DCT
2:24-cv-00229
Nearby Systems LLC v. Dollar General Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nearby Systems LLC (Texas)
- Defendant: Dollar General Corporation (Tennessee)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:24-cv-00229, E.D. Tex., 06/29/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant operates numerous retail stores and a distribution center within the district, constituting a regular and established place of business, and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Dollar General App infringes three patents related to systems and methods for displaying location-based content by combining mappable data from disparate applications onto a single map on a mobile device.
- Technical Context: The technology concerns the software architecture for integrating location data from one mobile application (e.g., a retailer's app) into a separate mapping application (e.g., a device's native maps) to provide a seamless user experience.
- Key Procedural History: The three asserted patents are members of the same family, with U.S. Patent No. 10,469,980 being a continuation of the application that led to U.S. Patent No. 9,532,164, and U.S. Patent No. 11,937,145 being a continuation of the application that led to the '980 patent. The current filing is a First Amended Complaint.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-12 | Earliest Priority Date for Asserted Patents ('164, '980, '145) |
| 2013-08-03 | '164 Patent Application Filed |
| 2016-11-08 | '980 Patent Application Filed |
| 2016-12-27 | '164 Patent Issued |
| 2019-09-13 | '145 Patent Application Filed |
| 2019-11-05 | '980 Patent Issued |
| 2024-03-19 | '145 Patent Issued |
| 2024-06-29 | First Amended 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 Dec. 27, 2016
The Invention Explained
- Problem Addressed: The patent describes a technical shortcoming in prior art mobile mapping systems where mappable information originating from a separate, non-mapping application could only be displayed on a new, blank digital map, thereby losing the context of any information previously displayed on the device (’164 Patent, col. 1:29-35).
- The Patented Solution: The invention proposes a system architecture to solve this problem by "combining mappable data from disparate sources onto a single digital map" (’164 Patent, col. 1:39-42). As illustrated in the patent's figures and described in the complaint, mappable information from a non-browser application can be selected and displayed as a new point of interest on the same digital map that already contains previous content, preserving the user's context (Compl. ¶23; ’164 Patent, col. 2:60-3:3, FIG. 1C). This is facilitated by a "mapping component" within the first application that invokes a second, separate mapping application.
- Technical Importance: The technology addresses the need for enhanced interoperability between mobile applications, allowing a user to seamlessly transition from viewing information in one app to visualizing it geographically in another without losing context.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, 5, 6, and 7 (Compl. ¶50).
- Independent Claim 1 recites a system comprising:
- A storage device storing a first non-browser application and a second non-browser application.
- A processor executing both applications.
- A user interface for the first non-browser application.
- A "mapping component" in the first application configured to "invoke" the second application when map-able content is activated.
- A requirement that the second non-browser application is a mapping application.
- A requirement that the mapping component "transmits the map-able content to an online mapping service" that is configured to communicate with the second non-browser (mapping) application.
U.S. Patent No. 10,469,980 - "Mashing Mapping Content Displayed On Mobile Devices," Issued Nov. 5, 2019
The Invention Explained
- Problem Addressed: As a continuation, this patent addresses the same fundamental problem of siloed mapping applications on mobile devices (’980 Patent, col. 1:33-39).
- The Patented Solution: The invention described in the '980 patent adds specificity, claiming a system that includes hardware elements like a GPS device and a touch screen (’980 Patent, col. 15:9-11). It details a more complex interaction: the "mapping component" of a first non-browser application communicates with an online service to display a map within the user interface of the first application. It then separately "invokes the mapping application" (a second non-browser app) and "directs" it to query the online service to obtain and display driving directions to a destination (’980 Patent, col. 15:12-25, 16:1-6).
- Technical Importance: This patent describes a common and sophisticated user workflow where an application can both embed its own map view for general location awareness and also hand off to a dedicated, full-featured navigation application for turn-by-turn directions.
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, and 4 (Compl. ¶76).
- Independent Claim 1 recites a system comprising:
- Memory storing a first non-browser application.
- A processor executing the first application.
- A touch screen displaying the first application's UI.
- A GPS device determining the mobile device's location.
- A "mapping component" in the first application that communicates with an online mapping service to download and display a map within the first application's UI, based on the device's location.
