Nearby Systems LLC v. Franchise World Headquarters LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Franchise World Headquarters, LLC d/b/a Subway Restaurants d/b/a Subway (Connecticut); Doctor's Associates LLC (Delaware); and Subway US IP Holder LLC (Delaware)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:24-cv-01006, E.D. Tex., 12/05/2024
• Venue Allegations: Venue is alleged to be proper based on Defendants having established and maintained regular and established places of business within the Eastern District of Texas, through numerous physical Subway restaurant locations, and having committed acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s Subway App and associated website infringe three patents related to methods for combining and displaying mappable content from disparate sources on mobile devices.
• Technical Context: The technology at issue addresses the integration of location data from different software applications onto a unified map on a mobile device, a common feature for enhancing user experience in modern mobile ecosystems.
• Key Procedural History: The three asserted patents are related and share a common specification, with U.S. Patent No. 9,532,164 being the parent of two continuing applications that issued as U.S. Patent Nos. 10,469,980 and 11,937,145. No other procedural events are mentioned in the complaint.

Case Timeline

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 limitation in prior art mobile devices where new mapping content originating from outside a mapping application (e.g., an address selected in an email) could only be displayed on a new, separate digital map. This approach loses the context of any information—such as previously plotted points of interest—that was displayed on the user's original map. (’164 Patent, col. 1:29-37).
• The Patented Solution: The invention provides a system and method for taking "mappable content" found in a "first non-browser application" and transmitting it to a mapping application for display. This allows the new location data to be overlaid, or "mashed," onto the existing map, preserving the user's prior mapping context. (’164 Patent, col. 2:38-49, Abstract).
• Technical Importance: This technology facilitates a more seamless integration of data between disparate applications on a mobile device, improving the user experience by creating a unified information display rather than siloed data presentations. (’164 Patent, col. 1:12-16).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶33).
• Key elements of claim 1 (a system claim) include:
  • A memory of a mobile device storing a first non-browser application.
  • A processor executing the first non-browser application.
  • A user interface of the first non-browser application.
  • A mapping component of the first non-browser application configured to invoke a second non-browser application (which is a mapping application) when map-able content on the user interface 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, “Mashing Mapping Content Displayed On Mobile Devices,” Issued Nov. 5, 2019

The Invention Explained

• Problem Addressed: Similar to its parent, the '980 Patent addresses the problem of siloed applications, where location information found in one application cannot be easily integrated with a mapping service to provide context or directions. (’980 Patent, col. 1:21-34).
• The Patented Solution: The patent claims a system on a mobile device that includes a GPS. A "mapping component" within a "first non-browser application" communicates with an online mapping service to display a map based on the device's GPS location. The component can then invoke a separate "second non-browser application" (a mapping app) and direct it to display driving directions from the device's current location to a destination identified in the first application. (’980 Patent, col. 15:1-25; Abstract).
• Technical Importance: The invention focuses on the specific workflow of identifying a point of interest in one application and seamlessly transitioning to a dedicated mapping application for turn-by-turn navigation, leveraging the device's GPS capabilities. (’980 Patent, col. 16:1-6).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶50).
• Key elements of claim 1 (a system claim) include:
  • A memory storing a first non-browser application and a second non-browser application that is a mapping application.
  • A processor, a touch screen, and a GPS device determining the mobile device's location.
  • A mapping component configured to communicate with an online mapping service to download and display a map based on the device's location.
  • The mapping component invokes the mapping application to transmit a query that includes the mobile device's location and a destination location to obtain driving directions.
• The complaint does not explicitly reserve the right to assert dependent claims.

Multi-Patent Capsule: U.S. Patent No. 11,937,145

• Patent Identification: U.S. Patent No. 11,937,145, “Mashing Mapping Content Displayed On Mobile Devices,” Issued Mar. 19, 2024.
• Technology Synopsis: Continuing the theme of its parent patents, the ’145 patent claims a system for displaying location-based content. It describes a first non-browser application that displays a map with an icon and associated text. Upon a user touch of the text, a mapping component queries an online service and, in response, the system displays a second map in a second non-browser application showing a route from the device's current location to the icon's location. (’145 Patent, col. 15:1-26).
• Asserted Claims: At least independent claim 1 is asserted. (Compl. ¶67).
• Accused Features: The accused features are within the Subway App, which allegedly provides a system and method for displaying map information on a mobile device to allow users to identify and navigate to Subway restaurant locations. (Compl. ¶68).

III. The Accused Instrumentality

Product Identification

• The accused products are the "Subway App" mobile application and the website "https://www.subway.com/" (collectively, the "Accused Products"). (Compl. ¶¶ 23-25).

