Case 2:22-cv-00206-JRG-RSP Document 1 Filed 06/15/22 Page 1 of 13 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`NEARBY SYSTEMS LLC,
`Plaintiff,
`
`v.
`CVS HEALTH CORPORATION and CVS
`PHARMACY, INC.,
`Defendants.
`
`Civil Action No. 2:22-cv-00206
`
`
`JURY TRIAL DEMANDED
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Nearby Systems LLC (“Nearby Systems” or “Plaintiff”) files this complaint
`
`against CVS Health Corporation (“CVS Health”) and CVS Pharmacy, Inc. (“CVS Pharmacy”)
`
`(collectively, “Defendants”) alleging, based on its own knowledge as to itself and its own actions,
`
`and based on information and belief as to all other matters, as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is a patent infringement action to stop Defendants’ infringement of the following
`
`United States Patents (the “Asserted Patent”) issued by the United States Patent and Trademark
`
`Office (“USPTO”), a copy of which are attached hereto as Exhibit A and Exhibit B:
`
`A.
`
`B.
`
` U.S. Patent No.
`9,532,164
`(the “’164 patent”)
`10,469,980
`(the “’980 patent”)
`
`Title
`Mashing Mapping Content Displayed On Mobile Devices
`
`Mashing Mapping Content Displayed On Mobile Devices
`
`2.
`
`Nearby Systems seeks injunctive relief and monetary damages.
`
`PARTIES
`
`3.
`
`Plaintiff is a limited liability company formed under the laws of Texas with its
`
`registered office address located in Bernardsville, New Jersey.
`
`

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`4.
`
`CVS Health is a corporation organized and existing under the laws of the State of
`
`Delaware.
`
`5.
`
`CVS Health has its principal place of business at One CVS Drive, Woonsocket, Rhode
`
`Island, 02895.
`
`6.
`
`CVS Health can be served through its registered agent, The Corporation Trust
`
`Company, at the following registered service address: Corporation Trust Center, 1209 Orange
`
`Street, Wilmington, Delaware 19801.
`
`7.
`
`CVS Pharmacy is a corporation organized and existing under the laws of the State of
`
`Rhode Island.
`
`8.
`
`CVS Pharmacy has its principal place of business at One CVS Drive, Woonsocket,
`
`Rhode Island, 02895.
`
`9.
`
`CVS Pharmacy can be served through its registered agent, CT Corporation System, at
`
`the following registered service addresses: 1) 450 Veterans Memorial Parkway, Suite 7A, East
`
`Providence, Rhode Island, 02914; 2) 1999 Bryan Street, Suite 900, Dallas, Texas, 75201.
`
`10.
`
`Defendants maintain more than 800 pharmacies at which they operate their businesses
`
`in Texas1 that are the subject of this patent infringement case, including the location at 400 East
`
`End Boulevard North, Marshall, Texas, 75670.2
`
`JURISDICTION AND VENUE
`
`11.
`
`Nearby Systems repeats and re-alleges the allegations in the Paragraphs above as
`
`though fully set forth in their entirety.
`
`
`1 https://www.cvs.com/store-locator/cvs-pharmacy-locations/Texas
`2 https://www.cvs.com/store-locator/marshall-tx-pharmacies/400-e-end-blvd-north-marshall-tx-75670/storeid=7293
`2
`
`
`
`

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`12.
`
`This is an action for infringement of a United States patent arising under 35 U.S.C. §§
`
`271, 281, and 284–285, among others. This Court has subject matter jurisdiction of the action
`
`under 28 U.S.C. § 1331 and § 1338(a).
`
`13.
`
`Defendants are subject to this Court’s specific and general personal jurisdiction under
`
`due process and/or the Texas Long Arm Statute due at least to Defendants’ substantial business in
`
`this judicial district, including: (i) At least a portion of the infringements alleged herein; and (ii)
`
`regularly doing or soliciting business, engaging in other persistent courses of conduct, or deriving
`
`substantial revenue from goods and services provided to individuals in Texas and in this district.
`
`14.
`
`Specifically, Defendants intend to do and do business in, have committed acts of
`
`infringement in, and continue to commit acts of infringement in this District directly, and offer
`
`their services, including those accused of infringement here, to customers and potential customers
`
`located in Texas, including in this District.
`
`15.
`
`16.
`
`Defendants maintain a regular and established places of business in this District.
`
`Defendants commit acts of infringement in this District, including, but not limited to,
`
`use of the Accused Instrumentalities identified below.
`
`17.
`
`Therefore, venue is proper against Defendants in this District pursuant to 28 U.S.C. §
`
`1400(b) because they have established and maintained a regular place of business in this District
`
`and have committed acts of patent infringement in this District.
`
`THE ACCUSED INSTRUMENTALITIES
`
`18.
`
`Nearby Systems repeats and re-alleges the allegations in the Paragraphs above as
`
`though fully set forth in their entirety.
`
`19.
`
`Based upon public information, Defendants own, operate, advertise, and/or control the
`
`websites www.cvshealth.com and www.cvs.com through which they advertise, sell, offer to sell,
`
`
`
`3
`
`

