Ask HN: A patent troll is targeting my transit app

https://news.ycombinator.com/item?id=5272575

by barumrho • 13 years ago

219 59 13 years ago

news.ycombinator.com

I created a transit app for the TTC in Toronto. (https://itunes.apple.com/ca/app/ttc-watch-for-toronto/id505286932?mt=8)

Yesterday, I received a package from Lemer & Company representing Dovden Investments, Ltd. The package claims that my app infriges their patents.

Patents:

http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/patent/2283239/summary.html

http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/patent/2363556/summary.html

I am reaching out to HN because I know there are many transit apps out there that have the same functionality: letting users know when the next bus will arrive using a third-party API (from NextBus, or GTFS Realtime for example).

So, if anyone has dealt with Dovden or has had a similar experience (or ArrivalStar in the US), please contact me at barum.rho@gmail.com

More details: My apps use the API provided by NextBus who apparently licensed these patents. The patents describe a system that includes a vehicle unit (GPS) and a central server that processes GPS locations, neither of which are part of my app. They offered a "discounted" licensing fee, but my apps have generated income nowhere near the amount.

Please upvote for a better chance of finding other transit app developers.

barumrho8• 13 years ago

Since the URLs do not get linkified on the main post:

Patents: http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/patent/228... http://brevets-patents.ic.gc.ca/opic-cipo/cpd/eng/patent/236...

padseeker• 13 years ago

I thought there was no software patents in Canada? Or is this not a software patent issue?

cbhl• 13 years ago

AFAICT, the patents relate to the actual system tracking the buses, which does actually require hardware.

speg• 13 years ago

Looks like they tried something against the GTTA and the case was dismissed: http://www.ippractice.ca/file-browser/?fileno=T-108-10

... but IANAL so I'm not even sure if I'm reading that right.

barumrho8• 13 years ago

That's what I thought too at first, but GTTA is listed as a licensee.

hso9791• 13 years ago

By whom are they listed?

Theory5• 13 years ago

A quick glance at the patents informs me that patent #1 (CA 2283239) does not have anything to do with your app. Patent #2 (CA 2363556) MAY be applicable to your app, but its doubtful. As I am not a lawyer (nor do I play one on TV), You will want to contact a legal representative. But it appears to me that you are dealing with a patent troll. Good Luck!

barumrho8• 13 years ago

That is my conclusion as well and I will be seeking legal help.

I thought that if there is anyone out there that dealt with or is dealing with the same issue, I could get some help.

tomasien• 13 years ago

Email me: tommy@shockoe.com Doing something now that could easily be hurt by this. God patent trolls suck, they're making me really nervous.

tlrobinson• 13 years ago

Not to be paranoid but if the thing that could be hurt by this could be traced to your email address or Hacker News account you might not want to post it here...

jdelgado• 13 years ago

Disclaimer: I'm not a lawyer.

Firstly, don't let them strong arm you - most patent trolls blast complaints like this to many parties at once and hope a percent of them cave without the need for court.

If this did go to court, I strongly doubt you would be found guilty of infringing on these patents. Based on your statement, it sounds like you simply made an app that converts third party API data to a UI, which wouldn't come close to either patents as they are related to the actual process of tracking vehicles, which the API provider partakes in, not you.

I would simply contact them and let them know that you don't track them yourself, you use another company. Most lawyers don't understand software, so they might be assuming you are tracking vehicles on your own. If they continue to press you past that, you might be forced to take it to court.

Best of luck and please keep us informed.

barumrho8• 13 years ago

Thank you for your comment. The problem is that I cannot afford to take this to court, even if I am guaranteed to win.

fnordfnordfnord3• 13 years ago

You might find an atty to help, if you'll counter-sue for expenses.

monochromatic4• 13 years ago

You need to call an attorney. Any other advice you get here is bad advice.

shmerl3• 13 years ago

Not every attorney can give a good advise either. It all depends. If the advise is - settle, don't fight and etc. - it's a bad advise already.

fleitz• 13 years ago

You should note that broken clocks aren't always wrong.

