What are the ways to defend an Amazon neutral patent evaluation?
Amazon’s neutral patent evaluation technically offers three ways to defend a utility patent infringement claim. One way is to show a prior decision by a court or the US International Trade Commission (ITC) that the asserted patent claim is invalid. This is a rare occurrence. It is highly unlikely that a patent owner would try to enforce a patent declared invalid by a court or the ITC. So an accused infringer really has only two defenses in an Amazon seller patent case:
- Argue noninfringement;
- Show that the accused products were on sale one year or more before the patent’s earliest effective filing date.
Which defense is better? It depends upon the facts. Do you have prior sales that predate the patent filing date? If not, then you’re left with the only option of arguing noninfringement.
What is an effective way to argue noninfringement?
Amazon has simplified the neutral patent evaluation process by limiting the patent owner to a single independent claim. This makes it simpler for sellers to defend an Amazon patent case since victory or defeat will hinge on this one patent claim. The goal of an accused infringer, therefore, is to analyze the independent claim carefully and look for claim elements missing in the accused products.
Noninfringement analysis can be highly technical, so you will likely benefit from having a patent attorney compare your product and the patent claim.
Do not think that your product avoids infringement because it looks different than the patent drawings. We are dealing with utility patents here, not design patents.
How can you strengthen your Amazon seller patent case?
A seasoned patent attorney may be able to review the file history of the patent owner’s filing to see if any weaknesses can be found. For example, the patentee (patent applicant/owner) may have made some amendments and arguments during the prosecution of their patent application that would limit the scope of the independent claim.
There may also be prior art patents that would help define or limit the meaning of key claim terms (e.g., Part A cannot mean Part B, and the accused product has only Part B – therefore, no infringement).
What is a smart backup plan in case you might lose an Amazon neutral patent evaluation?
It always helps to have a fallback position. Your patent attorney may discover during the course of analyzing their patent that certain claim elements may be avoidable in your future products. This is known as a design-around. Therefore, one strategy for future sales of your product line may be to start a new listing with a modified product that omits those claim elements.
That way, if your current product is found to be infringing, your future products may carry a lower risk of infringement. Keep in mind that any potential design-arounds must contemplate all independent claims of the patent. Just because the patent owner asserted Claim 1 in the current neutral patent evaluation does not mean that they cannot assert a different independent claim next time.
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