The Leahy–Smith America Invents Act (AIA), signed into law in 2011, has created new opportunities for those accused of patent infringement to challenge the validity of granted patents, with the institution of new "post-grant" proceedings.
Today, the validity of RPost patents have been challenged by companies, including Symantec, Swiss Post, Experian, EBay, Epsilon, and Constant Contact. These companies instituted requests for post grant reviews, including Ex-parte Re-examinations, Inter Partes Reviews, and Covered Business Method Reviews.
To date, eight of RPost's US patents upheld their validity after post-grant reviews conducted by the United States Patent and Trademark Office and its Patent Trial and Appeal Board.
These RPost patents include US 8,224,913, US 8,209,389, US 8,161,104, US 6,182,219, US 6,571,334, US 7,966,372, US 8,504,628, and US 8,468,199 claims 1-8. These patents broadly provide RPost exclusive rights to claimed technologies to track and prove delivery, content delivered, opening, replies, and more; for electronic messages.
RPost practices its inventions.
What is a patent? In short, a patent is a government granted exclusive right to a specified technology in exchange for early disclosure sufficient to teach the world how to build the invention.
Why is this area of the law important? Lawmakers believe that early detailed disclosure of inventions will to spur further marketplace innovations, as many technologies are incremental advancements. More innovation will spur a more robust and advanced economy.
Inventors must make an early decision --- voluntarily disclose the invention to potential new competitors and the world, or maintain the invention as a trade secret. To provide incentive to inventors to disclose their inventions early --- to facilitate others innovating on top of these inventions --- the government offers the opportunity for a 20 year exclusive right to that technology if, after much review, it is deemed to be a true technological invention, and is determined to be, after a worldwide review of other inventions and disclosures, an original invention.
Specifically, the patent discloses the invention, and then describes the elements of the invention that the inventor believes are the unique, technological invention. These become the claimed exclusive real property right owned by the inventor. A patent is real property; technology property that is defined as a “claim".
RPost today has more than fifty patents granted in 22 countries with hundreds of “claims”. Some examples of RPost patent claims -- exclusive technology owned by RPost -- are systems and methods of authenticating delivery and opening of electronic messages, systems for encrypting email, recording recipient replies to received documents and messages, and more. Examples follow of claims that upheld validity after post-grant reviews:
US 8,161,104 Claim 27. A system for transmitting a message from an originating processor to a recipient processor in an electronic mail system and providing an indication that the message was opened by the recipient processor, comprising: a server in electronic communication in the electronic mail system, the server receiving the message from the originating processor and adding a link to the message before transmitting the message and link to the recipient processor, the link being configured to execute automatically when the message is opened at the recipient processor to control the server to provide an indication at the server that the message has been opened at the recipient processor; and wherein the server constructs authenticatible information related to the message; and wherein the server transmits the indication of the opening of the message at the recipient processor and the authenticatible information to the originating processor.
US 8,468,199 Claim 1. A method of transmitting a message from a sender to a recipient through a server displaced from the recipient, the steps at the server comprising: receiving the message at the server from the sender; transmitting the message to the recipient; receiving at the server at least a portion of a data transport protocol dialog generated during transmission of the message from the server to the recipient; and receiving at the server from the recipient an indication of the failure to deliver the message to the recipient; forming at the server a first information from the at least a portion of the data transport protocol dialog and the indication of the failure to deliver the message by the recipient; and transmitting, before any authentication of the message, a copy of the first information to the sender from the server.
US 8,504,628 Claim 30. A system for transmitting a message from a sender to a recipient, comprising: a server configured to receive a message from a sender, the server being remote from a recipient of the message, the server also being programmable using software commands to determine if there is a particular indication present in the message that identifies the message as requiring special processing before the message is transmitted to the recipient, to transmit the message from the server to the recipient through a first route if the message lacks the particular indication, and to process the message in accordance with the particular indication if the particular indication is present.
All service providers (such as lawyers, doctors, accountants, financial advisors, etc.) who believe their communications with clients are private -- and in some situations, privileged -- should take note. Conversely, all clients who believe their communications with trusted service providers are private should also take note.
If you believe the revelations reported by The Guardian after a recent July 17th interview with NSA whistleblower Edward Snowden, you should consider encrypting all such communications.
Here’s a summary of what Snowden said in his interview with The Guardian, along with Snowden’s original quotes:
1. Your data collected by the government will likely be stored forever. "Because of the advance of technology, storage becomes cheaper and cheaper year after year and when our ability to store data outpaces the expense of creating that data, we end up with things that are no longer held for short-term periods, they’re held for long-term periods and then they’re held for a longer term period. At the NSA for example, we store data for five years on individuals. And that’s before getting a waiver to extend that even further."