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`provide and/or educate customers about their products and services that provide infringing
`
`systems. See Exhibit C and Exhibit D.
`
`20.
`
`Defendants use, cause to be used, sell, offer for sale, provide, supply, or distribute one
`
`or more mobile device applications, including in particular the “CVS Pharmacy App” (The
`
`“Accused Instrumentalities”) that are designed to “help consumers save time and money through
`
`an integrated experience that includes mobile payment, ExtraCare offers, prescription information
`
`and refill/pickup options and Curbside Pickup services.” Ex. C.
`
`21.
`
`The CVS Pharmacy App is available through the App Store (see Exhibit E) and
`
`through Google Play (see Exhibit F).
`
`COUNT I: INFRINGEMENT OF U.S. PATENT NO. 9,532,164
`
`22.
`
`Nearby Systems repeats and re-alleges the allegations in the Paragraphs above as
`
`though fully set forth in their entirety.
`
`23.
`
`The USPTO duly issued the ’164 patent on December 27, 2016 after full and fair
`
`examination of Application No. 13/987,520 which was filed August 3, 2013 and was a
`
`continuation-in-part of application No. 11/974,258. A true and correct copy of the ’164 patent is
`
`attached as Exhibit A.
`
`24.
`
`The claims of the ’164 patent are not directed to an abstract idea and are not limited to
`
`well-understood, routine, or conventional activity. Rather, the claimed inventions include
`
`inventive components that improve upon the function and operation of mapping systems by, for
`
`example, combining mappable data from disparate sources onto a single digital map in a mapping
`
`application and may include a second set of mappable content, found outside the mapping
`
`application, that may be transmitted to the mapping application for mapping in conjunction with
`
`any of the existing (i.e. previously-displayed) mapping content.
`
`
`
`4
`
`

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`25.
`
`The written description of the ’164 patent describes in technical detail each limitation
`
`of the claims, allowing a skilled artisan to understand the scope of the claims and how the non-
`
`conventional and non-generic combination of claim limitations is patently distinct from and
`
`improved upon what may have been considered conventional or generic in the art at the time of
`
`the invention.
`
`26.
`
`Nearby Systems owns all substantial rights, interest, and title in and to the ’164 patent,
`
`including the sole and exclusive right to prosecute this action and enforce it against infringers and
`
`to collect damages for all relevant times.
`
`27.
`
`Nearby Systems or its predecessors-in-interest have satisfied all statutory obligations
`
`required to collect pre-filing damages for the full period allowed by law for infringement of the
`
`’164 patent.
`
`28.
`
`Defendants have directly infringed and continue to directly infringe one or more
`
`claims of the ’164 patent by using, selling, offering to sell, providing, supplying, or distributing
`
`the Accused Instrumentalities.
`
`29.
`
`Defendants have directly infringed and continue to directly infringe, either literally or
`
`under the doctrine of equivalents, at least claim 1 of the ’164 patent. For example, the Accused
`
`Instrumentalities (including the CVS Pharmacy app) provide a system and method for displaying
`
`map information on a mobile device (such as a smartphone or internet-enabled tablet) 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. See Ex. C, Ex. D.
`
`30.
`
`Since at least the time of receiving the original complaint in this action, Defendants
`
`have also indirectly infringed and continue to indirectly infringe the ’164 patent by inducing others
`
`to directly infringe its claims. Defendants have induced and continue to induce customers and
`
`
`
`5
`
`

