Adim8 LLC v. Chipotle Mexican Grill Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Adim8, LLC (Nevada)
  • Defendant: Chipotle Mexican Grill, Inc. (Delaware)
  • Plaintiff’s Counsel: Eureka Intellectual Property Law, PLLC
• Case Identification: 6:22-cv-01274, W.D. Tex., 12/10/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant operating a local restaurant and routinely conducting business within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s website infringes patents related to displaying animated, branded advertising to users during application "idle times," such as when content is loading.
• Technical Context: The technology seeks to monetize otherwise unproductive user wait times in digital applications by replacing standard progress indicators with advertisements.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the patents-in-suit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,107,940 - “SYSTEM AND METHOD FOR PROVIDING ADVERTISING ON A MOBILE DEVICE,” issued January 31, 2012

The Invention Explained

• Problem Addressed: The patent identifies the difficulty of implementing effective advertising on mobile devices due to their limited display space, slow network speeds, and less powerful processors, all of which can lead to a degraded user experience if ads are intrusive or slow to load (’940 Patent, col. 2:3-34).
• The Patented Solution: The invention proposes displaying advertising content only during an application's "idle time," such as when a user is waiting for data to download or an application to load (’940 Patent, col. 2:47-51). Instead of showing a generic progress indicator like a rotating hourglass, the system displays an animated advertisement, such as a brand logo, which is then removed immediately once the application is ready to proceed, thereby aiming to entertain the user during the wait without interrupting the primary function of the application (’940 Patent, col. 2:58-67).
• Technical Importance: The technology provides a method for monetizing unavoidable wait times inherent in mobile application use, proposing a less intrusive alternative to pop-up or banner ads (’940 Patent, col. 2:62-65).

Key Claims at a Glance

• The complaint asserts independent claim 8 (Compl. ¶17).
• Essential elements of claim 8 include:
  • A method of advertising via a mobile device comprising the steps of:
  • loading a graphic advertisement onto the mobile device's computer-readable medium, where the ad has a "time passage indicator";
  • displaying the ad on the device during an "idle-time period" when updated information cannot be presented;
  • animating the graphic advertisement so the time passage indicator indicates the passage of time "in order to replace and perform the function of a standard waiting indicator"; and
  • removing the graphic advertisement once the idle-time period ends.
• The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,787,895 - “SYSTEM AND METHOD FOR PROVIDING ADVERTISING ON A DEVICE,” issued July 22, 2014

The Invention Explained

• Problem Addressed: As a divisional of the application leading to the ’940 Patent, the ’895 Patent addresses the same technical problem of implementing non-disruptive advertising on resource-constrained mobile devices (’895 Patent, col. 2:3-34).
• The Patented Solution: The solution is structurally similar to that of the ’940 Patent but is claimed with different terminology. The invention describes a device that already has a "first time passage indicator" for idle periods. The method involves loading a "second time passage indicator," which is representative of a graphic advertisement, and displaying it during an idle-time period as a substitute for the first indicator (’895 Patent, Abstract; col. 8:52-col. 9:9).
• Technical Importance: This patent further refines the concept of replacing standard system functions with advertising content during user wait times, focusing on the substitution of one indicator for another (’895 Patent, col. 2:58-67).

Key Claims at a Glance

• The complaint asserts independent claim 1 for direct infringement and independent claim 18 for indirect infringement (Compl. ¶¶20, 23).
• Essential elements of claim 1 include:
  • A method of advertising on a device that has a "first time passage indicator":
  • loading a "second time passage indicator" onto the device before an idle-time period is detected, where the second indicator is different from the first, represents a graphic ad, and indicates passage of time;
  • updating application information, which provides the idle-time period;
  • displaying the second time passage indicator during the idle-time period, where the ad is associated with an entity, product, and/or service; and
  • animating the graphic advertisement of the second time passage indicator.
• Essential elements of device claim 18 are similar, reciting a device comprising a medium, processor, and display configured to perform a comparable substitution and display of an animated graphic advertisement during an idle-time period.
• The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

• Product Identification: The accused instrumentality is Defendant’s website, specifically the catering portal located at https://catering.chipotle.com/ (Compl. ¶18).
• Functionality and Market Context: The complaint alleges that when this website loads pages or data on a mobile device, it enters an "idle time period" (Compl. ¶18, p. 8). During this period, the website allegedly displays a "graphic advertisement waiting indicator" that is animated (Compl. ¶11, p. 11). The complaint provides a screenshot of a loading message on the website, which depicts a pop-up box with the text "GETTING MENU INFO" and a small icon that is the subject of the infringement allegations (Compl. p. 8). The complaint asserts this functionality is an example of "icon advertising technology" (Compl. ¶17).

