Are your Amazon listings accused of infringing a patent?
Less than 20% of Amazon sellers achieve monthly sales over $10,000. When you reach that level of success, it can seem rather deflating to have your listings removed or threatened due to an alleged infringement of a patent. Is there a way to fight an Amazon patent violation while keeping your listings active?
Need to fight an Amazon patent case? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
How does Amazon resolve patent violations?
When a patent owner accuses your ASIN of infringement, a few potential outcomes may occur:
- Your listing may be removed without an opportunity to argue your case; or
- You may be invited to participate in a neutral patent evaluation.
For utility patents, Amazon’s neutral patent evaluation is called APEX. For design patents, a neutral design patent evaluation program is offered by invitation only. Design patent owners can try to request a neutral evaluation, but Amazon does not currently appear to offer a streamlined approach for requesting design patent infringement evaluations.
APEX vs. Federal Court: Where you should fight an Amazon patent case?
For accused infringers who have been offered a neutral patent evaluation such as APEX, the question is whether to use Amazon’s patent dispute program or litigate in federal court.
For accused sellers, here are some reasons for using Amazon’s neutral patent evaluation program:
- strong noninfringement argument
- only one independent claim in a utility patent may be asserted
Here are factors that weigh against using Amazon’s patent evaluations:
- no invalidity challenges except for the accused seller’s own prior product
- page limits on written noninfringement arguments
- neutral evaluator selected by Amazon (typically a lawyer) may or may not be experienced in patent infringement
- no right to appeal a decision of infringement
- infringement decision by evaluator might block future listings of products with new or different features
What are your options for disputing patent infringement outside of Amazon’s neutral evaluation programs?
A seller accused of patent infringement may file a lawsuit in federal court asking for a decision that the accused products do not infringe the patent. Furthermore, the lawsuit may be filed in a jurisdiction where the accused seller is located. It is called a declaratory judgment lawsuit.
In a DJ lawsuit, the tables are turned. The accused infringer is the plaintiff, and the patent owner is the defendant.
To put it mildly, federal court litigation escalates the battle to another level. Costs, deadlines and legal issues all increase. What is at stake is not only the amount of money damages, but potentially the validity (or invalidity) of the asserted patent. Attorney’s fees may also be at stake.
What are the risks of filing a noninfringement DJ lawsuit in your home state?
Patent DJ lawsuits are typically filed in federal courts convenient to the accused infringers. In many cases, the patent owner is located in a state different from the one in which the lawsuit was filed. Accordingly, a typical strategy for patent owners is to relocate the lawsuit to their home state by filing a motion to transfer venue.
Accused infringers contemplating DJ lawsuits should consider the likely outcomes of a potential motion to transfer venue. Where are the witnesses located? Where are documents stored?
Whereas Amazon’s neutral patent evaluation would be limited to a single claim in an asserted patent, the patent owner in a DJ lawsuit may assert multiple claims in a utility patent. Therefore, the accused infringer must be prepared to argue noninfringement of all independent claims in a utility patent.
Can Amazon sellers continue selling while litigating a declaratory judgment action in federal court?
One potential advantage of filing a DJ lawsuit is that Amazon may allow the accused seller to continue its listings while the litigation is ongoing. Accused sellers can maintain cash flow while fighting the patent legal battle.
While a typical federal litigation plaintiff has a few months to serve the complaint on defendants, Amazon may require that a DJ plaintiff provide an update on the status of the litigation within a shorter timeframe.
In an APEX proceeding, the accused seller may submit evidence of a filed DJ lawsuit within a certain deadline to pause the neutral evaluation. Amazon will allow the accused seller to maintain their listings until the outcome of the DJ lawsuit.
Can you invalidate a patent in a DJ lawsuit?
A declaratory judgment lawsuit may also include claims to invalidate a patent. Unlike Amazon’s neutral patent evaluations, DJ lawsuits may include invalidity challenges based on a variety of prior art. The prior art need not be limited to the accused seller’s own products.
Where do you start in fighting an Amazon patent case?
A good place to start may be an initial noninfringement analysis by a patent attorney with experience in infringement litigation. Keep in mind that patent agents and foreign attorneys are not qualified to litigate patents in the US.
The results of the initial infringement analysis should be communicated verbally. You do not want any unfavorable documents that might become discoverable later in litigation. If and only if the assessment by your patent attorney is favorable, you may want to request a legal opinion or claim chart detailing the reasons for noninfringement.
Need help with an Amazon patent case?
We have helped both accused sellers and patent owners defend their ecommerce sales. Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you win your Amazon patent case.
