The Patents Court (Shenzhen Carku Technology Co Ltd v The NOCO Company [2022] EWHC 2034 (Pat)) considered whether a complaint made to Amazon by the patent owner using Amazon’s UK IPR complaints procedure in relation to the claimant’s relevant products was a threat of patent infringement.
Patent Law and Patent Litigation is a highly specialised and technical area and indeed not something which Steven Mather Solicitor usually deals with. However, this case is a potential warning to patent holders looking to make complaints to platforms like Amazon.
One of the quirks in Patent Law is that unlike most IP claims where lawyers fire off really robust letters of claim, in Patent Law you cannot make “unjustified threats” and if you do, as a patent holder, you can be held liable to pay the other party damages.
The legal principles applicable to unjustified threats within s.70 included that:
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the question of whether a communication was a threat had to be considered objectively;
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threats did not need to be express;
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whether a communication amounted to a threat depended on how it would be understood by an ordinary reasonable person in the position of the actual recipient;
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in order to be a person aggrieved by a threat, the claimant had to show that its commercial interests had been, or were likely to be, adversely affected in a real, as opposed to a fanciful or minimal, way
NOCO admitted using the Amazon UK IPR complaints procedure in respect of the relevant Carku products but contended that notifications sent to Amazon did not amount to “threats of infringement proceedings”. Meade J commented that this was the first case in England and Wales relating to the Amazon IPR procedure, but that similar issues had arisen at an interim stage in a few cases in relation to eBay’s VeRO (Verified Rights Owner) programme. The judge said that these decisions were obviously of interest because of the similarity of the factual situations to this case. But in terms of legal principle, he said that the conclusion to be drawn from them was no more than that the question was whether, objectively speaking, there was a threat of legal proceedings, and that that depended on all the facts. Further, it was not clear whether Amazon’s policy and approach was materially the same as that of eBay. NOCO’s argument was that its complaints to Amazon did not amount to a threat of legal proceedings.
Meade J analysed the relevant Amazon complaints procedure, and the correspondence between NOCO and Amazon, and concluded that the communications to Amazon were threats of patent infringement proceedings against Amazon in the event that it did not delist Carku’s products. He said that even if that conclusion was incorrect, the position in relation to third parties was absolutely clear from NOCO’s communications, from which Amazon would understand that, if it carried on selling, NOCO would be ready, willing and able to sue the relevant third-party distributors. The conclusion was that NOCO’s communications to Amazon were actionable threats and were not justified.
Source: Practical Law
