DCT
6:23-cv-00719
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: Plaintiff alleges venue is proper in the District of Nevada because Defendant is a Nevada corporation, has a regular and established place of business in the District, has its principal place of business in the District, and has committed the alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s "ShortStack" online contest platform infringes patents related to systems and methods for generating and operating interactive, multi-round online contests for third-party sponsors.
- Technical Context: The technology at issue facilitates the creation and management of customizable online contests, a key tool for digital marketing, brand promotion, and user engagement.
- Key Procedural History: The complaint asserts that during prosecution of the patents-in-suit, the U.S. Patent and Trademark Office found the claimed inventions to be patentable over the prior art, specifically noting the novelty of features such as generating a URL to create contest webpages and sorting submitted content based on an "identifying characteristic."
Case Timeline
| Date | Event |
|---|---|
| 2000-10-24 | Earliest Priority Date for ’642 and ’715 Patents |
| 2001-00-00 | Plaintiff Opus One began offering online contests |
| 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"
The Invention Explained
- Problem Addressed: The patent's background section describes prior online contest and voting technologies, such as web-polls, as lacking key functionalities. These alleged deficiencies included an inability to handle flexible media content (e.g., video, audio), provide adjustable scoring, support multi-round elimination contests, or offer complete customization for third-party contest sponsors (’642 Patent, col. 2:28-39; Compl. ¶16).
- The Patented Solution: The invention provides a third-party interactive contest server system that enables providers (e.g., contest sponsors) to generate and manage complex, multi-level online contests (Compl. ¶9). The system is designed to receive content from multiple producers, generate unique URLs and webpages for the contest, and manage the voting process, while allowing the contest to have the "look and feel" of the third-party sponsor's own website (’642 Patent, Abstract; Compl. ¶22). The overall system architecture, involving various modules for contest creation, management, and expert review, is depicted in the patent's figures (’642 Patent, Fig. 1).
- Technical Importance: This technical approach provided a solution to problems rooted in computer technology by creating a non-generic arrangement of components for the efficient generation and operation of customized online contests for third parties over a network (Compl. ¶¶22, 24).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶43).
- Independent Claim 1 of the ’642 Patent includes the following essential elements:
- A computer system comprising one or more hardware computer processors, memory, and a non-transitory storage medium with executable instructions.
- Receiving a request from a third-party provider to generate an online contest.
- Generating a URL in response to the request.
- Generating one or more webpages using the generated URL.
- Transmitting the generated URL to the third-party provider.
- Receiving, from a first content producer via the webpages, a content URL associated with a first content data.
- Receiving, from a second and third content producer, a second content data and a third content data.
- Storing the second and third content data in memory.
- Retrieving the first content data from a database over a computer network using the content URL.
- Generating links for each of the second content data, the third content data, and the retrieved first content data.
- Generating the online contest comprising the generated links.
- Transmitting the generated online contest to a plurality of user computers.
- Receiving responses from the user computers via the generated links.
- Determining a result of the online contest using the received responses.
U.S. Patent No. 8,655,715 - "System and Method for Interactive Contests"
The Invention Explained
- Problem Addressed: The ’715 Patent, which shares a specification with the ’642 Patent, identifies the same technical problems with prior art online contest systems, namely their limited ability to support complex, customizable, media-rich contests for third parties (’715 Patent, col. 2:18-38; Compl. ¶16).
- The Patented Solution: The invention described in the ’715 Patent is a contest system that focuses on the management and processing of submitted content. The system receives content data, sorts it based on an "identifying characteristic" such as "genre," selects content of the same genre, generates contest data, and transmits it to users for a voting stage (’715 Patent, Abstract; Claim 1). This sorting and selection process is a key aspect of how the system manages content for presentation in a contest (’715 Patent, Fig. 9).
- Technical Importance: This approach provided a method for sorting and selecting content based on shared characteristics, which the complaint alleges was a novel improvement over the prior art (Compl. ¶30).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶63).
- Independent Claim 1 of the ’715 Patent includes the following essential elements:
- A contest system comprising a contest server with a processor and computer-readable storage medium.