The OPs point is that a competent lawyer will be able to evaluate the relevant law in the relevant jurisdiction(s) and ask relevant questions before giving advice. While advice given on HN may sometimes be right in regards to the law, it is so often wrong that it's best to just go see a lawyer. (Or if you really think the advice is that good, bring the advice to the lawyer)

When dealing with the law and giving people options as to what they might do it's important to note that it's information and not advice. If someone actually gives advice on hacker news then you should definitely not take it. Someone giving information is generally the first clue that they the information they are giving might be relevant in their jurisdiction.

monochromatic4• 13 years ago

Sometimes settling is a reasonable option, even if you dislike patent trolls. If the licensing fee isn't much, and if the patents seem strong (for example, if they've already been through litigation and were held valid) then fighting can be a very risky proposition. Even winning could be more expensive than just paying the fee and getting on with your life.

chenster• 13 years ago

Not all are necessarily bad advice here. But YOU SHOULD CONSULT A LAWYER nevertheless.

jacques_chester• 13 years ago

Yep. Law varies in sometimes obvious, sometimes subtle ways from jurisdiction to jurisdiction; any advice given over the internet runs the very real risk of being Wrong.

The law is serious business.

barumrho8• 13 years ago

Yes, I will be doing that. I was just hoping to find someone who already went through this, because there are many transit apps out there.

aaron6952• 13 years ago

>You need to call an attorney. Any other advice you get here is bad advice.

Why? Why is your opinion the best? Are you an attorney? Are you an attorney he's called?

This statement has no value, it's almost a paradox,.

Where's the proof behind it? Do you have have statistics? It seems to me to be purely a pass the buck statement.

michaelpinto• 13 years ago

...because the law is a highly specialized domain, and because it would be foolish to guess about that domain. Also because a given case may be all about the specifics (and discovery may have to do with asking the right questions).

But if you don't believe me just speak to any attorney.

Also I can tell you as someone who's looked at the software industry for over twenty years that YES not knowing what you're doing can be very costly.

Of course a lawyer can still give you bad advice, but that may be a reason to talk to more than one lawyer rather than guessing which is unlikely to help.

monochromatic4• 13 years ago

Yes, I am a patent attorney (but I don't have any involvement in this case of course). It is my professional opinion that the only reasonable advice in this situation is "call an attorney."

toomim• 13 years ago

Fuck that. Fuck the sharks. Stop feeding them.

monochromatic4• 13 years ago

Great plan, until you get sued.

nickheer• 13 years ago

I am not a lawyer (contact one!), but your choices will be to either settle ($$$) or fight it ($$$$). A quick Google search tells me that these guys have sued quite a few people over this, and you might be able to put together some sort of class-action suit with the other licensees.

Contact a lawyer.

niggler• 13 years ago

Have you contacted "Arctic Surf Designs", the people behind TTCfetch? I don't know their situation, but at the pricepoint I imagine they are using an API as well. https://itunes.apple.com/us/app/ttcfetch/id444836893?mt=8

I'd venture to guess that they also received a notice ...

moeadham2• 13 years ago

Did you upload the app in your own name? Are they suing you directly? It might be prudent to upload apps under a corporation to limit your liability. If you uploaded under a corporation, you could consider ignoring it. It would too much work for them to go after the 0 assets your corporation actually owns..

Real lawyers feel free to tell me I am giving horrible advice.

moeadham2• 13 years ago

Also, check these guys out: http://www.imagineip.com/#!__home/dovden

"A company named Dovden Investments, Ltd. ("Dovden Investments") has been suing several companies over the past few years for patent infringement.

The lawsuits are based on infringement of a portfolio of patents directed to arrival and status messaging systems for transportation logistics and related industries. The portfolio includes Canadian Patent Nos. 2,363,556, 2,283,239, 2,521,206, 2,528,647, and 2,267,206.

Dovden Investments generally begins by sending a letter describing their patents and how, in their view, you infringe them. They then demand "an upfront discounted licence fee" which varies from case to case but can exceed $100,000.00. If you refuse, they proceed to file a statement of claim with the Federal Court (typically in the Vancouver office).

