Does Amazon enable sellers to use utility patents to stop product sales?
Prior to Amazon introducing its own way of resolving patent violations by sellers, the traditional route of patent litigation in federal courts seemed out of reach for smaller businesses. Who has a few million dollars laying around to spend on litigating patents? By establishing a neutral evaluation process for determining patent infringement, Amazon created a more affordable way to stop the sale of infringing products using utility patents. Let’s explore how the Amazon APEX process works for utility patent infringement.
Need to enforce or defend an Amazon APEX patent case? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
How does the Amazon APEX process start?
Only patent owners can request APEX. Currently, Amazon’s platform does not allow accused infringers to request a patent evaluation. Patent owners will want to enroll in Brand Registry to make more APEX requests more effective.
APEX applies only to utility patents. Patent numbers that start with the letter “D” are design patents which do not qualify for APEX.
Can an APEX request be denied?
Yes, APEX requests can be denied. Some reasons why Amazon might deny a request for a utility patent evaluation include:
- claims that may be too technical or difficult for an evaluator to assess infringement (e.g., method claims, claims that require testing on accused products, etc.)
- utility patents approaching expiration or having a shorter term
- failure to assert a single independent claim
- inadequate explanation of why patent owner believes accused ASINs infringe
- pending court litigation involving the same patent and accused products
In addition to the above factors, a big mystery remains as to why certain APEX requests are denied. Sometimes, Amazon provides bot-like reasons for the denial that do not appear to relate to technical patent issues. Trying to speak to someone in Amazon’s patent department will often be an exercise in frustration.
What is the APEX evaluation agreement?
If an APEX request is granted, Amazon will send to the patent owner a copy of the APEX evaluation procedure and an evaluation agreement that must be signed and returned within a couple of weeks.
The evaluation agreement will contain a table where the patent owner may identify up to a maximum of 20 ASINs accused of infringement. After receiving the completed and signed evaluation agreement from the patent owner, Amazon will contact the sellers of the accused products.
How does Amazon contact the sellers of accused product listings?
Amazon will email the APEX agreement as completed by the patent owner to each seller of an accused product. Each defending seller will have three weeks to email back to Amazon a signed copy of the APEX agreement.
What happens if an accused seller fails to send a signed APEX agreement in time?
In most cases, failure to return a signed evaluation agreement will result in the removal of the accused listing.
Accused sellers have the option of filing a declaratory judgment lawsuit in federal court which would suspend the APEX procedure, thereby enabling the ongoing sales of the accused products while the litigation is pending.
How does the APEX evaluator deposit work?
Granted evaluation requests do not always lead to payment of the deposit. At least one accused seller must timely return a signed APEX agreement to trigger next steps in the procedure.
Assuming at least one seller sends back a signe APEX agreement, Amazon will select a neutral evaluator. Typically, evaluators are attorneys in private practice. They may or may not be patent attorneys, but they usually have patent litigation experience.
The evaluator will provide payment instructions for each party to send their deposit. As of the date of this post, the amount of the deposit is $4,000. The winning party will receive a refund of this evaluator deposit.
What is the schedule for APEX written infringement briefs?
Each side will have a deadline for submitting written briefs arguing infringement or the lack thereof. A typical written brief schedule will consist of:
- Patent Owner’s Opening Brief: Due 2 weeks from Day 1 set by the evaluator
- patent owners have the option to submit their opening brief on Day 1 which would move up the response deadline for accused sellers (see below)
- Accused Seller’s Response Brief: Due 2 weeks from the deadline for Patent Owner’s Opening Brief
- If the patent owner submits its opening brief on Day 1, each accused seller will have two weeks from Day 1 to submit their response briefs
- Patent Owner’s Reply Brief (Optional): Due 7 days from the deadline for the response brief deadline
What are the page limits for APEX written briefs?
Patent owners may have a total of 20 pages between its opening brief and optional reply brief. Accused sellers have a limit of 15 pages for the response brief.
Claim charts and exhibits do not count toward these page limits.
APEX Evaluator Decision: When and What?
A written decision will be issued by the evaulator within 14 days of the reply date.
An APEX evaluator will decide whether the Patent Owner is:
- likely to prove that the accused product infringes the asserted claim; or
- not likely to prove that the Accused Product infringes the asserted claim
If the decision is that infringement is likely, the evaluator will not provide reasoning but may provide a brief explanation of how certain claim terms were interpreted.
Where the decision is that infringement is not likely, the Evaluator shall provide a brief explanation of why the patent owner is unlikely to prove infringement.
Winning parties get a refund of their evaluator deposit.
Does the Amazon APEX process allow for reconsideration or appeal of the evaluator’s decision?
APEX does not provide for any appeals or reconsideration requests of the evaluator’s decision. The parties may not contact or question the evaluator regarding the decision.
How can you get the most out of the Amazon APEX process to win your case?
Here is a helpful case study on how we successfully defended an Amazon seller in APEX case, enabling the seller to continue sellings its product.
