Adaptive Avenue Associates Inc v. OpticsPlanet Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Adaptive Avenue Associates, Inc. (Minnesota)
  • Defendant: OpticsPlanet, Inc. (Illinois)
  • Plaintiff’s Counsel: Direction IP Law
• Case Identification: 1:23-cv-15974, N.D. Ill., 11/15/2023
• Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendant is an Illinois corporation that resides and has its principal place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s e-commerce website, which features an automated image slideshow, infringes patents related to systems and methods for creating and displaying customizable sequences of web content.
• Technical Context: The technology at issue addresses automated web content presentation systems, commonly seen today as promotional carousels or slideshows on website homepages.
• Key Procedural History: The '707 Patent is a continuation-in-part of the application that issued as the '629 Patent, indicating a shared technical disclosure. The complaint alleges that during prosecution of the '707 Patent, the invention was distinguished from prior art based on its capability for automatic extraction of web page details.

Case Timeline

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 create automated presentations of web page sequences without costly reprogramming, and for users to view these presentations without installing special software (Compl. ¶11; ’629 Patent, col. 7:60-67). At the time, viewing web content was often a "monolithic" or "tedious and labor-intensive" process of manually clicking through individual pages (Compl. ¶16).
• The Patented Solution: The invention proposes a client-server architecture with two main components: a "composer" and a "performer," both operating on a host server (’629 Patent, Fig. 1). The composer is used to create a "presentation" by establishing a list of URLs, a display sequence, and a display duration, either through manual entry or from a query-based system (’629 Patent, col. 10:5-20). The performer then automatically displays this presentation to a remote user as a "slide show" within their web browser, replacing a "passive site and active visitor" model with an "adaptive presentation model" (’629 Patent, col. 13:37-40).
• Technical Importance: The system aimed to improve website "stickiness" and user engagement by delivering relevant content in an automated, guided tour format, thereby increasing the time visitors spend on a site (Compl. ¶19).

Key Claims at a Glance

• The complaint asserts independent claim 11 (Compl. ¶26).
• The essential elements of claim 11 are:
  • A method for customizing access to web sites, comprising remotely invoking a composer on a host server.
  • Creating a presentation in the composer by:
    • Establishing a list of URLs using either manual entry or a query-based system.
    • Determining a display sequence for the list of URLs.
    • Determining a display duration for the list of URLs.
  • Remotely invoking a performer on the host server to present the created presentation.
  • Automatically locally displaying the presentation in a slide show format, where each URL is a slide, and each slide is automatically displayed for a pre-determined duration.
• The complaint's prayer for relief reserves the right to assert other claims (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: As the '707 Patent shares its specification with the '629 Patent, it addresses the same foundational problem of inflexible and costly web presentations ('707 Patent, col. 1:22-28). The complaint highlights that prosecution focused on overcoming the "unconventional" challenge of automatically composing a slideshow via "automatic extraction of web page details from a desired web page" (Compl. ¶44-45).
• The Patented Solution: This invention focuses on an "auto composer" that creates a slideshow by automatically extracting the necessary URLs from a target webpage. The extraction can occur by identifying hyperlinks ("hrefs"), reading a dedicated presentation/rendition text file, or parsing a specific meta tag within the page's code ('707 Patent, col. 8:20-41). A performer then displays the resulting auto-composed presentation ('707 Patent, Abstract).
• Technical Importance: This approach further simplifies content presentation by automating the creation of the URL list itself, allowing a slideshow to be generated dynamically from the content of an existing page.

Key Claims at a Glance

• The complaint asserts independent claim 7 (Compl. ¶46).
• The essential elements of claim 7 are:
  • A method for auto composing a web site, comprising composing a presentation for a desired web page by creating a list of URLs.
  • The composing step includes one or more of:
    • (a) automatically extracting a plurality of hyperlinks from the desired web page.
    • (b) automatically extracting a presentation/rendition text file from the desired web page.
    • (c) automatically extracting a meta tag from the desired web page.
  • Automatically displaying the presentation in order of the created list of URLs.
• The complaint's prayer for relief reserves the right to assert other claims (Compl. p. 17).

