In 2019, Amazon launched a new initiative for protecting its sellers against patent infringement. Although Amazon Neutral Patent Evaluation program immediately generated a lot of interest, many Amazon sellers are still hesitant to assert their patent rights using this procedure. We would like to share some first-hand practical advice based on our recent win.
First, here is some background. Smith & Hopen represents many prolific Amazon entrepreneurs, and most of them voice a common concern: IP theft and knockoffs. Unfortunately, for many Amazon businesses success is a kiss of death. When a product listed on Amazon begins to attract significant consumer demand, “copycats” (mostly Chinese-based companies) flood Amazon with with knockoffs. Often, the knockoff sellers boost their listings with manufactured 5-star reviews and significantly lowered prices. As a result, the demand for the authentic product deteriorates. The problem is further exacerbated when the inferior quality of knockoffs kills the demand for the entire product category. For sellers who sell non-patented products, there is little recourse. However, for Amazon entrepreneurs who prudently invest into patent protection, Amazon Neutral Patent Evaluation is a godsend.
Amazon Patent Evaluation parallels an IPR
The single most important aspect of the Amazon Neutral Patent Evaluation program is that a licensed U.S. patent attorney decides the outcome. For patent owners seeking to shut down an infringing listing, you bear the burden of proving that the accused product has each and every element of your broadest independent claim. For Amazon sellers accused of patent infringement, your task is to prove that your product lacks at least one claimed element. Regardless which side you are on, your arguments must resonate with a patent attorney, not a lay person.
In our recent victory, Smith & Hopen represented the patent owner. Although this was our first Amazon Patent Evaluation proceeding, we have extensive experience with patent evaluation trials at the USPTO, specifically the Inter Partes Review (IPR). In both proceedings, the dispositive issue is whether each limitation of a patent claim is present in the accused device or a prior art reference. To a lay person, this may sound simple, but an experienced patent attorney knows that this is a highly nuanced issue that requires a precise legal approach. Keep in mind, Amazon evaluators are patent attorneys.
Winning Strategy: Hire an IPR Attorney
Recognizing that many aspects of the Amazon Patent Evaluation process parallel an Inter Partes Review (IPR), we adopted a time-tested winning approach. Our initial brief focused on a detailed element-by-element patent infringement analysis. We supported every legal conclusion with a precise claim chart. Analogously to IPR proceedings, our Amazon brief cited multiple exhibits demonstrating each infringing aspect of the accused product. Furthermore, we included a detailed section dedicated exclusively to claim construction. This section ensured that Amazon evaluator would properly interpret each claim limitation, leaving no room for ambiguity. We perfected this multi-faceted strategy through first-hand battle experience in high-stakes IPRs.
The infringing Amazon seller hired an engineer, rather than a patent attorney. Big mistake. The engineer wrote a lengthy brief describing alleged technological advantages of the infringing product. This brief pointed out the purported flaws of the patented design. The engineer went to great lengths to explain the high-tech features of the infringing product not present in our client’s patent. He even took apart the infringing device and discussed its allegedly superior inner-workings. All to no avail.
In the end, our legal brief addressed the fundamentals of patent law through the eyes of a patent attorney. The infringer’s defense focused on engineering considerations irrelevant to the legal issue of patent infringement. Amazon evaluator knew the difference. Our client won. The infringing seller lost its ability to sell on Amazon, the $4,000 payment for the Amazon proceeding, and the fees paid to the engineer who wrote its brief.
When discussing this win among our partners, Anton Hopen provided the best analogy: hiring an IPR patent attorney to represent you in an Amazon Neutral Patent Evaluation proceeding is like hiring a MLB player to bat on child’s little league team.