Nearby Systems LLC v. Intl Dairy Queen Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: International Dairy Queen, Inc. (Delaware); American Dairy Queen Corporation (Delaware); Texas Dairy Queen Operators Council (Texas)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:25-cv-00015, E.D. Tex., 01/07/2025
• Venue Allegations: Plaintiff alleges venue is proper because Defendants maintain regular and established places of business in the district, citing specific store addresses, and have committed the alleged acts of patent infringement within the district.
• Core Dispute: Plaintiff alleges that Defendants’ mobile applications, which allow customers to locate stores, infringe patents related to combining and displaying location data from disparate sources on a unified digital map.
• Technical Context: The technology addresses the integration of location-based data from various mobile applications onto a single map, a foundational feature for modern, context-aware mobile services.
• Key Procedural History: The three asserted patents are part of the same family. U.S. Patent No. 10,469,980 is a continuation of the application that resulted in U.S. Patent No. 9,532,164, and U.S. Patent No. 11,937,145 is a continuation of the application that resulted in the '980 patent. This shared prosecution history suggests that claim construction arguments and prior art may have significant overlap across all three patents.

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 December 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 dedicated 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 like existing points of interest. (’980 Patent, col. 1:31-39).
• The Patented Solution: The invention provides a method and system for combining mappable data from disparate sources onto a single, existing digital map within a mapping application. It allows a "second set of mappable content, found outside the mapping application," to be transmitted to the mapping application and displayed "in conjunction with any of the existing (i.e. previously-displayed) mapping content." (’980 Patent, col. 1:40-54). This concept is illustrated in Figures 1A-1C of the patent family, which depict location information from a non-mapping social media application being added as a new point of interest to an already-active map view. (’980 Patent, Figs. 1A-1C).
• Technical Importance: This technology aims to break down data silos between mobile applications, enabling a more integrated and contextually rich user experience by creating "mash-ups" of location data on a single screen. (Compl. ¶21).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 and reserves the right to assert other claims. (Compl. ¶26, ¶28).
• The complaint does not provide the text of the asserted claims of the ’164 patent, which prevents a detailed breakdown of the claim elements.

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 application leading to the ’164 patent, the ’980 patent addresses the same technical problem: the inability of prior art systems to add new location data from an external source (e.g., a different app) to an existing map display, forcing the creation of a new, blank map for the new data. (’980 Patent, col. 1:22-39).
• The Patented Solution: The invention is a system on a mobile device that can take "addressable information" from a "disparate application" (e.g., an address in a social media post) and, in response to a user command, cause a map-display application to present that information as a new point of interest on the same map that already displays prior content. (’980 Patent, Abstract). The detailed description explains that a mapping component can receive location information from another application and relay it to a mapping application for display. (’980 Patent, col. 4:17-34).
• Technical Importance: The invention facilitates a more seamless workflow for users by allowing them to aggregate points of interest from multiple sources onto a single, persistent map, enhancing the utility of mobile mapping services. (Compl. ¶38).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶43).
• The essential elements of independent claim 1 include:
  • A mobile device with memory storing a first non-browser application and a second non-browser application that is a mapping application.
  • A processor executing the first non-browser application.
  • A GPS device determining the mobile device's location.
  • A mapping component of the first non-browser application that communicates with an online mapping service to display a map based on the device's location.
  • The mapping component invokes the second non-browser (mapping) application.
  • The mapping component directs the mapping application to transmit a query with the device's location and a destination location to the online service to get driving directions.
  • The driving directions are displayed in a map on the touch screen.

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 overcoming data siloing in mobile mapping. It describes a method where location data found in one application can be selected by a user and transmitted to a separate mapping application, which then displays the new location information alongside any pre-existing points of interest on a unified map. (Compl. ¶55; ’145 Patent, Abstract).

Asserted Claims

The complaint asserts at least independent claim 1. (Compl. ¶60).

Accused Features

The "Dairy Queen® Food & Treats App" is accused of infringing by providing a system that displays map information on a mobile device, allowing a user to identify and navigate to store locations, allegedly practicing the claimed invention. (Compl. ¶61).

III. The Accused Instrumentality

Product Identification

• The "DQ Texas App" and the "Dairy Queen® Food & Treats App," collectively identified as the "Dairy Queen Apps" or the "Accused Products." (Compl. ¶¶16, 18).

Functionality and Market Context

• The Dairy Queen Apps are mobile device applications available on public app stores. (Compl. ¶17). Their core accused functionality is allowing customers to locate Defendants' stores. (Compl. ¶18). The complaint alleges the apps "provide a system and method for displaying map information on a mobile device... to obtain the data to display text and maps that present information to allow a mobile device user to identify and navigate to locations offering Defendants' products." (Compl. ¶27, ¶44, ¶61). The complaint presents visual evidence in Exhibit J, which is described as exemplifying how the Accused Products provide this system for displaying map information. (Compl. ¶27).

