Nearby Systems LLC v. Papa Johns International, Inc.

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Papa John's International, Inc. (Delaware)
  • Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:25-cv-00226, E.D. Tex., 02/21/2025
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains regular and established places of business in the District and has committed acts of patent infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s website and mobile application for locating stores and ordering pizza infringe three patents related to displaying information from one source on a digital map in a mobile device application.
• Technical Context: The technology concerns methods for integrating location-based data from disparate software applications onto a single, persistent map display on a mobile device, a common feature in modern e-commerce and logistics applications.
• Key Procedural History: The asserted patents are part of a family that claims priority back to an application filed in 2007. The complaint does not mention any prior litigation or administrative proceedings involving these patents.

Case Timeline

Date	Event
2007-10-12	Earliest Priority Date for ’164, ’980, and ’177 Patents
2013-08-03	Application filed for U.S. Patent No. 9,532,164
2016-11-08	Application filed for U.S. Patent No. 10,469,980
2016-12-27	U.S. Patent No. 9,532,164 Issued
2019-11-05	U.S. Patent No. 10,469,980 Issued
2024-02-08	Application filed for U.S. Patent No. 12,185,177
2024-12-31	U.S. Patent No. 12,185,177 Issued
2025-02-21	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 December 27, 2016

The Invention Explained

• Problem Addressed: The patent describes a limitation in prior art mobile mapping systems where new mappable content originating from outside a 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 mapping information (U.S. Patent No. 9,532,164, col. 1:31-36). This approach loses the user's existing map context.
• The Patented Solution: The invention provides a system where mappable content selected in a first "non-browser application" (like an email or social media app) is transmitted to a second, separate "mapping application." The mapping application then displays the new content as a point of interest on the same map that was already being displayed, preserving the user's prior context and adding the new information to it ('164 Patent, col. 3:1-21; Abstract). This allows for a "mashup" of data from different sources onto a single map.
• Technical Importance: The technology aimed to improve the user experience by creating a more integrated and seamless way to interact with location data across different mobile applications, a key feature for on-the-go information management ('164 Patent, col. 1:12-17).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶26).
• Essential elements of claim 1 (a system) include:
  • A memory storing a first non-browser application and a second non-browser application (a mapping application).
  • A processor executing these applications.
  • A "mapping component" of the first non-browser application configured to invoke the second (mapping) application when "map-able content" is activated.
  • The mapping component transmits the map-able content to an online mapping service which communicates 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 November 5, 2019

The Invention Explained

• Problem Addressed: Similar to its parent patent, the '980 Patent addresses the problem of siloed information, where location data found in one application cannot be easily overlaid onto a map in another application without losing the map's existing context (U.S. Patent No. 10,469,980, col. 1:26-34).
• The Patented Solution: The invention discloses a system on a mobile device comprising a first non-browser application and a separate mapping application. A "mapping component" within the first application is configured to communicate with an online mapping service to download and display map data within the first application's user interface. This component can also invoke the separate mapping application to display more detailed information, like driving directions, based on the location data ('980 Patent, col. 15:1-25). This creates an integrated mapping experience that can begin in one app and seamlessly transition to another.
• Technical Importance: This approach allows an application that is not primarily a mapping application (e.g., a retail or social app) to provide sophisticated, location-aware features to users directly within its own environment while leveraging the power of a dedicated, full-featured mapping application when needed ('980 Patent, col. 1:12-17).

Key Claims at a Glance

• The complaint asserts at least independent claim 1 (Compl. ¶43).
• Essential elements of claim 1 (a system) include:
  • A memory storing a 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 download and display a map (based on the device's location) within the user interface of the first application.
  • The memory also stores a second non-browser application that is a mapping application.
  • The mapping component invokes the mapping application to transmit a query and display driving directions.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 12,185,177 - "Mashing Mapping Content Displayed On Mobile Devices," issued December 31, 2024

• Technology Synopsis: Continuing the theme of the patent family, this patent describes a system where a user can interact with location-based text in a first application. A mapping component sends this text to an online service, receives back map data including points-of-interest, and displays it in a second user interface. The user can then select a point-of-interest to trigger a query to the online service, which results in a third user interface displaying a more detailed map in a second, separate non-browser application (U.S. Patent No. 12,185,177, col. 15:5-16:8).
• Asserted Claims: At least independent claim 1 (Compl. ¶60).
• Accused Features: The complaint alleges that the Papa John's App provides a system for displaying map information to locate stores, which infringes the patent (Compl. ¶61).

III. The Accused Instrumentality

Product Identification

The accused products are the "Papa John's Pizza and Delivery App" available on smartphone app providers and the website at www.papajohns.com (the "Accused Products") (Compl. ¶16-18).

