DCT
3:23-cv-00484
Opus One Corp v. Pancake Laboratories Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Opus One Corporation D/B/A Contest Factory (California)
- Defendant: Pancake Laboratories Inc. (Nevada)
- Plaintiff’s Counsel: Brownstein Hyatt Farber Schreck, LLP; Umberg Zipser LLP; Davidson Berquist Jackson & Gowdey LLP
- Case Identification: 3:23-cv-00484, D. Nev., 10/03/2023
- Venue Allegations: Venue is alleged to be proper in the District of Nevada because Defendant is a Nevada corporation with its principal place of business in the district, maintains a regular and established place of business there, and has committed alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that Defendant’s “ShortStack” online contest platform infringes patents related to systems and methods for generating and operating interactive online contests.
- Technical Context: The technology at issue involves networked computer systems that enable third parties to create, customize, and manage multi-round, interactive online contests involving user-submitted content, expert review, and public voting.
- Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of the patents-in-suit as a result of "prior communications with Opus One," which forms the basis for the willfulness allegations. The patents-in-suit share a common specification and a long prosecution history, with the ’642 patent being a continuation of the application that issued as the ’715 patent. During prosecution of both patents, the U.S. Patent & Trademark Office stated that the claimed inventions were distinguishable from the prior art.
Case Timeline
| Date | Event |
|---|---|
| 2000-10-24 | Earliest Priority Date for ’715 and ’642 Patents |
| 2014-02-18 | U.S. Patent No. 8,655,715 Issues |
| 2021-01-12 | U.S. Patent No. 10,891,642 Issues |
| 2023-10-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,891,642 - “System and Method for Interactive Contests,” issued January 12, 2021
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty for content producers, such as new musical artists, to obtain expert reviews and consumer feedback, noting that unsolicited content submissions are often ignored by industry professionals who lack the time to review them. It further states that existing online platforms like web-polls lack the flexibility for multi-round contests with varied media types, while large content distribution sites are too undifferentiated for new content to be discovered (’642 Patent, col. 1:33-2:19).
- The Patented Solution: The invention provides a third-party interactive contest server (“TPICS”) that allows service providers to create and manage customizable, multi-level online contests. The system is designed to automate the process by receiving content from producers, facilitating review by experts, filtering the content based on those reviews, and presenting the top-scoring content to end-users for voting in multi-round elimination contests (’642 Patent, Abstract; col. 3:28-4:52). Figure 1 of the patent illustrates the modular architecture, including a contest creation module, an expert review module, and a producer submission module interacting with a central contest server (’642 Patent, Fig. 1).
- Technical Importance: The system provides a structured, automated framework for filtering and ranking large volumes of user-submitted content, aiming to solve the "needle in a haystack" problem for both content creators seeking exposure and industry professionals seeking new talent (Compl. ¶¶15-17).
Key Claims at a Glance
- The complaint asserts infringement of claim 1, and more generally alleges infringement of "one or more claims" of the patent (Compl. ¶¶42-43).
- Independent claim 1 recites a computer system comprising processors, memory, and instructions to perform the steps of:
- Receiving a request from a third-party provider to generate an online contest.
- Generating a URL and one or more webpages in response.
- Transmitting the URL to the third-party provider.
- Receiving a content URL associated with first content data from a first content producer.
- Receiving second content data and third content data from a second content producer and third content producer.
- Storing the second and third content data.
- Retrieving the first content data from a database using the content URL.
- Generating links for each of the first, second, and third content data.
- Generating and transmitting the online contest, comprising the links, to user computers.
- Receiving responses (votes) via the links and determining a result.
U.S. Patent No. 8,655,715 - “System and Method for Interactive Contests,” issued February 18, 2014
The Invention Explained
- Problem Addressed: The ’715 Patent shares a common specification with the ’642 Patent and addresses the same problem of creating an effective online system for content discovery, expert review, and consumer ranking (’715 Patent, col. 1:33-2:19).
- The Patented Solution: This patent claims a contest system that focuses on the sorting and selection of content based on its characteristics, such as genre. The server receives and stores content, sorts it based on an "identifying characteristic," selects content of the "same genre" from the sorted data, and then generates a contest for users to vote on. This sorting step is presented as a key feature for organizing content before a contest begins (’715 Patent, Abstract; col. 13:46-14:6). The complaint highlights that the PTO found this sorting step to be a distinguishing feature over the prior art (Compl. ¶30).
- Technical Importance: By sorting content into genres before creating a contest, the invention aims to facilitate more focused and relevant competitions, preventing contests from being composed of disparate and unrelated types of content (Compl. ¶30).
Key Claims at a Glance
- The complaint asserts infringement of claim 1, and more generally alleges infringement of "one or more claims" of the patent (Compl. ¶¶62-63).
- Independent claim 1 recites a contest system comprising a server with a processor and memory storing instructions to:
- Receive and store first and second content data.
- Access the content data.
