Nearby Systems LLC v. Valvoline Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Nearby Systems LLC (Texas)
  • Defendant: Valvoline, Inc. (Kentucky)
  • Plaintiff's Counsel: Rozier Hardt McDonough PLLC
• Case Identification: 2:26-cv-00251, E.D. Tex., 03/26/2026
• 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, including multiple service center locations, and has committed acts of infringement there.
• Core Dispute: Plaintiff alleges that Defendant's "Valvoline App" and associated website infringe four patents related to methods for combining and displaying location-based data from disparate sources on a single digital map.
• Technical Context: The technology at issue concerns the integration of location data from various sources into a unified map view on a mobile device, a fundamental feature of modern location-based services and applications.
• Key Procedural History: The four asserted patents are members of the same patent family. The complaint notes that U.S. Patent Nos. 10,469,980, 11,937,145, and 12,185,177 are continuations of earlier applications in a chain that originates with the application leading to U.S. Patent No. 9,532,164.

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 mapping systems where new location information originating from outside a mapping application (e.g., from a different app or a website) could only be displayed on a new, separate digital map, which would not contain any previously displayed mapping content U.S. Patent No. 10,469,980, col. 1:31-39
• The Patented Solution: The invention discloses a method for combining, or "mashing," mappable data from disparate sources onto a single, existing digital map on a mobile device '164 Patent, abstract For instance, a user could identify a location in one application (e.g., a social media app) and have it appear as a new point of interest on a map that is already displaying other, unrelated points of interest, thereby creating a consolidated view '164 Patent, FIG. 1C '164 Patent, col. 2:40-53
• Technical Importance: This approach enhanced the user experience by allowing for the aggregation of location-based information into a single, unified interface, eliminating the need to toggle between different map views or applications.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 Compl. ¶27
• The complaint does not provide the text of the asserted claims.

U.S. Patent No. 10,469,980 - Mashing Mapping Content Displayed On Mobile Devices

• Issued: November 5, 2019

The Invention Explained

• Problem Addressed: The '980 Patent addresses the same technical problem as its parent '164 patent: the inability of prior art systems to add new mapping content from an external source to an already existing digital map view containing prior content '980 Patent, col. 1:24-39
• The Patented Solution: The patent claims a system on a mobile device comprising a "first non-browser application" with a "mapping component." This component is configured to invoke a separate "second non-browser application that is a mapping application" to display location-based content '980 Patent, claim 1 The invention allows for information from one application to be mapped by another, separate application '980 Patent, abstract
• Technical Importance: This patent refines the claimed invention by defining a specific system architecture involving two distinct non-browser applications interacting to achieve the mapping integration.

Key Claims at a Glance

• The complaint asserts at least independent claim 1 Compl. ¶44
• Claim 1 of the '980 Patent recites a system for displaying location-based content, with the following essential elements:
  • A memory storing a first non-browser application and a second non-browser application (a mapping application).
  • A processor executing the first non-browser application.
  • A touch screen displaying the user interface of 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 download and display a map.
  • The mapping component invokes the second non-browser (mapping) application to transmit a query and display driving directions.

U.S. Patent No. 11,937,145 - Mashing Mapping Content Displayed On Mobile Devices

• Issued: March 19, 2024
• Technology Synopsis: Continuing the theme of the patent family, this patent claims a system where a user's touch of text corresponding to a location in a "first non-browser application" causes a "mapping component" to query an online mapping service '145 Patent, claim 1 In response, a "second non-browser application" displays a map showing a route between the device's current location and the location from the selected text '145 Patent, claim 1
• Asserted Claims: The complaint asserts at least claim 1 Compl. ¶61
• Accused Features: The complaint alleges that the Accused Products provide customers with a system for displaying map information to identify and navigate to Defendant's locations Compl. ¶62

U.S. Patent No. 12,185,177 - Mashing Mapping Content Displayed On Mobile Devices

• Issued: December 31, 2024
• Technology Synopsis: This patent describes a system where a user interface receives text for a location and, in response, an online mapping service provides map data including at least one point-of-interest '177 Patent, claim 1 A user selection of one of these points of interest causes the system to invoke a second, separate non-browser application to display a new map of the selected point '177 Patent, claim 1
• Asserted Claims: The complaint asserts at least claim 1 Compl. ¶78
• Accused Features: The infringement allegation centers on the Accused Products' system for displaying map information that allows a user to identify and navigate to locations offering Defendant's products Compl. ¶79

III. The Accused Instrumentality

Product Identification

The complaint identifies the "Accused Products" as the "Valvoline App," which is available for download on smartphones, and the website https://www.valvoline.com/ Compl. ¶17 Compl. ¶18 Compl. ¶19

Functionality and Market Context

The complaint alleges the Accused Products are designed to allow customers to locate Defendant's service centers, manage their accounts, and place orders Compl. ¶19 The core accused functionality is the system and method for displaying map information on a mobile device to enable users to identify and navigate to Valvoline's business locations Compl. ¶28 Compl. ¶45

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint references Exhibits K, L, M, and N as "Exemplary Evidence of Use," which appear to function as infringement charts but were not included with the complaint document provided for analysis. Therefore, the infringement allegations are summarized in prose based on the complaint's narrative.

