Nearby Systems LLC v. Caleres Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Caleres, Inc. d/b/a Famous Footwear (New York)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:25-cv-00025, E.D. Tex., 01/13/2025
• 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 acts of patent infringement in the district.
• Core Dispute: Plaintiff alleges that Defendant’s "Famous Footwear - Shop Shoes App" infringes four patents related to methods for combining and displaying location-based data from disparate sources on a single map interface on a mobile device.
• Technical Context: The asserted patents address the integration of mapping functions within mobile applications, specifically enabling a user to plot location information from one application onto a map displayed by another application without losing previously displayed map context.
• Key Procedural History: The four asserted patents are part of a single family of continuing applications, all claiming an earliest priority date of October 12, 2007. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to these 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’s background section describes a limitation in prior art mobile mapping services where new mapping content originating from outside a mapping application (e.g., an address in an email) could only be displayed on a new, separate digital map. This process would cause any previously displayed mapping information or context to be lost (’164 Patent, col. 1:24-35).
  • The Patented Solution: The invention provides a system where “mappable data from disparate sources” can be combined onto a single digital map within a mapping application on a mobile device (’164 Patent, col. 2:4-8). This allows a user to select location information in a first application (e.g., a social media app) and have it plotted on an existing map in a second, mapping application, preserving the original map content (’164 Patent, col. 3:1-8; Fig. 1C).
  • Technical Importance: This approach facilitates a more integrated and seamless user experience by creating a persistent, unified map view that can aggregate location data from multiple application sources without requiring the user to switch contexts.
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶27).
  • Essential elements of Claim 1 include:
    • A system with a mobile device storing a first non-browser application and a second non-browser application.
    • A processor executing both applications.
    • A mapping component in the first non-browser application.
    • The mapping component is configured to invoke the second non-browser application (which is a mapping application) when "map-able content" in the first application's user interface is activated.
    • The mapping component transmits the map-able content to an online mapping service that communicates with the second non-browser (mapping) application.

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, this patent addresses the same technical problem: new location data from a non-mapping application causing a loss of context by opening in a separate, new map (’980 Patent, col. 1:29-36).
  • The Patented Solution: The invention describes a system on a mobile device that includes a first non-browser application with a mapping component. This component can display a map within the user interface of the first application using data from an online mapping service. The system can also invoke a separate, second non-browser mapping application to obtain and display driving directions to a destination (’980 Patent, Abstract; col. 2:53-65).
  • Technical Importance: This patent claims a system architecture that embeds mapping functionality directly within a primary application while also retaining the ability to hand off specific tasks, like routing, to a dedicated mapping application.
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶44).
  • Essential elements of Claim 1 include:
    • A system with a memory storing a first and a second non-browser application.
    • A GPS device for determining the mobile device's location.
    • A mapping component within the first non-browser application that displays a map within its user interface based on the device's location.
    • The mapping component invokes the second non-browser application (which is a mapping application).
    • The mapping component directs the second mapping application to transmit a query to obtain and display driving directions.

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 March 19, 2024.
• Technology Synopsis: Continuing from the same patent family, this patent also describes technology for displaying location-based content on a mobile device. The claims focus on a system where a first non-browser application displays a map with an icon, and touching text associated with the icon causes a second non-browser application to display a second map showing a route to the icon's location (’145 Patent, col. 15:1-27).
• Asserted Claims: At least claim 1 (Compl. ¶61).
• Accused Features: The complaint alleges the "Famous Footwear App" provides a system for displaying map information on a mobile device to allow users to identify and navigate to store locations (Compl. ¶62).

Multi-Patent Capsule: U.S. Patent No. 12,185,177

• Patent Identification: U.S. Patent No. 12,185,177, “Mashing Mapping Content Displayed On Mobile Devices,” issued December 31, 2024.
• Technology Synopsis: This patent, also from the same family, claims a system where a first application displays a map and points-of-interest, and a user selection of a point-of-interest causes a second, mapping application to display a new map of that selected point (’177 Patent, col. 15:5-24).
• Asserted Claims: At least claim 1 (Compl. ¶78).
• Accused Features: The complaint alleges the "Famous Footwear App" provides a system for displaying map information on a mobile device to allow users to identify and navigate to store locations (Compl. ¶79).

