DCT
2:25-cv-00227
Nearby Systems LLC v. Smoothie King Franchises Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nearby Systems LLC (Texas)
- Defendant: Smoothie King Franchises, Inc. (Texas)
- Plaintiff’s Counsel: Rozier Hardt McDonough PLLC
- Case Identification: 2:25-cv-00227, E.D. Tex., 02/21/2025
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has established and maintains regular and established places of business in the District and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Smoothie King mobile application infringes four patents related to methods for combining and displaying mappable data from disparate sources onto a single digital map on a mobile device.
- Technical Context: The technology at issue pertains to mobile application mapping services, a domain critical for location-based services, customer navigation, and digital marketing.
- Key Procedural History: The complaint indicates that U.S. Patent Nos. 10,469,980, 11,937,145, and 12,185,177 are continuations of the application that resulted in U.S. Patent No. 9,532,164, establishing a patent family with a shared specification and a common priority date. No other significant procedural events are mentioned in the complaint.
Case Timeline
| Date | Event |
|---|---|
| 2007-10-12 | Earliest Priority Date for all Asserted Patents |
| 2016-12-27 | U.S. Patent No. 9,532,164 Issued |
| 2019-11-05 | U.S. Patent No. 10,469,980 Issued |
| 2024-03-19 | U.S. Patent No. 11,937,145 Issued |
| 2024-12-31 | U.S. Patent No. 12,185,177 Issued |
| 2025-02-21 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,532,164 - "Mashing Mapping Content Displayed On Mobile Devices"
- 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’s background section describes a limitation of prior art mapping services on mobile devices, where new mapping content originating from outside a mapping application (e.g., a location selected in a separate app) would be displayed on a new digital map that "does not contain any other mappable information previously displayed" (ʼ164 Patent, col. 1:33-40). This created a fragmented user experience, losing the context of any existing map view.
- The Patented Solution: The invention provides a method for "combining mappable data from disparate sources onto a single digital map" on a mobile device (ʼ164 Patent, col. 1:41-43). A second set of mappable content, found in a first application, is transmitted to a mapping application and displayed "in conjunction with any of the existing (i.e. previously-displayed) mapping content," creating a unified and persistent map view (ʼ164 Patent, col. 1:48-53). This concept is illustrated in Figures 1A-1C, which show a point of interest from a secondary application being added to an existing map that already displays another point of interest (ʼ164 Patent, Fig. 1C).
- Technical Importance: This approach allows for the creation of a consolidated map view that integrates location data from multiple applications, enhancing usability on mobile devices.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶27).
- Claim 1 of the ’164 Patent recites a system comprising:
- A memory storing a first non-browser application and a second non-browser application.
- A processor executing both applications.
- A user interface for the first non-browser application.
- A mapping component in the first application configured to invoke the second application (which is a mapping application) when "map-able content" is activated.
- The mapping component transmits the map-able content to an online mapping service that 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"
- 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 application for the ’164 Patent, this patent addresses the same problem: prior art mapping systems that could only display new, externally sourced location information on a new map, thereby losing the context of any previously viewed map content (’980 Patent, col. 1:31-38).
- The Patented Solution: The invention describes a system where a first "non-browser application" on a mobile device can display a map from an online service based on the device's GPS location, and can also invoke a separate, "second non-browser application" that is a mapping application to obtain and display driving directions to a destination (’980 Patent, col. 15:1-25). This allows a user to transition from a general map view to a specific navigational function, potentially involving a separate, dedicated mapping tool while maintaining context. Figure 1C illustrates the core concept of adding new location data (108) to an existing map (102) that already displays prior content (104) (’980 Patent, col. 2:64-col. 3:5).
- Technical Importance: The technology facilitates a more integrated workflow between general-purpose applications and specialized mapping/navigation applications on a mobile device.
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶44).
- Claim 1 of the ’980 Patent recites a system comprising:
- A memory storing a first non-browser application.
- A processor executing the first application.
- A touch screen displaying the first application's user interface.
- A GPS device for determining the mobile device's location.
- A mapping component in the first application that communicates with an online mapping service to download and display a map based on the device's location.
- The memory also stores a second non-browser application that is a mapping application.
- The mapping component invokes the second application and directs it to transmit a query to obtain driving directions from the device's location to a destination.
- The complaint does not explicitly reserve the right to assert dependent claims.
