DCT
8:24-cv-01311
Opus One Corp v. Wishpond Tech Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Opus One Corporation d/b/a Contest Factory (California)
- Defendant: Wishpond Technologies Ltd. (Canada)
- Plaintiff’s Counsel: Umberg Zipser LLP
- Case Identification: 8:24-cv-01311, C.D. Cal., 06/17/2024
- Venue Allegations: Venue is alleged to be proper as Defendant is a foreign corporation that has committed acts of infringement in the district, maintains systematic contacts by selling products and services to customers in the district, and hosts servers in the United States.
- Core Dispute: Plaintiff alleges that Defendant’s online contest and marketing platform infringes a patent related to a system and method for generating and operating interactive online contests for third-party sponsors.
- Technical Context: The technology concerns platforms that enable businesses to create and manage online promotional contests, a key tool in digital marketing for user engagement and lead generation.
- Key Procedural History: The complaint alleges that Defendant has had actual knowledge of the patent-in-suit and the infringement allegations since at least June 2, 2023, based on prior communications between the parties. The complaint also makes pre-emptive arguments for patent eligibility, citing the patent's prosecution history to assert that the claimed combination of elements was not taught or suggested by the prior art.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-24 | Earliest Priority Date for ’642 Patent |
| 2021-01-12 | ’642 Patent Issue Date |
| 2023-06-02 | Alleged date of Defendant's first notice of infringement |
| 2024-06-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 10,891,642, "System and Method for Interactive Contests," issued January 12, 2021.
The Invention Explained
- Problem Addressed: The patent describes prior art online contest technologies, such as web-polls, as being inflexible and limited. They allegedly could not simultaneously support diverse media types, adjustable scoring, registered users, multi-round elimination contests, or complete customization for third-party sponsors running the contests (’642 Patent, col. 2:28-39). This made it difficult for sponsors to run sophisticated, branded promotions and for content producers to gain meaningful feedback or exposure (’642 Patent, col. 2:1-12).
- The Patented Solution: The invention is a centralized "third party interactive contest server" (TPICS) that provides a modular, customizable platform for creating and managing online contests (’642 Patent, Abstract; Fig. 1). It is designed to be used by a "provider" (e.g., a contest sponsor) to create a contest that is then accessed by end-users, relieving the sponsor of the underlying technical and data management burden while allowing the contest to appear integrated with the sponsor's own service (’642 Patent, col. 4:46-54). The system architecture includes modules for contest creation, management, and expert review, interfacing with various databases for users, content, and providers (’642 Patent, Fig. 1).
- Technical Importance: The described system aimed to provide a comprehensive, scalable solution for online promotions, moving beyond simple polling to enable complex, multi-stage, media-rich contests that could be easily deployed by third-party brands (’642 Patent, col. 4:21-31).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1, an independent system claim (Compl. ¶40).
- The essential elements of independent Claim 1 are:
- A computer system (comprising processors, memory, and storage) for generating and operating an online contest for a third-party provider.
- The system is instructed to perform steps including:
- Receiving a request from the third-party provider to generate a contest.
- Generating a URL and one or more webpages using that URL.
- Transmitting the URL back to the third-party provider.
- Receiving content from different content producers, specifically a "content URL" from a first producer and "content data" from second and third producers.
- Retrieving the first producer's content data from a database using its content URL.
- Generating links for the content data from all three producers.
- Generating the online contest, which comprises these links.
- Transmitting the contest to users and receiving their responses (e.g., votes) via the links.
- Determining a result based on the responses.
- The complaint reserves the right to assert other claims (Compl. ¶39).
III. The Accused Instrumentality
Product Identification
- The "Accused Products and Services" are Wishpond's online marketing platform and tools, offered via its website, www.wishpond.com (Compl. ¶¶ 30, 32).
Functionality and Market Context
- The complaint alleges that Wishpond’s platform is used to create, manage, and run various types of online promotions, including photo contests, video contests, Instagram hashtag giveaways, and sweepstakes (Compl. ¶¶ 32-33). These services allegedly allow Wishpond’s customers (the contest sponsors) to upload and store content and facilitate user voting and engagement (Compl. ¶30). The complaint highlights that Wishpond's tools allow customers to "create and run viral contests and giveaways that boost your popularity, social media engagement, and sales" (Compl. ¶35).
- The complaint provides a screenshot of a representative contest titled "WIN THIS SEMESTER'S TUITION" to exemplify the accused services, showing multiple video entries with corresponding vote counts and "VOTE" buttons (Compl. ¶36, p. 9).
- The platform is marketed to a wide range of clients, from small businesses to Fortune 500 companies like Walmart and ESPN, across numerous industries (Compl. ¶34).