At iMAGINE™, we are experienced in defending against allegations of patent infringement brought by Dovden Investments. We have assisted companies to dispose of the dispute, without paying anything to Dovden Investments, for legal fees of less than $2000."

CamperBob2• 13 years ago

This almost sounds like a scam in itself...

samvermette• 13 years ago

Flash website; must be a scam.

mhp• 13 years ago

Since you are asking on HN, I'm assuming you are not looking for legal advice, just other's opinions. Obviously, you should talk to a lawyer, but here's my free internet advice (I'm not a lawyer). My advice also makes assumptions that Canadian law is very similar to US law, which may not be true.

You have three options: do nothing, settle, fight.

It sounds like you only got an infringement letter. These are normally sent out in bulk by patent trolls to any and all people they think they can extort money from. There is no legal burden to this letter. You don't have to talk to them (and you shouldn't). Don't respond to the letter. Don't take their phone calls. Refuse to talk to them. Regardless of whether you hire a lawyer or not, at this point, there is nothing to be gained by approaching them.

Eventually, they will call you. They have armies of hourly workers who go through the database of people they sent out the letters to and try to get an easy settlement from you. Don't sweat these calls. They'll ratchet up the threats via voicemail (since you are not talking to them). And eventually they'll have to make a decision. Patent trolls are in the business of making money. Lawsuits are expensive. If the cost of a lawsuit is greater than the amount of money they think they can get out of you, they won't sue you. It would be bad business. From your description, I'm guessing it would be a bad idea for them to sue you because you don't really have a lot to offer them. Even if your app makes a couple hundred thousand dollars, they won't bring a suit against you. It's a waste of their time. (They'd happily take a settlement check from you though).

If you thought there was a good chance they were going to sue you (which I don't), and you were located in the US (which you are not), and it looked like they were going to bring suit in that horrible district in Eastern Texas, you could decide to file suit against them first in another venue to avoid having your suit take place there. It doesn't look like Canada has this same issue (patent troll friendly district where most cases go for the patent trolls).

In essence, at this point, if you go to a lawyer and have them draw up a defense that says your tech doesn't infringe, you'll end up spending between $5,000 and $10,000. I don't think it's really worth it right now. My advice would be to wait until you get some sort of actual legal notification of a suit. Before that point, it's all just posturing and bluffing. Plus, you can still settle at that point (you might have to pay a bit more though to cover the added costs they've spent).

anatari• 13 years ago

As a mobile app developer, We've been threatened by trolls before as well. So far non of them have followed through and filed suit and the strategy of ignoring them has worked out for us. However, our lawyer helped us gauge the litigation risk before we made the decision to do nothing.

bbunix3• 13 years ago

tl;dr - Being sued for using a publicly available API is a reach. If there's an issue, it's Nextbus that has a problem as well as everyone, and anything that touches their API.

If it was me, I'd reply with a certified letter explaining your situation as a developer, how much revenue the app has made to date in downloads and ads. Then nicely explain that you would never knowling violate anyone IP rights, and having reviewed their patent do not believe you are practicing any of the steps laid out in their patents. You are, simply using information published via publicly available Nextbus API.

Then wait.

Lawsuits cost money - no contingency in Canada, so by demonstrating poverty, it's really not worth suing you... period. If they come back with a real legal filing, you can always just shut down the app, or find a lawyer to help you fight.

However, I'm not a lawyer, just saying what I'd do... you situation may be different - and getting a lawyer never hurts (except the pocketbook).

-----

My situation; inventor, lived in Canada for years... now in the US. Your app doesn't appear to be infringing (it's not doing all the stuff laid out in the claims, but the API provider most likely would be, which is why they settled)... however...

