Nearby Systems LLC v. Whataburger Restaurants LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Whataburger Restaurants LLC (Texas)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:24-cv-00954, E.D. Tex., 11/20/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district and has committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Whataburger mobile application and website infringe three patents related to displaying location information from disparate sources on a mobile device map.
• Technical Context: The technology at issue facilitates the integration of location data found in non-mapping applications (e.g., social media, email) into a dedicated mapping application on a mobile device, a foundational feature for modern location-based services.
• Key Procedural History: The three asserted patents are part of the same family, with U.S. Patent No. 9,532,164 being the ultimate parent of the others through a chain of continuation applications. This shared prosecution history may be relevant for claim construction across the asserted patents.

Case Timeline

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

U.S. Patent No. 9,532,164

• Patent Identification: 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 applications where location information originating outside of a mapping application (e.g., an address in an email) could only be displayed on a new, separate map, which would "not contain any other mappable information previously displayed" (’164 Patent, col. 1:33-36). This siloed approach prevented users from easily adding new points of interest to an existing, context-rich map.
  • The Patented Solution: The invention provides a system that combines mappable data from "disparate sources onto a single digital map" (’164 Patent, Abstract). It details a process where a user can select location information in a first "non-browser application," which then activates a second "mapping application" to display the new location as a point of interest while preserving the map's pre-existing content (’164 Patent, Figs. 1A-1C; col. 2:36-3:15).
  • Technical Importance: This technology addressed a significant usability issue in early mobile operating systems by enabling seamless integration between different applications for location-based tasks.
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶27).
  • The essential elements of Claim 1 include:
    • A system with a storage device storing a first non-browser application and a second non-browser application (which is a mapping application).
    • A processor executing both applications.
    • A user interface for the first non-browser application.
    • A mapping component of the first non-browser application that invokes the second (mapping) application when map-able content is activated.
    • The mapping component transmits the map-able content to an online mapping service configured to communicate with the second non-browser application.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 10,469,980

• Patent Identification: U.S. Patent No. 10,469,980, Mashing Mapping Content Displayed On Mobile Devices, issued November 5, 2019.
• The Invention Explained:
  • Problem Addressed: As a continuation of the '164 Patent's application, this patent addresses the same problem: the inability of prior art systems to add location information from an external source (like a social media app) to an existing map display in a separate mapping application without losing the original map's content (’980 Patent, col. 1:35-41).
  • The Patented Solution: The invention discloses a system and method for mapping "addressable information... off of disparate applications on a mobile device, onto an existing map on the mobile device" (’980 Patent, Abstract). The specification illustrates taking location information from one application (e.g., Facebook) and displaying it as a new point of interest on a digital map that already contains other points of interest, thereby preserving the original mapping context (’980 Patent, Figs. 1B-1C; col. 2:54-3:15).
  • Technical Importance: This technology enhances the interoperability of mobile applications, making it easier for users to consolidate location-based information from multiple sources onto a single, unified map.
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶44).
  • The essential elements of Claim 1 include:
    • A system with a memory, processor, touch screen, and GPS device.
    • The memory stores a first non-browser application and a second non-browser mapping application.
    • A mapping component of the first application that invokes the mapping application.
    • The mapping component directs the mapping application to transmit a query with the mobile device's location and a destination location to an online service to obtain driving directions.
    • The driving directions are displayed in a map on the touch screen.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 11,937,145

• Patent Identification: U.S. Patent No. 11,937,145, Mashing Mapping Content Displayed On Mobile Devices, issued March 19, 2024.
• Technology Synopsis: This patent, also in the same family, discloses a system for integrating location information across different mobile applications. It describes a system where a user action on text in a first non-browser application causes a mapping component to query an online service and display the corresponding location on a map within a second non-browser application, potentially showing a route from the user's current location (’145 Patent, Abstract; Claim 1).
• Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶61).
• Accused Features: The complaint alleges that the Whataburger App, by providing a system and method for displaying map information to locate stores, infringes the '145 patent (Compl. ¶62).

III. The Accused Instrumentality

Product Identification

• The "Accused Products" are identified as the "Whataburger App" and the website https://whataburger.com/home (Compl. ¶¶ 16, 18).

Functionality and Market Context

• The complaint alleges the Accused Products are designed to allow customers to locate Whataburger stores (Compl. ¶18). The Whataburger App is specifically alleged to use a mobile device's location services to fulfill this function. The complaint references a Whataburger FAQ webpage stating that "Enabling Location Services provides many benefits including locating your nearest Whataburger automatically" (Compl. ¶19; Compl. Ex. F). The complaint suggests the commercial importance of this functionality by listing fifteen separate Whataburger business locations within the Eastern District of Texas alone (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint does not contain explicit claim charts but alleges infringement and incorporates by reference "Exemplary Evidence of Use" exhibits for each patent, which were not filed with the complaint (Compl. ¶¶ 27, 44, 61). The narrative infringement theory is summarized below.