IV. Analysis of Infringement Allegations
U.S. Patent No. 10,891,642 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A computer system for generating and operating an online contest for a third-party provider... | Wishpond provides a computer system for its customers (the contest sponsors/third-party providers) to generate and operate online contests. | ¶41 | col. 49:1-2 |
| receiving a request from a third-party provider to generate an online contest; | Wishpond's system receives requests from its customers (third-party providers) to generate contests. | ¶42 | col. 56:56-61 |
| generating a URL in response to receiving the request; | The system generates a URL for the online contest in response to the customer's request. | ¶42 | col. 56:62-63 |
| transmitting to the third-party provider the generated URL; | The system transmits the generated URL to the contest sponsor/third-party provider. | ¶42 | col. 49:4-5 |
| receiving, from a first content producer...a content URL associated with a first content data; | The system receives a contestant photo URL (a content URL) associated with first content data via its uploader. | ¶42 | col. 49:6-9 |
| receiving, from a second content producer and third content producer, a second content data and a third content data; | The system receives a contestant photo URL for second content data from a second content producer and for third content data from a third content producer. | ¶42 | col. 49:10-12 |
| generating links for each of the second content data, the third content data, and the retrieved first content data; | The system generates links for the content data of each entry, with each entry being associated with a unique URL. | ¶45 | col. 49:17-20 |
| generating the online contest, wherein the online contest comprises the generated links; | The system generates the online contest, which is composed of the generated links to the contestant entries. | ¶43 | col. 49:21-23 |
| transmitting the generated online contest to a plurality of user computers; | The system transmits the contest to end-users' computers for participation. | ¶43 | col. 49:24-26 |
| determining a result of the online contest using the received responses. | The system determines the winner of the contest based on the votes (responses) received from users. | ¶43 | col. 49:29-31 |
- Identified Points of Contention:
- Scope Questions: The claim recites distinct roles: the "computer system" operator, a "third-party provider," and multiple "content producers." The analysis may question how Wishpond's business model maps to this structure. Is Wishpond the "computer system" and its client the "third-party provider," with the client's end-users being the "content producers"? The claim distinguishes between receiving a "content URL" from a first producer and "content data" from others. The factual basis for this distinction in the accused platform will be a central question.
- Technical Questions: What evidence does the complaint provide that the accused system receives a "content URL" from a first producer that is then used to "retriev[e] the first content data from a database," as opposed to simply receiving the content data directly from all producers? The complaint alleges the system receives a "contestant photo URL" for all three producers, which may raise questions about whether the distinct actions required by the claim are actually performed (Compl. ¶42).
V. Key Claim Terms for Construction
The Term: "third-party provider"
Context and Importance: The definition of this term is crucial for establishing the identity and roles of the actors in the alleged infringement. The entire claim is structured around a system that provides a service for a "third-party provider". Practitioners may focus on this term because the relationship between Wishpond and its clients must align with the claimed relationship between the "computer system" and the "third-party provider".
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a broad list of examples, stating a provider "is, for example, a web site operator, an Internet service provider, an online promotions manager, an interactive television producer, a kiosk provider, a game console provider, a set-top box provider, and the like" (’642 Patent, col. 2:13-17). This could support an interpretation that covers any entity using the platform to run a contest.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the provider as an entity with a "pre-existing service" (e.g., a website) that integrates the contest code to link its own end-users to the contest (’642 Patent, col. 4:49-54). This could support a narrower construction requiring the provider to be an established, separate entity that brings its own user base to the contest.
The Term: "content producer"
Context and Importance: Claim 1 recites three distinct "content producer" roles with different modes of data submission (a "content URL" from the first vs. "content data" from the second and third). The viability of the infringement theory depends on whether the accused system interacts with its users in this specific, differentiated manner.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification defines a "content producer" broadly as "an artist, author, designer, and the like" and notes that "a service provider can be a content producer" (’642 Patent, col. 2:16-19). This suggests the term is meant to be flexible.
- Evidence for a Narrower Interpretation: The explicit differentiation in Claim 1 between a "first content producer" (submitting a URL) and "second and third content producers" (submitting data) implies these are not interchangeable roles. An argument could be made that to meet the claim, the system must be architected to handle these distinct submission pathways, potentially limiting the scope to systems with more complex content intake procedures than a simple universal uploader.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement under 35 U.S.C. § 271(b), asserting that Wishpond provides instructions and guidance to its customers on how to use the platform to perform the claimed steps (Compl. ¶47). It also alleges contributory infringement under § 271(c), stating Wishpond knows its products are especially made to be used in an infringing manner and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶48).
- Willful Infringement: The complaint alleges willful infringement based on Defendant having "actual prior knowledge of the patent-in-suit" from "prior communications with Contest Factory beginning on or about June 2, 2023" (Compl. ¶¶ 37, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural mapping: Does the architecture of the Wishpond platform—where a client signs up to create a contest for its own audience—align with the patent's specific tripartite structure of a "computer system," a "third-party provider," and multiple distinct "content producers"? The case may turn on whether these roles, as defined in the patent, can be clearly and separately identified within the accused ecosystem.
- A key evidentiary question will be one of technical operation: Does the accused system perform the specific, differentiated data-handling steps of Claim 1? Specifically, does it distinguish between receiving a "content URL" from one producer and using it to retrieve data, while receiving "content data" directly from others, or does it utilize a uniform content submission process that deviates from the claim's precise sequence?
- A central legal question, foreshadowed by the complaint, will be patent eligibility under 35 U.S.C. § 101. The dispute will likely involve whether the claims are directed to an abstract idea (e.g., organizing a contest) and, if so, whether they recite an inventive concept that transforms the idea into a patent-eligible application by adding "significantly more" than conventional computer functionality.