Patent row continues over Swiss Post’s digital mail service

Swiss Post has sought to reassure customers of its digital mail service IncaMail that it now faces “no further lawsuits” regarding patent infringements within Switzerland. However, it does have a claim pending in the Swiss patent court attempting to nullify the patent of US firm RPost regarding digital mail proof of delivery, which was the basis of a recently withdrawn Swiss lawsuit.

And, a separate US lawsuit is set to have its timetable decided in California next month.

Swiss Post said in a statement last week that since US technology firm RPost withdrew its lawsuit against it within Switzerland earlier this year, “clients in Switzerland may thus fully use Swiss Post’s secure email service IncaMail unchanged”.

However, RPost said on Friday that a new lawsuit was likely in Switzerland unless Swiss Post did remove proof of delivery systems from IncaMail.

Los Angeles-based RPost said that because February’s withdrawal of its request for a preliminary injunction was based on the understanding that Swiss Post had agreed to change its IncaMail to remove patented technology – and Swiss Post then decided not to make the changes after the lawsuit was withdrawn – a fresh lawsuit in Switzerland was now a virtual certainty.

Swiss Post has claimed that the patent covering email proof of delivery suffers a “lack of novelty”, suggesting that RPost does not have the right to patent it because the technology may have been in use before RPost claimed to be inventor in its 1999 patent application.

Over the winter of 2011-12, a promise from Swiss Post to remove IncaMail’s proof of delivery system was enough to encourage RPost to terminate its lawsuit – and accept legal costs – but Swiss Post then appeared to change its mind after receiving a study commissioned by the court raised questions about the patent’s validity.

Nullify claim

Last week, Swiss Post global spokesperson Doris Larmann issued another statement to Post&Parcel affirming its belief that its service “does not infringe any RPost patents”.

It said the expert opinion sought by the court in Switzerland “was a strong indication that the application for measures lacked a legal basis”. Swiss Post said discussion of the opinion had not been possible in court because of the withdrawal of the lawsuit by RPost.

Swiss Post said it filed claims to nullify RPost’s patent on secure digital mail transmission in the Geneva Cantonal Court and the Commercial Court of Zurich last year, which are currently pending with the new patent court in St Gallen.

“It is a matter of priority to Swiss Post that the legal situation be conclusively clarified through these nullity claims,” said Swiss Post.

RPost, which has just had its patent re-certified as valid in the United States, is currently waiting for a similar re-certification of the patent in Europe, it told Post&Parcel.

Zafar Khan, the CEO of Los Angeles-based RPost, said: “We will sue Swiss Post for patent infringement (in Switzerland), but it makes no sense for us to do so before that recertification process has been completed.”

US lawsuit

RPost has been suing Swiss Post in the United States in a separate but related lawsuit for patent infringement, which will should see a decision by a judge in California next month regarding the schedule for the lawsuit.

Khan said Swiss Post had asked for a stay a few months ago, suspending the process in the US pending the re-examination of the patent by the US Patent Office, which has now been completed.

Next month’s hearing will then consider what action will come next, following the PTO’s recent re-examination.

“We’re not asking them for money in the US. They did not want to work with us to license our technology, so all we needed was for them to block the IP range in the US,” explained Khan, referring to a relatively straightforward way to prevent computers in foreign countries from accessing a website like that of IncaMail.

Separately, RPost has a number of other lawsuits against other companies it says have infringed its patent rights, including Canada Post and Adobe, which is set to be heard in front of a jury in Texas in August 2013.