- Receiving and storing first and second content data.
- Accessing the stored content data.
- Sorting the first and second content data based on an identifying characteristic to provide sorted content data based on genre.
- Selecting the first and second content data from the sorted data, where both have the same genre.
- Generating contest data based on the selected content.
- Transmitting the contest data over a network to a user for at least one voting stage.
- Including display data to electronically present representations of the content.
- Receiving vote data from voters for the concurrently displayed content.
- Selecting at least one of the content data based on the vote data.
III. The Accused Instrumentality
Product Identification
- The accused products and services comprise the "ShortStack" online contest platform offered by Defendant Pancake Laboratories Inc. (Compl. ¶33). A representative example cited is the platform's use by Leighton Broadcasting for its "Mother's Day Giveaway" contest (Compl. ¶37).
Functionality and Market Context
- The ShortStack platform is a tool for creating and managing customizable online contests, including "social media contests" and "voting contests" (Compl. ¶¶35, 37). It enables third-party clients to build campaigns where end-users can upload content (e.g., photos), vote on entries, and share the contest on social media (Compl. ¶¶38, 44). The platform provides templates, widgets, a style panel, and management tools for contest administration (Compl. ¶¶46, 47). A screenshot from the complaint shows a feature allowing third parties to embed a contest on their own webpage by copying provided code, which includes a unique URL (Compl. p. 13).
- The complaint alleges that Defendant markets ShortStack as "the world's #1 solution for creating and running customizable online contests" and that it has over 8,000 clients, including major brands such as Netflix, PetSmart, and PBS (Compl. ¶37).
IV. Analysis of Infringement Allegations
’942 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 third-party provider, such as Leighton Broadcasting, uses the ShortStack platform by choosing a contest type, selecting a template, and defining rules to generate a contest. | ¶47 | col. 10:20-24 |
| generating a URL in response to receiving the request; | The ShortStack platform generates unique URLs that can be used to embed the contest on a third-party webpage or be sent via email. | ¶48 | col. 10:35-39 |
| transmitting to the third-party provider the generated URL; | ShortStack provides the generated URL and embeddable code to the third-party provider for placement on its website. A complaint screenshot illustrates this "Copy and paste to embed" functionality. | ¶50; Compl. p. 13 | col. 4:46-50 |
| receiving, from a first content producer via the one or more generated webpages, a content URL associated with a first content data; | The system receives a photo URL from a first contest entrant (a "content producer") via the ShortStack uploader. | ¶45 | col. 4:11-15 |
| receiving, from a second content producer and third content producer, a second content data and a third content data; | The system receives additional photo URLs and associated data from second and third contest entrants. | ¶51 | col. 4:11-15 |
| generating links for each of the second content data, the third content data, and the retrieved first content data; | The system generates a unique URL associated with each contest entry, which can be shared to solicit votes. A screenshot in the complaint depicts contest entries, each with an associated unique URL. | ¶52; Compl. p. 15 | col. 20:13-16 |
| determining a result of the online contest using the received responses. | The system receives votes via the generated links and determines a winner based on the responses. | ¶53 | col. 4:45-50 |
Identified Points of Contention
- Scope Questions: Claim 1 recites distinct steps for receiving content from a "first content producer," a "second content producer," and a "third content producer." A potential point of contention may be whether individual, anonymous members of the public participating in a contest map onto this claim language, or if the patent's specification implies that "content producers" are more formally defined or pre-identified entities.
- Technical Questions: The claim requires "retrieving the first content data from a database over a computer network using the content URL." The complaint alleges receiving a "contestant photo URL" (Compl. ¶45). A technical question for the court could be whether the accused system's handling of a user-submitted URL is functionally the same as the claimed step of actively retrieving data from a database using that URL.
