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Amazon’s APEX Program Can Address Indirect Patent Infringement

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We have written before about Amazon’s APEX procedure and how it could help patent owners take down infringing products found for sale on Amazon. Amazon Patent Evaluation Express (APEX) – A Cost-Effective Alternative to Litigation | Harness IP.  In this post we discuss how the APEX program can also be used to address instances of indirect infringement, where the Amazon seller causes the buyer to infringe a patent.

Amazon’s APEX Program

In recent years, Amazon introduced a program where a patent owner can address patent infringement by parties selling items on Amazon. In short the process goes like this:

  1. The patent owner initiates the process by alleging that up to 20 products infringe its patent.
  2. The sellers of those products are given an opportunity to respond. If they do not the listing is taken down.
  3. Any seller that responds must pay Amazon an earnest money deposit of $4,000. The patent owner then has to pay Amazon a deposit of $4,000 regardless of how many sellers respond.
  4. The case then gets assigned to a neutral evaluator. APEX evaluators are licensed patent attorneys. The parties brief the issues and the evaluator makes a decision. If the decision is in favor of the patent owner, then the listing(s) get taken down and the patent owner gets its deposit back. If the decision is in favor of the seller, then the listing(s) stay up and the sellers get their deposits back.

What is Indirect Infringement?

Patent infringement generally requires that the seller sells a product with every element of at least one claim of the patent. In some cases, the seller may try to get around patent infringement by selling  a product without one or more elements. The seller may instruct their customers or provide tools to put the pieces together and infringe the patent. The seller may provide a component that can only be used in a larger assembly that infringes the patent.  Indirect infringement addresses these situations.

In these cases, the customer is the direct infringer and the Amazon seller is an indirect infringer. Indirect infringement takes two forms. Induced infringement occurs when the seller encourages or facilitates direct infringement by the buyer, for example by providing tools or instructions that lead the customer to infringe the patent. The other form is contributory infringement, where the seller sells a product that is a specialized component or part of a larger infringing assembly. Both types of indirect infringement require knowledge of the infringing activity. If the elements of indirect infringement are met, the indirect infringer is liable just as a direct infringer would be.

Can APEX Be Used In Cases of Indirect Infringement?

Amazon does not limit the APEX program to direct infringement. Harness IP recently succeeded in arguing a case of indirect infringement with an APEX evaluator. If you believe that someone is selling something on Amazon that infringes your patent, directly or indirectly, we can assist you in getting those items removed.