Are you infringing a patent if you publish a PWA?
An "inventor" claims you need to pay a license to publish a PWA because he owns a U.S. Patent
by Maximiliano Firtman
About 8 min reading time
What do you think if I tell you that someone -called itself an inventor- is claiming to be the owner of a patent for Progressive Web Apps and you require a license to publish one? Well, that's happening right now since a new patent was issued last April 2021 in the US.
What do you think if I tell you that Apple is taking his claims and forwarding them to you if you have an app in the AppStore, even if it has nothing to do with the PWA and that developers are forced to deal with it? 😳
"PWA Lite app or web app enabled by progressive web technology (PWA) requires a license of issued U.S. Patent No. 10990265. (...) I write to offer a license with favorable terms if the parties are able to finalize a suitable license within the next 30 days." says the inventor in his friendly first contact
I'm not an expert in patents, so I will describe this case just by taking a short quote from TechCrunch when talking about the same inventor: "a patent troll." He has claimed 10 years ago that he had a patent that Twitter was infringing (See article). That was on a different patent, though; not the PWA patent he claims to own.
According to a patent database, the Mumbai-based inventor is the owner of ten patents, but 10 years ago, he was claiming to own sixty of them.
In a nutshell #
The patent is named "Application program interface or page processing method and device" 🤔 but the inventor claims that is "related to mini apps and progressive web technology (PWA) architecture and app page processing core technology". The patent's abstract is a generic definition using a thousand verbs that you can do within some piece of software that could be downloaded while running on top of other software pieces within an operating system.
The claim doesn't end on PWAs; it also includes Mini Apps -mainly used in China, Russia, and other countries-.
And he has started to claim PWA and Mini-apps owners that they should request a license by paying an unknown price to be asked by email. The patent was granted a month ago (April 2021), but he says it's a continuum of another patent he was granted in 2013. He emphasizes that his patent came before Mini-Apps and PWAs were created (but he forgets to mention that it's after Apple's home screen web apps and many other similar technologies were in the market).
It's interesting to see that to push the developer into agreeing with his claims, he mentions the App Store Developer Program policy that has nothing to do with a PWA on Safari.
The Claim #
This is the letter that some PWA developers are receiving from "the PWA inventor".
To, Attn: Legal Dept. Re: Legal Patent Infringement Notice and Patent Licensing Proposal in respect of Issued U.S. Patent No. 10990265 related to Mini Apps / Mini Programs / Progressive Web App (PWA) technology As per Apple App Store Developers Policy and Review Guidelines… - 5.2.1 Generally: Don’t use protected third-party material such as trademarks, copyrighted works, or patented ideas in your app without permission...., your Progressive Web App (PWA) / lite app or web app infringing my [U.S. issued patent 10990265](https://bit.ly/3xs86Xa) related to mini apps and progressive web technology (PWA) architecture and app page processing core technology. Users can install PWA enabled lite app / web app via Safari iOS Browser - Click the share button and press "Add to Home Screen" to install app and access app by selecting displayed app icon from home screen of user device. PWA Lite app or web app enabled by progressive web technology (PWA) requires a license of issued U.S. Patent No. 10990265. Should you wish to contest this position, I will provide you with full detailed study supported by technical documents which shall clearly demonstrate technical similarities of issued U.S. Patent No. 10990265 in question with that of your PWA lite app / web app enabled by progressive web technology (PWA). I write to offer a license with favourable terms if the parties are able to finalize a suitable license within the next 30 days. The general terms of issued U.S. Patent No. 10990265 licensing offer are summarized below: Proposed License: I propose that the most reasonable, practical, and economical course of action is for the parties to amicably and promptly resolve issues relating to the use of issued U.S. Patent No. 10990265 through a suitable negotiated licensing arrangement. To that end, and to encourage the continued use of essential patented technology of issued U.S. Patent No. 10990265, I propose granting a non-exclusive, worldwide, upfront, paid-up license for its use under the issued U.S. Patent No. 10990265. The amount of paid-up license fee will be determined by the specific nature, field-to-use, type and extent of the use of (1) Progressive Web App (PWA) and/or (2) mini apps platform (allowing 3rd parties’ developers to develop and list mini apps) technologies covered by the issued U.S. Patent No. 10990265. Herewith I have attached: (1) U.S. Patent 10990265 and (2) Claims Charts. Please contact me at your earliest possible convenience to discuss this important matter, and thank you in advance for considering the licensing proposal. I can be reached at direct dial XXXXXX or e-mail address XXXXX@gmail.com. Kindly acknowledge receipt of this letter. I will appreciate your early reply. Very Truly, Yogesh Rathod (Inventor) Note: Further note that my U.S. Granted Patent No. 10990265 having similar claims and priority (1st August, 2013) over Tencent’s (WeChat mini apps / PWA) related pending U.S. Patent App. No. 16354371 (Priority: 5th December, 2016). Also see history of PWA – (1) https://bit.ly/3vLJYwU Service Workers (W3C First Public Working Draft 08 May 2014), (2) https://medium.com/progressivewebapps/history-of-progressive-web-apps-4c912533a531… U.S. Granted Patent No. 10990265 having priority over all these prior arts.