Functionality and Market Context

• The Accused Products are alleged to provide a system and method for displaying map information on mobile devices (Compl. ¶27, ¶44, ¶61). Their function is to allow customers to locate Papa John's stores, and the complaint alleges this involves obtaining data to display text and maps that present information to identify and navigate to these locations (Compl. ¶27).
• The complaint characterizes these products as tools for Defendant to advertise, sell, and provide its products and services to customers (Compl. ¶16).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references infringement claim charts in Exhibits G, H, and I, but these exhibits were not filed with the complaint. Therefore, the infringement allegations are summarized below in prose based on the complaint's narrative.

• '164 Patent Infringement Allegations: The complaint alleges that the Accused Products provide a system for displaying map information on a mobile device (Compl. ¶27). The infringement theory appears to be that the Papa John's App functions as the "first non-browser application" which contains a "mapping component" for locating stores. This component allegedly interacts with a separate "mapping application" and an "online mapping service" to display store locations on a map, thereby meeting the limitations of claim 1 (Compl. ¶26-27).
• '980 Patent Infringement Allegations: The complaint's theory for the '980 Patent is similar. It alleges the Papa John's App uses its mapping features to allow a user to identify and navigate to store locations (Compl. ¶44). This suggests the App (the "first non-browser application") uses its GPS location to display a map of nearby stores and then invokes a mapping function to provide directions, allegedly meeting the elements of claim 1 of the '980 patent (Compl. ¶43-44).
• Identified Points of Contention:
  • Scope Questions: A central question may be whether the architecture of the Papa John's App constitutes a system of a "first non-browser application" and a "second non-browser application" as required by the claims. If the App embeds a map view (e.g., using a software development kit like the Google Maps SDK) rather than invoking a separate, standalone mapping application, a dispute may arise as to whether this architecture meets the claim limitations, which the patent specification appears to describe as two distinct applications (see, e.g., '164 Patent, col. 3:12-21, describing minimizing one application and opening another).
  • Technical Questions: The claims of the '164 and '980 patents require a "mapping component." The parties may dispute what constitutes this component within the Accused Products and whether it performs the specific functions of "invoking" a separate application and "transmitting" content as claimed.

V. Key Claim Terms for Construction

• The Term: "mapping component" (appears in claim 1 of both the '164 and '980 patents)
• Context and Importance: This term is the active agent in the claimed system, performing the crucial steps of invoking other applications and transmitting data. The infringement analysis will depend on whether the software code within the Papa John's App that handles map displays qualifies as this "component" and performs its claimed functions. Practitioners may focus on this term because its definition will determine whether an embedded map view can infringe a claim structure that appears to contemplate two separate applications.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patents do not provide an explicit definition, which may support an argument for giving the term its plain and ordinary meaning, potentially covering any software module that handles mapping functions ('164 Patent, cl. 1; '980 Patent, cl. 1).
  • Evidence for a Narrower Interpretation: The claims require the "mapping component" to be "of the first non-browser application" and to "invoke the second non-browser application" ('164 Patent, col. 16:7-12) or "invoke the mapping application" ('980 Patent, col. 15:23-24). This could support a narrower construction requiring a distinct software module within the first app that specifically calls and interacts with a separate, second app, rather than simply displaying an embedded map view.

VI. Other Allegations

• Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on allegations that Defendant provides the Accused Products and distributes instructions, advertising, and promotions that guide and encourage customers to use the mapping features in an infringing manner (Compl. ¶28, ¶45, ¶62). Contributory infringement is based on the allegation that the Accused Products have special features specifically designed for infringing use with no substantial non-infringing uses (Compl. ¶29, ¶46, ¶63).
• Willful Infringement: Willfulness is alleged based on knowledge of the patents "at least as of the date" of notification of the lawsuit (Compl. ¶30, ¶47, ¶64). The complaint also alleges willful blindness based on a purported "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 Papa John's App, which likely embeds a mapping service via an SDK, constitute the claimed system of two separate and distinct "non-browser applications," where a component in the first "invokes" the second? The case may turn on whether an embedded map view is legally equivalent to a separate, standalone mapping application as described in the patents' claims and specification.
• A key evidentiary question will be one of component functionality: what specific software module within the Accused Products constitutes the claimed "mapping component," and can Plaintiff provide evidence that this component performs the precise actions of "invoking" and "transmitting" data to a separate mapping application as required by the asserted claims?
• Finally, the case will raise a question of claim scope: can the term "invoke," which in the context of the patent specification suggests launching a separate program, be construed broadly enough to read on an application programming interface (API) call that renders a map within the user interface of the original application?