Saving room for the reply

Recently, SGB filed an APEX takedown on behalf of a patent owner against a seller on Amazon.

According to Amazon’s guidelines, the patent owner has 20 total pages for its written arguments, including both an initial argument and a reply to an accused seller’s response (which may be 15 pages). The page limit does not include claim charts.

Deciding what to include and exclude in the initial argument can be critical. Claim construction and supporting evidence should be included. In addition, the patent owner needs to make a complete showing that the accused product practices all limitations of the asserted patent claim.

However, should possible or likely non-infringement arguments be addressed up-front? Should the accused seller’s possible claim construction be pre-empted with your own arguments? These might arise from previous discussions with the seller, or from thoughtful strategy sessions.

In our recent case, SGB considered numerous possible claim construction counter-arguments and associated non-infringement positions that the accused seller might raise. It seemed prudent to address these up-front to better influence the neutral patent evaluator—the person evaluating the APEX takedown. However, the resultant initial argument would be 15 pages long, leaving only 5 pages for the patent owner’s reply.

Instead, SGB eliminated everything but the necessary initial showing of infringement, getting the initial argument down to 10 pages. Reserving a full 10 pages for the patent owner’s reply proved very fortunate.

The accused seller used none of the expected claim construction or non-infringement arguments, and instead pursued very unusual tactics. SGB needed all 10 pages of the patent owner’s reply to adequately address the accused seller’s response.

While addressing expected claim construction and infringement counter-arguments is often useful in patent litigation, the tight page limits in an APEX procedure means that patent owners should be more judicious using allotted space in the initial written arguments.