IV. Analysis of Infringement Allegations

'940 Patent Infringement Allegations

'895 Patent Infringement Allegations

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the small icon shown in the "GETTING MENU INFO" pop-up (Compl. p. 8) qualifies as a "graphic advertisement" under the patents' claims. The analysis may turn on whether a small, potentially functional icon associated with the website's own brand constitutes an "advertisement" in the manner contemplated by the patent, which provides examples of third-party ads (e.g., Coke®, Taco Bell®) (’940 Patent, col. 7:14, 7:27).
  • Technical Questions: For the ’895 Patent, a key factual question is whether the accused system includes a "first time passage indicator" that is actually replaced by the accused "second time passage indicator." The complaint alleges that mobile devices generally possess a standard indicator (Compl. ¶21), but does not provide evidence that such an indicator is loaded or initiated by the accused website before being replaced by Chipotle's custom icon.

V. Key Claim Terms for Construction

• The Term: "graphic advertisement"

  • Context and Importance: This term is the lynchpin of the infringement allegation for both patents. The dispute will likely focus on whether Defendant's small, animated loading icon is merely a functional interface element or if it rises to the level of a "graphic advertisement." Practitioners may focus on this term because if the icon is not an "advertisement," the core of the infringement theory fails.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the term could be broad, stating the advertising content "might be a rotating logo of the advertiser, or a brief animation advertising the product and/or service" (’940 Patent, col. 2:60-62). This language could support an interpretation where any branded logo, even the website's own, qualifies.
    • Evidence for a Narrower Interpretation: The detailed examples in the specification describe displaying advertisements for entities distinct from the primary application service, such as showing a "Coke® logo" during the loading of a "mobile concierge service" or a "Taco Bell®" ad during a food search (’940 Patent, col. 7:14-33). This could support a narrower construction where "advertisement" implies third-party or promotional content, not a functional logo of the application provider itself.

• The Term: "first time passage indicator" (and its relationship to "second time passage indicator")

  • Context and Importance: This terminology is unique to the ’895 Patent and creates a specific technical prerequisite for infringement. The claim requires the existence of a "first" indicator and its replacement by a "second" (the accused ad). Practitioners may focus on this term because infringement requires proof of a two-step substitution, not just the display of a single custom indicator.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent does not narrowly define the "first time passage indicator," leaving open the possibility that it could refer to a default, operating-system-level or browser-level loading icon that is suppressed and replaced by the accused website's custom animation.
    • Evidence for a Narrower Interpretation: The claim structure requires two distinct elements. If discovery shows that the accused website simply displays its own indicator from the outset without ever invoking or replacing a separate, "first" indicator, it could suggest this limitation is not met. The complaint's general assertion that "Mobile devices include a standard waiting indicator" (Compl. ¶21) does not specify that the accused website interacts with or replaces it.

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement of infringement of claim 18 of the ’895 Patent (Compl. ¶23). The allegation is based on Defendant "making, using, and incorporating into Defendant's website, icon advertising technology." The complaint does not plead specific facts to establish the requisite intent for inducement, such as knowledge of the patent and actions taken with the specific intent to cause infringement by end-users.
• Willful Infringement: The prayer for relief seeks enhanced damages for willful infringement of both patents (Compl. p. 15, ¶D). The body of the complaint, however, does not contain factual allegations concerning when or how Defendant became aware of the patents-in-suit, which would be foundational to a willfulness claim.

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

The resolution of this dispute may turn on the following central questions:

1. A core issue will be one of definitional scope: can the term "graphic advertisement", as used in the patents, be construed to cover a website’s own functional, animated loading icon, or is it limited to more traditional third-party promotional content?
2. A key evidentiary question for the ’895 Patent will be one of technical implementation: does the accused Chipotle website merely display its own custom loading animation, or does it, as the claim requires, first load a "first time passage indicator" and then actively substitute it with the accused "second time passage indicator"?
3. A central question of functionality for the ’940 Patent will be whether the accused animation is designed "in order to replace and perform the function of a standard waiting indicator," or if its primary purpose is something else, such as branding, which may not align with the specific functional requirement of the claim.