`

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`end-users, including, but not limited to, Defendants’ customers, employees, partners, or
`
`contractors, to directly infringe, either literally or under the doctrine of equivalents, the ’164 patent
`
`by providing use of the Accused Instrumentalities. Defendants took active steps, directly or
`
`through contractual relationships with others, with the specific intent to cause them to use the
`
`Accused Instrumentalities in a manner that infringes one or more claims of the ’164 patent,
`
`including, for example, claim 1. Such steps by Defendants included, among other things, advising
`
`or directing customers, personnel, contractors, or end-users to use the Accused Instrumentalities
`
`in an infringing manner; advertising and promoting the use of the Accused Instrumentalities in an
`
`infringing manner; or distributing instructions that guide users to use the Accused Instrumentalities
`
`in an infringing manner. Defendants are performing these steps, which constitute induced
`
`infringement with the knowledge of the ’164 patent and with the knowledge that the induced acts
`
`constitute infringement. Defendants are aware that the normal and customary use of the Accused
`
`Instrumentalities by others would infringe the ’164 patent. Defendants’ inducement is ongoing.
`
`See Ex. C, Ex. D.
`
`31.
`
`Defendants have also indirectly infringed and continue to indirectly infringe by
`
`contributing to the infringement of the ’164 patent. Defendants have contributed and continue to
`
`contribute to the direct infringement of the ’164 patent by its customers, personnel, and contractors.
`
`The Accused Instrumentalities have special features that are specially designed to be used in an
`
`infringing way and that have no substantial uses other than ones that infringe one or more claims
`
`of the ’164 patent, including, for example, claim 1. The special features constitute a material part
`
`of the invention of one or more of the claims of the ’164 patent and are not staple articles of
`
`commerce suitable for substantial non-infringing use. Defendants’ contributory infringement is
`
`ongoing. See Ex. C, Ex. D.
`
`
`
`6
`
`

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`32.
`
`Defendants had knowledge of the ’164 patent at least as of the date when each was
`
`notified of the filing of this action.
`
`33.
`
`Furthermore, on information and belief, Defendants have a policy or practice of not
`
`reviewing the patents of others, including instructing its employees to not review the patents of
`
`others, and thus have been willfully blind of Nearby Systems’ patent rights.
`
`34.
`
`Defendants’ actions are at least objectively reckless as to the risk of infringing a valid
`
`patent and this objective risk was either known or should have been known by Defendants.
`
`35.
`
`Defendants’ infringement of the ’164 patent is, has been, and continues to be willful,
`
`intentional, deliberate, or in conscious disregard of Nearby Systems’ rights under the patent.
`
`36.
`
`Nearby Systems has been damaged as a result of the infringing conduct by Defendants
`
`alleged above. Thus, Defendants are liable to Nearby Systems in an amount that compensates it
`
`for such infringements, which by law cannot be less than a reasonable royalty, together with
`
`interest and costs as fixed by this Court under 35 U.S.C. § 284.
`
`37.
`
`Nearby Systems has suffered irreparable harm, through its loss of market share and
`
`goodwill, for which there is no adequate remedy at law. Nearby Systems has and will continue to
`
`suffer this harm by virtue of Defendants’ infringement of the ’164 patent. Defendants’ actions
`
`have interfered with and will interfere with Nearby Systems’ ability to license technology. The
`
`balance of hardships favors Nearby Systems’ ability to commercialize its own ideas and
`
`technology. The public interest in allowing Nearby Systems to enforce its right to exclude
`
`outweighs other public interests, which supports injunctive relief in this case.
`
`COUNT II: INFRINGEMENT OF U.S. PATENT NO. 10,469,980
`
`38.
`
`Nearby Systems repeats and re-alleges the allegations in the Paragraphs above as
`
`though fully set forth in their entirety.
`
`
`
`7
`
`

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`39.
`
`The USPTO duly issued the ’980 patent on November 5, 2019 after full and fair
`
`examination of Application No. 15/346,599 which was filed November 8, 2016 and was a
`
`continuation of Application No. 13/987,520 (which ripened into the ’164 patent). A true and
`
`correct copy of the ’980 patent is attached as Exhibit B.
`
`40.
`
`The claims of the ’980 patent are not directed to an abstract idea and are not limited to
`
`well-understood, routine, or conventional activity. Rather, the claimed inventions include
`
`inventive components that improve upon the function and operation of mapping systems by, for
`
`example, combining mappable data from disparate sources onto a single digital map in a mapping
`
`application and may include a second set of mappable content, found outside the mapping
`
`application, that may be transmitted to the mapping application for mapping in conjunction with
`
`any of the existing (i.e. previously-displayed) mapping content.
`
`41.
`
`The written description of the ’980 patent describes in technical detail each limitation
`
`of the claims, allowing a skilled artisan to understand the scope of the claims and how the non-
`
`conventional and non-generic combination of claim limitations is patently distinct from and
`
`improved upon what may have been considered conventional or generic in the art at the time of
`
`the invention.
`
`42.
`
`Nearby Systems owns all substantial rights, interest, and title in and to the ’980 patent,
`
`including the sole and exclusive right to prosecute this action and enforce it against infringers and
`
`to collect damages for all relevant times.
`
`43.
`
`Nearby Systems or its predecessors-in-interest have satisfied all statutory obligations
`
`required to collect pre-filing damages for the full period allowed by law for infringement of the
`
`’980 patent.
`
`
`
`8
`
`