Apple takes the claim (added on 2021/05/26) #
The worst part came one day after I published this article; many developers reported receiving an email from Apple Store Notices with the subject Apple Inc. - Notice of Complaint.
We need to understand that the claim is about having a PWA, but the "inventor" is contacting companies with an AppStore app and a published PWA. That contact happens even if they have no relationship with each other, making a claim over the native app. The inventor is claiming to Apple that you are using his patent in the store, but that is not the case in many of the examples I've seen.
Dear Sir or Madam,
On X/XX/2021, we received a notice from Yogesh Rathod ("Complainant") that Complainant believes the app listed below infringes its intellectual property rights. In particular, Complainant believes you are infringing its patent. Please see their comments below.
C. Developer: xxxx
Provider: xxxx
App Title: xxxx
Apple ID: xxxx
"Failure to respond to the Complainant or to take steps toward resolving a dispute may lead to removal of the app(s) at issue as in violation of the App Store Review Guidelines and/or the iOS Developer Program License Agreement. Please keep Apple apprised of your progress.", says the email from the Apple App Store team
After this introduction, the same claim that you read before is included without any letter changed and finally, Apple adds some legal lines that may scary some developers without experience dealing with legal stuff:
You can reach Complainant through email: XXXXXXXX@gmail.com, copied on this email. Please exchange correspondence directly with Complainant. We look forward to receiving written assurance that your application does not infringe Complainant's rights, or that the parties are taking steps to promptly resolve the matter. Please keep us apprised of your progress. Please note that during the course of this matter: 1. Correspondence to Apple must include the reference number noted above in the subject line and copy the other party. All correspondence sent to Apple may be shared with the other party. 2. Written assurance of rights may include confirmation that your application does not infringe Complainant's rights, an express authorization from Complainant, or other evidence acceptable to Apple, and should include documentation wherever possible. 3. Should you choose to remove your application (for example, while you make any necessary changes), visit App Store Connect at https://appstoreconnect.apple.com and access your app in the Manage Your Application module. 4. Developers with a history of allegations of repeat infringement, or those who misrepresent facts to Apple and/or the Complainant are at risk of termination from the Developer Program. 5. Failure to respond to the Complainant or to take steps toward resolving a dispute may lead to removal of the app(s) at issue as in violation of the App Store Review Guidelines and/or the iOS Developer Program License Agreement. Please keep Apple apprised of your progress. Thank you for your immediate attention.
The Patent #
I'm not an expert in patents. I leave the opinion to you, the reader, on if this patent should have been granted, if it's related to PWA and mini-apps or not, or if it's something that should license the PWA creator, or the browsers (in case the patent claim is legit).
I don't want to spoil you with the patent's content, but it includes WML and WMLScript 🤡.
Patents are public; we can download them, see them and analyze them. You can red the full patent's text in HTML or you can download the PDF version of it. Good read!
The Abstract #
"Aspects of the disclosure provide a method and an apparatus for information processing. For example, the apparatus includes a storage medium, processing circuitry and network interface circuitry. The storage medium stores a first application program, and other application programs that are downloaded via the network interface circuitry. The processing circuitry executes the first application program in an operating system to provide a running environment. Further, the processing circuitry executes a second application program in the running environment to start a program logic process and a first presentation process corresponding to a first view interface or page of the second application program. The program logic process and the first presentation process respectively interface with the running environment. The program logic process generates initial first interface or page data, and the initial first interface or page data is transferred from the program logic process to the first presentation process. The first view interface or page is rendered in the first presentation process."
😳
It's clearly talking about PWAs, right? 🙄
The images #
OMG, the images in the patent illustrate the invention; what can I say about them? They seem like taken from a book about networking during the 90s. I'm leaving the original figure captions here for you to taste.
Objects of the "invention" #
"The principal object of the present invention is to enabling user to-do various human mediated actions including select, input, attach, compose one or more types of contents including text, commands, audio, video, photos or images, files, applications, objects, workspaces, URLs or links via single dynamic and intelligent interface and enable to select one or more functions for conducting various types of activities, actions, process, workflow, tasks, transactions, communications, messaging, publishing, presenting, posting & requesting contents, executing commands, processing, formatting, structuring & interpreting contents, conducting e-commerce transactions, searching, and sharing with one or more sources and/or destinations including one or more applications, services, social networks, users, web pages, web sites, domains, databases, networks and devices from single standard user-friendly and mobile or Smartphone friendly interface."
Many more objects are listed apart from the principal thing, mentioning all possible verb and nouns that you can imagine that someone can do on the web. 😵💫
What's this? #
When you read the whole patent, you don't really understand what's the invention; actually, it seems to describe the Internet and software in general. Everything can fit within the description of the patent. I don't even see a relationship between the abstract and the definition of the same patent.
I'm sorry, inventor, I don't see any invention here. In fact, I don't know how the U.S. Patent and Trademark Office approves patents like this one. But that's just an opinion. But I do know that asking every developer to pay you a license when they have just used standard specs from the W3C and publish them using open protocols seems like too much to me.
How much money are you willing to pay for licensing the PWA technology to its inventor? Let me know on Twitter.
Note: I contacted the "inventor" on email and WhatsApp and I didn't get any reply from him, not even a 'hello'.