Multi-Patent Capsule: U.S. Patent No. 11,937,145 - "Mashing Mapping Content Displayed On Mobile Devices"
- Patent Identification: U.S. Patent No. 11,937,145, "Mashing Mapping Content Displayed On Mobile Devices", issued March 19, 2024.
- Technology Synopsis: The patent addresses the problem of displaying location information from different mobile applications on separate maps. The patented solution is a system where a touch on text in a first non-browser application triggers a query to an online mapping service, which then causes a second non-browser application to display a map showing the location, the user's current location, and a route between them.
- Asserted Claims: At least independent claim 1 (Compl. ¶61).
- Accused Features: The Smoothie King App's system and method 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 - "Mashing Mapping Content Displayed On Mobile Devices"
- Patent Identification: U.S. Patent No. 12,185,177, "Mashing Mapping Content Displayed On Mobile Devices", issued December 31, 2024.
- Technology Synopsis: The patent describes a system for integrating mapping functions within a mobile device. A user enters text corresponding to a location into a first non-browser application, which transmits the text to an online mapping service; in response, a second non-browser application displays a map with points-of-interest, allowing for user selection and subsequent querying for routing information.
- Asserted Claims: At least independent claim 1 (Compl. ¶78).
- Accused Features: The Smoothie King App's system and method 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 "Smoothie King App" and the website
https://www.smoothieking.com/(collectively, the "Accused Products") (Compl. ¶16, ¶18).
Functionality and Market Context
- The Accused Products are alleged to provide a system that allows customers to locate Smoothie King stores (Compl. ¶18). The complaint alleges the app provides 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 Defendant's products" (Compl. ¶28, ¶45). Defendant's advertising for the app is quoted as stating, “To find one of our many stores nationwide, simply enter your zip code” (Compl. ¶19). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
9,532,164 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a memory of a mobile device storing a first non-browser application and a second non-browser application | The Accused Products provide a system for displaying map information on a mobile device, which necessarily operates using a device memory storing the relevant applications. | ¶28 | col. 9:48-51 |
| a processor of the mobile device executing the first non-browser application and the second non-browser application | The Accused Products provide a system for displaying map information on a mobile device, which necessarily operates using a device processor executing the relevant applications. | ¶28 | col. 9:52-55 |
| a user interface of the first non-browser application configured for the mobile device | The Accused Products provide a system with a user interface for displaying map information on a mobile device. | ¶28 | col. 9:56-58 |
| a mapping component of the first non-browser application configured to invoke the second non-browser application... when map-able content... is activated... wherein the second non-browser application is a mapping application | The Accused Products provide a system for displaying map information that allows a user to identify and navigate to locations. | ¶28 | col. 9:59-65 |
| wherein the mapping component transmits the map-able content to an online mapping service configured to communicate with the second non-browser application | The Accused Products obtain data to display text and maps that present information to allow a user to identify and navigate to locations. | ¶28 | col. 9:66-col. 10:2 |
10,469,980 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a memory of a mobile device storing a first non-browser application | The Accused Products provide a system for displaying map information on a mobile device, which necessarily operates using a device memory storing the relevant application. | ¶45 | col. 15:4-5 |
| a processor of the mobile device executing the first non-browser application | The Accused Products provide a system for displaying map information on a mobile device, which necessarily operates using a device processor executing the relevant application. | ¶45 | col. 15:6-7 |
| a touch screen of the mobile device displaying a user interface of the first non-browser application | The Accused Products provide a system with a user interface displayed on a mobile device touch screen. | ¶45 | col. 15:8-10 |
| a GPS device of the mobile device determining a location of the mobile device | The Accused Products provide a system for displaying map information to allow a user to identify and navigate to locations, which suggests use of location services. | ¶45 | col. 15:11-13 |
| a mapping component... configured to communicate with an online mapping service to download map data and display a map within the user interface... based on the location of the mobile device | The Accused Products provide a system that obtains data to display maps that present information about store locations relative to the user. | ¶45 | col. 15:14-20 |
| wherein the memory stores a second non-browser application that is a mapping application | The Accused Products provide a system for displaying map information on a mobile device, which allegedly involves a separate mapping application. | ¶45 | col. 15:21-22 |
| wherein the mapping component invokes the mapping application and directs the mapping application to transmit a query including the location of the mobile device and a destination location... to obtain driving directions | The Accused Products provide a system to allow a mobile device user to identify and navigate to locations. | ¶45 | col. 15:23-col. 16:4 |
- Identified Points of Contention:
- Scope Questions: A central question for both patents may be whether the accused Smoothie King App's architecture meets the claims' requirement of a "first non-browser application" and a "second non-browser application". If the app integrates a map view using a software development kit (SDK) that operates within the app's own process, it raises the question of whether this constitutes a "second... application" as distinct from the first.
