DCT
1:23-cv-03167
Adaptive Avenue Associates Inc v. Menard Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Adaptive Avenue Associates, Inc. (Minnesota)
- Defendant: Menard, Inc. (Wisconsin)
- Plaintiff’s Counsel: Direction IP Law
- Case Identification: 1:23-cv-03167, N.D. Ill., 05/19/2023
- Venue Allegations: Venue is asserted based on Defendant maintaining regular and established places of business within the Northern District of Illinois.
- Core Dispute: Plaintiff alleges that Defendant’s website, which features a homepage slideshow, infringes two patents related to systems and methods for creating and displaying customizable, automated presentations of web content.
- Technical Context: The technology at issue addresses methods for generating and displaying sequences of web pages or other online content as a "slideshow" or "tour," intended to improve user engagement over traditional manual navigation.
- Key Procedural History: The patents-in-suit share a common inventor, who is the founder, owner, and CEO of the Plaintiff entity. The complaint notes that the '707 Patent is a continuation-in-part of the application that led to the '629 Patent and that the patents share an identical specification. The complaint also references the '707 Patent's prosecution history to assert that the claims were allowed over prior art that required manual composition of slideshows.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-20 | Earliest Priority Date for '629 & '707 Patents |
| 2007-01-30 | U.S. Patent No. 7,171,629 Issues |
| 2008-09-23 | U.S. Patent No. 7,428,707 Issues |
| 2023-05-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,171,629 - Customizable Web Site Access System And Method Therefore, issued January 30, 2007
The Invention Explained
- Problem Addressed: The patent describes a need for a system that allows website owners to provide automated, sequential presentations of web pages without the high costs of reprogramming site content or requiring users to install special development tools ('629 Patent, col. 7:60-67). Conventional web viewing was seen as "tedious and labor-intensive," relying on users to manually click through links (Compl. ¶16).
- The Patented Solution: The invention is a software system comprising a "composer" and a "performer," typically operating on a host server ('629 Patent, Fig. 1). The composer is used to create a "presentation" by defining a list of URLs, a display sequence, and a display duration for each URL ('629 Patent, Abstract). The performer then automatically loads and displays this presentation to a web user as a "slide show," replacing manual navigation with a guided tour ('629 Patent, col. 9:11-24).
- Technical Importance: The technology aimed to increase user engagement and satisfaction by guiding visitors to relevant content and reducing the need for "pointing, clicking, and scrolling," thereby encouraging them to stay on a site longer ('629 Patent, col. 13:30-40).
Key Claims at a Glance
- The complaint asserts independent claim 11 (Compl. ¶26).
- The essential elements of independent claim 11 include:
- Remotely invoking a composer operating on a host server.
- Creating a presentation in the composer, which includes establishing a list of URLs, determining a display sequence for the list, and determining a display duration for the list.
- Remotely invoking a performer operating on the host server to present the created presentation.
- Automatically and locally displaying the presentation in a slideshow format, where each URL is a slide.
- Each slide is automatically displayed to a user, absent human intervention, for the pre-determined duration.
- The complaint’s prayer for relief seeks judgment on "one or more claims" of the patent (Compl. p. 17).
U.S. Patent No. 7,428,707 - Customizable Web Site Access System And Method Therefore, issued September 23, 2008
The Invention Explained
- Problem Addressed: The '707 Patent, which shares a specification with the '629 Patent, addresses the same general problem of web navigation but focuses on automating the creation of the slideshow itself, which was a manual process in the prior art (Compl. ¶44-45).
- The Patented Solution: The invention describes an "auto-composing" system ('707 Patent, Abstract). Instead of requiring a developer to manually create a list of URLs, the system's composer can automatically compose a slideshow by extracting web page details—such as hyperlinks, data from a text file, or information from a meta tag—directly from a desired web page ('707 Patent, Abstract; Compl. ¶45).
- Technical Importance: This auto-composition feature was intended to make the slideshow creation process even more efficient and dynamic by eliminating the manual step of gathering and inputting URLs for the presentation (Compl. ¶45).
Key Claims at a Glance
- The complaint asserts independent claim 7 (Compl. ¶46).
- The essential elements of independent claim 7 include:
- Composing a presentation for a desired web page by creating a list of URLs.
- The composing step comprises one of the following: (a) automatically extracting a plurality of hyperlinks from the desired web page, (b) automatically extracting a presentation/rendition text file from the web page, or (c) automatically extracting a meta tag from the web page.
- Automatically displaying the presentation in the order of the created list of URLs.
- The complaint’s prayer for relief seeks judgment on "one or more claims" of the patent (Compl. p. 17).
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is Defendant's website, "www.menards.com", and specifically the method for creating and displaying an automated slideshow on the homepage (Compl. ¶26, 46).
- Functionality and Market Context:
- The complaint alleges that the homepage of "www.menards.com" features an automated slideshow of images, described as "featured promotional offerings" (Compl. ¶33). This functionality is allegedly implemented using HTML, JavaScript, and CSS code to present the slideshow (Compl. ¶28, 48).
- The complaint includes a screenshot from a web browser showing the homepage of "www.menards.com" with the web slideshow visible in the upper portion of the page (Compl. ¶27, Ex. E). Another exhibit depicts the alleged slide sequence (Compl. ¶27, Ex. C).