- Sort the first and second content data based on an identifying characteristic to provide sorted content data based on genre.
- Select the first and second content data from the sorted data, where both have the same genre.
- Generate contest data based on the selected content.
- Transmit the contest data for a contest with at least one voting stage.
- Include display data for presenting the content.
- Receive vote data from voters.
- Select at least one of the content data based on the vote data.
III. The Accused Instrumentality
Product Identification
- The accused products and services are offered through Defendant’s website, www.shortstack.com, and are collectively referred to as “ShortStack” (Compl. ¶33).
Functionality and Market Context
- ShortStack is described as a platform for creating and running customizable online contests, including photo contests, voting contests, and social media contests (Compl. ¶¶35, 37, 44). The service is used by third-party contest sponsors to engage audiences and generate user-generated content (Compl. ¶¶38, 44).
- The platform provides users with templates, widgets, and management tools to build and operate contests (Compl. ¶¶46, 47). A representative example cited is the "Mother's Day Giveaway" contest for Leighton Broadcasting, which involved users uploading photos, voting on them, and sharing them to get more votes (Compl. ¶¶37-38). The complaint highlights a screenshot from this contest, which outlines a three-step process: "Grab your mom/daughter and snap a selfie," "Upload your photo and vote," and "Get more votes by sharing with friends" (Compl. p. 8).
- The complaint alleges that ShortStack is a major market participant, calling it "the world's #1 solution" for online contests with over 8,000 clients, including major brands such as Netflix, UFC, and PetSmart (Compl. ¶37).
IV. Analysis of Infringement Allegations
’642 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving a request from a third-party provider to generate an online contest; | A user (third-party provider) initiates contest creation by selecting a template and defining rules on the ShortStack platform. | ¶47 | col. 9:20-24 |
| generating a URL in response to receiving the request; | The ShortStack system generates unique URLs for contests that can be embedded on a third-party website or shared via email. | ¶48 | col. 48:62-64 |
| generating one or more webpages using the generated URL; | The system generates contest webpages that can be embedded into a third-party provider's website using ShortStack-provided code. | ¶49 | col. 48:65-49:1 |
| transmitting to the third-party provider the generated URL; | The system provides the URL and embeddable code to the third-party provider for publication. | ¶50 | col. 49:2-3 |
| receiving, from a first content producer via the one or more generated webpages, a content URL associated with a first content data; | The ShortStack website allows users (content producers) to submit content by providing a URL, such as a link to an Instagram post. | ¶50 | col. 49:4-7 |
| receiving, from a second content producer and third content producer, a second content data and a third content data; | The system receives direct uploads of content, such as photos, from multiple different users participating in the contest. | ¶51 | col. 49:8-11 |
| storing the second content data and the third content data in the memory; | The complaint alleges on information and belief that the system stores the uploaded content data in memory. | ¶52 | col. 49:12-14 |
| retrieving the first content data from a database over a computer network using the content URL; | The complaint alleges on information and belief that the system retrieves the content data associated with a submitted URL. | ¶52 | col. 49:15-17 |
| generating links for each of the second content data, the third content data, and the retrieved first content data; | Each contest entry is associated with a unique URL for voting and sharing. The complaint includes a screenshot showing photo entries in a contest grid, with a URL bar visible above one of the entries (Compl. p. 15). | ¶52 | col. 49:18-21 |
| generating the online contest, wherein the online contest comprises the generated links; | The system generates the final online contest page, which includes the collection of links to the individual entries. | ¶53 | col. 49:22-24 |
| transmitting the generated online contest to a plurality of user computers; | The system makes the contest available over the internet for end-users to view and participate in. | ¶53 | col. 49:25-26 |
| receiving, from the plurality of user computers, responses via the generated links; and | The system receives votes from end-users on the different contest entries. A screenshot shows a user interface with different photos and heart icons for voting (Compl. p. 10). | ¶53 | col. 49:27-29 |
| determining a result of the online contest using the received responses. | The system tabulates the received votes to determine a winner. A screenshot shows tools to "View, filter and moderate entries, choose winners and export lists" (Compl. p. 11). | ¶53 | col. 49:30-31 |
’715 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receive first content data and second content data, | The accused system receives content, such as contestant photos, from multiple users for a contest. | ¶65 | col. 17:21-22 |
| store the first and second content data in the computer-readable storage medium, | The system stores the received content data. | ¶66 | col. 17:22-23 |
| access the first and second content data from the computer-readable storage medium, | The complaint alleges the system accesses the stored data to generate the contest. | ¶64 | col. 17:23-24 |
| sort the first and second content data based on an identifying characteristic of the first content data and second content data to provide sorted content data based on genre, | The complaint alleges, on information and belief, that the contest server sorts the content data based on an identifying characteristic to sort it by genre. | ¶64 | col. 17:24-27 |
| select the first content data and the second content data from the sorted content data, wherein the first content data and the second content data have a same genre, | The complaint does not provide specific factual allegations for this element beyond the general assertion that the system performs the functions of claim 1. | ¶64 | col. 17:27-28 |
| generate contest data based on the first and second content data, | The system generates a contest using the received user content. | ¶66 | col. 17:28-29 |
| transmit over a network the contest data to serve at least one contest to a user, the contest comprising at least one voting stage, | The system transmits the generated contest over the internet to end-users for viewing and participation. | ¶66 | col. 18:1-2 |
| include display data in the transmitted content data to electronically present... representations of the first and second content data..., | The online contest displays the submitted content (e.g., photos) for users to view and vote on. | ¶66 | col. 18:2-5 |
| receive during the at least one voting stage vote data transmitted over the network..., | The system is alleged to permit voting by users and collect the vote data. | ¶67 | col. 18:5-7 |
| select at least one of the first or second content data based on the vote data. | The system collects and tabulates votes to select a winner of the contest. | ¶67 | col. 18:7-8 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’642 patent may be whether the accused system’s process for receiving user-generated content maps onto the claim’s specific language distinguishing between a "first content producer" providing a "content URL" and "second and third" producers providing "content data." The defense may argue that all users in a ShortStack contest are equivalent producers and that the system does not perform this differentiated data-receipt process.