- Technical Questions: For the ’980 Patent, the analysis may focus on whether the Smoothie King App performs the specific claimed function of invoking a separate mapping application and directing it to query for "driving directions". The complaint's general allegation that the app allows users to "identify and navigate to locations" does not specify the particular two-application architecture required by claim 1 for that purpose (Compl. ¶45).
V. Key Claim Terms for Construction
For the ’164 Patent:
- The Term: "mapping component... configured to invoke the second non-browser application"
- Context and Importance: The definition of this term is critical to the infringement analysis. The dispute may turn on whether the Smoothie King App, if it uses an embedded map SDK, can be said to have a "component" that "invokes" a separate application. Practitioners may focus on this term because the distinction between an integrated software module and a separately invoked application is a key architectural difference that could be dispositive.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses relaying information to a "mapping application and/or mapping service," which might suggest that the "second application" could be interpreted more broadly to include services or components that are not standalone, user-facing applications (ʼ164 Patent, col. 1:16-18).
- Evidence for a Narrower Interpretation: The detailed description discusses minimizing a mapping application, opening another application, and then restoring the mapping application, which suggests two distinct, separate applications running on the device's operating system (ʼ164 Patent, col. 3:12-21).
For the ’980 Patent:
- The Term: "a second non-browser application that is a mapping application"
- Context and Importance: This term, like the term from the ’164 Patent, defines the required system architecture. The case may hinge on the factual question of how the Smoothie King App provides its mapping features. If the mapping functionality is entirely self-contained or provided by an integrated SDK, it raises the question of whether a "second... application" exists as required by the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discusses using components like an "ActiveX control" or a "widget" to receive and process location data, which could support an interpretation where the "second application" is a background component rather than a fully separate, user-launched program (’980 Patent, col. 4:18-24).
- Evidence for a Narrower Interpretation: Claim 1 recites both a "first non-browser application" and a "second non-browser application," with the first invoking the second. This linguistic separation strongly suggests two distinct software programs. The specification also describes a process where one application is minimized while another is launched, reinforcing the concept of separate applications (’980 Patent, col. 3:34-40).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for all four asserted patents. Inducement is alleged based on Defendant providing the Accused Products and distributing instructions, advertisements, and promotions that guide users to use them in an infringing manner, with knowledge alleged as of the filing of the complaint (Compl. ¶¶ 29, 46, 63, 80). Contributory infringement is alleged on the basis that the Accused Products have "special features that are specially designed to be used in an infringing way" and have no substantial non-infringing uses (Compl. ¶¶ 30, 47, 64, 81).
- Willful Infringement: The complaint alleges willful infringement for all four patents based on Defendant's knowledge of the patents as of the date of notification of the lawsuit (Compl. ¶¶ 31, 48, 65, 82). It further alleges willfulness based on a purported "policy or practice of not reviewing the patents of others," constituting willful blindness and objective recklessness (Compl. ¶¶ 32-33, 49-50, 66-67, 83-84).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of "architectural correspondence": do the asserted claims, which consistently recite a system with a "first non-browser application" interacting with a "second non-browser application", accurately describe the technical architecture of the accused Smoothie King App? The outcome may depend on whether the app is a single, integrated system with an embedded mapping SDK or if it interacts with a separate, distinct mapping application in a manner that meets the claim limitations.
- A key evidentiary question will be one of "functional specificity": does the accused app's general store locator function perform the specific sequence of steps recited in the independent claims? For example, the analysis will need to determine if it "invokes" a separate mapping application for displaying content "in conjunction with" pre-existing map data (as in the ’164 Patent) or for obtaining "driving directions" (as in the ’980 Patent).
- An underlying legal question will be one of "claim scope": can terms such as "non-browser application" and "mapping component" be construed broadly enough to cover software modules and SDKs operating within a single, monolithic mobile app, or does the claim language, read in light of the specification, necessitate two separately installed and executed applications?