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Ask HN: A patent troll is targeting my transit app
219 points by barumrho 920 days ago | 59 comments
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.




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).

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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.

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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.

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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).

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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.

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> 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.

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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-...

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It was a slightly facetious response. Either way rewarding bad behaviour by sharing private business information with a patent troll does not seem like a sensible course of action.

Isn't the aim of extortionists pre-trial settlement or realisation that there are easier / more lucrative 'marks', so wouldn't actual patent trial numbers provide little indication of the low-level activity of patent-trolls?

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Well, it's Canada.

Sharing sufficient information to demonstrate there's no money here seems pretty sensible to me (hey I'm a student doing this part time and the app's only been downloaded 500 times @ 1.99 each and apple keeps 30%... so I've made $700 so far...), but if you want to sue me, go for it :)

1/10 the size of the US, and the awards for infringement are nowhere near as large as the US (no triple damages, no especially favourable venues, etc)... so this is interesting as it happens so rarely. As for the numbers, 48 trials in 2012 sort of addresses the size of the market.

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Nine of which were brought by the company that is currently threatening OP. I would be a little worried.

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I would not volunteer any information about revenue.

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

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

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>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.

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...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.

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Everything is a "highly specialized domain"

So when I'm getting a house built, talking to friends is no use and forbidden, I should only talk to a builder?

If a house falls down I could be killed, that's way worse than being sued.

Sounds like nonsense, but why? Every day we do things that put our lives in non specialist hands but it's a legal issue suddenly "only ever talk to lawyers."

Yes advice must be taken lightly, especially on the internet. Experts have a time and a place. But living in fear can be worse.

I personally would prefer free internet advice than selling out and becoming part of the problem. That to me is a fate worse than being sued.

Others however might prefer a mix, they also might have more on the line than me. That's all good.

But don't let the fear take over and make you irrational. The worst thing with the patent wars is not the suing it's the fear it's creating.

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Completely agree. Who started this never talk about legal matters trend? I think it was lawyers. You always have to take things with a grain of salt, just like when you go on WebMD because of a sinus headache and you learn you likely have a brain tumor.

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I think that what the other guy was arguing against was your buddy saying "Oh, I'm sure it's just a sinus infection" when you actually have a brain tumor. People tend to be optimistic when it's not their asses on the line. While I wouldn't say advice from others is worthless, it can do more harm than good in specific scenarios.

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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."

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That's the only advice a patent atty could possibly give.

OTOH, I'd say there is a non-zero chance that some HN user might see this and be able to reply something to the effect of "Yeah, went through a similar problem with that same firm last year. Contact me by email and I'll tell you how it went down."

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Fuck that. Fuck the sharks. Stop feeding them.

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Great plan, until you get sued.

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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.

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

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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.

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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.

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It surely depends on resources. If you have them - it's better to fight and try to invalidate those patents (like Newegg did). Some patents are strong, while others are junk. And third have prior art. Naturally not everyone has resources to look for it, but pooling resources can help. Many victims fighting a racketeer is easier than one victim alone.

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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.

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Having a competent lawyer who understands the industry and can help with the best course of action is great. My point was - many lawyers aren't fit for this, and finding one is also a challenge.

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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.

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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...

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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!

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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.

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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.

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

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

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

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

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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!

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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.

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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."

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This almost sounds like a scam in itself...

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Flash website; must be a scam.

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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.

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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.

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

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

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

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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.

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

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>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.

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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 ...

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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.

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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.

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

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By whom are they listed?

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By Lemer & Company in the patent infringement claim that I received. I am guessing that after GTTA got sued, they decided to settle and license the patents.

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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.

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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...

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ArrivalStar has a profile on PlainSite that might be helpful:

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

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