`

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`
`44.
`
`Defendants have directly infringed and continue to directly infringe one or more
`
`claims of the ’980 patent by using, selling, offering to sell, providing, supplying, or distributing
`
`the Accused Instrumentalities.
`
`45.
`
`Defendants have directly infringed and continue to directly infringe, either literally or
`
`under the doctrine of equivalents, at least claim 1 of the ’980 patent. For example, the Accused
`
`Instrumentalities (including the CVS Pharmacy app) provide Defendants’ customers a system and
`
`method for displaying map information on a mobile device (such as a smartphone or internet-
`
`enabled tablet) to obtain the data to display text and maps that present information to allow the
`
`mobile device user to identify and navigate to locations offering Defendants’ products. See Ex. C,
`
`Ex. D.
`
`46.
`
`Since at least the time of receiving the original complaint in this action, Defendants
`
`have also indirectly infringed and continue to indirectly infringe the ’980 patent by inducing others
`
`to directly infringe its claims. Defendants have induced and continue to induce customers and
`
`end-users, including, but not limited to, Defendants’ customers, employees, partners, or
`
`contractors, to directly infringe, either literally or under the doctrine of equivalents, the ’980 patent
`
`by providing or requiring use of the Accused Instrumentalities. Defendants took active steps,
`
`directly or through contractual relationships with others, with the specific intent to cause them to
`
`use the Accused Instrumentalities in a manner that infringes one or more claims of the ’980 patent,
`
`including, for example, claim 1. Such steps by Defendants included, among other things, advising
`
`or directing customers, personnel, contractors, or end-users to use the Accused Instrumentalities
`
`in an infringing manner; advertising and promoting the use of the Accused Instrumentalities in an
`
`infringing manner; or distributing instructions that guide users to use the Accused Instrumentalities
`
`in an infringing manner. Defendants are performing these steps, which constitute induced
`
`
`
`9
`
`

`

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`
`infringement with the knowledge of the ’980 patent and with the knowledge that the induced acts
`
`constitute infringement. Defendants are aware that the normal and customary use of the Accused
`
`Instrumentalities by others would infringe the ’980 patent. Defendants’ inducement is ongoing.
`
`47.
`
`Defendants have also indirectly infringed and continue to indirectly infringe by
`
`contributing to the infringement of the ’980 patent. Defendants have contributed and continue to
`
`contribute to the direct infringement of the ’980 patent by its customers, personnel, and contractors.
`
`The Accused Instrumentalities have special features that are specially designed to be used in an
`
`infringing way and that have no substantial uses other than ones that infringe one or more claims
`
`of the ’980 patent, including, for example, claim 1. The special features constitute a material part
`
`of the invention of one or more of the claims of the ’980 patent and are not staple articles of
`
`commerce suitable for substantial non-infringing use. Defendants’ contributory infringement is
`
`ongoing.
`
`48.
`
`Defendants had knowledge of the ’980 patent at least as of the date when it was
`
`notified of the filing of this action.
`
`49.
`
`Furthermore, on information and belief, Defendants have a policy or practice of not
`
`reviewing the patents of others, including instructing its employees to not review the patents of
`
`others, and thus have been willfully blind of Nearby Systems’ patent rights.
`
`50.
`
`Defendants’ actions are at least objectively reckless as to the risk of infringing a valid
`
`patent and this objective risk was either known or should have been known by Defendants.
`
`51.
`
`Defendants’ infringement of the ’980 patent is, has been, and continues to be willful,
`
`intentional, deliberate, or in conscious disregard of Nearby Systems’ rights under the patent.
`
`52.
`
`Nearby Systems has been damaged as a result of the infringing conduct by Defendants
`
`alleged above. Thus, Defendants are liable to Nearby Systems in an amount that compensates it
`
`
`
`10
`
`