IV. Analysis of Infringement Allegations

The complaint references infringement claim charts in Exhibits J, K, and L, but these exhibits were not filed with the complaint. As such, a detailed element-by-element analysis cannot be performed. The infringement theory is summarized below in prose based on the complaint's narrative allegations.

’164 and ’980 Patent Infringement Allegations

The complaint alleges that Defendants directly infringe at least claim 1 of the ’164 and ’980 patents by making and using the Dairy Queen Apps. (Compl. ¶¶25-26, ¶¶42-43). The central theory of infringement is that the apps provide a system that displays map data on a mobile device to enable users to find and receive directions to Dairy Queen store locations. (Compl. ¶¶27, 44). This functionality is alleged to meet the limitations of the asserted claims. The complaint references Exhibits J and K as containing detailed "Evidence of Use Regarding Infringement" for the ’164 and ’980 patents, respectively. (Compl. ¶¶26, 43).

Identified Points of Contention

• Architectural Questions: The claims of the ’980 patent recite a system with a "first non-browser application" containing a "mapping component" that "invokes" a separate "second non-browser application that is a mapping application." A primary point of contention may be whether the architecture of the Dairy Queen Apps, which likely integrate with operating system-level mapping services (like Apple Maps or Google Maps) via standard APIs, matches this specific two-application structure. The court may need to determine if an API call that launches a default mapping app constitutes "invoking" a "second non-browser application" as required by the claims.
• Functional Questions: Claim 1 of the ’980 patent requires the "mapping component" to perform a sequence of actions: communicating with an online service, invoking the second application, and directing that second application to transmit a query for driving directions. A key technical question will be whether the evidence shows the Dairy Queen Apps perform this specific, multi-step process or a different, more simplified one.

V. Key Claim Terms for Construction

The Term: "invokes the mapping application"

(from claim 1 of the ’980 patent)

• Context and Importance: The definition of this term is central to the infringement analysis. The outcome may depend on whether launching a separate, default mapping application (e.g., Apple Maps) via a standard API call falls within the scope of "invokes." Practitioners may focus on this term because the distinction between a simple application hand-off and a more controlled, integrated "invocation" could be dispositive for infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification does not provide an explicit definition, which may support giving the term its plain and ordinary meaning to one of skill in the art. The patent describes various high-level methods of transferring data, such as through context menus or drag-and-drop actions, which could be argued to support a broad interpretation of inter-application communication. (’980 Patent, col. 5:62-67, col. 6:45-51).
  • Evidence for a Narrower Interpretation: The figures and corresponding description illustrate a more tightly integrated process where information from one application is used to plot a point on an existing, running map display in another. (’980 Patent, Figs. 1A-1C, 4A-4B). The use of the active verbs "invokes" and "directs" may suggest a higher degree of control and interaction than simply launching another application with a location parameter.

The Term: "mapping component of the first non-browser application"

(from claim 1 of the ’980 patent)

• Context and Importance: This term defines the specific software element within the accused app that must perform the claimed functions. Infringement may turn on whether the accused apps possess a structurally distinct "mapping component" as depicted in the patent's diagrams or if their mapping functionality is diffusely integrated.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes this element functionally, suggesting that any code that receives location data and relays it to a mapping application could meet the definition. It provides examples like "an ActiveX control; a widget," which are functional software objects. (’980 Patent, col. 4:17-24).
  • Evidence for a Narrower Interpretation: The patent's block diagrams, such as Figure 10A, consistently depict the "Mapping Component" (1002) and the "Display Application" (1004) as separate and distinct blocks. This could support an argument that the term requires a separable software module, not just any code that performs a mapping-related function.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendants provide the Accused Products and distribute instructions that guide customers to use them in an infringing manner, with the intent to cause infringement. (Compl. ¶¶28, 45, 62). Contributory infringement is based on the allegation that the apps have special features "specially designed to be used in an infringing way" and lack substantial non-infringing uses. (Compl. ¶¶29, 46, 63).
• Willful Infringement: Willfulness is alleged based on Defendants’ knowledge of the patents from at least the filing date of the lawsuit. (Compl. ¶¶30, 47, 64). The complaint further alleges willful blindness, claiming Defendants have a "policy or practice of not reviewing the patents of others." (Compl. ¶¶31, 48, 65).

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

• A core issue will be one of architectural equivalence: Does the structure of the accused Dairy Queen Apps, which presumably leverage modern operating system APIs to interact with default mapping services, align with the specific two-application system described in the asserted claims, particularly the requirement for a "first non-browser application" to "invoke" and "direct" a separate "second non-browser application"?
• A key legal question will be one of claim scope: Can the claim term "invokes the mapping application," read in light of a specification written before the maturation of modern mobile OS ecosystems, be construed broadly enough to cover the common practice of an application handing off a location query to a device's default map application via a standard API call?
• A central evidentiary question will be one of functional proof: What evidence will be presented to show that the accused apps perform the precise sequence of operations required by the claims, including the distinct actions of the "mapping component" communicating with an "online mapping service" and also directing a separate "mapping application" to obtain directions?