Tumbleweed Communications Corp., a wholly owned subsidiary of Axway Inc. announced it has filed a patent infringement suit against Sendmail, Inc. in federal district court in San Francisco, California. Earlier this month, the Axway-Tumbleweed merger was finalized and Tumbleweed’s operations are in the process of integration with Axway’s.
Tumbleweed alleges that multiple Sendmail products infringe several of Tumbleweed’s U.S. patents covering the management of email traffic at an enterprise’s gateway. Tumbleweed’s lawsuit seeks compensation for Sendmail’s unauthorized use of the patented technology, as well as an injunction prohibiting the manufacture, sale, or use of Sendmail’s Sentrion MP 301, Sentrion MP 302, Sentrion MPQ, Sentrion MPV, Sentrion DS products.
Tumbleweed first notified Sendmail in 2003 that it was using technology covered by Tumbleweed’s patents, and in 2005 Sendmail executed a patent license agreement under which it acknowledged the validity and enforceability of the patents and agreed to pay future royalties. Many industry players have licensed Tumbleweed’s email firewall patents, including, among others, Borderware, CipherTrust (acquired by Secure Computing), Entrust, IronPort (acquired by Cisco), Proofpoint, and Zix.
In 2008, however, Sendmail breached its patent license agreement with Tumbleweed by refusing to pay royalties, despite Tumbleweed’s repeated requests for payment.
Tumbleweed has attempted to reach an amicable agreement regarding this matter with Sendmail. Tumbleweed continues to invest millions of dollars every year in research and development to enhance its solutions for its customers, and the company seeks to protect its inventions by licensing its patents to those who use its intellectual property. Because Sendmail has refused to pay to use the patented technology, Tumbleweed has been forced to bring the matter to the