- Memory storing 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 to the online mapping service to obtain driving directions, which are then displayed by the mapping application on the touch screen.
U.S. Patent No. 11,937,145 - "Mashing Mapping Content Displayed On Mobile Devices," Issued March 19, 2024
- Patent Identification: U.S. Patent No. 11,937,145, "Mashing Mapping Content Displayed On Mobile Devices," Issued March 19, 2024 (Compl. ¶87).
- Technology Synopsis: This patent continues to refine the technical solution, addressing the problem of displaying data from disparate sources and providing routes (Compl. ¶95). It claims a system where a first non-browser application displays a first map with an icon and associated text. Upon a user touch of the text, a "mapping component" transmits a query with the device and icon locations to an online service, causing a second non-browser application to display a second map showing a route between the device and the icon (Compl. ¶¶88, 91).
- Asserted Claims: Independent claim 1 and dependent claims 2, 3, and 4 (Compl. ¶100).
- Accused Features: The functionality within the Dollar General App that allows users to view store locations on a map and then obtain driving directions to a selected store (Compl. ¶101).
III. The Accused Instrumentality
Product Identification
- The "Dollar General App," a mobile device application made available for download by Defendant (Compl. ¶¶16-17).
Functionality and Market Context
- The complaint alleges the Accused Products are designed to allow customers to locate Defendant's stores (Compl. ¶18). The core accused functionality is the system that displays map information on a mobile device, allowing a user to "identify and navigate to locations offering Defendant's products" (Compl. ¶51). The complaint includes patent figures, such as FIGS. 1A-1C, which are generalized images illustrating the display of content from different sources onto a single map in a mapping application (Compl. ¶21).
IV. Analysis of Infringement 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; | The mobile device's storage contains the Dollar General App (the first non-browser app) and a separate native mapping application like Apple Maps or Google Maps (the second non-browser app). | ¶¶51, 41 | col. 12:2-4 |
| a processor of the mobile device executing the first non-browser application and a second non-browser application; | The mobile device's processor runs the Dollar General App and the separate mapping application. | ¶51 | col. 12:5-7 |
| a user interface of the first non-browser application configured for the mobile device; | The user interface of the Dollar General App is displayed on the mobile device. | ¶51 | col. 12:8-10 |
| 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 to display a map of the map-able content, | The Dollar General App includes functionality (e.g., in its store locator) that, when a user activates map-able content (e.g., taps a store location), causes a separate mapping application to launch. | ¶¶51, 41 | col. 12:11-17 |
| wherein the second non-browser application is a mapping application, | The invoked second non-browser application is a mapping application (e.g., Apple Maps, Google Maps). | ¶41 | col. 12:18-19 |
| wherein the mapping component transmits the map-able content to an online mapping service configured to communicate with the second non-browser application. | The functionality in the Dollar General App transmits the store location data to an online mapping service that communicates with the invoked mapping application to display the location. | ¶¶51, 41 | col. 12:20-24 |
- Identified Points of Contention: The central question may be whether the mechanism used by the Dollar General App to launch an external map constitutes the claimed "mapping component." A court may need to determine if a standard operating system API call (e.g., an iOS Intent or Android Intent) for opening a map with a location qualifies as a "component... configured to invoke" and "transmit" content as specifically required, or if it is merely generic, OS-provided interoperability that the patent did not invent.
'980 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a memory of a mobile device storing a first non-browser application; | The mobile device's memory stores the Dollar General App. | ¶77 | col. 15:3-4 |
| a GPS device of the mobile device determining a location of the mobile device; and | The system uses the mobile device's GPS to determine its location. | ¶66 | col. 15:10-11 |
| a mapping component... configured to... download map data and display a map within the user interface of the first non-browser application, and wherein the mapping component transmits a query including the location of the mobile device... | The Dollar General App allegedly has a component that communicates with an online service to display a map of store locations within its own user interface, based on the user's GPS location. | ¶¶77, 66 | col. 15:12-20 |
| wherein the memory stores a second non-browser application that is a mapping application, and | The device's memory also stores a separate mapping application (e.g., Apple Maps, Google Maps). | ¶77 | col. 15:21-22 |
| wherein the mapping component invokes the mapping application and directs the mapping application to transmit a query including the location of the mobile device and a destination location to the online mapping service to obtain driving directions... | The Dollar General App, upon user action, launches the separate mapping application and passes it the user's current location and the selected store's location to obtain and display turn-by-turn directions. | ¶¶77, 66 | col. 15:23-16:3 |
| wherein the driving directions are displayed in a map displayed by the mapping application on the touch screen. | The resulting driving directions are displayed within the separate mapping application's interface. | ¶¶77, 66 | col. 16:4-6 |
- Identified Points of Contention: For the '980 patent, the dispute may focus on the sequence and location of map displays. A key technical question will be whether the Dollar General App actually "download[s] map data and display[s] a map within the user interface of the first non-browser application" as a distinct step, or if it simply displays static image tiles or a web view. Furthermore, the claim requires the component to "invoke" and "direct" the second app, raising questions about the level of control and communication required beyond a standard inter-application API call.