III. The Accused Instrumentality

• Product Identification: The primary accused instrumentality is the "Famous Footwear - Shop Shoes App," which is made available for download on smartphone app platforms (Compl. ¶16-17). The complaint also references Defendant's website (Compl. ¶16).
• Functionality and Market Context: The complaint alleges the Famous Footwear App is designed to allow customers to locate Defendant’s stores (Compl. ¶18). Its functionality is described as providing a "system and method for displaying map information on a mobile device... to allow a mobile device user to identify and navigate to locations offering Defendant's products" (Compl. ¶28, ¶45). Defendant allegedly advertises the app by stating, “[w]ith 1,000 stores across the country, quickly find one near you” (Compl. ¶19).

IV. Analysis of Infringement Allegations

The complaint alleges infringement of at least claim 1 of each of the four asserted patents but does not provide claim charts or detailed technical descriptions of the accused app's operation. Instead, it references Exhibits H, I, J, and K as "Exemplary Evidence of Use" for each patent, respectively (Compl. ¶27, ¶44, ¶61, ¶78). As these exhibits were not filed with the complaint, a detailed element-by-element analysis is not possible based on the provided document.

The narrative infringement theory, repeated for each asserted patent, is that the Famous Footwear App provides a system for displaying map information that allows users to identify and navigate to store locations (Compl. ¶28, ¶45, ¶62, ¶79). This general description is alleged to meet the limitations of the asserted claims.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Architectural Questions: The asserted claims of the ’164 and ’980 patents require an architecture involving a first non-browser application invoking a second non-browser mapping application. A primary point of contention may be whether the Famous Footwear App, which appears to be a self-contained store locator, can be shown to operate as two distinct applications as required by the claims, or if it is a single, monolithic application.
  • Technical Questions: The complaint does not specify how the accused app allegedly performs the core "mashing" function described in the patents (i.e., adding new, external location data to a map with pre-existing content). The analysis may focus on whether the app's function of plotting store locations on a base map is technically equivalent to the claimed methods, which are described in the context of combining data from disparate sources like emails or social media posts (’164 Patent, col. 2:48-65).

V. Key Claim Terms for Construction

• The Term: "a first non-browser application" and "a second non-browser application that is a mapping application" (e.g., ’164 Patent, claim 1).
• Context and Importance: These terms appear central to the claims and define the required system architecture. The dispute will likely hinge on whether the functionality of the single Famous Footwear App can be conceptually divided to meet this two-part structure, or if the claims require two separately executable programs. Practitioners may focus on this term because the complaint's allegations concern a single app, whereas the patents' specification consistently illustrates two different applications interacting (e.g., a social media app and a map app).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not explicitly define "application," which may leave room for an argument that distinct software modules within a single program could qualify.
  • Evidence for a Narrower Interpretation: The patent specification repeatedly provides examples and figures depicting two distinct applications with separate user interfaces, such as "Facebook 150" and a mapping application displaying "digital map 102" (’980 Patent, col. 2:53-55; Figs. 1A-1B). This may support a construction requiring two independent programs.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant provides the Accused Products and distributes instructions and advertisements that guide and encourage customers to use the app in an infringing manner (Compl. ¶29, ¶46). It also alleges contributory infringement on the basis that the app has "special features" that are not "staple articles of commerce suitable for substantial non-infringing use" (Compl. ¶30, ¶47).
• Willful Infringement: Willfulness is alleged based on Defendant’s knowledge of the patents acquired upon the filing of the complaint (post-suit knowledge) (Compl. ¶31, ¶48). The complaint further alleges on "information and belief" that Defendant has a "policy or practice of not reviewing the patents of others," constituting willful blindness (Compl. ¶32, ¶49).

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

• Architectural Equivalence: A core issue will be whether the apparently self-contained architecture of the accused store locator app can be mapped onto the two-application structure ("a first non-browser application" and "a second non-browser... mapping application") that is a required element of the asserted independent claims.
• Functional Mismatch: A key evidentiary question will be whether simply displaying a retailer's own store locations on a map within its branded app constitutes infringement of patents that describe combining "mappable data from disparate sources" onto a map with "previously-displayed mapping content." The case may turn on the factual differences between a standard store locator and the dynamic, multi-source data aggregation described in the patents.
• Sufficiency of Allegations: Given the complaint’s lack of specific technical detail and its reliance on unfiled evidentiary exhibits, an early focus of the case may be on whether the pleadings provide sufficient factual matter to state a plausible claim for infringement under the standards set by Twombly and Iqbal.