Interesting order out of W.D. Ky. on online marketplace complaints for patents during pending reexamination. The court held that New Age’s Amazon complaints — and its refusal to retract them — were not shown to be objectively baseless, even though the asserted patent claims had been rejected/amended during ex parte reexamination. No reexamination certificate had issued at the time of the opinion. Patentee also reasserted the original claims during the reexam but not immediately after amending.
There are two competing fairness concerns here. First, if the asserted claims are invalid or materially flawed but have not yet been formally canceled, continued Amazon enforcement seems unfair to the accused seller. Second, if the accused products arguably infringe both the original claims and the amended/reasserted claims, requiring retraction creates a strange “twilight period” where the patentee may have no practical enforcement path between amendment and issuance of the reexamination certificate.
The factual details seem important here. How similar are the original and amended claims? Does the accused product arguably infringe both? Was the reassertion of the original claims merely protective or a substantive continuation of the same infringement theory?
Similar issues are likely to arise more often as patent disputes continue moving into marketplace takedown and platform-enforcement procedures. Counsel can help both patentees and accused sellers navigate these complicated and evolving disputes, particularly where PTO proceedings, claim amendments, and marketplace remedies overlap.
About the Author
Dustin Zak is a registered patent attorney who focuses his practice on patent litigation and prosecution. Dustin possesses a vast range of technical experience, from chemical and material arts to software applications and artificial intelligence. Dustin has technical knowledge related to cybersecurity and computer technologies. During his studies, he has immersed himself in many technical topics including C++, Java, and visual basic programming, networking, open-source networking, end-user computing, ethical hacking and offensive security, cyber intelligence, Linux security administration, information security, risk-vulnerability analysis, and digital forensics.
About Brooks Kushman P.C.
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