’715 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a contest system, comprising: a contest server, comprising a processor, and a computer-readable storage medium... | The complaint alleges on information and belief that Pancake operates a contest system with a server, processor, and storage medium to perform the claimed functions. | ¶64 | col. 9:27-33 |
| receive first content data and second content data, | The system receives content, such as contestant photos, from multiple producers via the generated webpages. | ¶65 | col. 17:54-58 |
| sort the first and second content data based on an identifying characteristic... to provide sorted content data based on genre, | The complaint alleges on information and belief that the system sorts the submitted content data based on an identifying characteristic, such as genre. | ¶64 | col. 14:48-51 |
| 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 alleges on information and belief that the system performs this selection based on the sorted, same-genre data. | ¶64 | col. 17:61-64 |
| generate contest data based on the first and second content data, | The system generates the contest for transmission to users based on the received and processed content data. | ¶66 | col. 10:1-5 |
| receive during the at least one voting stage vote data transmitted over the network... | The system permits users to vote and collects the tabulation of votes to select a winner. | ¶67 | col. 18:4-8 |
| select at least one of the first or second content data based on the vote data. | The system selects a winner of the contest based on the collection and tabulation of user votes. | ¶68 | col. 18:7-8 |
Identified Points of Contention
- Technical Questions: A central limitation of Claim 1 is the step of "sort[ing] the... content data based on an identifying characteristic... to provide sorted content data based on genre." The complaint alleges this functionality "on information and belief" (Compl. ¶64). A key question for the court will be what evidence exists that the accused ShortStack platform actually performs this specific sorting function, versus simply receiving and displaying content organized by a contest's theme.
V. Key Claim Terms for Construction
The Term: "content producer" (’642 Patent, Claim 1)
- Context and Importance: This term's construction is critical because Claim 1 requires receiving content from a "first," "second," and "third" content producer. The infringement theory depends on interpreting individual public contest entrants as distinct "content producers." Practitioners may focus on this term because its definition will determine whether the claim's structure applies to a typical user-generated content contest.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification defines a "producer" as "any entity providing content of any type" (’642 Patent, col. 7:46-47) and provides examples including an "artist, author, designer, and the like" (’642 Patent, col. 2:17-18), which may support a broad definition inclusive of any individual submitting content.
- Evidence for a Narrower Interpretation: The specification frequently discusses producers in the context of artists submitting works for "expert review" by an "Industry Review Board" (’642 Patent, col. 13:3-8), a context that may suggest a more professional or pre-qualified status than a casual contest entrant.
The Term: "sort... based on genre" (’715 Patent, Claim 1)
- Context and Importance: The infringement allegation for the ’715 patent hinges on whether the accused platform performs this specific sorting step. The definition of "genre" and the nature of the required "sort" operation will be central to the dispute.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition for "genre," which could support an argument for its plain and ordinary meaning, potentially covering any category, including the theme of a photo contest.
- Evidence for a Narrower Interpretation: The specification's examples of sorting by genre consistently refer to formal artistic categories, such as sorting music submissions into "CLASSICAL, POP, ROCK" (’715 Patent, Fig. 9; col. 14:48-51). This could support a narrower construction limited to predefined, conventional artistic classifications.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement for each patent-in-suit. The inducement allegations are based on Defendant allegedly supplying its ShortStack platform with instructions and guidance, with the knowledge and intent that its customers would use it to perform the claimed steps (Compl. ¶¶55, 69). The contributory infringement allegations are based on the assertion that the ShortStack platform is especially made to infringe and is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶¶56, 70).
- Willful Infringement: The complaint alleges that Defendant's infringement has been willful. This allegation is based on Defendant having "actual prior knowledge of the asserted patents" by virtue of "prior communications with Opus One" (Compl. ¶¶40, 58, 72).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: does the term "content producer," as used in a claim requiring distinct "first," "second," and "third" producers, read on individual, anonymous members of the public entering a photo contest as alleged by the complaint?
- A key evidentiary question will be one of technical function: what evidence demonstrates that the accused ShortStack platform performs the specific step of "sort[ing]... content data based on... genre," as required by Claim 1 of the ’715 patent, beyond simply categorizing entries based on the theme of a given contest?
- A pivotal factual question will relate to scienter: what was the substance and timing of the alleged "prior communications" between the parties, and does this evidence support the plaintiff's claims of pre-suit knowledge required for willful and indirect infringement?