1. Canada doesn't do contingency for legal stuff, you will need to find a lawyer and need to pay up front. Get a lawyer (if you want a suggestion ping me at sean@maclawran.ca)

2. I'd talk to NextBus about their API and license. I'd also look carefully at whatever agreement you have with NextBus about the use of their API (free/paid). If anything, Nextbus may be infringing on their license by publishing the data. Alternatively, there may be language in the contract indemnifying you. Look at all the contracts, period.

3. Look carefully at the document you were sent. It will have valuable clues; have they actually filed anything, etc.

If you're using their public XML feed/API, here's the agreement: http://www.nextbus.com/xmlFeedDocs/NextBusXMLFeed.pdf.

Good luck.

justsee2• 13 years ago

> If it was me, I'd reply with a certified letter explaining your situation as a developer, how much revenue the app has made to date in downloads and ads.

Then this whole exercise is patent troll phishing of app sales information from frightened developers.

bbunix3• 13 years ago

Nah. Not an efficient way of getting that information. And just in passing, here are some Canadian IP stats... don't know if I believe it - but I see 48 patent trials in Canada in 2012.. http://www.ippractice.ca/litigation-statistics/intellectual-...

fnordfnordfnord3• 13 years ago

I would not volunteer any information about revenue.

jongraehl• 13 years ago

better to ignore than respond if it's not a lawsuit

thinkcomp• 13 years ago

ArrivalStar has a profile on PlainSite that might be helpful:

http://www.plainsite.org/flashlight/index.html?id=2598991

adambenayoun• 13 years ago

Propose to settle with them for like 1% of your app's profit (profit not revenue), then send them a check for 10 cents.

Seriously though - you should consult with a lawyer but ultimately the decision will be yours.

jlgreco• 13 years ago

Ha, so use Hollywood accounting in legal settlements. Brilliant.

jimzvz• 13 years ago

>My apps use the API provided by NextBus who apparently licensed these patents.

Since you are using their api, surely your app is covered by NextBus' licenses? I would get legal opinion on this though because even though this would be logical and expected, the fact that such trivial forms of telemetry can be patented shows that the system is certainly not logical or expected.

This type of thing is seriously depressing. Good luck.

joshuaheard• 13 years ago

I am a lawyer and normally my advice would be to consult a lawyer. And, if you can find a lawyer to do an initial consultation for free, I'd do that.

However, in the case where you think the other party is bluffing, I would not hire a lawyer right away. The other party's only enforcement option is suing you. If they sue you, then hire a lawyer.

The big issue is whether to respond. If you don't respond, they will stop contacting you after a certain number of attempts. If you do respond, you will get their attention. That can be good if you think you have a strong defense like mistaken identity or something. If I were you, I would ignore them and see if they sue.

Edit: I looked up Lemer & Company and they are personal injury lawyers, not patent attorneys. They were probably hired only to write scary letters, which is more reason to ignore them until if or when they refer the case to patent counsel for litigation.

Ruud-v-A• 13 years ago

Have you seen this? http://www.ted.com/talks/drew_curtis_how_i_beat_a_patent_tro...

barumrho8• 13 years ago

Yes. Unfortunately, it did not help with my situation.

manarth• 13 years ago

IANAL but…to all the people saying "Ignore the letter, don't respond until they issue a suit" - the patent holder has notified you that they believe you're infringing. If you ignore them, your actions might then be seen to be "willful infringement" of the patent, and a court can increase damages based on that.

Personally, I'd probably ignore them too - but I'd double-check with a lawyer first!

st3fan• 13 years ago

Important note: the City of Toronto is listing the TTC data (via NextBus) as one of their Open Data initiatives.

http://www1.toronto.ca/wps/portal/open_data/open_data_item_d...

Call the city, talk to a city lawyer, find out what is going on here.

barumrho8• 13 years ago

Thank you for reminding me about this. I am going to look into that.

AccordionGuy• 13 years ago

You might want to talk to my friend, Rob Hyndman, whose law firm, Hyndman Law, specializes in legal work for tech businesses and startups, and he's based in the west end of Toronto.

http://hyndmanlaw.com/

Tell him Joey deVilla sent you.

Ask HN: A patent troll is targeting my transit app

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