- Technical Questions: For the ’715 patent, a key technical question is whether the ShortStack platform performs the claimed step of sorting content "to provide sorted content data based on genre" before selecting that content to generate a contest. The complaint alleges this function but does not detail how it is performed by the accused product. The defense could argue that any sorting or filtering capabilities are user-facing tools applied to an already-generated contest, not a prerequisite step as claimed.
V. Key Claim Terms for Construction
For the ’642 Patent
- The Term: "first content producer", "second content producer", and "third content producer"
- Context and Importance: Claim 1 structurally distinguishes these producers by the type of information they are recited as providing (a "content URL" from the first, versus "content data" from the second and third). The viability of the infringement theory may depend on whether these terms can be construed to read on functionally identical users in a typical user-generated content contest, or if they require distinct roles or a specific sequence of data submission not present in the accused system.
- 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 may support an interpretation where any user submitting content qualifies as a "producer."
- Evidence for a Narrower Interpretation: The explicit differentiation in the claim language itself—assigning the receipt of a "content URL" to the "first" producer and "content data" to the "second and third"—could be argued to imply a specific, sequential, and technically distinct process that defines these roles.
For the ’715 Patent
- The Term: "sort the first and second content data based on an identifying characteristic... to provide sorted content data based on genre"
- Context and Importance: This limitation appears to be a core inventive concept, and was noted by the PTO during prosecution as a point of distinction over the prior art (Compl. ¶30). The infringement analysis will likely turn on whether the accused system performs this sorting step as a prerequisite to contest generation, or if it merely provides optional, post-generation filtering tools.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Figure 9 of the patent depicts a "WORK SORT BY GENRE" step that feeds into a "GENERAL CONTEST POOL" (’715 Patent, Fig. 9). This may support an argument that any system which categorizes content before making it available for a contest performs the claimed sorting.
- Evidence for a Narrower Interpretation: The claim requires the system to "sort... to provide sorted content data" and then "select the first content data and the second content data from the sorted content data." This language suggests a specific operational sequence: data is first sorted, and only then is it selected for the contest. A system that creates a contest from an unsorted pool and later allows users to apply a sort/filter for viewing purposes may not meet this limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for both patents. The inducement theory is based on Defendant allegedly supplying the ShortStack platform with instructions and documentation that encourage and guide its customers (the third-party contest sponsors) to use the platform in an infringing manner (Compl. ¶¶55, 69). The contributory infringement allegation asserts that the ShortStack service is a material part of the patented invention, is especially made or adapted for infringement, and is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶56, 70).
- Willful Infringement: The complaint alleges willful infringement of both patents based on Defendant’s alleged "actual prior knowledge of the asserted patents" arising from "prior communications with Opus One" before the lawsuit was filed (Compl. ¶40). This alleged pre-suit notice is asserted to make the infringement knowing, intentional, and willful (Compl. ¶¶58-59, 72-73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural correspondence: Does the accused ShortStack platform, which appears to treat all content-submitting users similarly, perform the specific, differentiated data-receipt sequence recited in claim 1 of the ’642 patent, which distinguishes between a "first content producer" providing a "content URL" and other producers providing "content data"?
- A key evidentiary question will be one of operational sequence: Does the accused platform’s functionality align with the claim language of the ’715 patent, which requires sorting content by genre before selecting that content for a contest, or does it utilize a different, potentially non-infringing sequence where filtering is a user-facing option applied after a contest is generated?
- Given the direct allegation of pre-suit notice via "prior communications," a central question for damages will be one of willfulness: What evidence will be presented regarding the content of these communications, and can Plaintiff establish that Defendant’s conduct after receiving notice was objectively reckless?