Swiss Post Denies Changing IncaMail

Swiss Post has reneged on statements it explicitly made to the Commercial Court in Zurich last year claiming it stripped the proof-of-delivery functionality that infringes an RPost patent out of its IncaMail secure e-mail service.

After RPost touted Swiss Post’s apparent concession last week, Swiss Post sent an e-mail to IncaMail users and put a copy of the statement on its web site denying that any changes had been made and assuring them that they will continue to get a digitally signed delivery confirmation receipts.

The e-mail was also sent to RPost, which last week said that based on Swiss Post’s assurances to the court it dropped its motion for a temporary injunction against IncaMail. In its statement Swiss Post imputes a different reason to the American company.

The situation is very déjà vu for RPost. The company was burned by Swiss Post’s covenants when it promised to exit the US market, leading RPost to drop its first US patent and trademark infringement suit against the state-owned agency.

It didn’t take RPost long to re-file. Last year it told the American court that Swiss Post had ignored key provisions in their confidential settlement and claimed the changes made in the re-architected IncaMail 3.0 were purely cosmetic.

It looks like the same thing is going to happen again. RPost CEO Zafar Khan said over the weekend that “in light of Swiss Post’s statement, it will doubtless take legal action.”

Here’s the complete letter:

Dear _,

IncaMail, the easy-to-use service from Swiss Post for secure and trackable sending of confidential information via e-mail, has achieved success once again. In the meantime, many new customers were acquired both in Switzerland and abroad. There is also positive news to report regarding the lawsuit of RPost:

The American company RPost dropped its suit against the sale and operation of the secure e-mail service IncaMail, which had been filed with the Commercial Court of Zurich in February 2011 (just before the start of the trial in March 2012). This occurred following the conclusion of an expert opinion submitted as part of the case, which concluded that RPost’s asserted patent claims could not be protected due to a lack of novelty. Swiss Post believes that this is presumably the reason why RPost has dropped its complaint.

Regarding the technology developments in the sector of secure transmission of digital messages, Swiss Post always was of the opinion that the patent from RPost was null and void. To that end, Swiss Post filed an action seeking annulment of an RPost patent before the District Court of Geneva and the Commercial Court of Zurich in 2011. These complaints are currently being handled by the new Federal Patent Court in St. Gall.

In a similar case in the U.S., the US Patent and Trade Mark Office concluded that all claims made under the US patent from RPost cannot be protected because of a lack of novelty. Based on this, the judge in the California court has suspended the case for the time being, until the end of April.

Swiss Post customers can continue to use all functions of IncaMail without any restrictions. This includes the secure electronic transmission of confidential information. IncaMail customers will continue to receive the digitally signed receipt confirmation without any changes, even though in the last few days contradictory, and thus erroneous, reports were published in the media. Swiss Post is examining whether further measures should be taken regarding such false information.

The secure e-mail service of Swiss Post has been approved by the Federal Department of Finance as a recognised and ISO 27001 certified secure delivery platform.

Of course, our customer advisors are happy to answer any questions you might have.

Yours sincerely,
Frank Marthaler
Member of the Executive Management

Interestingly Swiss Post doesn’t deny infringing RPost’s IP. Instead it’s just counting on the patent being ultimately declared invalid. If it isn’t, Swiss Post’s got a problem.

And just to put things straight, contrary to what Swiss Post says in its statement the US Patent and Trademark Office hasn’t definitely decided the RPost patent is invalid. And its lawyers know that.

A PTO patent re-examination is a convoluted back-and-forth process made more complicated by the fact that the PTO, unlike courts on both sides of the Atlantic, doesn’t consider the purpose of the thing a patent claim is being put to merely what the words say in their broadest possible sense, leading to an awful lot of negotiation over what the words mean. And, odd as it may seem, a PTO Final Office Action or determination isn’t final-final until all the challenges are exhausted and even then it e taken to court.

Meanwhile in January the US Federal Court in California re-affirmed the validity of the RPost US Patent 6,182,219 being used in the states against Swiss Post when it granted RPost’s motion for summary judgment on a counterclaim of invalidity.

Swiss Post asked the court to stay the California case while the PTO re-examined the patent, a motion RPost didn’t oppose, and the judge granted a two-month extension until April.

The Swiss courts were recently reorganized and a Federal Patent Court set up just to handle patent cases. The judge running that court took RPost’s patent infringement suit against Swiss Post when he moved from the Commercial Court to the new patent court. He also took Swiss Post’s claim that the RPost patent is invalid with him. He did not take RPost’s motion for a temporary injunction making things more complicated, probably one of the reasons RPost dropped its motion. The initial briefs have all been filed and there may be a hearing this summer. The court will decide first if the RPost Swiss patent is valid. If it is, the infringement trial would follow. Of course Swiss Post is a national institution and it has a home court advantage.

Reportedly other posts are considering using the RPost Registered Email system, IncaMail and an obscure system belonging to Luxembourg Post.

RPost claims to own the technology for registered, legally recognized, court-admissible evidence of e-mail content and delivery going back to 1995. Its 35 patents broadly cover verifiable proof of e-mail delivery and value-added outbound e-mail processing.