V. Key Claim Terms for Construction
The Term: "mapping component"
Context and Importance: This term appears in the independent claims of all asserted patents and is the central functional element of the invention. The scope of "mapping component" will likely be determinative of infringement, as it defines the boundary between the specific invention and generic, OS-level functionality for inter-application communication.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states a mapping component may be "code providing the map-display application with Object Linking and Embedding/Dynamic Data Exchange (OLE/DDE) functionality" or a "widget" (Compl. ¶25; ’164 Patent, col. 8:12-19). This language suggests the term could encompass a variety of software modules that facilitate communication between applications.
- Evidence for a Narrower Interpretation: The detailed flow diagrams in Figures 3A, 3B, and 8B depict a component that performs specific steps like receiving data, storing it, "normalizing" it into discrete addresses, and then submitting it to a mapping service (Compl. ¶¶27-28; ’164 Patent, col. 4:12-43). This could support a narrower construction requiring the component to be a distinct data-processing module, not just a simple API call or hyperlink.
The Term: "invoke"
Context and Importance: This term in the '164 patent claim (and the related "invokes... and directs" in the '980 patent claim) is critical for defining the required action between the first and second non-browser applications. Whether a standard OS-level call to open another app meets this limitation is a core issue.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Parties may argue "invoke" should be given its plain and ordinary meaning of "to call forth," which could read on any action where one application causes another to open and perform a function.
- Evidence for a Narrower Interpretation: The specification describes an "optimization algorithm" that may run to "automatically select the mapping application best suited to receive the mapping data" when multiple mapping applications are available (Compl. ¶34; ’164 Patent, col. 11:49-58). This suggests a more intelligent and deliberate process than a simple, predefined OS-level action, supporting a construction that requires more than just launching another application.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement by asserting that Defendant provides the Accused Products and "advising or directing customers, personnel, contractors, or end-users to use the Accused Products in an infringing manner" through advertising, promotion, or instructions (Compl. ¶¶ 52, 78, 102). Contributory infringement is alleged based on the Accused Products having "special features that are specially designed to be used in an infringing way" and are not staple articles of commerce (Compl. ¶¶ 53, 79, 103).
- Willful Infringement: Willfulness is alleged based on Defendant's knowledge of the patents since at least the filing of the action (post-suit knowledge) (Compl. ¶¶ 54, 80, 104). The complaint also pleads willful blindness, alleging on information and belief that Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶¶ 55, 81, 105).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue for the court will be one of claim scope and definition: will the term "mapping component" be construed broadly to encompass standard, OS-provided functionalities for inter-application communication (e.g., an API call that opens Apple Maps), or will it be limited to a more specialized software module that performs the specific data normalization and selection logic detailed in the patents' embodiments?
- A key evidentiary question will be one of technical implementation: does the Dollar General App's software architecture perform the specific, multi-step communication and invocation sequences required by the claims—particularly the '980 patent's requirement to first display an embedded map and then separately invoke and direct a navigation app—or does it utilize a simpler technical mechanism that falls outside the literal scope of the claims?
- The case may also turn on a question of patentability: given the prevalence of inter-app communication in modern mobile operating systems, a significant challenge for the plaintiff may be to demonstrate that the claimed "mapping component" represents a specific, non-conventional technical solution rather than an "abstract idea of linking applications," which the defendant might argue is a routine and conventional activity in the field.