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is the website "https://www.opticsplanet.com/" and its underlying system for presenting content (Compl. ¶26).
• Functionality and Market Context: The complaint alleges that the accused website features an automated slideshow on its homepage, which is used to present "featured promotional offerings" to users (Compl. ¶33, ¶34). This slideshow is created and presented using HTML, JavaScript, and CSS (Compl. ¶28). The complaint provides a screenshot, Exhibit E, which depicts the web slide show in the upper portion of the homepage (Compl. ¶27). Another screenshot, Exhibit A, shows the HTML elements associated with the slideshow, identified within a "
  " element with the ID "banner-container-inner" (Compl. ¶28).

IV. Analysis of Infringement Allegations

'629 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the accused system's combination of server-side scripts and client-side JavaScript meets the definition of a "composer operating on a host server." The defense could argue that key aspects of creating and displaying the presentation occur within the user's browser, not on the host server as depicted in the patent's architecture (e.g., ’629 Patent, Fig. 1).
  • Technical Questions: The complaint alleges on "information and belief" that the list of URLs is established via "manual entry" or a "query-based system" (Compl. ¶30). The case may turn on what evidence Plaintiff can produce to show that the accused system uses these specific, claimed methodologies, as opposed to other methods of populating a list of images.

'707 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: The key dispute will likely center on the term "automatically extracting." Does a server-side process that embeds a pre-determined list of image URLs into the HTML of the homepage before sending it to the browser constitute "extracting" those URLs from the desired web page? The patent's language suggests a process of parsing or scanning an existing page to find details ('707 Patent, col. 8:20-24), which may be technically distinct from how the accused system is constructed.
  • Technical Questions: What evidence demonstrates that the accused system performs an "extraction" from the "desired web page" (the homepage) rather than simply receiving the image list from a backend content management system and rendering it as part of the page? The complaint's allegation seems to treat the source code itself as the thing being extracted from, which raises a question of circularity.

V. Key Claim Terms for Construction

For the '629 Patent:

• The Term: "composer"
• Context and Importance: The definition of "composer" and its location ("operating on a host server") is fundamental to the infringement theory. If the "composer" is found to be primarily a client-side script in the accused system, it could undermine the allegation that the Defendant performs all steps of the claimed method.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the composer simply as a "software program" used to "create a customized presentation" (’629 Patent, col. 9:14-19), which could be argued to encompass a variety of software architectures.
  • Evidence for a Narrower Interpretation: Figure 1 of the patent explicitly depicts the "Composer 12" as a discrete component residing on the "Host Server 16," distinct from the remote "User 24" (’629 Patent, Fig. 1). This supports a construction requiring the composer to be a server-side entity.

For the '707 Patent:

• The Term: "automatically extracting"
• Context and Importance: Practitioners may focus on this term because it appears to be the primary novel feature of the '707 patent's claims. Whether the accused system's functionality meets this limitation will likely be the dispositive issue for infringement of this patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term itself is not explicitly defined, which may allow for an argument that any automated process that gathers URLs from a webpage's data for a presentation constitutes "extracting."
  • Evidence for a Narrower Interpretation: The specification describes specific methods of extraction, such as reviewing a page for "hyperlinks, i.e., href's" or searching for a "composer-recognizable meta tag" ('707 Patent, col. 8:20-38). This suggests an active parsing or scanning process, which could be argued as narrower than simply having a server embed a list of URLs into a page's source code during generation.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that to the extent users are involved in performing steps of the claimed methods (e.g., by visiting the website and causing the slideshow to display), such performance is attributable to the Defendant. This is based on the theory that Defendant "directs or controls" the user's performance by conditioning their ability to view promotional offerings on the execution of the patented method (Compl. ¶33, ¶34).

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

• A core issue will be one of architectural scope: does the accused website's apparent use of client-side scripts to render a slideshow from server-provided data satisfy the '629 patent's claim of a server-side "composer" and "performer," or is there a fundamental mismatch between the claimed architecture and the accused implementation?
• A key evidentiary question will be one of functional definition: does the accused system's method of populating its slideshow by embedding a list of image URLs into the homepage's HTML constitute "automatically extracting" those details from the page as required by the '707 patent, or is this a different technical operation from the page-scanning process described in the patent?
• A third question relates to divided infringement: can Plaintiff show that Defendant directs or controls its users' actions in a manner sufficient to attribute the users' performance of certain method steps (like "locally displaying") to Defendant for the purpose of establishing direct infringement?