’164 and ’980 Patent Infringement Allegations

The complaint alleges that the Whataburger App provides a "system and method for displaying map information on a mobile device" which allows a user to "identify and navigate to locations offering Defendant's products" (Compl. ¶¶ 28, 45). This system is accused of meeting the limitations of the asserted claims by taking location data (i.e., Whataburger store locations) and displaying it on a map for the user. The specific mapping of claim elements to the accused functionality is detailed in the unfiled Exhibits G and H (Compl. ¶¶ 27, 44).

• Identified Points of Contention:
  • Scope Questions: The core claims of the asserted patents recite a system comprising a "first non-browser application" and a "second non-browser application" that is a "mapping application" (’164 Patent, col. 15:20-25; ’980 Patent, col. 15:21-26). A primary point of contention may be whether the Whataburger App, as a single, integrated piece of software, can be said to embody two separate applications as claimed. The dispute may turn on whether an internal mapping module within the Whataburger App can be legally and technically considered a separate "mapping application" that is "invoked" by the primary application.
  • Technical Questions: Claim 1 of the ’980 Patent requires the system to obtain and display "driving directions" (’980 Patent, col. 16:2-6). A key factual question will be what evidence demonstrates that the Whataburger App itself performs this function, rather than handing off the task to a separate, third-party mapping application on the user's device, which may not align with the claim language.

V. Key Claim Terms for Construction

• The Term: "a first non-browser application" and "a second non-browser application" (appearing in Claim 1 of the ’164, ’980, and ’145 patents).

• Context and Importance: The construction of these terms is critical to the infringement analysis, as the complaint accuses a single, self-contained mobile app. Whether one application can satisfy the requirement for two distinct claimed applications will likely be a central issue.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patents describe a "mapping component" as part of the "first non-browser application" that is "configured to invoke the second non-browser application" (’164 Patent, col. 15:31-35). A party could argue this language supports a view of functionally distinct software modules, which might exist within a single application package.
  • Evidence for a Narrower Interpretation: The specification repeatedly provides examples involving two clearly separate, named applications, such as an email application and a mapping application, or Facebook and Google Maps (’980 Patent, Abstract; Figs. 1B-1C, 7A-7C). These numerous, consistent examples may support a narrower construction requiring two independently installed and executed software applications.

• The Term: "invokes the mapping application" (appearing in Claim 1 of the ’980 Patent).

• Context and Importance: This term is tied to the architectural question above. Its definition will determine whether an internal function call within a single app constitutes "invoking" a separate application as required by the claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent states that a "mapping component of the first non-browser application" is configured to "invoke" the mapping application (’164 Patent, col. 15:31-34). This could be interpreted broadly to include any software process that initiates the mapping functionality.
  • Evidence for a Narrower Interpretation: The detailed description explains an embodiment where a minimized mapping application is "restored into full view" or "re-opened," suggesting an inter-process action that brings a distinct application to the foreground rather than calling an internal module (’980 Patent, col. 3:16-21; col. 4:48-52).

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant took active steps with the specific intent to cause infringement by providing the Accused Products and distributing instructions, advertisements, and promotions that guide users to use them in an infringing manner (Compl. ¶¶ 29, 46, 63). The complaint also alleges contributory infringement, stating the Accused Products have special features designed for infringement with no substantial non-infringing uses (Compl. ¶¶ 30, 47, 64).
• Willful Infringement: The willfulness allegation is based on Defendant's alleged knowledge of the patents as of the filing of the lawsuit (Compl. ¶¶ 31, 48, 65). The complaint further alleges willful blindness, asserting on information and belief that Defendant has a "policy or practice of not reviewing the patents of others" (Compl. ¶¶ 32, 49, 66).

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

• A core issue will be one of architectural scope: can the claims, which recite a system of a "first non-browser application" interacting with a separate "second non-browser application," be construed to read on the functionality of a single, self-contained mobile app? The resolution will depend on whether an internal software module can be legally defined as a separate "application" that is "invoked" under the patent's terms.
• A key evidentiary question will be one of functional specificity: does the accused Whataburger App perform the precise, multi-step functions required by the claims? For example, the case may turn on evidence of whether the app itself obtains and displays "driving directions" (as required by the ’980 patent) or whether its mapping feature qualifies as an "online mapping service" (as required by the ’164 patent).