2. The government believes it needs to be able to intercept all communication and therefore discourages use of message-level encryption, which makes mass collection more challenging. "And the government is saying that we need to be able to intercept all of these communications … And because of this they don’t like the adoption of encryption. They say encryption that protects individuals’ privacies, encryption that protects the public’s privacy broadly as opposed to specific individuals, encryption by default, is dangerous because they lose this midpoint communication, this midpoint collection." Further, "The reality is every communication comes from an originating point and it ends up at a destination point. And these two points are computers, they’re devices, they’re cell phones or laptops and they can be hacked. They can be exploited, which gives law enforcement agencies and intelligence agencies direct access to those systems to be able to read those communications."
3. Lawyers and other service providers have obligations to maintain client confidentiality – but without encryption, they cannot. "Lawyers are in the same position. And investigators. And doctors. It’s a constantly increasing list and one that we’re not even aware of today. I would say lawyers, doctors, investigators, possibly even accountants. Anyone who has an obligation to protect the privacy interests of their clients is facing a new and challenging world and we need new professional training and new professional standards to make sure that we have mechanisms to ensure that the average member of our society can have a reasonable measure of faith in the skills of all the members of these professions."
As Snowden suggests, the NSA has your information -- and lots of it. And they will likely have it forever. But, can it be obtained by others? And, if it is obtained by others, can it be publicly exposed or even used against you?
Assuming you are not a national security threat, it has yet to be seen whether a simple Freedom of Information Act request would compel the NSA to return to you your records, location information, conversations, and email that the NSA has collected. It will be interesting to see whether such a request would be successful. This has already been tested successfully in Germany with subpoena to T-Mobile of one’s personal stored metadata, which can then be used to map one's location history to Google maps. (Check out this interactive map for yourself.)
In a developing storyline here in the United States, we will get to see whether Congress can obtain information on US citizens to hold against them in proceedings. CBS News recently reported, "The House Armed Services Committee has come up with a creative approach to look for emails from embattled former Internal Revenue Service (IRS) official Lois Lerner that were apparently lost in a computer crash."
"They're asking the National Security Agency (NSA) and the Defense Department. The panel approved a resolution Wednesday authored by Rep. Steve Stockman, R-Texas, that directs the Secretary of Defense to send the House of Representatives 'copies of any electronic communication in the possession of the Secretary, the Director of the National Security Agency, or any office that reports to the Secretary or the Director that was transmitted to or from any electronic mail account(s) used by former Internal Revenue Service Exempt Organizations Division Director Lois Lerner at any time between January 1, 2009, and April 30, 2011.'"
If we are to believe what has been reported, the bottom line is:
1. Your information is being collected.
2. Your collected information is stored for a long time, and may be accessible through public requests for information.
3. Encryption works to keep correspondence private, but only if used; and only if messages themselves are encrypted, even at the endpoint.
4. Your service provider (lawyer, doctor, accountant, financial planner) may not understand or care enough to protect you by encrypting your private correspondence. If you are not encrypting your correspondence to them or you are not insisting that they encrypt correspondence with you, your correspondence will not be private.
RPost's encryption service uses "True Direct Delivery," a proprietary method of encrypted mail delivery whereby the message is encrypted in a secure PDF wrapper, delivered directly to the recipient (without being stored in the middle), and stays in an encrypted format in the recipient’s mailbox or on any recipient mail servers. Endpoint security is a critical requirement of message privacy, as entities such as the NSA have shown in recent years.
Learn more about RPost’s encryption service at http://www.rpost.com/esecurity.
Now is the Time for Secure Emails, Digital Signatures and Electronic Contracts – A Legal Perspective
Robert Bond, one of the world’s premier legal experts in data privacy and information security, just hosted an exclusive webinar where he presented a number of practical reasons why every legal professional needs to do more than just use standard Microsoft Outlook or other basic technologies when corresponding with clients, other legal counsel, the courts and other parties.
Mr. Bond, Partner and Head of Data Protection & Information Security at Speechly Bircham LLP based in London, detailed why Speechly Bircham uses RPost and focused on current global regulatory regimes and online security concerns legal professionals need to be aware of.
Co-Presented by Alex Khan, Vice President of Global Services at RPost, the webinar explained the importance of message tracking, delivery proof, email encryption, strong digital signatures and the need for better online authentication.
View a recording of this informative webinar now.
The Food and Drug Administration (FDA) has published guidance for compliance with specific regulations in 21 CFR Part 11. This guidance is intended to describe the FDA's current thinking regarding the scope and application of part 11 of Title 21 of the Code of Federal Regulations; Electronic Records; Electronic Signatures (21 CFR Part 11).
