Here's one I haven't seen before. In EIS, Inc. v. Intihealth GER GmbH, C.A. No. 19-1227-LPS (D. Del.), the counterclaim-defendant filed a motion for a TRO to force the patentee defendant to withdraw infringement notices it provided to Amazon.com regarding the counterclaim-defendant's products, and to force them to request that Amazon restore the product's ranking and reviews on the site:
Plaintiff EIS Inc. (“EIS”) respectfully moves the Court to grant a temporary restraining order to enjoin Defendants, requiring them to withdraw their patent infringement notice(s) to Amazon that reference EIS’s “Satisfyer” products, and ordering that the withdrawal shall request that Amazon restore EIS’s product listings with the same rankings and customer reviews as prior to their removal. EIS further moves for a preliminary injunction, ordering Defendants to refrain from such conduct including re-filing any such notices pending resolution of this case.
Sadly the briefing is under seal. It looks like the Court is taking it seriously, though—Judge Stark just granted expedited consideration of the TRO, and requested specific additional information:
ORAL ORDER: Having reviewed Plaintiff's motion for a temporary restraining order ("TRO") and preliminary injunction ("PI") (D.I. 139), the accompanying opening brief (D.I. 140), and Plaintiff's letter requesting expedited briefing (D.I. 141), as well as Defendants' letter opposing expedited briefing (D.I. 143), IT IS HEREBY ORDERED that Plaintiff's request for expedited consideration of its motion is GRANTED. The parties shall proceed as follows: (i) no later than tomorrow, December 8, at 10:00 a.m., Defendants shall file a letter brief of no more than five single-spaced pages outlining the bases for their opposition to Plaintiff's request for a TRO and/or PI; (ii) no later than December 8 at 2:00 p.m., Plaintiff may file a reply letter brief of no more than two single-spaced pages; and (iii) no later than December 8 at 6:00 p.m., each side shall submit a letter brief, not to exceed five single-spaced pages, addressing the following questions: (a) what role did any defendant play in initiating, participating in, and/or requesting relief from Amazon; (b) if the Court grants Plaintiff's motion and directs Defendants to take actions with respect to Amazon, what likelihood is there that Amazon will respond by again offering Plaintiff's product; (c) if the Court does not find a likelihood that Plaintiff will succeed on the merits, but is concerned that Defendants may be attempting to "circumvent[] the legal system and engage[] in a self-help remedy, instead of letting this Court resolve the parties' dispute pending before this Court" (D.I. 140 at 1), what, if any, relief can the Court provide Plaintiff; (d) should the Court invite Amazon to provide its views on the resolution of the pending motion; and (e) has any court addressed the interplay between Amazon's Utility Patent Neutral Evaluation and ongoing litigation? IT IS FURTHER ORDERED that the Court will hold a teleconference to discuss the parties' submissions on Thursday, December 9 at 9:45 a.m. Plaintiff shall initiate the call to 302-573-4571. ORDERED by Judge Leonard P. Stark on 12/7/21. (ntl) (Entered: 12/07/2021)
The only unredacted filing so far is a single declaration, excerpted below, which gives some information about how Amazon's Utility Patent Neutral Evaluation ("UPNE") program works.
An article on the patentees' counsels' website explains the program further, and says that the entire process to get a product excluded from Amazon "takes [only] 3-4 months total, and costs a very small fraction of the cost of litigation." IPWatchDog.com has a nice article with an example of navigating through the full process, at least as of mid-2020 (see part 1 and part 2).
The Declaration attaches a case from the Central District of California, issued just last month, that seems to deny a TRO that similarly sought to force a patentee to withdraw an Amazon UPNE challenge.
Why Haven't We Seen More of These?
At least for cases that involve products sold on Amazon, it's actually surprising that we haven't seen more of these yet. I have to wonder, given the dominance of Amazon in online sales, whether this could become a new front in patent litigation for cases that involve products sold on Amazon.
After all, patent injunctions are notoriously hard to achieve (outside of the ITC), and patent litigation in the district courts can be fairly slow moving. I could imagine a patent plaintiff initiating an Amazon UPNE the same day the complaint is filed, with products being barred from Amazon not long after the answer is due. We'll keep an eye on these filings going forward.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
