Does the use of Amazon’s IPR procedure amount to a threat?
The complaints procedures offered by online marketplaces can be effective mechanisms for the removal of IP-infringing goods. However, as a recent case showed, they must be used carefully - Shenzhen Carku Technology Co., Ltd v The NOCO Company  EWHC 2034 (Pat).
The case involved a UK patent relating to battery-powered car jump starters, owned by NOCO. In the case, Shenzhen Carku argued that the patent was invalid and that most of its products did not infringe. In his judgment, Mr Justice Meade largely agreed with Carku.
First of its kind
What was notable about the case was that NOCO had filed a number of complaints using Amazon’s IPR procedure between January and July 2020 stating that Carku’s products infringed its patents. As a result, Amazon de-listed the Carku products.
Carku claimed this amounted to unjustified threats. As the judge noted, this was the first case in England and Wales relating to Amazon’s IPR procedure, although there have been decisions previously regarding eBay’s similar VeRO programme.
Meade J noted that the communications “assert the existence of patent rights, assert infringement of those rights, and call for action to be taken to end the alleged infringement” and that, in most contexts, they would be “classic threats”.
In the context of the IPR procedure, he found that Amazon makes a judgment about de-listing, and that NOCO was taking a legal approach, for example by providing claim charts to Amazon. He concluded:
“Taking these matters together, I have little or no hesitation in concluding that the communications to Amazon were threats of patent infringement proceedings against Amazon in the event that it did not delist Carku’s products.”
Moreover, a February 2020 email from NOCO to Amazon made it clear that NOCO was “ready, willing and able to sue the relevant third party distributors”.
In the circumstances of this case, therefore, the communications to Amazon were actionable threats and were not justified.
Implications of the decision
The decision suggests that, where there is appropriate context (such as legal letters and references to actions against other parties) use of Amazon’s procedure in cases where there is no infringement may amount to unjustified threats.
However, the judge also stressed the finding in this case was based on the facts before him and “not a general finding about online markets”.