IV. Analysis of Infringement Allegations
’629 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| remotely invoking a composer operating on a host server | A web browser and its associated code remotely invoke a composer, which operates on the host server(s) of the Accused Instrumentality when a user enters the website. | ¶28 | col. 14:10-14 |
| creating a presentation in said composer, wherein said step of creating comprises the steps of: establishing a list of URLs in said composer...; determining a display sequence of said list of URLs...; and determining a duration of display for said list of URLs... | The composer, described as code and software, performs the steps of establishing the URLs for the slideshow, determining their sequence, and setting a pre-set display duration for each slide. | ¶29-32 | col. 14:17-64 |
| remotely invoking a performer operating on said host server to present said created presentation | A web user's navigation to "www.menards.com" is alleged to remotely invoke the performer, which is described as code, resources, and features on the host server. | ¶33 | col. 14:65-col. 15:1 |
| automatically locally displaying the created presentation presented by said performer in a slide show format... wherein each of said plurality of URLs comprises a slide within said created presentation, and wherein each slide is automatically displayed to a user, absent human intervention... | The performer displays the created presentation as an automated web slideshow on the user's local device, with slides advancing automatically based on a pre-set duration. A screenshot in Exhibit A is alleged to show the HTML elements comprising the slideshow. | ¶28, ¶34, ¶36 | col. 15:1-11 |
’707 Patent Infringement Allegations
| Claim Element (from Independent Claim 7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| composing a presentation for a desired web page by creating a list of URLs | Dynamic server-side components on Defendant's web servers are alleged to create a list of URLs for the slideshow images. | ¶48 | col. 8:1-17 |
| wherein said step of composing comprises (a) automatically extracting a plurality of hyperlinks from the desired web page, wherein the plurality of hyperlinks provides the URLs, or (c) automatically extracting a meta tag from the desired web page, wherein said meta tag provides said URLs... | The composer allegedly "automatically extracts web page details in order to display the slideshow images." The complaint further alleges that the "plurality of hyperlinks and corresponding web pages that get automatically extracted" are the image URLs for the slideshow. | ¶48, ¶49 | col. 8:20-41 |
| automatically displaying said presentation, wherein the presentation is presented in order of the created list of URLs | Software components are alleged to automatically load and advance the URLs to be displayed, presenting the web slideshow to the user when they enter the website. A screenshot in Exhibit A is referenced as showing the rotating class values for the series of images. | ¶50 | col. 8:51-67 |
- Identified Points of Contention:
- Scope Questions: A central question for the '629 Patent may be whether the accused system's architecture, which appears to involve a client web browser executing JavaScript sent from a server, meets the claim limitation of "remotely invoking a composer operating on a host server." The dispute may turn on whether the "composer" is considered a distinct entity operating on the server, as Figure 1 of the patent might suggest, or if server-side code that generates a client-side script can be construed as the claimed "composer."
- Technical Questions: For the '707 Patent, a key factual question is whether the accused system "automatically extracts" hyperlinks or other details from the "www.menards.com" webpage to create the slideshow, as claimed. The analysis will depend on evidence showing whether the slideshow's list of image URLs is dynamically generated by scraping the page's content or if it is a pre-defined, static list hard-coded into the website's source, which may suggest a mismatch with the "auto-composing" feature.
V. Key Claim Terms for Construction
Term 1 ('629 Patent)
- The Term: "composer operating on a host server"
- Context and Importance: This term is critical for defining the required client-server architecture of the invention. The infringement case for the '629 Patent hinges on whether the functionality alleged to be the "composer" (e.g., server-side code or scripts) is considered to be "operating on a host server" as the claim requires, or if it is merely client-side code operating in a browser.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the composer and performer as the two main "components" of a "software program" ('629 Patent, col. 9:14-16). This language may support an argument that these are logical, functional components rather than rigidly defined physical modules, allowing for implementation where server-side logic prepares instructions for a client-side performer.
- Evidence for a Narrower Interpretation: Figure 1 explicitly depicts the "Composer 12" as a distinct block located within the "Host Server 16" block ('629 Patent, Fig. 1). This could support a narrower construction requiring the composer to be a discrete, executable process running entirely on the server, as distinct from scripts merely served to a client.
Term 2 ('707 Patent)
- The Term: "automatically extracting"
- Context and Importance: This term is the central inventive concept of the asserted '707 Patent claim, distinguishing it from manual slideshow creation. Infringement will depend entirely on whether the accused system performs an "extraction" from a "desired web page" (e.g., scraping links or reading meta tags) to generate the slideshow content.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim recites extracting from sources like "hyperlinks," a "text file," or a "meta tag" found within the desired web page ('707 Patent, col. 10:41-48). This could be argued to broadly cover any automated server-side process that gathers URLs from the page's data structure before sending the final slideshow to the user.
- Evidence for a Narrower Interpretation: The complaint emphasizes that this feature was unconventional and distinguished the invention from prior art where slideshows were "composed manually" (Compl. ¶45). This prosecution history context may be used to argue for a narrower meaning that requires a dynamic, real-time scraping or parsing of a page, as opposed to simply using a pre-compiled list of URLs that happens to be stored on the server.
VI. Other Allegations
- Indirect Infringement: The complaint alleges direct infringement by the Defendant. To the extent end-users are involved in performing steps of the claimed method (e.g., by navigating to the website), the complaint asserts that such performance is attributable to the Defendant because it "directs or controls performance" (Compl. ¶33, 34). This appears to be a theory of liability for divided infringement under a direct infringement cause of action.
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case presents foundational questions of claim scope and technical operation common in software patent disputes. The outcome may turn on the court's resolution of the following issues:
A core issue will be one of architectural definition: can the '629 Patent's claim language requiring a "composer operating on a host server" be construed to read on the accused system, where server-side scripts appear to generate and deliver JavaScript for execution within a client's web browser? Or does the patent require a more distinct, self-contained server-side application?
A key evidentiary question will be one of technical mechanism: for the '707 Patent, does the Menards website's slideshow function by "automatically extracting" hyperlinks or other details from the homepage to dynamically generate its content, as the claim requires? Or is the slideshow built from a static, pre-determined list of image URLs, which would raise questions of a fundamental mismatch in technical operation with the patent's "auto-composing" feature?