• '164 Patent Infringement Allegations: The complaint alleges that the Accused Products directly infringe at least claim 1 of the '164 patent by providing a system and method for displaying map information on a mobile device Compl. ¶27 Compl. ¶28 The narrative theory suggests that the Valvoline App's function of showing store locations on a map constitutes an infringing combination of mappable data from different sources, as claimed by the patent Compl. ¶22
• '980 Patent Infringement Allegations: The complaint asserts that the Accused Products infringe at least claim 1 of the '980 patent by providing a system for displaying map information that allows users to identify and navigate to Defendant's locations Compl. ¶44 Compl. ¶45 This theory appears to map the Valvoline App to the "first non-browser application" and a mapping service or application it uses to the "second non-browser application" recited in the patent's claims.
• Identified Points of Contention:
  • Scope Questions: A potential point of contention may be whether the patents' focus on combining content from "disparate applications" (e.g., a social media app and a separate map app) can be read to cover a single, integrated application (the Valvoline App) that retrieves its own proprietary location data from a backend server for display on an embedded map. The definition of what constitutes a "disparate source" or content "found outside the mapping application" may be a central issue Compl. ¶22
  • Technical Questions: For the '980 patent and its continuations, a key technical question will be whether the Valvoline App "invokes" a "second non-browser application that is a mapping application" as required by the claims '980 Patent, claim 1 The analysis may depend on whether using an embedded mapping SDK within the Valvoline App is functionally and legally equivalent to launching a distinct, separate mapping application like Google Maps or Apple Maps.

V. Key Claim Terms for Construction

• The Term: "second non-browser application that is a mapping application" (from '980 Patent, claim 1)
• Context and Importance: The infringement theory for the '980 patent and its continuations appears to depend on this architectural limitation. Whether the Accused Product meets this element will be a critical issue. Practitioners may focus on this term to determine if an application using an embedded map SDK, rather than launching a fully separate map application, falls within the claim's scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent's abstract lists examples of map-display applications including "Google Maps®, ... iPhone® maps, Waze® etc." '980 Patent, abstract A party may argue that this language is exemplary and that the "application" can refer to the underlying software service or SDK, not just the user-facing, standalone app.
  • Evidence for a Narrower Interpretation: The language of claim 1 states the "mapping component invokes the mapping application and directs the mapping application to transmit a query" '980 Patent, claim 1 This language, suggesting a hand-off of control and data between two entities, may support an interpretation that two distinct, separately executable applications are required, not an integrated one.
• The Term: "mappable content, found outside the mapping application" (concept from '164 patent family, e.g., Compl. ¶22)
• Context and Importance: This term is fundamental to the core novelty described in the patent family-the "mashing" of external data with an existing map. Infringement may hinge on whether location data retrieved from Valvoline's own servers and provided to its app is considered "outside the mapping application."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A party could argue that "outside the mapping application" means any data source not natively part of the base map-rendering engine, which would include data retrieved via an API call to a separate product or location database server. The specification describes receiving location data from various sources like websites, emails, and other applications ('980 Patent, FIGS. 1B, 6, 7A).
  • Evidence for a Narrower Interpretation: The patent's primary embodiments illustrate a user actively selecting content within one distinct application (e.g., a Facebook post) to be mapped in another '980 Patent, FIG. 1B This could support a narrower construction where the content must originate from a separate user-facing application on the device, not from the accused application's own backend infrastructure.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by providing the Accused Products and instructing users on how to use their mapping features Compl. ¶29 Compl. ¶46 It also alleges contributory infringement, stating that the Accused Products contain special features designed for infringement that are not staple articles of commerce suitable for substantial non-infringing use Compl. ¶30 Compl. ¶47
• Willful Infringement: Willfulness allegations are based on Defendant's knowledge of the patents as of the filing of the lawsuit (post-suit knowledge) Compl. ¶31 Compl. ¶48 The complaint further alleges willful blindness based on a purported "policy or practice of not reviewing the patents of others" Compl. ¶32 Compl. ¶49

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

• A core issue will be one of architectural equivalence: does the accused system-a single, integrated application that retrieves its own location data from a server and displays it using an embedded map SDK-infringe claims that, based on the specification's examples, appear directed to a process of transferring data between two separate, user-facing applications on a mobile device?
• The outcome may depend on a question of definitional scope during claim construction: can the term "second non-browser application that is a mapping application" be construed to cover an embedded software development kit (SDK), and can proprietary data from an application's own backend server be considered content "found outside the mapping application"?