`

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`for such infringements, which by law cannot be less than a reasonable royalty, together with
`
`interest and costs as fixed by this Court under 35 U.S.C. § 284.
`
`53.
`
`Nearby Systems has suffered irreparable harm, through its loss of market share and
`
`goodwill, for which there is no adequate remedy at law. Nearby Systems has and will continue to
`
`suffer this harm by virtue of Defendants’ infringement of the ’980 patent. Defendants’ actions
`
`have interfered with and will interfere with Nearby Systems’ ability to license technology. The
`
`balance of hardships favors Nearby Systems’ ability to commercialize its own ideas and
`
`technology. The public interest in allowing Nearby Systems to enforce its right to exclude
`
`outweighs other public interests, which supports injunctive relief in this case.
`
`JURY DEMAND
`
`Nearby Systems hereby requests a trial by jury on all issues so triable by right.
`
`PRAYER FOR RELIEF
`
`Nearby Systems requests that the Court find in its favor and against Defendants, and that
`
`the Court grant Nearby Systems the following relief:
`
`a.
`
`Judgment that one or more claims of each of the Asserted Patents has been
`
`infringed, either literally or under the doctrine of equivalents, by Defendants or
`
`others acting in concert therewith;
`
`b.
`
`A permanent injunction enjoining Defendants and their officers, directors, agents,
`
`servants, affiliates, employees, divisions, branches, subsidiaries, parents, and all
`
`others acting in concert therewith from infringement of the ’164 patent and the ’980
`
`patent; or, in the alternative, an award of a reasonable ongoing royalty for future
`
`infringement of the ’164 patent and ’980 patent by such entities;
`
`
`
`11
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`c.
`
`Judgment that Defendants account for and pay to Nearby Systems all damages to
`
`and costs incurred by it because of Defendants’ infringing activities and other
`
`conduct complained of herein;
`
`d.
`
`Judgment that Defendants’ infringements be found willful as to the ’164 patent and
`
`the ’980 patent, and that the Court award treble damages for the period of such
`
`willful infringement pursuant to 35 U.S.C. § 284;
`
`e.
`
`f.
`
`Pre-judgment and post-judgment interest on the damages caused by Defendants’
`
`infringing activities and other conduct complained of herein;
`
`That this Court declare this an exceptional case and award Nearby Systems its
`
`reasonable attorneys’ fees and costs in accordance with 35 U.S.C. § 285;
`
`g.
`
`That this Court enjoin Defendants’ further infringement of the ’164 patent and the
`
`’980 patent; and
`
`h.
`
`All other and further relief as the Court may deem just and proper under the
`
`circumstances.
`
`
`
`12
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`

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`Case 2:22-cv-00206-JRG-RSP Document 1 Filed 06/15/22 Page 13 of 13 PageID #: 13
`
`Dated: June 15, 2022
`
`Respectfully submitted,
`
`By:/s/ James F. McDonough, III
`Jonathan L. Hardt (TX 24039906)*
`ROZIER HARDT MCDONOUGH PLLC
`712 W. 14th Street, Suite C
`Austin, Texas 78701
`Telephone: (210) 289-7541
`Email: hardt@rhmtrial.com
`
`C. Matthew Rozier (CO 46854)*
`ROZIER HARDT MCDONOUGH PLLC
`2590 Walnut Street, Suite 10
`Denver, Colorado 80205
`Telephone: (720) 820-3006
`Email: matt@rhmtrial.com
`
`James F. McDonough, III*
`Jonathan R. Miller*
`Travis E. Lynch*
`ROZIER HARDT MCDONOUGH PLLC
`3621 Vinings Slope, Suite 4300
`Atlanta, Georgia 30339
`Telephone: (470) 480-9505; -9517; -9514
`Email: jim@rhmtrial.com
`Email: miller@rhmtrial.com
`Email: lynch@rhmtrial.com
`
`Attorneys for Plaintiff NEARBY SYSTEMS LLC
`
`*Admitted to the Eastern District of Texas
`
`
`List Of Exhibits
`A. US Patent No. 9,532,164
`B. US Patent No. 10,469,980
`C. Webpage: Mobile Apps Offered By CVS Pharmacy
`D. Webpage: CVS Mobile App Offered By CVS Pharmacy
`E. Webpage: CVS Pharmacy App Available at the App Store
`F. Webpage: CVS Pharmacy App Available at Google Play
`
`
`
`
`
`13
`
`