Swiss Post Seems to Take Cockamamie Position on PTO-Validated RPost Patent

Let’s try to start somewhere near the beginning because otherwise it can get confusing.

So, back in January the US Patent and Trademark Office threw out US Patent No 6,182,219, a basic RPost e-mail patent covering proof of delivery granted in January 2001.

This made Swiss Post very happy since RPost was suing Swiss Post for infringing the patent.

The PTO’s decision, however, wasn’t what they call in patent circles a “final final” decision. That meant that RPost got another crack at explaining to the PTO what ‘219 claimed and trying to get the thing validated.

It reportedly argued that ‘219 – pointedly entitled “Apparatus and method for authenticating the dispatch and contents of documents” – was a “patent on the proof of a successful electronic transmission” – as RPost had always said it was.

A miscommunication or mis-transmission wouldn’t produce any proof of transmission.

The PTO had a think and a few weeks ago decided that if RPost limited its claims to “successful” e-mail transmissions – by inserting the word “successful” where it said (in ugly patent-speak) “an indicia of time of the successful transmission of the certain information to the recipient, the indicia recorded by the dispatcher” – then ‘219 defeated the three claims of prior art that some unidentified third party had brought.

Because of that seemingly simple amendment, the PTO upheld the validity of all 89 of the ‘219 claims in a sweeping 11-page decision and issued a “Notice of Intent To Issue a Reexamination Certificate.”

This so-called “final final” decision sure looked like bad news for Swiss Post since RPost is suing it because its IncaMail widgetry provides “digitally signed receipt confirmation.”

However, in response to the news Swiss Post put out a statement claiming the PTO’s decision and “this limitation on the US patent of RPost strengthens Swiss Post in its position that its product IncaMail does not violate any patent rights of RPost.”

Huh? Say what?

RPost then retorted that “Swiss Post’s public statement is a desperate attempt to distract readers from the fact that the US Patent and Trademark Office upheld the RPost ‘219 patent.”

RPost claims that the patent gives it exclusive rights to provide e-mail users with digital proof that their messages have been delivered, that the PTO “has agreed that under this construction this RPost patent is valid” and that the PTO “has approved amendments which will guide the interpretation of the patent in US courts.”

RPost CEO Zafar Khan says, “Unless Swiss Post is prepared to say that their system has nothing to do with the successful transmission of e-mails, IncaMail still infringes and we will see them in court.”

So you can keep up with all the twists and turns, the whole of the Swiss Post statement reads:

Swiss Post has taken note of the fact that the US Patent and Trademark Office (US PTO) has examined an application from RPost with regard to limiting its patent, and that said application shall be granted. This limitation on the US patent of RPost strengthens Swiss Post in its position that its product IncaMail does not violate any patent rights of RPost.

The relevant US patent of RPost was subject to a reexamination by the US Patent and Trademark Office (US PTO). In the course of this process, the US PTO came to the conclusion that the claims of RPost resulting from its patent did not enjoy protection due to a lack of novelty. This was communicated by means of a final rejection dated 10 January 2012. Thereafter, RPost requested that its patent claims be limited, so that it could still protect a part of its US patent rights. Swiss Post is of the opinion that RPost intends to avail itself of the requested limitation in order to circumvent the numerous literature that led to the lack of novelty of its patent. The subject-related literature reveals that the technical description of the US patent by RPost was already publicly known to the field prior to its entry into force, so that RPost is not able to claim novelty. The patent could consequently be limited to such a degree that the US PTO is effectively prepared to grant a limited patent. This was at least its position as communicated in a notice of intent. The final decision shall be laid out in a document entitled the “Reexam Certificate,” but which has not yet been issued.

The US patent would henceforth be so limited that Swiss Post would more than ever be of the opinion that its product IncaMail does not infringe the patent rights of RPost. RPost has indicated that it wished to persevere with the California proceedings in which it alleged a breach of its patent rights by IncaMail. Swiss Post is, however, certain, that the limited patent offers no grounds for doing so.

The annulment proceedings currently pending in Switzerland against the Swiss respectively the European patents of RPost are not hereby affected and shall continue unchanged. The aforementioned limitation of the patent only affects the US patent.”

In a statement of its own RPost said the “amendments were necessary because the United States Patent Office uses a ‘broadest interpretation standard’ for the purposes of considering prior art. That standard means that the interpretation of claims cannot take account of the inventor’s specification of what the invention is supposed to accomplish or how it does so.

“European patent law does allow the specification to control the interpretation of claims so it is not expected that the European version of this ‘219 patent will require amendment.

“The amendment will not affect any pending litigation.”

Obviously this is going to be fun when it finally gets to court and, between times, the Swiss court is going to have to tread warily.