitation distinguishes the '980 patent's approach. The dispute will likely center on whether embedding a map view provided by a third-party service (a common practice) meets this limitation, or if it requires the application to more directly process "map data" and render the map itself.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language focuses on the result—a map appearing within the app's UI—without specifying the underlying mechanism. This could support an interpretation that covers the use of embedded map APIs.
- Evidence for a Narrower Interpretation: Claim 1 recites that the component is configured to "download map data and display a map" based on that data ('980 Patent, col. 16:13-15). This phrasing may support an argument that the "mapping component" must do more than simply display a pre-packaged, pre-rendered map image from a service; it must actively "download map data" and use it to "display a map."
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement allegation is based on Defendant providing instructions and advertising that allegedly guide customers to use the JC Penney App in an infringing manner (Compl. ¶27, ¶43). The contributory infringement allegation claims the app has "special features" with no substantial non-infringing use (Compl. ¶28, ¶44).
- Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents "at least as of the date" of the complaint filing (Compl. ¶29, ¶45). The complaint also alleges willful blindness, asserting 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
- Evidentiary Burden vs. Pleading Standard: The primary issue in the early stages will be the sufficiency of the complaint's allegations. The case will turn on whether discovery reveals a specific technical architecture in the JC Penney App that matches the multi-component systems and data-flow sequences described in the asserted claims, a fact not detailed in the complaint itself.
- Claim Scope vs. Conventional Technology: A core legal question will be one of claim scope: can the term "mapping component," as used in both patents, be construed to cover standard API calls for launching external map apps or embedding map views? The court's interpretation will determine whether the patents are narrowly tied to the specific "content mashing" embodiments in the specification or are broad enough to read on ubiquitous, conventional methods for integrating map features in modern mobile applications.