Amazon APEX Patent Case Study: How to Win the Noninfringement Argument
Sellers nowadays cannot ignore Amazon APEX. APEX is Amazon’s program for resolving utility patent disputes between sellers. Amazon sellers accused of infringement can participate if they receive an invitation to participate. This is a case study on how our firm successfully argued noninfringement in an Amazon APEX patent case.
Need to win an Amazon APEX patent case? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you keep selling your products.
Read on to see how we prevailed in APEX to enable our client to continue selling their product. To preserve privilege, this post does not contain any attorney-client privileged information or communications.
How to Start an Amazon APEX Patent Case
Typically, only patent owners can request this neutral evaluation. Specific ASINs must be identified in the patent owner’s request. If APEX is offered, Amazon will notify each seller of an accused product and invite them to sign an evaluation agreement. The signed APEX agreement must be emailed back to Amazon within a couple of weeks. Thereafter, each party must timely submit an evaluator deposit, which is $4,000 as of the date of this post.
Failure to send back a signed evaluation agreement and evaluator deposit will lead to the removal of the seller’s accused ASIN. Assuming you received an APEX agreement and timely sent back the signed agreement and deposit, the assigned evaluator will contact the parties and set forth a schedule for written briefs on infringement and sellers’ defenses.
Patent Owner’s Opening Brief of Infringement
In APEX, the patent owner always goes first. Furthermore, patent owners also have the option to file a reply so they get to have the last word. It is critical, therefore, for accused infringers to make all their points in the response brief.
The patent owner has the option of submitting an opening brief immediately. By doing so, the response deadline for each accused seller will be pushed up. At a minimum, each accused seller will have two weeks from the submission of the patent owner’s opening brief to submit their response brief.
In one APEX case, we carefully analyzed not only the patent owner’s opening brief, but also their claim chart. Claim charts do not count towards the patent owner’s 20-page limit. Patent owners might include infringement arguments in their claim charts that do not show up in the opening brief.
Literal Infringement or Doctrine of Equivalents (DOE)?
The patent owner will argue how each claim limitation is found in the seller’s accused product either literally or under the doctrine of equivalents (DOE). Naturally, a response brief will include arguments as to why certain claim limitations are not found in the accused product.
Infringement under DOE is a more complicated argument. In our case, we attacked the DOE theory in multiple ways. For example, we argued that prosecution history estoppel precluded the patent owner from asserting any equivalents for the features at issue.
Furthermore, even if the patent owner were allowed to advance DOE for the sake of argument, we showed how the accused feature in our client’s product failed the function-way-result test as well as the insubstanial differences test.
How We Carefully Study Claim Language
Only one independent claim is allowed to be asserted in APEX. We read and reread the asserted claim, poring over each word with a fine-tooth comb.
Utility patents are highly nuanced. What we noticed in the asserted claim was not only the recitation of certain components, but the fact that Component A and Component B had to be next to each other. In other words, a portion of the product had to include both Component A and Component B. The asserted claim did not allow for Component A to be found in a first location and Component B to be segregated and found in a different location.
How We Write Noninfringement Response Briefs in Amazon APEX Patent Cases
A seller’s response brief is limited to 15 pages, not including the claim chart and any exhibits. In our response briefs, we aim to summarize the main arguments at the beginning. This sets the stage for further argumentation to follow.
Where appropriate, we like to include images which can be quite powerful. It is one thing to describe claim limitations in words, and quite another to show it to the evaluator in pictures. We use images judiciously since they can take up a good amount of space and quickly use up the page limit.
When making arguments for noninfringement, we try to keep in mind what additional arguments might be raised by the patent owner in their optional reply. Patent owners get two written briefs where accused sellers only get one. Since patent owners will have the last word, the seller’s noninfringement arguments should anticipate what the patent might say in their reply.
Amazon APEX Evaluator Decision
Evaluators aim to send their written decision within a couple of weeks of the reply deadline unless the patent owner indicates sooner that no reply will be forthcoming. The evaluator’s decision will indicate whether the patent owner is likely or unlikely to prove that the accused product infringes the asserted claim.
If the evaluator decides that a patent owner is not likely to provide that an accused ASIN infringes the patent claim, the decision will include a brief explanation regarding noninfringement.
After the noninfringement decision was rendered, instructions were sent to our client for obtaining a refund of their $4,000 evaluator deposit.