RPost's Registered Email® service supports compliance with 21 CFR Part 11 with regard to preserving a time-stamped audit trail and archiving the content of documents submitted or signed electronically for FDA purposes.
In particular, preserving RPost’s Registered Email receipt associated with any document sent by email or electronically signed document automatically preserves a time-stamped audit trail and original content of the document (and email message body text content as well as electronic signature). This is preserved in the form of a Registered Receipt email record, which can be stored by the sender in any normal email box or email archive. This electronic "receipt" is self-contained, can be independently authenticated, and can re-construct an authenticated time-stamped original content in a human readable and standard electronic format.
One can then optionally elect to preserve the original message and documents as that information is preserved with the transmission audit trail, within the electronic receipt itself.
With regards to the FDA guidance on Part 11, "Electronic Records; Electronic Signatures," the RPost Registered Email service simplifies compliance with at least the following requirements. In particular, if one is emailing documents to the FDA, RPost can automatically add authenticated electronic signatures and provide a record returned to the sender that complies with Part 11; the process is as easy as attaching a DOC or PDF to an email and sending (sending Registered).
2. Audit Trail: "…computer-generated, time-stamped audit trails (§ 11.10 (e), (k)(2) and any corresponding requirement in §11.30). Persons must still comply with all applicable predicate rule requirements related to documentation of, for example, date (e.g., § 58.130(e)), time, or sequencing of events, as well as any requirements for ensuring that changes to records do not obscure previous entries."
4. Copies of Records: "…generating copies of records (§ 11.10 (b) and any corresponding requirement in §11.30)… We recommend that you supply copies of electronic records by: Producing copies of records held in common portable formats when records are maintained in these formats… In each case, we recommend that the copying process used produces copies that preserve the content and meaning of the record… You should allow inspection, review, and copying of records in a human readable form…"
5. Record Retention: "…for the protection of records to enable their accurate and ready retrieval throughout the records retention period (§ 11.10 (c) and any corresponding requirement in §11.30). Persons must still comply with all applicable predicate rule requirements for record retention and availability (e.g., §§ 211.180(c),(d), 108.25(g), and 108.35(h)). …any copies of the required records should preserve their content and meaning. As long as predicate rule requirements are fully satisfied and the content and meaning of the records are preserved and archived, you can delete the electronic version of the records. In addition, paper and electronic record and signature components can co-exist (i.e., a hybrid8 situation) as long as predicate rule requirements are met and the content and meaning of those records are preserved."
To sign up for a free trial of RPost’s Registered Email Service, which includes RPost's electronic signature service, click here.
RPost does not provide legal opinions, legal guidance, or legal advice; you should not rely on the content of this article as a legal opinion, legal guidance, or as legal advice. We recommend that you consult your own counsel to evaluate your specific situation with regards to complex issues related to email and the law
Lawyers who practice in Texas stand to save a lot of time and money starting this year. As of January 1, 2014, amendments to Texas rules TRCP 21a(a)(2) and TRAP 9.5(b) now permit service of court documents by email.
The amended rules allow certain court documents, traditionally served by courier or certified first class postal mail, to be served by email. Examples of documents that can now be served electronically include discovery notices, dispute notices associated with discovery requests, meet and confer notices and requests, and emergency motions.
Lawyers who take advantage of the recent rule changes can reduce administrative time and costs when serving documents to opposing counsel and costs associated with couriers and certified first class or express mail.
Before these benefits can be realized, lawyers need to understand two critical things:
- When service by email is deemed “complete” by law
- How to prove service of documents (served by email) when opposing counsel claims non-receipt
Just as lawyers understand it’s a good practice to retain a registered mailing receipt tracking slip when serving paper documents using certified postal mail, FedEx or another method to prove service is complete, this same concept applies to emailing documents as well. It’s for this reason savvy lawyers are using RPost’s Registered Email® service to obtain automatic receipts proving successful delivery of their served electronic documents.
Be sure to download RPost’s best practice guide which covers the updated amendments and discusses what we believe constitutes “complete” service for documents served by email.
Latest Blog Posts
- Eight RPost Patents Valid after Post-Grant Challenges
- Is All Privileged Client-Provider Email Cataloged by the US Government and Accessible by Request?
- Now is the Time for Secure Emails, Digital Signatures and Electronic Contracts – A Legal Perspective
- RPost Services Support Compliance with New FDA Guidelines on 21 CFR Part 11
- Amended Texas Rule Allows Lawyers to Serve Court Documents by Email