Functionality and Market Context

• The complaint alleges the Accused Products provide a "system and method for displaying map information on a mobile device" which allows users to "identify and navigate to locations offering Defendants' products." (Compl. ¶34, ¶51, ¶68). The functionality is designed to help customers locate Subway stores, manage their accounts, and place orders from the nearest location. (Compl. ¶25).
• The complaint alleges the Subway App is made available for download through smartphone app providers. (Compl. ¶24). It frames the Accused Products as central to how Defendants interact with and sell to customers. (Compl. ¶23).

IV. Analysis of Infringement Allegations

The complaint alleges infringement but does not contain claim charts, instead referencing Exhibits G, H, and I, which were not provided with the complaint. (Compl. ¶¶ 33, 50, 67). The following tables are constructed based on the narrative infringement theories presented in the complaint.

No probative visual evidence provided in complaint.

9,532,164 Patent Infringement Allegations

10,469,980 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A primary question may be whether the term "first non-browser application", which the patent specification exemplifies with general-purpose applications like email or social media, can be construed to read on the "Subway App", which is a specialized, location-centric commercial application.
  • Technical Questions: The infringement theory appears to depend on the Subway App "invoking" a "second non-browser application" that is a mapping application. A key factual question will be whether the Subway App launches a separate, standalone application (e.g., Google Maps, Apple Maps) for navigation, or if it uses an embedded map view via an API. The specific implementation could be dispositive for claim limitations requiring two distinct applications.

V. Key Claim Terms for Construction

• The Term: "first non-browser application" (asserted in all lead patents)

  • Context and Importance: This term's construction is fundamental. The defense may argue that the Subway App, whose primary purpose is location-based searching, is itself a type of mapping application and not the "disparate" source of incidental location data contemplated by the patent's specification. The outcome of this construction could determine whether the accused system fits the claimed architecture.
  • Intrinsic Evidence for a Broader Interpretation: The plain language of the claim only requires the application not be a "browser." The patent also states that the mapping component can be a module of the first application itself. (’980 Patent, col. 10:48-53).
  • Intrinsic Evidence for a Narrower Interpretation: The specification repeatedly provides examples of the "first non-browser application" as general communication or social media platforms where location information appears incidentally, such as Facebook, email, or instant messenger. (’980 Patent, FIG. 1B, FIG. 7A, Abstract). This may support an interpretation that the term requires an application whose primary purpose is not mapping.

• The Term: "invokes the mapping application" and "invokes the second non-browser application"

  • Context and Importance: Practitioners may focus on this term because the infringement allegation hinges on a specific interaction between two applications. Whether the Subway App's use of mapping functionality constitutes "invoking" a separate application will be a central point of dispute.
  • Intrinsic Evidence for a Broader Interpretation: A plaintiff may argue that any API call that causes a mapping application's code to execute, even to render an embedded map, meets the definition of "invoke."
  • Intrinsic Evidence for a Narrower Interpretation: The specification's flow diagrams and descriptions suggest a process where one application is minimized or closed and a new one is opened or brought to the forefront. (’980 Patent, FIG. 2, steps 202-208). This could support a narrower construction requiring the launch of a separate application process, not merely the use of an embedded map view.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting that Defendants provide instructions and marketing materials that direct customers to use the Subway App in an infringing manner. (Compl. ¶¶ 35, 52, 69). Contributory infringement is alleged on the basis that the Accused Products contain special features designed for infringement with no substantial non-infringing uses. (Compl. ¶¶ 36, 53, 70).
• Willful Infringement: Willfulness is alleged based on Defendants' knowledge of the patents "at least as of the date when each was notified of the filing of this action." (Compl. ¶¶ 37, 54, 71). The complaint further alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others." (Compl. ¶¶ 38, 55, 72).

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

• A core issue will be one of architectural equivalence: does the accused Subway App's architecture align with the two-application framework recited in the claims? Specifically, does the app "invoke" a distinct, separate "second non-browser application" for mapping functions, or does its use of embedded map APIs create a technical mismatch with the claimed system?
• A second key question will be one of definitional scope: can the term "first non-browser application", which the patent specification illustrates with general-purpose apps like email, be construed to cover a special-purpose, location-centric commercial tool like the Subway App?
• Finally, an evidentiary question will be one of functional proof: given the high-level allegations, the plaintiff will face the challenge of demonstrating with specific technical evidence that the software components of the Subway App perform the precise "transmitting" and "invoking" steps required by the claims, as distinct from simply providing generalized, integrated mapping features.